The Cambridge Handbook of Intellectual Property and Social Justice [1 ed.] 9781108482738, 9781108697613

Citation preview

the cambridge handbook of intellectual property and social justice Protection for intellectual property has never been absolute; it has always been limited in the public interest. The benefits of intellectual property protection are meant to flow to everyone, not just a limited population of creators and the corporations that represent them. Given this social-utility function, intellectual property regimes must address issues of access, inclusion, and empowerment for marginalized and excluded groups. This handbook defines an approach to considering social justice in intellectual property law and regulation. Top scholars in the field offer surveys of social justice implementation in patents, copyright, trademarks, trade secrets, rights of publicity, and other major IP areas. Chapters define Intellectual Property Social Justice theory and include recommendations for reforming aspects of IP law and administration to further social justice by providing better access, more inclusion, and greater empowerment to marginalized groups. Steven D. Jamar is a professor emeritus at Howard University School of Law and the associate director of the Institute for Intellectual Property and Social Justice (IIPSJ), an NGO dedicated to advancing equitable access, inclusion, and empowerment in IP-related matters for traditionally marginalized and excluded people. Lateef Mtima is a professor of law at the Howard University School of Law and the founder and director of the Institute for Intellectual Property and Social Justice. He has testified before Congress in support of IIPSJ’s advocacy for socially just access, inclusion, and empowerment throughout the IP ecosystem.

Published online by Cambridge University Press

Published online by Cambridge University Press

The Cambridge Handbook of Intellectual Property and Social Justice Edited by

STEVEN D. JAMAR Howard University (Washington, D.C.) School of Law

LATEEF MTIMA Howard University (Washington, D.C.) School of Law

Published online by Cambridge University Press

Shaftesbury Road, Cambridge cb2 8ea, United Kingdom One Liberty Plaza, 20th Floor, New York, ny 10006, USA 477 Williamstown Road, Port Melbourne, vic 3207, Australia 314–321, 3rd Floor, Plot 3, Splendor Forum, Jasola District Centre, New Delhi – 110025, India 103 Penang Road, #05-06/07, Visioncrest Commercial, Singapore 238467 Cambridge University Press is part of Cambridge University Press & Assessment, a department of the University of Cambridge. We share the University’s mission to contribute to society through the pursuit of education, learning and research at the highest international levels of excellence. www.cambridge.org Information on this title: www.cambridge.org/9781108482738 doi: 10.1017/9781108697613 © Cambridge University Press & Assessment 2024 This publication is in copyright. Subject to statutory exception and to the provisions of relevant collective licensing agreements, no reproduction of any part may take place without the written permission of Cambridge University Press & Assessment. First published 2024 A catalogue record for this publication is available from the British Library. Library of Congress Cataloging-in-Publication Data names: Jamar, Steven D., editor. | Mtima, Lateef, editor. title: The Cambridge handbook of intellectual property and social justice / edited by Steven D. Jamar, Howard University (Washington DC) School of Law; Lateef Mtima, Howard University (Washington DC) School of Law. description: Cambridge, United Kingdom ; New York, NY : Cambridge University Press, 2023. | Series: HBK Cambridge law handbooks | Includes bibliographical references and index. identifiers: lccn 2023026780 (print) | lccn 2023026781 (ebook) | isbn 9781108482738 (hardback) | isbn 9781108697613 (epub) subjects: lcsh: Intellectual property–United States. | Intellectual property–Social aspects–United States. | Social justice–United States. classification: lcc kf2979 .C36 2023 (print) | lcc kf2979 (ebook) | ddc 346.7304/8–dc23/eng/20230606 LC record available at https://lccn.loc.gov/2023026780 LC ebook record available at https://lccn.loc.gov/2023026781 isbn 978-1-108-48273-8 Hardback Cambridge University Press & Assessment has no responsibility for the persistence or accuracy of URLs for external or third-party internet websites referred to in this publication and does not guarantee that any content on such websites is, or will remain, accurate or appropriate.

Published online by Cambridge University Press

For Joseph and Primrose, and for Ruwanda – LM

This book is dedicated to all those working for social justice. – SDJ

“The arc of the moral universe is long, but it bends toward justice.” – Martin Luther King, Jr. (revised by Dr. King from a sermon by Rev. Theodore Parker in 1853)

Published online by Cambridge University Press

Published online by Cambridge University Press

Contents

page xi

About the Contributors Foreword: David J. Kappos, Karyn A. Temple, and James Pooley Prolusion: What Is Intellectual Property (And Why Should You Care About It Anyway?) – A Layperson’s Guide to Intellectual Property Law Lateef Mtima Introduction: Intellectual Property Social Justice Theory: History, Development, and Description Lateef Mtima and Steven D. Jamar

xix

xxvii

1

part i. ip social justice foundations

19

1.

Mapping the Intellectual Property/Social Justice Frontier Peter S. Menell

21

2.

The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law Margaret Chon and Robert S. Chang

3.

Intellectual Property Social Justice: A Theoretical Rationale Lateef Mtima part ii. ip social justice in major intellectual property domains

4.

People Are the Lifeblood of Innovation Mason Marks

5.

Copyright and the Interdependent Relationship Between Social Utility and Social Justice Lateef Mtima

76

99 101

vii Published online by Cambridge University Press

53

115

viii

Contents

6.

Trademarks, Legal Remedies, and Social Injustices Hannibal Travis

131

7.

Trade Secrets from an Intellectual Property Social Justice Perspective Steven D. Jamar

158

8.

Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice? Yolanda M. King and Lateef Mtima

167

part iii. ip social justice: historical perspectives

181

Copyright, Music, and Race: The Case of Mirror Cover Recordings Robert F. Brauneis

183

9.

10. They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights Kara W. Swanson 11.

Copyright’s Promise of Dignity in the 19th Century Zvi S. Rosen part iv. ip social justice in the political economy: engaging activism; achieving change

208

222

243

12. Intellectual Property Empowerment and Protection for Prisoners John R. Whitman

245

13. Works of “Recognized Stature” under VARA: Recognized by Whom? Sue Liemer

265

14. The Lead Sheet Problem in Music Copyright: Williams and Skidmore Revealed the Systematic Diminution of Pop Music’s Aural Composers Seán M. O’Connor 15. Applying Social Justice Principles in the Practice of Intellectual Property Law Krista L. Cox part v. ip social justice in the information age 16. User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks Elizabeth L. Rosenblatt 17. Libraries, Copyright Exceptions, and Social Justice Jonathan Band and Brandon C. Butler 18. An Intellectual Property Social Justice Perspective on Intellectual Property Protection for Artificial Intelligence Programs Steven D. Jamar

Published online by Cambridge University Press

291

321

337

339

362

380

Contents

part vi. intellectual property social justice in global perspective: issues in gender and development disparity 19. Intellectual Property Social Justice on the International Plane Zehra Betul Ayranci 20. Intellectual Property, Social Justice, and Human Development: Empowering Female Entrepreneurs Through Trademark Law J. Janewa Osei-Tutu 21. Controversial Trademarks: A Comparative Analysis Mariana Bernal Fandiño 22. The Role of Nonrightsholder Advocates and Academics in Achieving Social Justice Balance in Copyright: The Case of Colombia Marcela Palacio Puerta 23. Exposing Gender Bias in Intellectual Property Law: The UK Music Industries Metka Potočnik part vii. ip social justice: the future of the global ip ecosystem

ix

401 403

435

448

461

473

497

24. Intellectual Property and Social Justice Futures Debora Halbert and Billy Meinke

499

25. Patenting Custom Fit, Aspiring for Social Justice Shubha Ghosh

518

26. A Primer on Critical Race Intellectual Property Deidré A. Keller and Anjali S. Vats

535

27. Intellectual Property After George Floyd Madhavi Sunder

557

Published online by Cambridge University Press

Published online by Cambridge University Press

About the Contributors The Editors wish to acknowledge the contributions of the following individuals and organizations in bringing this project to fruition: For research assistance for the book, Idia Egonmwan, HUSL ’20, and Aminah Ortiz-Simon, HUSL ’22 Howard University School of Law, and the students in the HUSL IP Students Association for the many years of institutional support; the Institute for Intellectual Property and Social Justice for providing the venue through which to develop IP-SJ theory; the law schools and professional and public interest organizations which hosted the various scholarly and professional programs and roundtables through which the scope of IP-SJ has been expanded and refined; and the many members of the bench and bar, legislators, scholars, and social justice and policy activists who have shared in the journey to reimagine the IP regime in the service of the principles of social equity, access, empowerment, inclusion. Steven D. Jamar Lateef Mtima Steven D. Jamar is a professor emeritus at Howard University School of Law and is the cofounder and Associate Director of the Institute for Intellectual Property and Social Justice, Inc. (IIPSJ), an NGO dedicated to advancing equitable access, inclusion, and empowerment in IP-related matters for traditionally marginalized and excluded people. Professor Jamar’s scholarly work is wide ranging, with published works on comparative law and intellectual property, copyright and social justice, constitutional law, legal rhetoric, and various human rights topics. Lateef Mtima is a professor of law at the Howard University School of Law, and the Founder and Director of the Institute for Intellectual Property and Social Justice, an accredited NGO member of the World Intellectual Property Organization. He is admitted to the New York and Pennsylvania bars, and is currently a member of the Advisory Boards for the Copyright Alliance and the Patent Pro Bono Advisory Council, and the Board of the U.S. Intellectual Property Alliance; past affiliations include the Advisory Council for the United States Court of Federal Claims; President of the Giles S. Rich Inn of Court for the United States Court of Appeals for the Federal Circuit; and Distinguished Libra Visiting Scholar at the University of Maine School of Law. A 2018 recipient of the Public Knowledge 1P3 Award, in 2021 Professor Mtima testified before the U.S. Congress in support of the Unleashing American Innovators Act, which was signed into law by President Joseph R. Biden on December 29, 2022. His previous works include Intellectual Property, Social Justice, and Entrepreneurship: From Swords to Ploughshares (Edward Elgar Publishing) and Transnational Intellectual Property Law (West Academic). Professor Mtima holds B.A. degrees from Amherst College in English (with honors) and the Dramatic Arts, and received his J.D. degree from Harvard Law School, where he was the co-founder of the Harvard BlackLetter Journal (today the Harvard Journal on Racial and Ethnic Justice). Jonathan Band is Principal, policybandwidth, 2005-present co-author of three books on software copyright and interoperability; recipient of American Library Association Patterson Copyright Award; Partner, Morrison & Foerster, 1992–2005; graduate of Harvard College and Yale Law School. xi Published online by Cambridge University Press

xii

About the Contributors

Mariana Bernal Fandiño is a lawyer from the Pontificia Universidad Javeriana, with a Ph.D. from the same university (summa cum laude). She has a Master 2 in Commercial Law and a Master 2 in Private International Law from the University of Paris 2 (in both programs she graduated with honors). She is currently an associate professor at the Law School of the Universidad de los Andes. She is the director of the Research Group on Private Law at the Universidad de los Andes and she is the academic director of the Ibero-American Network of Business Law. She has been a professor for more than 15 years in contract law, torts and consumer law. Her line of research focuses on social justice in private law. Zehra Betül Ayranci is Lloyd M. Robbins Fellow, Miller Fellow, Graduate Remote Instruction Innovation Fellow and J.S.D. Candidate at University of California Berkeley Law with the dissertation on contracts and transnational copyright policy in content industries in the digital streaming era. Holding an LL.M. degree from University of California Berkeley Law with Fulbright Scholarship, and thesis on the Right of Publicity of Athletes in the US and EU, Ms. Ayranci has authored numerous books, book chapters and articles accepted for publication by prestigious institutions. She has served as a judge at Philip C. Jessup, Willem C. Vis, International Criminal Court, National Native American Law Students Association, and Oxford Intellectual Property Law moot court competitions; delivered speeches and lectures at conferences around the globe; sat on Diversity and Inclusion Committee of the Copyright Society of the U.S., Advisory Board of LawInSport, and Legal and Disciplinary Board of Turkish Hockey Federation; and practiced law, as an award-winning lawyer dual qualified in California and Istanbul, for more than ten years across Americas, Europe, Middle East and Africa, in intellectual property and commercial matters. Robert F. Brauneis is the co-author of a leading copyright law casebook, and the author of numerous articles on copyright, trademark, and constitutional law. He served as the inaugural Abraham L. Kaminstein Scholar in Residence at the U.S. Copyright Office, and as Trustee of the Copyright Society of the U.S.A. Brandon C. Butler is co-founder (with Pia Hunter) of Fair Use Week, co-author (with Adler, Aufderheide, and Jaszi) of the Code of Best Practices in Fair Use for Academic and Research Libraries (2010), and (with Aufderheide, Jaszi, and Cox) of the Code of Best Practices in Fair Use for Software Preservation (2018). Robert S. Chang is a Professor of Law and is founder and Executive Director of the Fred T. Korematsu Center for Law and Equality at Seattle University School of Law. He writes primarily in the area of race and interethnic relations. He is the author of Disoriented: Asian Americans, Law and the Nation-State (NYU Press, 1999) and Minority Relations: Intergroup Conflict and Cooperation (University Press of Mississippi, 2016) and numerous articles, essays, and chapters published in leading law reviews and books on Critical Race Theory, LatCrit Theory, and Asian American Legal Studies. He is currently working on a co-authored book entitled The United States Supreme Court and White Social Dominance (with Tanya K. Hernandez, Michalyn Steele, and Carlton Waterhouse). He puts theory into action through an active pro bono civil rights litigation practice through his civil rights clinic. Recent cases have included a lawsuit against the City of Seattle for its use of force against people protesting police brutality following the murder of George Floyd, and a successful constitutional challenge to the enactment and enforcement of a facially neutral law that was used to terminate the Mexican American Studies Program at the Tucson Unified School District.

Published online by Cambridge University Press

About the Contributors

xiii

Margaret Chon is the Donald and Lynda Horowitz Endowed Chair for the Pursuit of Justice, and Faculty Co-Director of the program on Technology, Innovation Law, and Ethics at Seattle University School of Law. The author of numerous articles, book chapters and review essays on knowledge governance through intellectual property, her current scholarship focuses on the role of intellectual property in human flourishing, and includes the Cambridge Handbook of Public– Private Partnerships, Intellectual Property, and Sustainable Development (2018) (with Pedro Roffe and Ahmed Abdel-Latif ). Professor Chon has also published various works on race and law, such as Race, Rights, and National Security: Law and the Japanese American Incarceration (2021) (with Lorraine Bannai and Eric Yamamoto). She has been affiliated with numerous academic institutions, including New York University School of Law, where she was a 2011–12 Senior Global Emile Noël Research Fellow at the Jean Monnet Center for International and Regional Economic Law & Justice. She is an alumna of the University of Michigan (M.H.S.A. and J.D.) and Cornell University (A.B.), and an elected member of the American Law Institute and the American Bar Foundation. Krista L. Cox has legal and policy experience at Meta (Facebook), Etsy, Twitter, the Association of Research Libraries and other non-profit think tanks and organizations. Among other publications, she is co-author (with Jonathan Band) of the UNDP Report Our Right to Knowledge: Legal reviews for the ratification of the Marrakesh Treaty for person with print disabilities in Asia and the Pacific (2015), and (with Aufderheide, Butler, and Jaszi) of the Code of Best Practices in Fair Use for Software Preservation (2018). Shubha Ghosh is Crandall Melvin Professor of Law and Director of the Syracuse Intellectual Property Law Institute and Technology Commercialization Law Program. He earned his J.D. from Stanford, Ph.D. from Michigan, and B.A. from Amherst College. He is the author of more than 10 books and 100 articles and book chapters. His expertise is in tech commercialization, the legal construction of markets, and the normative dimensions of innovation policy. Debora Halbert is the Vice President for Academic Strategy at the University of Hawai‘i System and Professor of Political Science at the University of Hawai‘i at Ma¯noa. She has published extensively on the politics of intellectual property and intellectual property futures, with a focus on the role copyright plays in structuring the political economy of the information age. Deidré A. Keller is Dean of the Florida A&M University College of Law. Keller was previously Associate Dean for Academic Affairs at the Claude W. Pettit College of Law at Ohio Northern University, where she taught for 10 years. She writes at the intersection of intellectual property, personhood theory, and critical race theory. Before teaching, Keller practiced law in Atlanta, Georgia. Yolanda M. King is Of Counsel at Advitam IP. She is a recipient of the 2009 Corporate Woman of Achievement Award by the National Association of Women Business Owners and the 2012 Outstanding Professor of the Year Award by NIU College of Law Alumni Council. She graduated from Harvard Law School. Sue Liemer is Professor and Associate Dean for Academic Affairs at Elon University School of Law. She has served on a bar association committee that drafted the state of Connecticut’s first artists moral rights legislation in the late 1980s. She teaches Art Law and has published scholarship on the history of le droit moral, artists’ moral rights law, both in Anglo-American and French law. Mason Marks is the Florida Bar Health Law Section Professor at the Florida State University College of Law. He is the Senior Fellow and Project Lead of the Project on Psychedelics Law

Published online by Cambridge University Press

xiv

About the Contributors

and Regulation (POPLAR) at the Petrie-Flom Center at Harvard Law School and an affiliated fellow at the Information Society Project at Yale Law School. Marks was previously a fellow in residence at the Edmond J. Safra Center for Ethics at Harvard University, a research scholar at the Information Law Institute at NYU Law School, and a visiting fellow at Yale Law School. Marks’ academic research focuses on health technology, constitutional law, and drug policy. He is particularly interested in state and federal controlled substance regulation, health privacy, and the application of artificial intelligence to healthcare and public health. His research has been published or will soon appear in the Duke Law Journal, Harvard Law Review Forum, Boston University Law Review, UC Irvine Law Review, UC Davis Law Review, Administrative Law Review, Yale Journal of Law and Technology, Nature Medicine, and Neuropharmacology. Marks writes about law and technology for publications such as The Washington Post, the Los Angeles Times, The Guardian, The Seattle Times, Slate, Wired, and Vice News. His legal commentary has been featured by The New York Times, The Wall Street Journal, The Washington Post, ABC News, Fox News, Bloomberg, Radio Boston, German Public Radio, and NPR’s All Things Considered. Billy Meinke is a settler on Native Hawaiian land, surfer, dad, and Ph.D. student in the Futures Studies program in the Department of Political Science at the University of Hawai‘i at Ma¯noa. His research examines the intersections of technology and intellectual property rights in the context of scholarly collaboration and student data privacy. He tweets at @billymeinke and blogs at billymeinke.com. Peter S. Menell is the Koret Professor of Law at UC Berkeley School of Law, co-founder and Director of the Berkeley Center for Law & Technology, co-founder of BCLT’s Life Sciences, and co-founder and Faculty Director of the Berkeley Judicial Institute. He earned his S.B. at MIT, Ph.D. in economics at Stanford University, and J.D. from Harvard Law School before clerking for Judge Jon O. Newman of the U.S. Court of Appeals for the Second Circuit. He joined the Berkeley Law faculty in 1990. Professor Menell’s research and teaching span intellectual property across the digital technology and entertainment fields, as well as environmental law and policy, property law, law and economics, and judiciary reform. He has authored more than 100 articles and 15 books, including leading casebooks, intellectual property treatises, and research handbooks. Since 1998, Professor Menell has organized more than 70 intellectual property education programs for the Federal Judicial Center, including an annual multi-day program on “Intellectual Property in the Digital Age.” Throughout his career, Professor Menell has spearheaded efforts to address important public policy challenges through consensusbuilding projects. Most recently, he has confronted controversies over copyright protection for computer software, patent eligibility, patent damages, design protection, and judiciary reform. In 2012–13, Professor Menell advised the USPTO on various aspects of intellectual property policy as one of the office’s inaugural Edison Visiting Professionals. Since 2022, he is again advising the USPTO as an Edison Distinguished Scholar and Expert Consultant. Seán M. O’Connor is a professor of law at George Mason University and singer-songwriter and multi-instrumentalist; his research and law practice focus on intellectual property and business law, especially the role of general counsel for startups and commercializing innovation in technology and arts. Professor O’Connor received his law degree from Stanford Law School, a master’s degree in philosophy concentrating on the history and philosophy of science from Arizona State University, and a bachelor’s degree in history from the University of Massachusetts, Boston. Before graduate school he was a singer-songwriter and rock band front

Published online by Cambridge University Press

About the Contributors

xv

man with two DIY albums that received local airplay in the Northeast. He is currently writing The Means of Innovation: Creation, Control, Method+ology and serving as Editor of The Oxford Handbook of Music Law & Policy (forthcoming from Oxford University Press), as well as Editor (with Jonathan Barnett) of 5G and Beyond: Intellectual Property and Competition Policy in the Internet of Things, forthcoming from Cambridge University Press. J. Janewa Osei-Tutu is a professor of law at Florida International University College of Law. She is the Associate Dean for Diversity, Culture & Inclusion, and Co-Director for the IP Certificate. She has published widely on international intellectual property law, with a focus on cultural IP, human rights, and human development. Marcela Palacio Puerta holds a Doctor of Juridical Science Degree and an LL.M. in International Legal Studies from American University Washington College of Law. Currently, she works as a professor at Universidad Santo Tomás Seccional Tunja-Colombia. She has been recognized as a senior researcher by the Ministry of Education in Colombia. Metka Potočnik is the Associate Director (International Programmes) of the Institute of IIPSJ. She is a senior lecturer in law at the University of Wolverhampton (UK), a holder of research degrees from King’s College London (LL.M.) and Queen Mary University London (Ph.D.), and a Member of the Slovenian Bar (EU) (2008–). Dr Potočnik is on the Arts and Humanities Research Council Peer Review College (UK AHRC PRC) with research and teaching affiliations at several U.K. higher education institutions (University of London, University of Aberdeen, and Cardiff University). Dr. Potočnik is a published author in intellectual property, alternative dispute resolution, and foreign direct investment. In recent years, she has focused her feminist inquiry into the role of intellectual property law in creating or perpetuating the existing intersectional gender hardships of women and gender expansive persons in the creative industries. Dr. Potočnik’s research informs her activism at The F-List for Music CIC (UK), which is a non-profit organization, directed towards achieving intersectional gender equality in the music industries. Dr. Potočnik is an F-List Director and the research lead of the F-List Gender in Music Research Hub, an interdisciplinary collective of feminist scholars and practitioners in music. Zvi S. Rosen is an assistant professor at the Southern Illinois University School of Law, and was the 2015–2016 Abraham L. Kaminstein Scholar in Residence at the U.S. Copyright Office. He writes on the historical development of copyright law, and has helped make copyright records better available to the public digitally. Elizabeth (Betsy) Rosenblatt is Professor of Law at University of Tulsa College of Law, Legal Chair of the Organization for Transformative Works, and a member of the Baker Street Irregulars and Adventuresses of Sherlock Holmes. She frequently presents at academic conferences and more popular venues like San Diego Comic Con. Madhavi Sunder, Frank Sherry Professor of Intellectual Property Law and Associate Dean for International and Graduate Programs, is a widely published scholar whose work centers on intellectual property law and extends into culture, human rights, and the First Amendment. Her book, From Goods to a Good Life: Intellectual Property and Global Justice (Yale University Press 2012) brings a humanist approach to intellectual property law. She has a deep interest in fairness and equity; her recent articles call for more equitable allocation of COVID-19 vaccines to low- and middle-income countries. Her work is wide-ranging, from art law to brands and biopiracy, to cultural appropriation, design thinking, the experience economy, and feminist and

Published online by Cambridge University Press

xvi

About the Contributors

critical race theory. Madhavi holds an A.B. from Harvard and a J.D. from Stanford. She clerked for Judge Harry Pregerson on the U.S. Court of Appeals for the Ninth Circuit and was an associate at Cleary, Gottlieb, Steen & Hamilton in New York City. Before joining the Georgetown Law faculty, she was a professor at the University of California, Davis, and also taught at Yale Law School, the University of Chicago Law School, and Cornell Law School. She was named a Carnegie Scholar in 2006. In 2014, she was elected to the school board in Davis, California and served as president of the board. She serves on the Smithsonian DC Regional Council and as a member of the board of the Women’s Learning Partnership (WLP), a partnership of women’s rights organizations in the Global South that promote human rights. Kara W. Swanson, JD/PhD, is Professor of Law and Associate Dean of Research at Northeastern University, Boston, MA. She is an award-winning scholar of race and gender in the history of the U.S. patent system and author of Banking on the Body: The Market in Blood, Milk and Sperm in Modern America (Harvard University Press, 2014). Hannibal Travis teaches intellectual property and related courses at Florida International University, Miami’s public law school. He is the co-director of the IP certificate program and has also taught Internet law as a visiting law professor at the University of Florida and Villanova University. His articles on copyright, patent, trademark, and Internet law have appeared in leading technology law journals, the American Intellectual Property Law Association Quarterly Journal, the Journal of the Copyright Society of the USA, and the law reviews of numerous law schools. Cambridge University Press and Routledge have published his books on Internet law. His research interests include the freedom of expression, fair use, net neutrality, and the interplay between competition law and these topics. In addition, his research into human rights law and genocide studies has appeared in a number of law journals, area studies journals, and several edited books, including books from Cambridge University Press, Routledge, and Palgrave. Anjali Vats, J.D., Ph.D. is Associate Professor at the University of Pittsburgh School of Law, with a secondary appointment in Communication. Her book, The Color of Creatorship: Intellectual Property, Race and the Making of Americans (Stanford University Press, 2020), examines the relationships among intellectual properties racial justice, and national identity. She has published in law reviews and academic journals, including the Cardozo Arts & Entertainment Law Journal, the Quarterly Journal of Speech, Communication and Critical/Cultural Studies, and Communication, Culture & Critique. Vats was previously Associate Professor of Communication and African and African Diaspora Studies at Boston College, with a courtesy appointment at Boston College Law School, where she taught Critical Race Theory. In 2016–17, while serving as a visiting law professor at UC Davis School of Law, she piloted a course on race and intellectual property law. She also taught at Indiana University, Bloomington. in the Department of Communication and Culture at Indiana University and collaborated with the Center for Intellectual Property Research at the Maurer School of Law. Before becoming a professor, Vats clerked for Chief Justice A. William Maupin of the Supreme Court of Nevada. Her scholarship has been recognized by the Soros Foundation, the American Association of University Women, the Waterhouse Family Institute, the National Center for Institutional Diversity, and the Ford Foundation. John R. Whitman, Ph.D., teaches and consults in business and nonprofit management with a specialty in social entrepreneurship and applying educational strategies to solve social problems. Dr. Whitman has taught at American University, Babson College, Georgetown University, Harvard University’s Extension School, Northeastern University, and the University of

Published online by Cambridge University Press

About the Contributors

xvii

Alabama in Huntsville. Co-founder of the Museum for Black Innovation and Entrepreneurship, he has also founded companies in software development (Oakland Group, Inc.), survey research (Surveytools Corporation), and film production (Camisary, Inc.). His publications include books and articles on the social economy, social entrepreneurship, philanthropy, intellectual property, cooperatives, and library management. Dr. Whitman received his A.B. from Boston University, Ed.M. from Harvard University, and Ph.D. from the University of Toronto (dissertation: Evaluating Philanthropic Foundations: A Comparative Social Values Approach, including foundations in Canada, Europe, and the United States). Dr. Whitman resides in Chicago with his wife, an executive at Feeding America.

Published online by Cambridge University Press

Published online by Cambridge University Press

Foreword By David J. Kappos, Karyn A. Temple, and James Pooley

Intellectual property (IP), the fruit of human creavity and ingenuity, is extant in every culture. However it might labeled or described, every society maintains traditions, customs, rules, or laws which foster human intellectual experiment, achievement, and enterprise. Throughout much of the twentieth century, the prevailing perpective of IP law and protection was that of a system that provides economic incentives to promote the production and distribution of IP. From books and movies to machines and drugs, supporters of this view deferred to the commercial marketplace to identify society’s IP needs and to offer the prospect of pecuniary profit to creatives and innovators to develop responsive products and services. Toward the end of the last century, however, a number of scholars and policymakers posited that society does not gain the full benefits that IP protection can provide if IP is assessed and administered based solely on economic terms. They demonstrated that various “extra-economic” social conditions such as race, gender, and class inequality limit the opportunities for some artists and inventors to contribute to or benefit from IP production. Furthermore, many IP social needs such as access to health and medicines and widespread, shared progress in human development cannot be properly addressed in terms of commercial profit. To fulfill its social potential, IP protection must be structured around more than just economic incentives, values, and metrics. A fully realized system for IP protection must also account for and address broader social justice interests and concerns. Some IP law and policymakers were early to appreciate the inherent social justice obligations and effects of IP protection, and helped to reposition IP discourse and major policy goals within the context of the fulfillment of human potential toward humanity’s greater good. Three of these thought leaders share their aspirations for a social justice-centered IP regime in this Foreword. ***************************** David J. Kappos, Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (2009–2013)

the importance of social justice to the global innovation system Innovation is vital to progress and development in any society, and IP, the embodiment of innovative and creative achievement, is the currency of innovation. IP is the vessel that captures value as an idea moves from the mind to the marketplace. Just as a robustly kinetic monetary

xix https://doi.org/10.1017/9781108697613.001 Published online by Cambridge University Press

xx

Foreword

currency fuels economic activity, the continuous production and broad dissemination of IP, such as patented inventions, enhances the qualtity of human life, inspires further innovation, and thereby sustains a perpetual cycle of innovative acomplishment and socio-economic and technological progress. In the global innovation ecosystem, patent protection provides important incentives to inventors. Patent rights augment the natural drive to invent by providing opportunities for inventors to commercialize and distribute their inventions to the public, which not only brings financial reward to inventors, but also funds research and development for further innovation. But in order for inventors and the public to obtain the benefits of patent protection, inventors must have access to the legal support needed to navigate the many complexities of the patent system sucessfully. Many inventors who lack the resources to retain a patent attorney, especially those in underserved communities, never enter the patent system, and the public is deprived of the benefit of their inventive genius. Ensuring that all inventive minds have effective access to patent protection is a social justice aspiration that affects the ultimate efficacy of the patent system and its function in promoting the development and distribution of new innovations for the public good. In 2011, the United States Patent Office (USPTO) sought to meet this social challenge by establishing the Patent Pro Bono Program (PPBP), a nationwide initiative through which volunteer patent attorneys provide free legal advice to financially under resourced inventors and small businesses, to assist them in obtaining patent protection for their inventions. Since the inception of the PPBP, patent practitioner volunteers have been matched with more than 3,400 inventors and have helped them to file more than 1,800 patent applications.1 Many of the inventors who have participated in the program come from under represented groups and communities. In a recent survey of participants in the program, 30 percent of the respondents identified as African American or Black and 41 percent were women.2 Today the program is offered in all 50 states and supports the entrepreneurial goals of many underresourced inventors, who in turn contribute to our nation’s economic growth by creating jobs and providing the public with innovative products and services. The success of the PPBP has inspired the creation of a companion initiative through which patent pro bono assistance is provided on an international level. In 2015, the World Intellectual Property Organization (WIPO) and the World Economic Forum (WEF) consulted with the USPTO to collaborate in the creation of the Inventor Assistance Program (IAP), which is designed to “mak[e] the IP system more accessible by matching financially underresourced inventors of promising new technologies and ideas with qualified IP counsel, to assist in securing patent protection for their innovations.”3 WIPO and WEF appreciate the fact that, while “an adequate, inclusive global IP system brings benefits to everyone,”4 for many underresourced inventors the lack of financial and knowledge resources can block access to that system. [T]he process for protecting one’s inventions and ideas remains mysterious, complex, or simply inaccessible for many talented inventors around the world . . . While the circumstances vary by 1

2 3

4

Eileen McDermott, Data Show USPTO Patent Pro Bono Program is Working for Women and Minorities, IP Watchdog, Mar. 24, 2022, https://www.ipwatchdog.com/2022/03/24/data-show-uspto-patent-pro-bono-programworking-women-minorities/id=147830/. Id. See WIPO IP Portal, Inventor Assistance Program Online Platform, https://iap.wipo.int/iap/about-inventor.xhtml; IAP Guiding Principles, at 2, https://www.wipo.int/export/sites/www/iap/en/docs/iap_guiding_principles.pdf. IAP Guiding Principles, supra note 3, at 3.

https://doi.org/10.1017/9781108697613.001 Published online by Cambridge University Press

Foreword

xxi

individual and country . . . recent data indicates that a common problem for many inventors is the sheer complexity of the patent laws and rules for those who, due to financial constraints, are unable to retain a qualified attorney, and instead are forced to navigate the system on their own . . . This data indicates that what is needed most for many inventors [is] the expertise of qualified legal counsel to assist with the complexities of patent prosecution.5

Following and expanding upon the model of the PPBP, the IAP directly matches experienced but underresourced inventors with qualified patent counsel. The IAP also reaches inventors who are largely unfamiliar with the patent system, by offering an online IP education course to such inventors, who, upon completing the course, are also matched with patent counsel. The inclusion of underresourced inventors in the patent system not only increases the quantity of innovation output,6 but it also enhances the diversity of achievements within the global innovation system, particularly in many developing nations. For example, whereas a great deal of traditional knowledge, traditional cultural expressions, and genetic resources (collectively TKGR) is generally considered to be outside the purview of IP protection, in today’s knowledgebased economies TKGR has assumed a greater economic potential and scientific value to a wide range of stakeholders, including as a source of revenue to the groups and communities which are the caretakers of these resources. Through the IAP, more innovators from TKGR-rich communities can become familiar with the benefits of IP protection, and likewise share perspectives toward TKGR that will better enable the IP system to strike the proper balance between promoting the dissemination and socially beneficial use of TKGR, and respecting the cultural heritage and economic interests of the communities which produce and sustain these resources. Ideas for innovation come from every corner of society and no society can afford to allow ideas to remain undeveloped merely because some inventors cannot afford access to the IP system. In the twenty-first century, it has become increasingly clear that innovation is the only sustainable source of competitive advantage for world economies. The social function of IP protection in promoting innovation, and the social justice obligations and effects inherent to that function, are self-evident. An IP system built on the social justice principles of universal access, inclusion, and empowerment ensures that IP achievement reaches the hands of all Americans and peoples throughout the world, improving the quality of daily life and inspiring further technological and cultural progress. *************** Karyn A. Temple, thirteenth and Former United States Register of Copyrights and Director U.S. Copyright Office

inclusion, diversity, and the beauty of the copyright system I still recall the first time I attended the Institute for Intellectual Property and Social Justice’s (IIPSJ) inspirational CLE seminar at the Howard University School of Law as a – relatively – young lawyer early in my legal career. At that time, while I had already attended several IP and copyright conferences, this one to me felt quite different. The conference approached the issue of IP in a new and radical way – one that I had often thought about myself but had never really 5 6

Id. at 2. See, e.g., People, Planet, Patent: Spotlight on the 50th IAP Invention, https://www.wipo.int/iap/en/news/2020/news_0001 .html.

https://doi.org/10.1017/9781108697613.001 Published online by Cambridge University Press

xxii

Foreword

heard articulated publicly before – the idea of copyright and the IP system not simply as a general incentive for production of creative works but as an impetus for broader societal justice and advancement. It was in that initial conference that I first began to recognize that my interest in IP and copyright had actually not deviated too far from my personal commitment (long fostered by my historian father and social worker/lawyer mother) to civil and human rights. In my first year of law school, I had the honor of spending a summer undertaking a human rights legal internship in Durban, South Africa and I started my legal career in the public sector, working for the Department of Justice. While my concurrent interest in copyright eventually took me to the private sector, the IIPSJ IP and Social Justice conference provided a roadmap for me on how those interests could align – that copyright itself could often serve as a form of empowerment for minorities and the economically disadvantaged – its own social justice tool for good. But, importantly, only so long as there was equal access to, understanding of, and inclusion in this complex legal system. What struck a particular chord for me was the comprehensive view that IP social justice (IPSJ) takes of copyright. Rather than unfairly demonizing a legal system that has admittedly been used at times to exploit rather than empower, the concept of IP-SJ identifies where there are gaps but also readily affirms that the existing copyright system already has the basic framework and tools to impact our society in meaningful and positive ways. Many years and many conference attendances later, I can no longer claim to be an even “relatively” young lawyer. My career has taken me on some unexpected yet very fulfilling paths, including serving as the first person of color to hold the position of United States Register of Copyrights and Director of the U.S. Copyright Office (serving in the Office for a total of nearly nine years, including three-and-a-half years heading/leading the Office of 400-plus employees). But one constant has not changed: The inspiration I took from Professor Mtima’s profound work in this area to support inclusivity in the copyright legal system to the benefit of our society. A highlight for me was spearheading the first ever copyright and social justice program at the U.S. Copyright Office and inviting Professor Mtima as the keynote speaker. I have attempted to weave in social justice principles in many of my conversations about copyright law. From speaking about how iconic copyrighted works, whether films, photographs, or music, have enabled critical thought on certain issues – the iconic photograph of a mutilated Emmet Till in Jet magazine, the controversial book The Jungle, the films Norma Rae, Moonlight, and Philadelphia all come to mind – IP protection has literally incentivized and changed the world for the better. I have also continued to question, engage, debate, and assess the copyright regime and whether it has fulfilled its promise of inclusivity, diversity, and empowerment. In a June 2019 hearing before the House Judiciary Committee when I headed the Copyright Office, I borrowed a phrase from Professor Mtima and noted that “copyright is a social justice.” I expect that may have been one of the first times members of Congress had heard it discussed in quite that way, that is, in social justice terms during a formal Congressional hearing. Saying copyright is a social justice is not the solution in and of itself, of course. Gaps in the system must be identified and filled. We must continue to ensure that copyright works not just for large corporations but for everyday individuals and especially those from marginalized communities. These principles were at the forefront when I testified before Congress in support of a copyright small claims tribunal in 2020. Access to the court system when faced with the theft of your creative endeavors cannot be a privilege only of the wealthy. I was gratified later to see Congress pass the CASE Act, which is a prime example of IP-SJ principles actively at work in the

https://doi.org/10.1017/9781108697613.001 Published online by Cambridge University Press

Foreword

xxiii

copyright field. More recently, I had an occasion to serve on a panel discussion of the fourth fair use factor – market harm.7 One thing that bothered me about recent opinions in this area was the ways in which courts considered the background and stature of the creator in considering harm to the market.8 An IP-SJ lens tells that unduly favoring more established and successful creators in analyzing fair use undermines rather than promotes the goals of the copyright system and does not reflect a socially just application of IP rights. Nor does allowing major technology corporations to profit from the unauthorized use of creators’ works without recourse.9 That too is a social justice issue. Diversity within the copyright industry itself, of course, remains one of those ongoing “gaps” which dilute the social efficacy of the copyright ecosystem. In testimony to the House Judiciary Committee in 2020, I highlighted both the ongoing problems in this area, as well as the progress that has been made. Again, from an IP-SJ perspective, without diversity within the creative community (behind, in front of, and beside the camera, etc.), copyright will be unable fully to achieve its purpose as an incentive for economic opportunity and social good. We need diverse stories to challenge us, inspire us, and teach us. And we need diverse creators to be able to reap the economic benefits of their own creativity fairly. But isn’t it amazing that diverse creators have at their fingertips intellectual property rights guaranteed by our copyright laws that do not require 7

8

Under the fair use doctrine, the unauthorized use of copyrighted works can be legally permitted, dependent upon judicial evaluation of such use in accordance with four factors: the purpose of the use; the nature of the work being used; the amount and substantiality of the portion of the work used; and the effect on the commercial market for the subject work. See 17 U.S.C. § 106. For example, in Cariou v. Prince, 714 F. 3d 694, 699, 709 (2d. Cir. 2013), in evaluating whether appropriation artist Richard Prince’s unauthorized use of Patrick Cariou’s copyrighted photographs should be allowed as a fair use, the Court of Appeals for the Second Circuit made the following comparison: Cariou’s publisher Powerhouse Books, Inc. printed 7,000 copies of Yes Rasta, in a single printing [and] the book enjoyed limited commercial success. The book is currently out of print [and] over sixty percent of [the copies sold] sold below the suggested retail price of sixty dollars. PowerHouse has paid Cariou . . . just over $8,000 from sales of the book . . . Prince is a well-known appropriation artist . . . He is a leading exponent of this genre and his work has been displayed in museums around the world, including New York’s Solomon R. Guggenheim Museum and Whitney Museum, San Francisco’s Museum of Modern Art, Rotterdam’s Museum Boijmans van Beuningen, and Basel’s Museum fur Gegenwartskunst . . . Prince’s work appeals to an entirely different sort of collector than Cariou’s. Certain of [Prince’s] artworks have sold for two million or more dollars. The invitation list for a dinner. . . hosted in conjunction with the opening of [one of Prince’s art] show[s] included a number of the wealthy and famous such as the musicians Jay–Z and Beyonce Knowles, artists Damien Hirst and Jeff Koons, professional football player Tom Brady, model Gisele Bundchen, Vanity Fair editor Graydon Carter, Vogue editor Anna Wintour, authors Jonathan Franzen and Candace Bushnell, and actors Robert DeNiro, Angelina Jolie, and Brad Pitt. Prince sold eight artworks for a total of $10,480,000, and exchanged seven others for works by painter Larry Rivers and by sculptor Richard Serra. Cariou on the other hand has not actively marketed his work or sold work for significant sums.

9

The Court thus concluded that Prince’s unauthorized use did not impact the market for Cariou’s photographs and therefore constituted a fair use. Similarly, in Warhol v. Goldstein, 382 F. Supp. 3d 312, 317 (S.D.N.Y. 2019), in determining whether the unauthorized use of photographer Lynn Goldstein’s work by the late Andy Warhol should be permitted as a fair use, the District Court for the Southern District of New York observed that “Andy Warhol [was] an ‘art-world colossus’ . . . who contributed significantly to contemporary art across a variety of media . . . Warhol’s contemporary art brand has remained powerful.” The Court dismissed Goldstein’s claims; however, she appealed, and the litigation is currently pending before the United States Supreme Court. See, e.g., Authors Guild v. Google, Inc., 804 F. 3d 202 (2d. Cir. 2015) (holding that Google’s unauthorized digital scanning of tens of millions of copyrighted books for the purpose of (i) creating a digitally searchable corpus and (ii) providing digital “archive copies” to the institutional owners of analog copies of the subject books constitutes a Fair Use of said works, and therefore allowed these uses over the objections of and without any compensation to the copyright owners).

https://doi.org/10.1017/9781108697613.001 Published online by Cambridge University Press

xxiv

Foreword

a college education or wealthy background, but instead merely a “pad and a pen”10 or “one mic”?11 That is the true beauty of the copyright system. Today, social justice issues are being increasingly discussed, whether it is debating how social media influencers are sometimes taking advantage of lesser-known dancers and creators – and how IP might help protect those communities – to questioning whether aspects of our IP system need to be improved – social justice principles have reached the mainstream of IP. These are great developments and the social justice rationale of copyright provides the analytical foundation that will help to ensure that copyright will fulfill its true social potential. The global creative ecosystem is indebted to the legal scholars and thought leaders who devised the analyses which acknowledge the inherent social justice obligations and effects of copyright, and I look forward to doing my small part to help foster these discussions and otherwise to promote widespread and equitable participation in and social uplift and empowerment through copyright endeavor. ********************** James Pooley, Deputy Director General World Intellectual Property Organization (2009–2014)

ip social justice and human development: forging an inclusive ip ecosystem Throughout our global society, IP shapes the quality of human life. From the evolution of social and political norms sparked by information technology in developed nations to life-sustaining resource management innovation in the developing world, IP achievement enhances the physiological, technocratic, and aesthetic aspects of all our daily experiences. The social justice perception of IP prioritizes human development and advancement as the cardinal social function of the IP regime and, in characterizing diverse and equitable inclusion as essential to the IP ecosystem, provides a path toward universal participation in and benefit from that regime. Intellectual innovation and achievement are innate to every culture. When administered through a social justice lens, a sound IP regime is sufficiently robust to accommodate the broad range and full social potential of human intellectual capability, to society’s collective good. The mission of the World Intellectual Property Organization (WIPO) is to lead the development of a balanced and effective international IP system that enables innovation and creativity for the benefit of all.12 One of WIPO’s important initiatives is the WIPO Development Agenda,13 the aspirational goals of which embody the fundamental IP-SJ ideals of equitable access, inclusion, and empowerment. A core objective of the Development Agenda is to foster a more diverse and inclusive community of IP stakeholders and correspondingly enhance the positive effects of the global IP regime. One of the most effective means for expanding the IP stakeholder community is to promote IP awareness, education, and system access, particularly in developing nations and for indigenous and other IP-underserved communities. Many innovators and creatives are unfamiliar with the IP system and the ways in which IP protection can help them to exploit their talents to benefit themselves and their communities. With access to grassroots IP education, coupled with 10 11 12 13

A Tribe Called Quest, https://en.wikipedia.org/wiki/A_Tribe_Called_Quest. Nas, https://en.wikipedia.org/wiki/Nas. https://www.uspto.gov/ip-policy/patent-policy/world-intellectual-property-organization (last visited Nov. 20, 2022). https://www.wipo.int/ip-development/en/agenda/ (last visited Nov. 20, 2022); https://www.wipo.int/ip-development/en/ agenda/recommendations.html (last visited Nov. 20, 2022).

https://doi.org/10.1017/9781108697613.001 Published online by Cambridge University Press

Foreword

xxv

adjutant pro-bono or low-cost IP expert assistance, many developing nations and indigenous peoples can use IP rights to achieve important development goals and other socio-economic progress. In support of these goals, WIPO has promulgated a number of IP education initiatives, including the WIPO Academy,14 the WIPO e-Learning Center,15 and the Inventor Assistance Program,16 among others. Through these programs, inventors, creatives, entrepreneurs, and social activists in developing and least developed nations can acquire the skills needed to harness IP rights to their individual and communal benefit. As beneficiaries of IP protection, historically underserved peoples and nations become genuine stakeholders in the global IP regime. Another important path for achieving a more inclusive and equitable IP ecosystem may lie in extending IP protection to forms of intellectual accomplishment generally considered as falling outside the scope of the IP regime, such as various kinds of indigenous traditional knowledge and cultural expressions (TCEs).17 Many indigenous peoples and developing nations were not involved in shaping the prevailing IP standards,18 and consequently it can be difficult to fit many of their creative and innovative traditions into the established IP framework. However, just as IP protection evolves to address revolutionary technological advances,19 its mechanisms can also be construed to accommodate many of the claims and interests appurtenant to TCEs and similar kinds of achievement. WIPO initiatives promulgated to address these concerns include the WIPO Performances and Phonograms Treaty,20 the WIPO Intergovernmental Committee on IP and Genetic Resources, Traditional Knowledge and Folklore,21 and the WIPO Initiative on Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions.22 These and other programs can empower indigenous peoples and other underserved groups and their advocates to employ the principles of IP protection in support of their self-determined socio-economic and cultural agenda. In addition to reorienting IP mechanisms toward social justice objectives, the effects of external social conditions on the IP system must also be considered. Systemic problems of race, gender, and cultural bias can muddy the IP playing field. Recent WIPO initiatives such as the WIPO Policy on Gender Equality, Diversity, and Intellectual Property23 and WIPO for Creators24 are designed to remove such obstacles to maximum IP engagement and otherwise mitigate the impact of these impediments to IP social progress. The social justice rationale of IP protection recognizes the necessity of widespread and equitable access, inclusion, and empowerment to the fulfillment of the social function of IP protection. A global IP regime buttressed with these principles can engage the full spectrum of human talent and benefit all nations and peoples throughout the global community. **************************** 14 15 16 17 18

19 20 21 22 23 24

https://www.wipo.int/academy/en/ (last visited Nov. 20, 2022). https://welc.wipo.int/ (last visited Nov. 20, 2022). https://iap.wipo.int/iap/about-inventor.xhtml (last visited Nov. 20, 2022). See, e.g., https://www.wipo.int/tk/en/folklore/ (last visited Nov. 20, 2022). See, e.g., WIPO – A Brief History, World Intellectual Property Organization, https://www.wipo.int/about-wipo/ en/history.html. See, e.g., WIPO Copyright Treaty, https://www.wipo.int/treaties/en/ip/wct/. https://www.wipo.int/treaties/en/ip/wppt/ (last visited Nov. 20, 2022). https://www.wipo.int/tk/en/igc/ (last visited Nov. 20, 2022). https://www.wipo.int/publications/en/details.jsp?id=4504 (last visited Nov. 20, 2022). https://www.wipo.int/women-and-ip/en/ (last visited Nov. 20, 2022). https://www.wipo.int/wipoforcreators/en/ (last visited Nov. 20, 2022).

https://doi.org/10.1017/9781108697613.001 Published online by Cambridge University Press

xxvi

Foreword

This book articulates a social justice-centered theory of IP protection. The theory of IP-SJ is based on fundamental precepts of socially equitable access, inclusion, and empowerment: IP protection can only fulfill its social function in the total political economy through the broadest and most diverse participation of everyone in the IP ecosystem. In this volume, leading IP scholars and commentators explore IP-SJ theory in addressing various traditions and challenges of IP inequity and unmet need, to chart a path toward an IP regime that promotes human actualization toward the ultimate benefit of humankind and the world we inhabit. We hope you find the analyses and proposals herein engaging and provocative, and above all, an inspiration to reimagine the role of IP protection in shaping – and serving – our global community.

https://doi.org/10.1017/9781108697613.001 Published online by Cambridge University Press

Prolusion: What Is Intellectual Property (And Why Should You Care About It Anyway?) – A Layperson’s Guide to Intellectual Property Law Lateef Mtima

I. What Is Intellectual Property (A “Plain Language” Summary . . .) A. Trade Secrets B. Patents C. Copyrights D. Trademarks E. Publicity Rights II. . . . And Why You Should Care About It Conclusion

page xxviii xxvix xxx xxxi xxxii xxxiv xxxiv xxxv

In the contemporary global society, intellectual property (IP) is the coin of the realm. As the product of human minds, hearts, and souls, IP is perhaps the most valuable natural resource of the information age. Equipped with the knowledge of what IP is, how important it is in daily life, and how the rules work, anyone can harness IP to empower themselves and their communities. For many people, the words “intellectual property” are intimidating and mysterious. We all know what property is – it’s something tangible, something that you can touch and own, like a house, crops, cell phone, car, or land. But something that is “intellectual” has to do with the thoughts that people think, so how can “property” be something that exists in someone’s mind? Actually, “IP” refers to certain types of things that result from the mind (or heart or soul). Stories, songs, a chemical formula, a recipe, a machine, a way to make a drug, and the like are each a type of IP. In much the same way that a house, a phone, or land can become individual property as a result of a person’s physical efforts (building, buying or making, trading), IP is what sometimes results from a person’s intellectual efforts (thinking, conceiving, imagining). As is perhaps evident from the above list of examples of IP, such products of the mind, heart, and soul can provide enormous benefits to people and to society. Intellectual property can educate, cure, enable, inspire. Intellectual property can also entertain, and otherwise just make everyday life more pleasant or convenient. In modern society, IP impacts virtually every dimension of our aesthetic (books, art, music, films), physiological (drugs and medicines, health, lifespan), and technocratic (cars, mobile phones, the Internet) quality of life. Given its significance, it may come as no surprise that most societies have established rules and customs to encourage people to produce and to use IP. The general idea underlying such rules and customs is to establish a kind of social bargain with those who produce IP – in exchange for the benefits that society receives from their intellectual products, the producers of IP are granted certain legal rights over their creations. xxvii Published online by Cambridge University Press

xxviii

Lateef Mtima

The IP rules and customs of a society can help to determine what kinds of IP people produce and who participates in and benefits from IP endeavors. With respect to the kinds of IP to be produced, the rules and customs might encourage or prioritize the production of IP that educates and cures, or IP that entertains, or simplifies routine chores and tasks, or any range or combination of IP products to meet society’s needs. With respect to who participates in or benefits from IP production, if the rules and customs are very complicated or difficult to satisfy, it is likely that only privileged members of society will have the knowledge and resources necessary to comply with them, and consequently only the elite will produce or own IP. This could also make the production of IP costly, which in turn could make IP products expensive and consequently available only to those members of society who can afford to purchase them. Considering the many ways in which the IP rules and customs can determine what kinds of IP society will have and who will enjoy access to it, certainly everyone should have a meaningful opportunity to have a say in determining what those rules and customs are to be and, in turn, to participate in the production, use, and enjoyment of IP.1 Every day, many people produce highly beneficial and extremely valuable IP, but because they are unaware of the IP rules, definitions, categories, and customs, or had no voice in the adoption of those rules, definitions, categories, and customs, they are unaware that they have produced IP, how valuable that IP is, or how to protect, exploit, or otherwise benefit from these intellectual achievements and accomplishments. This is often the case for members of marginalized groups and communities, many indigenous peoples, and developing nations. The purpose of this “Layperson’s Guide” is to demystify the words “intellectual property” and the laws which govern IP production and use, through a succinct and plain language explanation of the subject. As indicated by its title, this prolusion has been written for the layperson – from the artist to the clergyman, from the small business owner to the social activist, from the student to the politician – for anyone seeking economic or social or political advancement and empowerment for themselves or for their community. In today’s global information society, production and use of IP is vital to the achievement of these goals. The following discussion is divided into two parts. The first part briefly describes the five main types or categories2 of IP and summarizes the basic rules and procedures for owning, protecting, and exploiting your IP. The second part briefly discusses the importance of IP to personal and communal self-determination, economic advancement, and socio-political empowerment.

i. what is intellectual property (a “plain language” summary . . .) The basic categories of IP are relatively easy to understand and will likely be surprising as you discover how much IP you already own. There are five main kinds of IP recognized in the United States, most Western nations, and in many other countries around the world: (1) trade secrets, (2) patents, (3) copyrights, (4) trademarks, and (5) publicity rights. Each kind of IP has specific characteristics and, in some cases, certain administrative steps (such as filing registration 1

2

For example, as Professor Jamar explains in his chapter considering the question of IP protection for artificial intelligence (AI), given the increasing prevalence of AI in daily life, it is important that social justice obligations and effects be considered in deciding what legal rights and obligations should be extended to the producers of AI, in order to ensure that AI is used to benefit people and society properly and fairly. What Is Intellectual Property, World Intellectual Property Organization, https://www.wipo.int/about-ip/en/. There are other special types of IP which also receive some protection, including semiconductor chip designs (maskworks), so-called design patents, specialized treatment for biological patents, boat hull design, and more, that are not included in this introduction.

Published online by Cambridge University Press

A Layperson’s Guide to IP Law

xxix

papers with the appropriate governmental agency, much the same as filing the deed to a house) that must be followed in order to claim legal ownership over it or to restrict others from using or exploiting it.3 Once the appropriate administrative steps have been taken, the owner of the IP gains certain legal rights, which vary according to the type of IP involved. The specific characteristics, any required administrative steps, and the accompanying legal rights for each type of IP are briefly summarized below. A. Trade Secrets Trade secrets are the oldest form of IP, dating back at least 4,000 years. A trade secret is any secret, valuable information used in a business, which provides an actual or potential competitive advantage. Perhaps the most familiar examples of trade secrets include typical types of business information such as manufacturing processes and secret formulas (like the formula for Coca-Cola), as well as financial information, customer lists, and marketing strategies. Other common – albeit perhaps less familiar examples – include secret cooking recipes, home remedies, and hair and nail care techniques, when these secrets are commercially exploited, such as when they are used in a business. Unlike some other kinds of IP, there are no special legal or administrative steps or registration process that one must follow in order to own and protect a trade secret – all that is needed is that the owner takes proper measures to keep the otherwise qualified information secret. For example, keeping your business’ secret recipe in a locked drawer or maintaining your customer lists and information in a posted “restricted access” area would generally qualify as appropriate efforts to keep the information secret. At the same time, if you need to disclose your trade secret to your employees or others in order to conduct your business, you need only have them sign confidentiality and nondisclosure agreements to protect the trade secret status. You should also include “noncompetition” provisions in your agreements, through which the persons to whom you disclose your trade secret agree not to use the information for their own benefit (for example, later using your trade secret in their own competing business). The owner of a trade secret is protected from misappropriation of the trade secret, which is the unauthorized taking, disclosure, or use of the trade secret. Examples of misappropriation of a trade secret include obtaining it by dishonest means, such as by stealing a document or breaking into a file cabinet, or where the owner disclosed the secret in exchange for a promise (such as the signing of a confidentiality agreement) that it would be kept secret and the promisor subsequently breaks that promise. However, if the information is made public by the owner, even by mistake, it generally loses its status as a trade secret. To defend against a lawsuit for trade secret misappropriation, the person who obtained the information can argue that the information was already generally known or that the information was obtained through proper means such as through their own independent research or through “reverse engineering,” that is by buying a product and then analyzing it to discover its ingredients or chemical composition, or inner workings, depending on the type of product at issue.4

3

4

For information on how to protect your IP see Sue A. Purvis, The Fundamentals of Intellectual Property for the Entrepreneur, http://www.uspto.gov/about/offices/ous/121115.pdf; see also World Intellectual Property Organization, http://www.wipo.int/about-ip/en/index.html#ip. For a detailed discussion of trade secret and the accompanying social justice objectives, obligations, and effects, see Steven D. Jamar, Trade Secrets from an Intellectual Property Social Justice Perspective, ch. 7 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

Published online by Cambridge University Press

xxx

Lateef Mtima

B. Patents Patents protect useful innovations, typically referred to as inventions, that fit into at least one of the following four categories: (1) machines, (2) chemical compounds, (3) articles of manufacture (such as a car battery), and (4) methods or processes for performing tasks or manufacturing products (such as the chemical formula for producing a particular drug or the process for manufacturing lithium-ion batteries for cars). An invention, including an improvement upon a pre-existing technology, is eligible for patent protection only if it is (1) useful, (2) new or “novel,” and (3) nonobvious (which is the opposite of “obvious” and thus means “not-obvious”) to someone who is generally skilled in the area of the invention. To qualify for a patent, all three of the foregoing requirements must be satisfied. To be considered useful, an invention simply has to do something, such as a machine that grinds a substance into powder, or a chemical compound that helps you to sleep. To determine whether an invention is also new or novel and nonobvious, it is necessary to review or “examine” the inventions which already exist, which in patent terms are referred to as the “prior art.” If the invention is already present in the prior art, then it is not new and not eligible for a patent. If the invention is merely a trivial variation upon something in the prior art, while it might be “new” in the sense that no one has done it before, it might be considered “obvious,” and therefore not patentable. For example, if someone invents a machine that grinds peppercorns into powder, that invention would be useful, and if that grinding method is not already in the prior art, it will also be new and nonobvious. Afterwards, if another person designs a peppercorn grinding machine which works on the same principles as the first, and just adds a set of smaller grinding gears to produce a finer powder, the resulting machine would be useful and arguably even “new,” but the addition of the smaller gears would likely be considered “obvious,” and consequently this later machine would not be patentable. In order to obtain a patent, the inventor must follow a formal governmental application process referred to as “patent prosecution” (which has nothing whatsoever to do with criminal prosecutions – it is just an archaic term which is still used in the patent area). The process of applying for a patent and following the application through to the end (patent prosecution) involves the preparation of a detailed application which describes the invention, explains how to make and use it, and states which of its specific features are claimed to be innovative or inventive (or new or novel). The application is filed with the patent office, together with the appropriate fees, and the invention is then considered to be “patent pending.” If the invention satisfies the three requirements described above (useful, novel, and nonobvious), the patent office issues a patent, which generally lasts for 20 years.5

5

In the United States the application is filed with the United States Patent and Trademark Office for a fee. See Patent Process Overview, United States Patent and Trademark Office, https://www.uspto.gov/patents/basics/patentprocess-overview (last modified Jul. 29, 2021, 07:48 a.m.). Patent prosecution can be lengthy and expensive. For a detailed discussion of patents and the accompanying social justice objectives, obligations, and effects, see Shubha Ghosh, Patenting Custom Fit, Aspiring for Social Justice, ch. 25 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); see also Debora Halbert & Billy MeinkeLau, Intellectual Property and Social Justice Futures, ch. 24 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). In light of the expense and limited duration of patent protection, some inventors choose instead to protect their inventions as trade secrets. Steven Jamar explores some of the challenges involved in meeting the detailed description requirement in connection with innovations in the field of AI. See Steven D. Jamar, A Social Justice Perspective on Intellectual Property Protection for

Published online by Cambridge University Press

A Layperson’s Guide to IP Law

xxxi

A patent prevents others from making, using, selling, or importing the invention (meaning that you can’t get around the patent by asking someone to make the invention for you outside of the country and then bring it into the country.) Unauthorized engagement in any of these acts constitutes patent infringement. To defend against a lawsuit for patent infringement, a defendant can argue that its conduct does not fall within the scope of the inventive claims of the patent, meaning that its product or device is significantly different from the patented invention. Alternatively, the defendant can argue that the patent office made a mistake in issuing the patent in the first place; for example, that the office overlooked prior art which shows that the invention had already existed when the patent application was filed, and thus the patent is invalid and unenforceable. C. Copyrights Copyright protects original, creative expression, such as a story, song, or a drawing, once it becomes “fixed in a tangible medium,” meaning put on paper, computer disk, or canvas, for example. Under the copyright law, a work is considered original so long as it has not been copied from someone else; consequently, two authors who unknowingly come up with the same exact lines of verse would have each produced original expression within the meaning of copyright law. The level of creativity necessary for the original work to be eligible for a copyright is very minimal. Determining that the work is sufficiently creative for copyright does not entail an assessment of artistic merit or quality; almost any personal choice of wording, sounds, colors, materials, etc. will reflect at least minimal creativity and thus will satisfy this requirement. Examples of copyrightable expressive works include literary, dramatic, musical, photographic, cinematic, and other artistic material. Other kinds of expressive works include educational and instructive materials, including newspaper articles, sermons, gospels, textbooks, recipe books, instruction manuals, and even computer software programs (which are essentially sets of instructions written for computers, much the same as instructions can be written for human beings) are also copyrightable. Just as artistic works express or describe aesthetic ideas, these other works express or describe factual concepts or information, and copyright protects all kinds of creative expression, whatever the subject. Whether the work is artistic or informational, however, copyright protection extends only to the author’s individual expression (for example, the specific sentences) and not to the underlying idea or factual information embodied within the work. For example, in a copyrighted novel about gunfighters in the Old West, the copyright covers the author’s specific wording but not the idea of gun-fighting in the Old West; others are free to write their own Old West stories, so long as they tell them in their own words. Unlike patents, copyright protection arises upon fixation of the expression (once the words have been written down or typed into a computer or dictated onto a recording device) without the need for formal registration. Nonetheless, registration of the work with the United States Copyright Office is required before a copyright can be enforced in court.6 Also, unlike patents, copyright registration is easy and inexpensive – typically the applicant simply fills out a registration form which describes the work and submits it with a relatively nominal registration fee

6

Artificial Intelligence Programs, ch. 18 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). United States Copyright Office, https://www.copyright.gov; see also Copyright in General, United States Copyright Office, https://www.copyright.gov/help/faq/faq-general.html#automatic; Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC., 139 S. Ct. 881, 888 (rejecting the “application approach” to copyright litigation and holding that a work must be registered with the U.S. Copyright Office before infringement litigation can be filed).

Published online by Cambridge University Press

xxxii

Lateef Mtima

(ranging from $45 to $95 for most types of works). Copyright generally lasts for the life of the author plus 70 years. A copyright provides the copyright holder with certain legal “exclusive rights,” meaning that no one is permitted to engage in these uses of the work without the author’s permission. These exclusive rights include the right to make a copy or distribute (e.g., sell) copies of the work; to perform or display the work in public; or to prepare a derivative version of the work (such as making a sequel, or making a collage which includes a copyrighted photograph). Engagement in any of the exclusive rights without permission constitutes copyright infringement.7 To defend against a lawsuit for copyright infringement a defendant can argue that the work is not copyrightable (that is, the work is not original or creative) or that the conduct complained of does not infringe any of the exclusive rights. (“What I did was not an act of reproduction of the copyrighted work”.) In most countries, including the United States, defendants can also argue that they are permitted to engage in the author’s exclusive rights without her permission under legal doctrines such as “fair use” or “fair dealing,” or under other rules typically referred to as “limitations and exceptions” which permit unauthorized uses for important public purposes, such as academic or journalistic uses.8 D. Trademarks Trademarks are words, symbols, colors, phrases, designs, sounds, or combinations of these which are used to identify the source of goods or services, and to distinguish the goods and services of one seller from those sold by others. A trademark conveys an expectation of a certain quality (or lack thereof ) of the goods or services produced by that source. A good example is the brand burnt by a cowboy to mark the cattle from a particular ranch – it tells you which ranch the cattle came from (and if you’re happy with the quality of the cattle, where you can get more of the same). To function as a source identifier and qualify as a trademark, the mark must be “distinctive,” which means that the mark must adequately identify and distinguish the source of the service or goods, as opposed to merely describing the product. For example, the word “banana” would not be distinctive for selling bananas, because it describes the product as opposed to identifying its source, whereas “Chiquita” is distinctive for selling bananas, as in “Chiquita Bananas,” because it identifies the source of the bananas as those sold by the Chiquita Company. Trademark law recognizes the following spectrum of distinctiveness, from the most distinctive (which receives the strongest trademark protection) down to no distinctiveness (which receives no trademark protection): (1) inherently distinctive or fanciful (for instance, “Kodak,” a term that was made up to identify the product source) or arbitrary (for instance, “Apple” for selling computers is considered 7

8

For a detailed discussion of copyright protection and some of the social justice objectives, obligations, and effects that arise in connection with musical works, including the history of racial inequity in the music industry, see Robert F. Brauneis, Copyright, Music and Race: The Case of Mirror Cover Recordings, ch. 9 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Seán M. O’Connor, The Lead Sheet Problem in Music Copyright, ch. 14 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). For a detailed discussion of the fair use doctrine and its role in fulfilling certain social justice objectives, obligations, and effects of copyright protection, see Krista L. Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Elizabeth L. Rosenblatt, User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks, ch. 16 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Jonathan Band & Brandon Butler, Libraries, Copyright Exceptions, and Social Justice, ch. 17 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

Published online by Cambridge University Press

A Layperson’s Guide to IP Law

xxxiii

arbitrary because an apple has nothing to do with a computer); (2) suggestive (for instance, “Grameen,” which means rural, for banking services for impoverished villagers in Bangladesh); (3) descriptive (for instance, “Daily News” for newspapers, which describes that the newspaper is published daily); and, finally (4) generic, which applies to terms that have no distinctiveness and cannot serve as a trademark (i.e., “banana” for bananas, “chair” for chairs, etc.). Although registration is not necessary to create and use a valid trademark, registering the mark with the United States Patent and Trademark Office provides several important and sometimes even critical rights. For example, the first to register a trademark is generally entitled to the trademark. Registration is accomplished by submitting the trademark to the Trademark Office, specifying the goods or services with which it is associated (for example, Coca-Cola for soft drinks), and paying the appropriate fee.9 If no one else has already registered the trademark, or has registered a trademark that is confusingly similar, the registration is granted, which lasts 10 years, but can be renewed, in theory, forever. Registering a brand name as a trademark can provide a valuable business asset to both startups and established major corporations alike. For a small business owner, a trademark can help customers to locate you, whether in the bricks and mortar world or on the Internet. A trademark can also provide protection from unscrupulous competitors seeking to mislead the public. The problem of counterfeit goods provides a good example. A counterfeit Rolex sold on many street corners bears the same mark and is the same product (well, it is a watch and looks the same), but it comes from a false source, i.e., not from the real Rolex company. Unwary consumers recognize the brand name and are deceived into believing that they are purchasing the genuine article. Another example would be using “Rohlex” or “Ralex” to sell watches, which would also likely confuse some consumers into believing that they are buying Rolex watches. By registering the brand name Rolex as a trademark, the trademark owner can prevent these kinds of misleading business practices. A trademark owner can prevent others from using the trademark or a confusingly similar mark in connection with similar products by bringing a lawsuit for trademark infringement. In a trademark infringement suit the key issue weighed by the court is whether it is likely that consumers will be confused if the defendant is allowed to use the same or a similar mark. To defend against a trademark infringement lawsuit, a defendant can argue that the trademark is not the same as or is not confusingly similar to that of the trademark owner. In addition to protecting their trademarks from trademark infringement, the owners of famous trademarks can also prevent others from “diluting” their marks. For example, the use of the trademark brand name “Toyota” to sell breakfast cereal could be prevented under the dilution right, even though no one would be confused into thinking that the auto manufacturer had manufactured the cereal.

9

Trademark Process, United States Patent and Trademark Office, https://www.uspto.gov/trademarks/basics/trademarkprocess#step1. For a detailed discussion of trademarks and the accompanying social justice objectives, obligations, and effects, including the use of racial slurs and stereotypes as trademarks, see Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law, ch. 2 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Hannibal Travis, Trademarks, Legal Remedies, and Social Injustices, ch. 6 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Mariana Bernal Fandiño, Controversial Trademarks: A Comparative Analysis, ch. 21 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

Published online by Cambridge University Press

xxxiv

Lateef Mtima

E. Publicity Rights Many countries recognize a fifth kind of IP, referred to as the right of publicity or publicity rights.10 The right of publicity protects a person from the unauthorized commercial use of her name, likeness, or other recognizable attributes. Obvious examples include the use of a person’s name or photograph on a product or in an advertisement, but the right also precludes more creative or complex uses, such as the unauthorized creation and use of a college athlete’s likeness or avatar in a computer video game. Similar to trade secrets, no government registration process is required to protect or enforce the right of publicity. To defend against a lawsuit for infringement of the right of publicity, a defendant can argue that the activity does not involve any likeness or recognizable attribute of the plaintiff. A defendant can also argue that her conduct is protected by the First Amendment, such as when the defendant refers to the person whose likeness was used in a newspaper story or even in a novel. In these cases, the court will have to balance these competing rights of the publicity rights holder and the person using her likeness, which can make the outcome very difficult to predict.11

ii. . . . and why you should care about it The ways in which IP is vital to health, learning, and general well-being are self-evident. Intellectual property can also be important to individual and communal economic empowerment and socio-political self-determination. The owner of IP can exploit her property commercially and thereby benefit financially, for example by starting a business through which she can sell her creations, such as a book or a musical composition. The IP owner can sell directly to the public in her own bricks and mortar store or through a website online or both.12 More typically, IP owners grant permission to others, typically through licenses, to sell their products. Under these licenses, the company which has the resources to mass produce and distribute products is granted permission to do so in exchange for which the IP owner receives a fee, usually a royalty payment for each item sold. For example, an amateur cook who comes up with a secret recipe for a delicious new barbeque sauce can choose to license a company permission to produce and bottle the sauce in mass quantities for sale in major supermarkets. Intellectual property such as blogs, books, vlogs, and much more can be critical to raising awareness in and organizing communities to protect their civil rights and other legal and political interests. Today the Internet provides unprecedented access to copyrighted material such as news reports, photographs, and videos of events in real time. The ability to gain access to and to share such materials has been vital to the effectiveness of many grassroots socio-political movements, including Black Lives Matter, Arab Spring, and the Women’s March on Washington in 2017.13 10

11

12

13

Among the countries that recognize right of publicity or personality rights are the United States, Australia, Canada, Cyprus, Denmark, France, Germany, Greece, Guernsey, Hong Kong, Jamaica, People’s Republic of China, and Spain. See, e.g., M. Thomas McCarthy, The Rights of Publicity and Privacy 1–2.1 (2d ed. 2002). For a discussion of publicity and the accompanying social justice objectives, obligations, and effects, see Yolanda M. King & Lateef Mtima, Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice?, ch. 8 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Entrepreneurs who have products or services to sell that are not IP can also use IP to promote their businesses, for example, by adopting a trademark to distinguish their brands in the marketplace. For example, the owner of a barber shop can use a trademark to distinguish her barber shop from her competitors’. See Groom Guy, https://groomguy.com. Black Lives Matter, https://blacklivesmatter.com; Women’s March: Our Feminist Future, https://www .womensmarch.com; What is the Arab Spring, and How Did it Start?, Al Jazeera, Dec. 17, 2020, https://www .aljazeera.com/news/2020/12/17/what-is-the-arab-spring-and-how-did-it-start.

Published online by Cambridge University Press

A Layperson’s Guide to IP Law

xxxv

Unfortunately, many marginalized communities, indigenous peoples, and developing nations have more often been historically underserved and have been exploited to their detriment by the IP system than they have been able to exploit the IP system to their benefit. Many inventors and artists from such communities lack knowledge of the IP categories, laws, and administrative procedures.14 For those who are at least aware of some of this information, they often lack access to the financial and legal resources necessary to protect or commercially exploit their IP.15 As a result of decades of colonial domination, many indigenous peoples and developing nations had no voice in making the IP rules which are today prevalent throughout much of the world.16 Consequently, many of the creative and innovative achievements of these peoples and nations have been excluded from the protections currently extant in the global IP system. The overarching purpose of this book, to paraphrase the words of civil rights icon James Lawson, “is to help change this business”: to make the IP system more equitably accessible and inclusive, more socially responsive and just.17 With a basic understanding of IP, marginalized individuals and communities can achieve meaningful progress toward socio-economic independence, indigenous peoples can gain control over their traditional knowledge and cultural expressions, and developing nations can pursue their interests in the global marketplace on a more level playing field.18

conclusion Enabling the traditionally IP-underserved to gain a proper understanding of IP is the essential first step towards “changing this business.” But that is just a first step. As explored throughout the chapters of this book, a universally just and efficacious IP system can only be fully achieved

14

15

16

17

18

See, e.g., Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Zvi S. Rosen, Unequal Copyright in the Nineteenth Century, ch. 11 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries, ch. 23 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Deidré A. Keller & Anjali S. Vats, A Primer on Critical Race Intellectual Property, ch. 26 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See David J. Kappos, Karyn A. Temple, and James Pooley, Foreword, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). The creation of current global IP regimes, born out of Western-created groups and treaties (such as the World Intellectual Property Organization (WIPO) and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement), received little input from indigenous populations and representatives from formerly colonized countries until the IP systems were already in place. See WIPO – A Brief History, World Intellectual Property Organization, https://www.wipo.int/about-wipo/en/history.html. “When people are suffering . . . they don’t want rhetoric . . . they want direct participation. They want to be able to say, ‘What I’m doing here gives me power and is going to help us change this business.’” James Lawson, civil rights activist and Dr. Martin Luther King’s advisor on nonviolent protest stratagems, as quoted in Juan Williams, Eyes on the Prize: America’s Civil Rights Years 1954–1965 123 (1987). A number of specific “IP empowerment” proposals are offered throughout this volume. See J. Janewa Osei-Tutu, Intellectual Property, Social Justice, and Human Development: Empowering Female Entrepreneurs Through Trademark Law, ch. 20 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Ghosh, supra note 5; John Whitman, Intellectual Property Empowerment and Protection for Prisoners, ch. 12 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See generally Michael Golin, Driving Innovation: Intellectual Property Strategies for a Dynamic World 131–46 (2008); John Whitman, Education for the Social Economy, Business With a Difference 243–49, 251–56 (2012); Lateef Mtima, Intellectual Property, Entrepreneurship and Social Justice: From Swords to Ploughshares (2015).

Published online by Cambridge University Press

xxxvi

Lateef Mtima

when those who make IP law and policy acknowledge and actively work to implement the obligations to social justice that are inherent to the ultimate purpose of IP endeavor: the fulfillment of human potential toward the greater societal good.19 In order to maximize the social benefits that can be derived from IP, the IP system must be based upon fundamental principles of socially equitable access, inclusion, and empowerment.

18

See Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Peter S. Menell, Mapping the Intellectual Property/Social Justice Frontier, ch. 1 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); see also J. Janewa Osei-Tutu, Socially Responsible Corporate IP, 21 Vand. J. Ent. & Tech. L. 483, 490 (2018).

Published online by Cambridge University Press

Introduction: Intellectual Property Social Justice Theory: History, Development, and Description Lateef Mtima and Steven D. Jamar

Introduction I. Intellectual Property Social Justice Theory II. Traditional Utilitarian Property Rights Approach to Intellectual Property III. The Roots of IP Social Justice Theory IV. IP Social Justice-Oriented Jurisprudence V. Scholarly Initiatives: From Human Rights to Critical Legal Theory and Beyond VI. The Shift to IP Social Justice: Identifying Social Justice as Inherent in IP Regimes VII. The Impact of IP Social Justice Theory on the Global IP Regime Conclusion

page 1 2 4 6 7 9 12 15 18

introduction Throughout most of the twentieth century an exceedingly narrow interpretation and application of the utilitarian rationale for intellectual property protection dominated much of Western intellectual property (IP) law and policy.1 This was especially evident in the United States, wherein an economic incentive/commodification approach to IP social utility pervaded IP jurisprudence and scholarly discourse. In essence, that limited perception of the utilitarian economic incentive approach to stimulating IP endeavor, including among other things, the production of patentable inventions and copyrightable expressive works, was premised on the belief that IP endeavor is most effectively promoted by providing individuals with nearly absolute property rights in their IP output and the accompanying prospect of monetary rewards for their intellectual labors. Concomitantly, the commercial marketplace would not only determine the “rules of engagement” for IP production and dissemination, but also incentivize and determine the quality and quantity of IP output. Such an approach would result, by design, in IP innovators and creators devoting their energies to producing the kind of IP products that the public was willing to pay for, with little incentive to engage in “nonessential” IP activity unlikely to bring adequate economic returns. 1

See generally William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. Legal Stud. 325 (1989). For an in-depth analysis of economic models to promote IP innovation and output see Peter S. Menell & Suzanne Scotchmer, Economic Models of Innovation: Stand-Alone and Cumulative Creativity, in Research Handbook on the Economics of Intellectual Property Law 119 (Ben Depoorter, Peter Menell, and David Schwartz eds., 2019).

1 https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

2

Lateef Mtima and Steven D. Jamar

In the latter decades of the twentieth century and continuing through the first decades of the twenty-first century, some IP scholars as well as law and policymakers began to challenge this narrow assessment of the social function of IP in modern society. They argued that the overemphasis on the economic effects of IP endeavor had led to various conditions of IP-related social deficiency and injustice, from the lack of affordable access to healthcare and medicine throughout much of the developing world to the unchecked misappropriation of marginalized community creative expression by corporate and other mainstream actors in many developed nations. As IP became central to the pursuit of daily life across the globe, it became evident that a more socially responsive and balanced understanding of IP protection in the political economy would be needed to supplant the prevailing myopic and imbalanced economic incentive/commodification rationale.

i. intellectual property social justice theory IP social justice (IP-SJ) theory recognizes social justice as an inherent and essential obligation of the IP regime. IP-SJ theory treats IP protection as a social ordering mechanism through which society progresses by nurturing beneficent intellectual activity. As an innately “crowd-sourcing” enterprise, however, beneficial innovative and creative activity can only be maximized if the IP regime of law, policy, and administration explicitly addresses equitable access, inclusion, and empowerment of everyone to the maximum extent possible. Stated another way, the social utility function of IP protection (promoting socially beneficial creative and innovative endeavor) can only be fully achieved through recognition of its interdependent relationship with the inherent social justice obligations and effects of the IP legal regime (widespread and diverse contribution to and benefit from the IP ecosystem.) A well-designed regime of IP law and administration built upon an IP-SJ foundation insures socially equitable access to that IP ecosystem irrespective of wealth, class, race, ethnicity, group, or gender status. Such broad equitable access in turn empowers the widest possible network of minds and hearts to conceive, invent, express, share, and experience beneficent intellectual product. Socially just IP rights and their socially just application and enforcement guarantees not only access to the levers of IP power and empowers people to use them, but also insures the equitable inclusion of marginalized as well as developing world artists, inventors, researchers, educators, performers, entrepreneurs, and consumers to the benefit of society and culture generally. Furthermore, such an IP-SJ regime preserves everyone’s secular and other incentives to contribute and disseminate the fruits of their intellectual endeavors. Socially balanced exploitation of IP in accordance with IP-SJ principles helps equalize health and education standards, promotes socio-economic empowerment, and fosters universal respect for the IP system, including respect for the IP rights granted under it. IP S-J does not accept or tolerate the injustice and social indifference permissible under an IP system dominated by an economic incentive/commoditization rationale. IP-SJ instead advocates for the restoration of IP protection to its full and proper function in the total political economy, as articulated in the U.S. Constitution itself under which Congress is granted the power: To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.2 2

U.S. Const. art. I, § 8, cl. 8. Accordingly, American IP law is based upon a positive utilitarian grant of authority, as opposed to a recognition of divine or natural rights on behalf of IP producers. Natural law-based IP regimes are built upon a view that law should reflect and incorporate and support human nature, which includes many values beyond economic ones and beyond property rights. As articulated in the Universal Declaration of Human Rights in 1949 and in

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

Intellectual Property Social Justice Theory: History, Development, and Description

3

The intention to use copyright and patent, which is what the IP clause covers, for the general progress and the good of society and culture writ large is evident in the language “promote the progress,” in the granting of rights for limited times after which the inventions or expressive works would be freely available, and in the Constitution’s preamble under which the constitution was established in part to “promote the general welfare.”3 IP-SJ thus recaptures and restores the moral and justice-producing dimensions of IP protection which had all but disappeared under the imbalanced treatment of IP as merely an economic tool, which improperly dominated IP discourse and policy for more than half a century.4 But there is more to IP-SJ than just a rebalancing of perspectives and foundational ideas of IP regimes. Not only does it move away from a nearly exclusive focus on economic considerations, but rather a fundamental IP-SJ tenet is that the equitable participation of all members of society is essential to achieving the most propitious qualitative and quantitative outcomes. IP-SJ is not merely about restoring a balance and is not merely about changing the substantive aspects of IP regimes to be more socially just; it is also about enhancing the very economic benefits and other values the prior theory sought to achieve through its exclusively or almost exclusively favoring narrowly conceived economic values and personal property rights over other proper interests. As one of us wrote previously: Intellectual property social justice occupies a unique space in the IP social reform discourse. Whereas the predominating [IP scholarly] reformist rhetoric confronts the challenge as one of importing pertinent social values into the IP regime, intellectual property social justice eschews any implicit conceptualization of intellectual property protection as inherently devoid of noneconomic/socially benign objectives . . . Intellectual property social justice regards the values of equitable access, inclusion and empowerment as essential and indeed intrinsic to the enterprise. From this perspective, intellectual property social justice confronts “IP law and economics” extremes as promoting and perpetuating socially wasteful inefficiencies in the contemporary intellectual property protection apparatus.5

3

4

5

the subsequent instantiation of that declaration in the International Covenant on Civil and Political Rights and in the International Covenant on Economic, Social, and Cultural Rights, which both recite in their preambles the natural rights foundation of all human rights: “Considering that, in accordance with the principles proclaimed in the Charter of the United Nations, recognition of the inherent dignity and of the equal and inalienable rights of all members of the human family is the foundation of freedom, justice and peace in the world,” “Recognizing that these rights derive from the inherent dignity of the human person.” An approach to IP that treats social justice attributes of access, inclusion, and empowerment of people as an inherent attribute of any fully legitimate IP regime obviously fits hand-in-glove with a natural-rights based IP regime. U.S. Const. Preamble. See also Mason Marks, People Are the Lifeblood of Innovation, ch. 4 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Of course, the Constitution as whole supported slavery and the United States has not lived up to its aspirations contained in its founding documents and Reconstruction Amendments; it is, to put it charitably, still a work in progress. But these flaws do not negate the constitutional purpose of IP law to benefit society generally, which encompasses that the core idea, that IP exists not to make a few wealthy, but rather the making and dissemination of IP exists to benefit everyone. Provision of an economic incentive by granting the IP rights for limited times is the means, not the end. See, e.g., Anne Flanagan & Maria Lilla Montagnani, Intellectual Property Law: Economic and Social Justice Perspectives xi, xiii (2010) (“Not properly questioning the utilitarian approach and its incentives-to-innovate rationale . . . results in the failure to account adequately for the increasing importance of IP to situations and persons beyond the customary and historical, and that IP implications extend far beyond maximizing cultural and scientific progress . . . [C]onsideration must be given not only to the economic-oriented incentive dimension of IP laws, but also to the regulatory dimension in terms of social goals that can be achieved through their construction . . . if IPRs are truly to be granted for the ultimate goal of welfare maximalization); Lateef Mtima & Steven D. Jamar, Fulfilling the Copyright Social Justice Promise: Digitizing Textual Information, 55 N.Y.L.S. L. Rev. 77, 89–93 (2010); Hannibal Travis, Copyright Class Struggle, 10–14 (2018). See Lateef Mtima, Intellectual Property, Entrepreneurship and Social Justice: From Swords to Ploughshares 266 (2015).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

4

Lateef Mtima and Steven D. Jamar

This introductory chapter charts the history and development of IP-SJ theory from its roots in judicial decisions in which courts attempt to balance competing IP social interests to the more recent scholarly entreaties for a more socially responsible and just IP legal regime. Although often subordinated to IP commodification interests, the social equipoise of the IP ecosystem has always been essential to its effectiveness. As the social justice perspective of IP protection continues to gain prominence and is applied to IP law and administration, the extant IP regime will be properly realigned to maximize its social efficacy.

ii. traditional utilitarian property rights approach to intellectual property The economic incentive/commodification perspective toward IP protection reached its apogee in the late twentieth century. The prominent place given to IP issues in trade treaties at all levels, broadly international treaties, e.g., TRIPS,6 regional treaties, e.g., NAFTA,7 and bilateral treaties and agreements, e.g., USCO Agreement,8 both exemplify and reinforce the economics-first model. It comes as no surprise that one of the main proponents, if not the main proponent, of the movement to export the economic incentive/commodification approach was the United States because the economic incentive/commodification approach to IP social utility dominated IP jurisprudence and scholarly and policy discourse there.9 Although this myopic view of the purpose of IP protection in the political economy did help to promote a robust IP ecosystem in the United States and similarly situated Western nations, the resulting ecosystem was flawed particularly with respect to creating and then ignoring systemic conditions of IP social injustice.10 One of the most stark examples of the resultant social disconnect is the tragic history of African American and other marginalized groups being

6

7

8

9

10

Trade-Related Aspects of Intellectual Property, part of the Uruguay Round (1986–1994) of negotiations leading to the creation of the World Trade Organization, Marrakesh Agreement Establishing the World Trade Organization (1994). The TRIPS Agreement is Annex 1C of the Marrakesh Agreement. See Zehra Betül Ayranci, Intellectual Property Social Justice on the International Plane, ch. 19 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). North American Free Trade Agreement (1994), updated and renamed United States–Mexico–Canada Agreement (2020). United States–Colombia Free Trade Agreement, 2012; Marcela Palacio Puerta, The Role of Nonrightsholders Advocates and Academics in Achieving Social Justice Balance in Copyright: The Case of Colombia, ch. 22 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Michael Palmedo & Srividhya Ragavan, The U.S. Posture on Global Access to Medication & the Case for Change, 16 NALSAR Stud. L. Rev. 2, 3–4, https://ssrn.com/abstract=3838856 (notwithstanding the fact that article 31 of the TRIPS Agreement explicitly “permits a range of negotiated flexibilities during a public health crisis to prevent intellectual property becoming a barrier to public health,” the USTR Special 301 Report routinely accuses developing countries which make use of these agreed upon flexibilities of failing to protect IP rights. The USTR then “applies direct and indirect pressure through trade negotiations and preference systems in order to win policy changes favored by U.S. IP-owning stakeholders in the identified countries”). See also Michael Palmedo, Unilateral Norm Setting Using Special 301, in Intellectual Property Law and Access to Medicines: TRIPS Agreement, Health, and Pharmaceuticals 274 (Srividhya Ragavan & Amaka Vanni eds., 2021). Srividhya Ragavan & Amaka Vanni, Access to Medicines and TRIPS Agreement: A Mapping of the Tradescape, in Intellectual Property Law and Access to Medicines: TRIPS Agreement, Health, and Pharmaceuticals 1 (Srividhya Ragavan and Amaka Vanni eds., 2021) (“For many developing countries . . . the TRIPS Agreement prescribed a higher standard [for IP rights] than previously allowed in their national laws such as longer terms, broader rights, and fewer exceptions to the scope of rights . . . [T]he World Trade Organization’s . . . global patent prescription largely created a privileged societal class with access to lifesaving medication, distinguishing them from those excluded from access to available medications”). See also Srividhya Ragavan, World Trade Organization: A Barrier to Global Public Health?, https://ssrn.com/abstract=3709643.

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

Intellectual Property Social Justice Theory: History, Development, and Description

5

systematically defrauded out of the commercial profits derived from their creative genius.11 Often unaware of the opportunities and protections afforded by the IP law, and sometimes simply lacking the legal or economic resources to secure and enforce their rights, these artists saw their rightful rewards misappropriated by white artists, publishers, entrepreneurs, and promoters, and sometimes even academics and scholars, all of whom possessed the necessary knowledge of the IP systems and who had access to the financial and racial capital essential to commercial development and exploitation of artistic works.12 It is probably impossible to tally, much less make reparation for, the billions of dollars stolen from African Americans and other marginalized artists and entertainers through the unauthorized and inequitable exploitation of their aesthetic genius and the manipulation of copyright law.13 From the annals of jazz to tap to rock and roll, many of the actual originators of some of America’s most significant art forms languished in poverty and perished in obscurity, while their white imitators enjoyed fame, riches, and unearned places in history.14 11

12

13

14

See, e.g. K.J. Greene, “Copynorms,” Black Cultural Production, and the Debate Over African-American Reparations, 25 Cardozo Arts & Ent. L. J. 1179, 1180–81 (2008) (“The institutional music industry has resorted to copyright infringement lawsuits to stem massive Internet piracy in recent years. [T]he ‘copynorms’ rhetoric the entertainment industry espouses shows particular irony in light of its long history of piracy of the works of African-American artists, such as blues artists and composers. For many generations, black artists as a class were denied the fruits of intellectual property protection – credit, copyright royalties and fair compensation. Institutional discrimination teamed with intellectual property and contract law resulted in the widespread under-protection of black artistic creativity. Similarly, black inventors created technical and scientific works that impacted early American industries. Evidence exists that black inventors also faced similar divestiture in the industrial marketplace. The mass appropriation of the work of black artists and inventors reflects the systemic subordination based on race that characterized most of U.S. history”). See Neela Kartha, Digital Sampling and Copyright Law in the Social Context: No More Colorblindness!! 14 U. Miami Ent. & Sports L. Rev. 218, 219–23 (1997); see also John Collis, The Story of Chess Records 117 (1998); James Lincoln Collier, The Making of Jazz: A Comprehensive History 106 (1978); Evans C. Anyanwu, Let’s Keep it on the Download: Why the Educational Use Factor of the Fair Use Exception Should Shield Rap Music from Infringement Claims, 30 Rutgers Computer & Tech. L.J. 179, 181–82 (2004); Olufunmilayo B. Arewa, Copyright on Catfish Row: Musical Borrowing, Porgy and Bess and Unfair Use, 37 Rutgers L.J. 277, 350–51 (2006); Leslie Espinoza & Angela P. Harris, Afterword: Embracing the Tar-Baby-LatCrit Theory and the Sticky Mess of Race, 10 La Raza L.J. 499, 512–13 (1998); Henry Self, Digital Sampling: A Cultural Perspective, 9 UCLA Ent. L. Rev. 347, 352–53 (2002). See Greene, supra note 11, at 1183–84 (“Black artists did not share rewards commensurate with their enormous creativity. From an economic perspective, black artists sustained losses through deprivation of copyright protection that would constitute a massive sum”); K.J. Greene, Intellectual Property at the Intersection of Race and Gender: Lady Sings the Blues, 16 Am. U. J. Gender Soc. Pol’y & L. 365, 381 (2008); Kartha, supra note 12, at 234. Nelson George, The Death of Rhythm ‘n’ Blues 108 (1988) (“Blacks create and then move on. Whites document and then recycle. In the history of popular music these truths are self-evident”); Greene, supra note 11, at 1184–85, 1188–89 (“In the context of cultural production, Ellisonian invisibility is concrete in all its bitter irony. In the face of prolific and innovative Black musical creativity, ‘Whites [in the 1920s] often vehemently denied that African Americans had made any contribution to the creation of jazz. New Orleans “Dixieland” musicians . . . made it a point of honor never to mix with Black musicians or acknowledge their talents.’ In later years, it was widely conceded that ‘though African-Americans had certainly invented ragtime and jazz, these musical styles were being brought to their highest levels by [White] outsiders’” (quoting Burton W. Peretti, Jazz in American Culture 42–43 (1993)); Kartha, supra note 12, at 232–34 (“The compulsory license made it possible for white artists to shanghai the AfricanAmerican songbook. Pat Boone was notorious for covering Little Richard’s music, and eventually, songs ‘by niggers for niggers’ realized a catalog value as great as those of Tin Pan Alley tunesmiths. Another unfortunate reality was that the Black songwriters and performers did not always understand the value of publishing rights which ended up being owned by white record companies. A great deal of revenue was generated by white groups covering Black hits. Eric Clapton is an excellent example of an artist who reached long term fame using a lot of unoriginal music and styles taken from Black artists. When he was with John Mayall’s Bluesbreakers he recorded (blues artist) Freddie King’s ‘Hideaway,’ Otis Rush and Willie Dixon’s ‘All Your Love,’ Robert Johnson’s ‘Ramblin’ On My Mind,’ and later, with the rock group Cream, he recorded ‘Crossroads,’ another Robert Johnson song. When he was with Derek and the Dominos he recorded Willie Dixon’s ‘Evil,’ Elmore James’s ‘The Sky Is Crying,’ and later in his solo career he

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

6

Lateef Mtima and Steven D. Jamar

Many inventions by African Americans were similarly expropriated and exploited. Whether through denial of recognition, rightful revenues, or in many cases both, the systemic experience of Black innovators in the IP ecosystem was not one that rewarded or encouraged these inventors to participate in exploiting their IP.15 The commoditization approach to IP has also led to a lack of investment in meeting society’s “noncommercial” IP needs. While there has been little advancement in treatments and cures for “limited market diseases” such as sickle cell anemia, the commercial marketplace is replete with treatments for male pattern baldness and erectile dysfunction. Throughout the developing world, the inability to afford First World prices for patented life-saving drugs has resulted in the widespread lack of access to healthcare and, indeed, in many instances, access to life itself.16 The need to rebalance the theory underlying our approach to crafting an inclusive and equitable IP ecosystem is thus obvious. Our response, IP-SJ theory, takes a significant step toward meeting the need.

iii. the roots of ip social justice theory Despite the dominant economic property rights-focused utilitarian approach toward IP rights that was ascendant in the second half of the twentieth century, it did not reach quite as far as its strongest absolute property rights advocates sought. Its basic bias for economic-based IP theory notwithstanding, certain limits on IP rights in the public interest continued to be recognized. In copyright fair use was still protected as was fair use of trademarks. Works in the public domain were generally protected as well. But the property rights-first mentality had many successes including extending copyright terms and patent terms. Even fair use got twisted away from its

15

16

imitated reggae music. He recorded some music in Jamaica (not including ‘I Shot the Sheriff’) where he recorded Peter Tosh’s ‘Whatcha Gonna Do.’ How would Eric Clapton’s career fare under a ‘total concept and feel’ analysis like that set forth in Roth Greeting Cards v. United Card Co.?”). See Keith Aoki, Distributive and Syncretic Motives in Intellectual Property Law (With Special Reference to Coercion, Agency and Development), 40 U.C. Davis L. Rev. 717, 740–41 (2007) (“[B]ecause of the historical realities of race and slavery, the extent of th[e] beneficial distributive impact [of the patent system] on black inventors was illusory at best . . . The early American patent system beckoned many poor white inventors to achieve wealth and recognition through a quasi-egalitarian patent system that facilitated investment in their lucrative ideas. The same opportunities did not await black inventors, whose contributions white society tended to ignore when the commercial value of a black invention was uncertain. In cases where commercial promise was more readily apparent, black inventions were subject to appropriation without attribution. State laws governing property and contract expressly precluded slaves from applying for or holding property. Presumably, this proscription included slaves being precluded from owning patents”); see also herein Kara W. Swanson, They Knew It All Along: Patents, Social Justice and Fights for Civil Rights, ch. 10 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Madhavi Sunder, From Goods to a Good Life: Intellectual Property and Global Justice 1 (2012) (“Intellectual property incentivizes pharmaceutical companies to innovate drugs that sell – hence we are flooded with cures for erectile dysfunction and baldness, but still have no cure for diseases that afflict millions of the poor, from malaria to tuberculosis, because these people are too poor to save their lives”); Jia Wang, Conceptualizing Copyright Exceptions in China and South Africa: A Developing View from the Developing Countries 13 (2018) (“[T]he US and the EEC used the threat of denying market access as a means to build the consensus required to shape the content of the TRIPS Agreement text . . . In the end, developed countries were able to push through higher levels of IP in the form of the TRIPS Agreement text. TRIPS proponents believed that the ability of the WTO to generate threats and the enforcement of retaliatory mechanisms compelled sovereign obedience”); Anupam Chander & Madhavi Sunder, Is Nozick Kicking Rawls’s Ass? Intellectual Property and Social Justice, 40 U.C. Davis L. Rev. 563, 574 (2007) (“Even if we are interested solely in spurring innovation, are we disinterested entirely in what kind of innovation we are spurring? Does it matter if the intellectual property regime fails to incentivize the creation of treatments for poor people’s diseases?”).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

Intellectual Property Social Justice Theory: History, Development, and Description

7

proper purposes by the creation and expansion of the idea of transformative use.17 By the end of the twentieth century and continuing into the twenty-first, scholars had begun critiquing the narrow economic incentive/commoditization rationale of IP protection, employing various theories to support the development of a more socially responsive global IP system. Collectively, they sought to usher in a new perspective toward IP protection, one which places IP as a social ordering function within the total political economy and indeed which recognizes IP’s social ordering function as integral to all sorts of social and cultural progress. This chorus of many voices from many perspectives sang that IP protection serves interests beyond economic utility. Indeed, unlike the narrow economic incentive/commoditization perspective which is at best agnostic toward the social justice impacts and obligations of IP, the new perspective – the perspective of IP-SJ (although called by other names at times) – seeks to balance the economic utilitarian perspective of IP protection with a perspective that also explicitly addresses the broader societal impacts IP protection brings. IP-SJ does not seek to eliminate IP protection nor economic considerations; IP-SJ seeks to make IP inclusive for all. Although the proposition that adherence to social justice is an inherent obligation of IP law is a relatively new idea in American IP discourse,18 it has roots in earlier efforts to circumscribe the unchecked implications of an excessive deference to rightsholders’ economic interests. Some solicitude toward the general public interest can be found in the copyright statutes themselves, and, more importantly for our purposes, in a wide variety of IP legal decisions which pre-date the introduction of IP-SJ theory as a separate field of IP legal scholarship, policy, and social activism. American courts have long accepted the responsibility of assessing and balancing IP rights with other cardinal interests to advance the greater societal good. And in the latter decades of the twentieth century, some scholars and policymakers pushed beyond considerations of the general public good and argued that the global IP regime should not be indifferent to pertinent social deficiencies and injustice. IP-SJ draws upon these rich and important antecedents, which are detailed in the ensuing sections.

iv. ip social justice-oriented jurisprudence Judicial decisions addressing the extent of IP protection in light of the public interest pre-date the development of IP-SJ theory as a well-developed field of IP legal scholarship and law and policy social activism. Unlike today where IP-SJ considerations and objectives are often articulated using the rhetoric of social justice explicitly in legal opinions,19 scholarship,20 and even in 17

18

19 20

Perhaps the most egregious case is that of Richard Prince stealing Patrick Cariou’s photos of Rastafarians in Jamaica and making burlesques out of them for commercial profit, an action sanctioned as proper by the Second Circuit when it overturned a correct lower court decision in favor of Cariou. Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013). The earliest law review symposia which expressly examine the social justice obligations of IP law appear to be Symposium, Intellectual Property and Social Justice: IP and Brown, 48 How. L.J. 571 (2005) and Symposium, Intellectual Property and Social Justice, 40 U.C. Davis L. Rev. 559 (2006). Collectively, these symposia anticipated and indeed helped instigate a seismic shift in IP scholarly discourse, in as much as they expressly introduce “social justice” terminology into the general IP lexicon and sparked the mapping of IP-SJ theory as a discreet and affirmatively aspirational rationale. See generally Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on Intellectual Property, Innovation, and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies: The Role of Law 78, 78–83 (Megan M. Carpenter ed., 2012); Madhavi Sunder, supra note 16, at 3 (2012); Mtima, supra note 5. See, e.g., The Authors Guild v. Google, Inc., 770 F. Supp. 2d 666, 679 (S.D.N.Y. 2011) See, e.g., Giovanni Battista Ramello, Access to vs. Exclusion from Knowledge: Intellectual Property, Efficiency and Social Justice, in Intellectual Property and Theories of Justice 73–93 (Axel Gosseries & Alain Marciano eds., 2008).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

8

Lateef Mtima and Steven D. Jamar

treaties and statutes,21 older support for IP-SJ considerations rarely employs the contemporary IPSJ lexicon.22 Regardless of the specific verbiage employed, both older and recent case decisions provide compelling evidence of a venerable tradition of addressing IP-related social issues through interpretation and application of IP legal doctrine. The courts have long understood that the core social function of IP protection is to promote the progress of the arts and sciences to society’s benefit, and that to achieve this goal it is necessary to balance the interests of all IP stakeholders properly – creators, distributers, users, and financiers alike. For example, in the United States, cases which involve the impact of IP protection upon consumer rights and public education often include analyses and dispositions relevant toward acknowledgment of the law’s social justice obligations generally and provide access as needed to support those interests while still protecting the rights of IP holders.23 Similarly, judicially developed doctrines which balance IP protection against the public access to the “public domain of ideas” also are built upon a conception of the social justice obligations of the IP law.24 In addition to supporting pan-IP concepts like public domain and idea exclusion, social justice considerations and obligations arise within specific forms of IP protection. For example, in copyright, courts are required to balance First Amendment rights25 and consumer first sale rights26 against copyright protection, and to evaluate users’ right under the fair use doctrine.27 Courts in such cases often explicitly consider social justice effects as part of the basis of the court’s ultimate disposition. Similarly, in patent law antitrust concerns in connection with patent misuse28 and “march-in” rights under the Bayh-Dole Act29 will typically include consideration and assessment of social impacts which sound in social justice. In the areas of trade secrets, considerations of employee

21

22

23

24

25 26

27

28 29

Topics of the European Union: Human Rights and Democracy, https://europa.eu/european-union/topics/ human-rights_en; Oskar J. Gstrein, Privacy as a Human Right in the European Union and the Global Internet (2017). See, e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558 (1985) (“The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in ‘Science and useful Arts’”) (quoting Mazer v. Stein, 347 U.S. 201, 209 (1954); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984) (“The limited grant is a means by which an important public purpose may be achieved. It is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired”). In re Napster, Inc. Copyright Litig., 2004 U.S. Dist. LEXIS 7236 (N.D. Cal. 2004). See also Krista Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Wang, supra note 16, at 29–31, 37–40. See, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930); Sales Strategies Grp., Inc. v. Fenton, 16 Misc. 3d 171 (N.Y. Sup. Ct. 2007). For an analysis of the IP law’s pervasive prohibition against the recognition of property rights in ideas as a means by which to minimize the advantages of socio-economic privileges in the race to develop ideas, see Lateef Mtima, The Idea Exclusions in Intellectual Property, 28 Tex. Intell. Prop. L. J. 343 (2020). Eldred v. Reno, 239 F.3d 372 (Copyright law and First Amendment rights). Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 350-51 (1908) (first sale rights). Jonathan Band and Brandon Butler, Libraries, Copyright Exceptions, and Social Justice, ch. 17 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (Fair use doctrine). An example of reconciling competing interests would be the doctrine of fair use in U.S. law or fair dealing in other systems under which some uses of copyrighted works are deemed noninfringing even if no permission is sought or obtained. An example of complementary interests would be the way in which providing some protection for expression of ideas serves to encourage the creation and dissemination of those ideas, which serves interests in free speech and the creation and dissemination of ideas that advance social, economic, and cultural development. Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (1990). Hochendoner v. Genzyme Corp., 95 F. Supp. 3d 15 (D. Mass. 2015) (“march-in” rights under the Bayh-Dole Act).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

Intellectual Property Social Justice Theory: History, Development, and Description

9

mobility, discouraging socially harmful business tactics,30 and requiring “clean hands” to invoke trade secret remedial action31 also exemplify social justice perspectives being used by courts in shaping IP law to fit some social justice concerns. Additional examples of court-developed social balancing doctrines include patent exhaustion32 and experimental use;33 trade secret reverse engineering34 and independent discovery35 rights; trademark nominative use;36 and the right of publicity relationship37 and transformation tests.38 More often than not, the need for such balanced doctrines became evident in disputes which involved the impact of IP protection upon consumers and on other user self-actualization interests. These challenges necessitated analyses and dispositions that recognize law’s social justice obligations generally.39 Regardless of the specific terminology used, a long chain of court decisions evidences a venerable judicial tradition of acknowledging and addressing IP-related social challenges through socially conscious interpretation and application of IP legal doctrine.40 These decisions collectively demonstrate that, although legal recognition of creator and innovator property interests is an essential means toward achievement of the IP regime’s overarching ends, neither these, nor any other constituent interests, enjoy either exclusivity or even primacy over the system’s ultimate purposes. In appreciating the breadth of the Constitutional IP directive, these courts thus laid the foundation for the eventual recognition of the symbiotic relationship between IP social utility and IP-SJ.

v. scholarly initiatives: from human rights to critical legal theory and beyond Although IP-SJ is not based upon any particular predecessor theory, it does grow out of earlier efforts by scholars addressing IP from various socially conscious perspectives. In the latter decades of the twentieth century scholars writing in the field of law and development addressed the role of IP law in economic, social, and cultural development.41 30

31 32 33 34 35 36

37 38 39

40

41

Bayer Corp. v. Roche Molecular Sys., 72 F. Supp. 2d 1111 (N.D. Cal. 1999) (employee mobility); Janse van Rensburg v. Minister van Handel en Nywerheid, 1999 (2) BCLR 204 (T) (S. Afr.) (harmful business practice). Rotary Sys. v. TomoTherapy Inc., 2014 Minn. App. Unpub. Lexis 1301 (2014) (“clean hands”/trade secrets). See Adams v. Burke, 84 U.S. 453, 456–57 (1873). See City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 135–36 (1877). See ILG Industries, Inc. v. Scott, 273 N.E.2d 393, 396–97 (Ill. 1971). See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 475–76 (1974). See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992); Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150–51 (9th Cir. 2002). See Rogers v. Grimaldi, 875 F.2d 994, 1002–1004 (2d Cir. 1989). See Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 808–11 (Cal. 2001). See, e.g., Sony Corp. of Am. v. Universal City Studios, Inc. 464 U.S. 417, 426–27, 429–32 (1984); Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013). See, e.g., Authors Guild, Inc. v. HathiTrust, 902 F. Supp. 2d 445, 448 (S.D.N.Y. 2012), aff’d, 755 F.3d 87 (2d Cir. 2014), wherein various research universities agreed to allow Google to scan books from their libraries to make digital copies accessible to the blind and visually impaired. Citing the Americans with Disabilities Act as reflecting a strong federal public policy to enhance opportunities for the physically disabled, the court held the unauthorized scanning permissible under the Fair Use doctrine. “Congress declared that our ‘[n]ation’s proper goals regarding individuals with disabilities are to assure equality of opportunity, full participation, independent living, and economic selfsufficiency for such individuals.’” 755 F.3d at 102. This explicit reference to federal disability law and policy as basis for its decision constitutes the use of social-justice principles of access, inclusion, and empowerment in defining the reach of copyright. Ultimately, these ideas would find acceptance in the construction of public international law and treaties. See Hiroyuki Odagiri et al., Intellectual Property Rights, Development, and Catch-Up: An International

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

10

Lateef Mtima and Steven D. Jamar

As IP permeated everyday life including work, education, health, and leisure throughout global society,42 some IP legal scholars began to demonstrate some of the inadequacies in the prevailing IP commodification paradigm and the law and economics theory of IP protection in addressing pressing societal concerns.43 Scholars, including Keith Aoki, Margaret Chon, Laurence Helfer, and Rosemary Coombe, among others, contended that IP protection performs a more complex function in society’s cultural, technological, and social well-being than merely mediating ownership rights and economic development. Accordingly, they argued that the IP ecosystem must accommodate considerations and values beyond property rights and economic concerns, including particularly human rights perspectives and ideas from law and development (which itself had been stretched beyond its original economic development focus).44

42

43

44

Comparative Study (2010). In 2012, we wrote a book chapter building on that work. See Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on Intellectual Property, Innovation, and Entrepreneurship, ch. 6 in Entrepreneurship and Innovation in Evolving Economies: The Role of Law (Megan Carpenter, ed., 2012). One of us had published in that space earlier, but was not among the progenitors of the ideas. Steven D. Jamar, A Lawyering Approach to Law and Development, 27 N.C. J. Int’l L. & Commercial Reg., 31–66 (2001). See Sunder, supra note 16, at 3 (“[IP] laws do more than incentivize the creation of more goods. They fundamentally affect human capabilities and the ability to live a good life. At the start of the twenty-first century, the legal regime of intellectual property has insinuated itself more deeply into our lives . . . than at any other period of time history, affecting our ability to do a broad range of activities, including to create and contest culture and to produce and distribute life-saving drugs. Indeed, now that full compliance with the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement is required in all but the world’s least developed countries, intellectual property has become a question of life or death”); Steven D. Jamar & Lateef Mtima, The Centrality of Social Justice for an Academic Intellectual Property Institute 64 S.M.U. L. Rev. 1127, 1129–30 (2011) (“In the technological society of our Information Age, intellectual property has transcendent importance, penetrating, as it has, every aspect of our lives in ways unimagined a few decades ago and in ways so pervasive as to be essentially unnoticed or at least taken for granted (until it breaks down) in our day-to-day lives. The Internet and all forms of digital information technology have become vital components of American daily life. Intellectual property law both facilitates and mediates the impacts of this technological explosion. Because of the ubiquity and increasingly user-friendly and transparent implementations of intellectual property, people are not only more routinely intimate users and consumers of intellectual property but are also more often creators and purveyors of works which are themselves intellectual property, especially in the copyright field. Ultimately, intellectual property today significantly impacts our quality of life not merely in aesthetic . . . and technocratic . . . ways. One important area is providing pharmaceuticals at affordable rates. In the case of AIDS and other worldwide health epidemics, the importance of the health issue is of the first order worldwide. Indeed, the recent responses to the AIDS crisis in the lowering of prices of some drugs, and the conduct of some foreign countries in refusing to prioritize IP rights over public health illustrates a balancing of interests toward the greater social good (an approach not always consistent with prevailing attitudes in the United States)”). See, e.g., Margaret Chon, Intellectual Property and the Development Divide, 27 Cardozo L. Rev. 2821, 2831–32 (2006) (“Intellectual property, when it encounters development either domestically or globally, must incorporate a more comprehensive understanding of social welfare maximization. The overall assessment of intellectual property’s instrumental goal – the promotion of ‘Progress,’ at least in the U.S. context – has been dominated of late by the assumption that pure wealth or utility-maximization serves adequately to evaluate social welfare. This approach dovetails with the interests of intellectual property industries, whose short term goals of maximizing revenue generation are not necessarily aligned with society’s long term dynamic goals of maximizing innovation. Overreliance on utility-maximization ignores distributional consequences”). See generally William Fisher, Theories of Intellectual Property, in New Essays in the Legal and Political Theory of Property 4 (Stephen Munzer ed., 2001), https://cyber.harvard.edu/people/tfisher/iptheory.pdf; Rosemary J. Coombe, Objects of Property and Subjects of Politics: Intellectual Property Laws and Democratic Dialogue, 69 Tex. L. Rev. 1853, 1855 (1991); Niva Elkin-Koren, Copyright Law and Social Dialogue on the Information Superhighway: The Case Against Copyright Liability of Bulletin Board Operators, 13 Cardozo Arts & Ent. L.J. 345, 346–48 (1995); William Fisher, Reconstructing the Fair Use Doctrine, 101 Harv. L. Rev. 1659, 1663–64 (1988); Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 Calif. L. Rev. 125, 132–34 (1993); Neil Weinstock Netanel, Asserting Copyright’s Democratic Principles in the Global Arena, 51 Vand. L. Rev. 217, 221 (1998). See, e.g., Aoki, supra note 15, at 719; Anupam Chander & Madhavi Sunder, The Romance of the Public Domain, 92 Calif. L. Rev. 1331, 1331–32 (2004); Chon, supra note 43, at 2822–23; Laurence R. Helfer, Human Rights and Intellectual Property: Conflict or Coexistence?, 5 Minn. Intell. Prop. Rev. 47, 47 (2003), https://scholarship.law.umn

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

Intellectual Property Social Justice Theory: History, Development, and Description

11

Other IP scholars called for and began exploring how the prevailing law and economics approach to IP both ignored the core mandate of IP protection to serve the public good and how that general failure fell even more severely on various marginalized groups and communities. IP scholar K.J. Greene exposed the fallacy of the economic incentive presumption of “IP market neutrality” when he illuminated the history of racial and cultural piracy and inequitable exploitation in the American entertainment industry.45 Applying a critical legal/race theory analysis of IP social injustice, Professor Greene directly challenged IP scholars and pundits who adhered to the IP neutrality facade, and argued that insofar as the IP legal regime fails to account for the reality of institutionalized racism and related racial disparities and inequities, it fails its fundamental mission with respect to those affected by such IP injustice.46 Scholars including Anupam Chander, Ruth Okediji, Madhavi Sunder, and others shifted the perspective from one simply legitimating consideration of social justice concerns within the overall IP regime to one treating the fulfillment of IP-related social justice obligations as a

45

46

.edu/cgi/viewcontent.cgi?article=1399&context=mjlst; Laurence R. Helfer, Toward a Human Rights Framework for Intellectual Property, 40 U.C. Davis L. Rev. 971, 984–85 (2007); Cynthia M. Ho, Biopiracy and Beyond: A Consideration of Socio-Cultural Conflicts with Global Patent Policies, 39 U. Mich. J.L. Reform 433, 435–36 (2006); Mary W.S. Wong, Toward An Alternative Normative Framework for Copyright: From Private Property to Human Rights, 26 Cardozo Arts & Ent. L.J. 775, 830 (2009) (“Many . . . scholars share the belief that the current international IP regime does not adequately accommodate concerns of distributive social justice, and the relatively simplistic utilitarian balancing act it currently espouses tends to favor IP producers (who are located primarily in developed, mostly Western, countries). It does not easily allow for noneconomic developmental considerations that are emphasized by human rights jurisprudence and norms, and that are socially beneficial objectives that IP regimes ought to incorporate. Alongside specific proposals for addressing these inadequacies, [these] scholars . . . support (either explicitly or implicitly) a broader approach that incorporates social and cultural theory, and that more clearly maps to less utilitarian objectives such as self-actualization, freedom of choice, and human development”). See generally Christophe Geiger, Research Handbook on Human Rights and Intellectual Property 4 (2015); Steven D. Jamar, A Social Justice Perspective on the Role of Copyright in Realizing International Human Rights, 25 Global Bus. & Dev. L.J. 289, 289–91 (2012); Anjali Vats & Deidré A. Keller, Critical Race IP, 36 Cardozo Arts & Ent. L.J. 735, 776–77 (2018) (“A number of scholars have . . . undertaken consideration of the extent to which human rights regimes might be used to re-conceptualize and remake intellectual property law [and] expanding the scope of intellectual property rights regimes for the benefit of those in the developing world. The human rights approach is an example of a practical intervention into intellectual property law”). Ultimately, these ideas found acceptance in the construction of public international law and treaties and often influenced the incorporation of human rights principles into national IP regimes. See, e.g., Directive 2001/29/EC, of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, 2001 O.J. (L 167) 10; Canadian Copyright Act, R.S.C. 1985, c C-42, § 29. See generally Hiroyuki Odagiri et al., Intellectual Property Rights, Development, and Catch-Up: An International Comparative Study (2010); Daniel J. Gervais, Towards a New Core International Copyright Norm: The Reverse Three-Step Test, 9 Marq. Intell. Prop. L. Rev. 1, 13–14 (2005). Greene, supra note 11, at 1180–94, 1221 (“The institutional music industry has resorted to copyright infringement lawsuits to stem massive Internet piracy in recent years. The ‘copynorms’ rhetoric the entertainment industry espouses shows particular irony in light of its long history of piracy of the works of African-American artists, such as blues artists and composers. For many generations, black artists as a class were denied the fruits of intellectual property protection – credit, copyright royalties and fair compensation. Institutional discrimination teamed with intellectual property and contract law resulted in the widespread under-protection of black artistic creativity. Similarly, black inventors created technical and scientific works that impacted early American industries. Evidence exists that black inventors also faced similar divestiture in the industrial marketplace. The mass appropriation of the work of black artists and inventors reflects the systemic subordination based on race that characterized most of U.S. history”). See also Collier, supra note 12; Collis, supra note 12; Arewa, supra note 12, at 350–51; Leslie Espinoza & Angela P. Harris, Afterword: Embracing the Tar-Baby – LatCrit Theory and the Sticky Mess of Race, 10 La Raza L.J. 499, 512–13 (1998); Kartha, supra note 12, at 219–23; Henry Self, Digital Sampling: A Cultural Perspective, 9 UCLA Ent. L. Rev. 347, 352–53 (2002). K.J. Greene, Copyright, Culture, and Black Music: A Legacy of Unequal Protection, 21 Hastings Comm. & Ent. L. J. 339, 340–44 (1999); see also Aoki, supra note 15, at 738–41.

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

12

Lateef Mtima and Steven D. Jamar

compelling responsibility.47 These, and other scholars, collectively challenged the economic incentive/commodification perspective which provided little, if any, space for social justice concerns and which required that any such considerations be subsumed to property rights and economic interests whenever the broader social and cultural interests appeared to conflict with those property rights and economic interests. The work by scholars examining IP regimes from the perspectives of a broadened approach to law and development, international human rights, and critical legal theory laid the foundation for the theoretical perspective that would hail social justice aspirations as not only consistent with the fundamental purpose of IP protection, but as essential to the achievement of its function in the total political economy.

vi. the shift to ip social justice: identifying social justice as inherent in ip regimes IP-SJ theory shifts considerations of social justice from being an external set of values used to evaluate IP regimes to one under which achievement of social justice is an inherent and fundamental purpose integral to any legitimate IP regime.48 As discussed in the preceding section, this conception of IP-SJ stands on the shoulders of the prior judicial and scholarly efforts to imbue IP law and policy with a social conscience. The shift from using the external perspective from which to critique IP regimes that characterizes IP-SJ predecessor approaches, to an approach which makes social justice an inextricable part of the fundamental rationale for IP protection, distinguishes IP-SJ theory from preceding efforts.49 In this respect, IP-SJ theory is

47

48

49

See Chander & Sunder, supra note 16, at 578 (“No human domain should be immune from the claims of social justice. Intellectual property, like property law, structures social relations and has profound social effects”); Mtima, Introduction, supra note 16, at 572–73, 576 (“It is necessary to reorient our construction and application of the intellectual property law toward the aspiration of social justice. [This] requires recognition of the role of the intellectual property law in the Civil Rights Mission [which] in turn requires a collaborative enterprise between those involved in the stimulation and protection of intellectual endeavor and those dedicated to the preservation and protection of social and civil rights. Although this analytical realignment may seem daunting at first, it is not as difficult as it might appear. Consistent with the constitutional mandate of Article I, Section 8 [these challenges] can be addressed as something other than an issue of social resource shortfalls, but rather as a problem of constitutional stature and one which warrants affirmative congressional intervention in, and perhaps even amendment of, the relevant intellectual property law . . . [and] the construction and application of the intellectual property law as an engine for social responsibility, change, and engineering”). Chander & Sunder, supra note 16, at 574–75 (“We . . . argue here that the view of intellectual property as serving only to incentivize more information production is too narrow. We offer a set of arguments for an expansive understanding of the values motivating and structuring intellectual property law. Precipitating purpose need not require inattention to other values. The fact that a legal regime might be created for one purpose should not mean that the implications of that regime for all other purposes should be ignored [*575] . . . [T]hat intellectual property law might be established for instrumental reasons does not mean that other purposes should not be considered when we set its metes and bounds”); Lateef Mtima, Copyright Social Utility and Social Justice Interdependence: A Paradigm for Intellectual Property Empowerment and Digital Entrepreneurship, 112 W. Va. L. Rev. 97, 122 (2009) (“Identifying interdependent issues of copyright social utility and social justice is not as difficult as it might initially seem. It merely requires an appreciation for the ultimate social utility ramifications of copyright social injustice, and/or an intellectual sensitivity toward the copyright social justice benefits that naturally flow from mechanisms of copyright social utility”). See also Rita Heimes, Trademarks, Identity, and Justice, 11 J. Marshall Rev. Intell. Prop. L. 133, 158 (2011). While we consider the distinction important and meaningful, at the end of the day, we are less concerned with theory and with drawing distinctions than with results, and so we do not want to overly emphasize such distinctions. Indeed, throughout this anthology one will find various perspectives and approaches including some by those foundationbuilding scholars. See, e.g., Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law, ch. 2 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Madhavi

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

Intellectual Property Social Justice Theory: History, Development, and Description

13

intrinsic to IP ecosystems and provides not merely a platform from which to critique IP but rather a unified underlying theory from which to build and evaluate IP law, policy, and administration. Like all other social ordering mechanisms (including the law generally), IP protection is but one part of a complex and organic socio-economic system designed to promote the well-being of the societal body as a whole.50 Accordingly, as IP has moved from being a specialists’ domain to being something that directly affects everyone in their daily lives, many IP scholars, activists, and policymakers have called for greater integration of important social values and objectives with IP protection. As discussed above, these “IP social reformists” argued that prevailing IP norms can and should be socially rehabilitated by resorting to appropriate extrinsic disciplines, including human rights jurisprudence51 and critical legal theory,52 so as to infuse the IP regime with a progressive social conscience. IP-SJ rejects any conceptualization of IP that treats it as inherently devoid of noneconomic/socially benign objectives.53 Regardless of whether it is viewed as a utilitarian product of positive law, a realization of the social contract, or an instantiation of natural law and natural rights,54 the ultimate function of IP protection is to cultivate human development and advancement.55 A properly conceived IP regime must be structured to encourage, access, and apply human creativity and innovation because it is both socially useful to do so and just the right thing to do. In this sense, IP-SJ is thus more aptly described as a theory of IP social restoration, as opposed to IP social reform.56

50

51 52

53 54

55

56

Sunder, Intellectual Property After George Floyd, ch. 27 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g. John C. Reitz, Centennial World Congress on Comparative Law: Political Economy as a Major Architectural Principle of Public Law, 75 Tul. L. Rev. 1121, 1125, 1127–28 (2001) (“Each country’s principle of political economy . . . is a normative statement reflecting the conception that predominates within that country of what the appropriate relationship between the individual and the state should be . . . [T]he United States has an especially market-oriented political economy . . . The social welfare states of western Europe have more state-centered political economies . . . though less so than socialist states like the People’s Republic of China . . . Like France, Germany has a long intellectual tradition that posits a strong role for the state to play in assuring basic welfare for everyone in society”); Vincent Mosco, The Political Economy of Communication 24 (2d ed. 2009) (“One can think about political economy as the study of the social relations, particularly the power relations, that mutually constitute the production, distribution, and consumption of resources”). See, e.g., Helfer, supra note 44; Jamar, supra note 44. See, e.g., http://www.law.cornell.edu/wex/critical_legal_theory (last visited Dec. 8, 2022) (“Critical legal studies . . . is a theory that challenges and overturns accepted norms and standards in legal theory and practice. Proponents of this theory believe that logic and structure attributed to the law grow out of the power relationships of the society. The law exists to support the interests of the party or class that forms it and is merely a collection of beliefs and prejudices that legitimize the injustices of society. The wealthy and the powerful use the law as an instrument for oppression in order to maintain their place in hierarchy. The basic idea of CLS is that the law is politics and it is not neutral or value free”); Betsy B. Baker, Constructing Justice: Theories of the Subject in Law and Literature, 75 Minn. L. Rev. 581–82 (1991) (“Critics of the legal system have long observed its tendency to distort or ignore connections between its human subjects and the empirical world of their experience . . . In opposition to law’s antisubjective tendencies . . . several legal theorists . . . argue . . . that the legal system needs to admit more subjective concerns to legal discourse and to recognize more the humanity of the subject in law”). Mtima, supra note 5, at 266. See John Locke, Two Treatises of Government, Second Treatise §§ 26–29, 127–28; International Covenant on Civil and Political Rights; International Covenant on Economic, Social and Cultural Rights. Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Compare Mtima, supra note 48, at 135 (“This approach . . . acknowledges that certain social deficiencies gnaw at the very foundations of [intellectual property] protection”) with Sunder, supra note 16, at 3 (calling for “intellectual property law and legal decision makers to expressly recognize and contend with the plural values at stake in cultural production and exchange”).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

14

Lateef Mtima and Steven D. Jamar

While economic incentives and commoditization mechanisms are certainly central elements of IP protection, they are not its only features or concerns. Indeed, in light of the unique and capacious function of IP protection in the total political economy, the relevant efficacy assessment metrics necessarily surpass any such monocular social vision. IP-SJ regards the values of equitable access, inclusion and empowerment as essential components of and as indeed intrinsic to the enterprise of IP protection. From this perspective, IP-SJ exposes IP law and economics extremes57 as promoting and perpetuating socially wasteful inefficiencies in the contemporary IP protection regime. Through IP empowerment, IP-SJ realigns the mechanisms of the IP regime so as to eliminate the resulting social losses and maximize the overall efficiency and productive impact/output of the IP system while serving both economic and other interests.58 A particular benefit of the IP-SJ approach is that the instances in which IP protection obstructs social welfare are not addressed as independent social maladies, but rather as symptoms of malaise within the IP regulatory system. Under IP-SJ both economic and noneconomic values are recognized and valued and an IP regime that does not realize both sets of values is the result of a misconstruction of the proper set of values at stake, resulting in an imbalance in the IP regime. IP-SJ therefore prioritizes holistic revitalization of the IP infrastructure over localized responses to its symptomatic ills. Recognizing the difficulty in achieving the ambitious agenda of IP-SJ, even as we work toward realizing a fully IP-SJ consonant system, we address such pieces and symptoms as we can along the way. Its distinctive rationale notwithstanding, IP-SJ is not antagonistic to theories which seek to infuse human rights precepts, critical legal theory tenets, critical race theory constructs, or similar socio-legal principles into the IP regime. Quite to the contrary, IP-SJ provides the theoretical foundation for such extra-economic approaches toward delineating specific social justice obligations and concomitant social deficiencies of the IP regime.59 Without question, IP protection must achieve and maintain a measure of social interoperability with other important social ordering mechanisms and goals.60 IP-SJ consequently rejects 57 58

59

60

See generally Landes & Posner, supra note 1. For example, elsewhere in this volume Sue Liemer demonstrates how Congress’ adoption of the Visual Artists Rights Act (VARA), which recognizes artists’ attribution and related moral rights, embodies the social justice mandate to consider noneconomic interests in construing the social utility objectives of copyright protection. See Sue Liemer, Works of “Recognized Stature” Under VARA: Recognized By Whom? For general analyses of the importance of diverse values to the social efficacy of IP protection see herein Peter Menell, Mapping the Intellectual Property/Social Justice Frontier, ch. 1 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); see generally Bill Ivey, Arts, Inc.: How Greed and Neglect Have Destroyed Our Cultural Rights (2008), 23–25, 50–56. Accordingly, this volume includes various chapters which build upon the IP-SJ platform to apply IP-SJ toward specific systemic problems of IP social injustice. See, e.g., Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: the The U.K. Music Industries, ch. 23 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Deidré Keller & Anjali Vats, A Primer on Critical Race Intellectual Property, ch. 26 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Janewa Osei-Tutu, IP, Social Justice and Human Development: Empowering Female Entrepreneurs Through Trademark Law, ch. 20 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Debora Halbert and Billy Meinke-Lau, IP and Social Justice Futures, ch. 24 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); John Whitman, Intellectual Property Empowerment and Protection for Prisioners, ch. 12 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See generally Chander & Sunder, supra note 16, at 564–78 (“No human domain should be immune from the claims of social justice. Intellectual property . . . structures social relations and has profound social effects”); Lateef Mtima, supra note 18, at 575–76. Kara W. Swanson, Intellectual Property and Gender: Reflections on

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

Intellectual Property Social Justice Theory: History, Development, and Description

15

as false any implicit dichotomization of IP social objectives from egalitarian social values. IP-SJ therefore establishes a common analytical foundation for IP social reform/restoration ideologies and aggregates them within a unified theory of socially cognizant, and socially just, IP protection. IP-SJ simply seeks to make all IP systems address equitable issues of access, inclusion, and empowerment for all persons affected by the IP regime which, in today’s world, means everyone.

vii. the impact of ip social justice theory on the global ip regime The IP-SJ rationale has been instrumental in focusing the attention of IP legislators, policymakers, and social activists on many problems of systemic IP social injustice and the consequential detriment to society’s innovative and cultural progress.61 Even as the courts continue to build upon and expand traditional judicial perspectives toward the social justice obligations and effects of IP protection,62 legislators have begun to promulgate new laws and governmental initiatives to improve the social efficacy of the IP legal regime. Some recent prominent examples include: • The SUCCESS Act of 2018 (Study of Underrepresented Classes Chasing Engineering and Science Success): Congressional Act directing the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office to compile information regarding the participation of women and minorities in the patent system and to identify mechanisms to increase their participation. The Act expressly acknowledges that “patents and other forms of intellectual property are important engines of innovation, invention, and economic growth[. However,] [r]ecent studies have shown that there is a significant gap in the number of patents applied for and obtained by women and minorities . . . It is the sense of Congress that the United States has the responsibility to work with the private sector to close the gap in the number of patents applied for and obtained by women and minorities to harness the maximum innovative potential and continue to promote United States leadership in the global economy.” • The CASE Act of 2020 (Copyright Alternative in Small-Claims Enforcement): Congressional Act acknowledging that copyright enforcement through litigation can be an expensive and time-consuming challenge for small and marginalized copyright owners and thus enacting a proposal from the United Sates Copyright Office to establish the Copyright Claims Board, an alternative small claims tribunal process through which copyright infringement claims seeking damages of no more than US$30,000 can be

61

62

Accomplishments and Methodology, 24 Am. U. J. of Gender, Soc. Pol’y & L. 175 (2015); Doris Estelle Long, Deviant Globalization and the Rise of Diverse Interests in the Multilateral Protection of Intellectual Property, in Diversity in Intellectual Property: Identities, Interests, and Intersections 76 (Irene Calboli & Srividhya Ragavan eds., 2015). See further Robert P. Merges, Philosophical Foundations of IP Law: The Law and Economics Paradigm, in Research Handbook on the Economics of Intellectual Property Law 72 (Ben Depoorter & Peter S. Menell eds., 2019) (arguing in support of a “two-level approach” toward a justifying rationale for IP protection, integrating consequential utilitarian economic and deontological moral perspectives and objectives); Brett M. Frischmann, Capabilities, Spillovers, and Intellectual Progress: Toward a Human Flourishing Theory for Intellectual Property, 14 Rev. Econ. Research on Copyright Issues 1–38 (2017) (arguing in support of a “capabilities” approach, which justifies IP protection as investment in the development of human potential). See, e.g., Testimony of Lateef Mtima Before the Senate Judiciary Subcommittee on Intellectual Property on Improving Access and Inclusivity in the Patent System: Unleashing America’s Economic Engine, https://www .judiciary.senate.gov/meetings/improving-access-and-inclusivity-in-the-patent-system-unleashing-americas-economicengine; https://www.judiciary.senate.gov/imo/media/doc/Mtima%20Senate%20Hearing%20written%20testimony.pdf. See, e.g., Authors Guild, Inc. v. HathiTrust 755 F.3d 87 (2d Cir. 2014) (allowing the unauthorized digitization of books to render them accessible to the blind and visually impaired); Lateef Mtima, “Three Steps” Towards Intellectual Property Social Justice, 53 Hous. L. Rev. 459 (2015) (discussing the IP social justice ramifications of the court’s analysis).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

16

Lateef Mtima and Steven D. Jamar

resolved. A mechanism intended to preserve the social justice interests of both small copyright owners and users, the types of claims that can be heard by the CCB include not only rightsholder infringement claims, but also claims by users seeking declarations of noninfringement, and disputes regarding the validity of Digital Millennium Copyright Act “take down” notices seeking the removal of copyrighted material from the Internet.63 • The Unleashing American Innovators Act of 2022: Introduced by Senators Patrick Leahy, Thom Tillis, and Mazie Hirono, the UAIA is the most comprehensive IP-SJ legislation to date. The Act (i) requires the USPTO’s satellite offices to conduct community outreach to increase participation in the patent system by women, people of color, military veterans, individual inventors, and other underrepresented groups; (ii) establishes a Southeast Regional Satellite Office and mandates a study to determine whether additional satellite offices are needed; (iii) creates a network of community outreach offices to partner with local community organizations to create community-based IP education programs about the patent system and the benefits of inventor innovation and entrepreneurship; (iv) includes a provision proposed by IIPSJ to establish a “patentability assessment” pilot program to assist first time prospective inventors in determining whether an invention they have is likely to meet the threshold for patentability; and (v) lowers patent application fees for small businesses and micro entities.64 The recognition of the social justice obligations and effects of the IP ecosystem has not been restricted to the American IP legal regime. The Institute for Intellectual Property and Social Justice (IIPSJ),65 a nonprofit corporation and nongovernmental organization established to promote the social justice rationale of IP protection through scholarly, policy, professional legal education, and community empowerment and education initiatives, is an accredited NGO observer participant in the World Intellectual Property Organization (WIPO)66 and has advocated for the incorporation of the IP-SJ rationale into WIPO’s administration of the international IP infrastructure,67 particularly its Development Agenda, which “ensures that development considerations form an integral part of WIPO’s work.”68 WIPO has promulgated a number of social justice-oriented initiatives,69 including a number of specific mechanisms intended to promote broader inclusion of the historically IP-underserved in the global IP ecosystem: • WIPO Policy on Gender Equality: Gender Equality, Diversity and Intellectual Property: Acknowledging that while “female and male innovators and creators from all walks of life have transformed our world through the power of their imagination and ingenuity . . . some groups remain severely under-represented in many areas of IP use. Their innovative potential is underutilized at a time when we need the widest possible range of talents . . . to solve the pressing problems facing humanity.” The program “is committed to promoting gender equality and diversity in the innovative and creative sectors . . . [and to] work to systematically mainstream gender equality considerations . . . while generating and analyzing disaggregated and gender specific data, collaborating on capacity development, and strengthening and replicating good practices.” 63 64

65 66 67

68 69

https://copyrightalliance.org/case-act-signed-into-law/ (last visited Dec. 5, 2022). See https://www.judiciary.senate.gov/download/lateef-mtima-testimony at p. 4; for the text of the Act see https://www .congress.gov/bill/117th-congress/senate-bill/2773. https://iipsj.org/our-mission-vision/ (last visited Dec. 5, 2022). https://www.wipo.int/portal/en/index.html (last visited Dec. 5, 2022); WIPO Observers (last visited Dec. 5, 2022). https://iipsj.org/programs/iipsj-international/ (last visited Dec. 5, 2022); https://iipsj.org/programs/ip-mosaic/ (last visited Dec. 5, 2022). See generally Wang, supra note 16. Development Agenda for WIPO (last visited Dec. 5, 2022). See, e.g., International Seminar on Intellectual Property and Development (wipo.int) (last visited Dec. 5, 2022).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

Intellectual Property Social Justice Theory: History, Development, and Description

17

• WIPO Initiative on Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions: Acknowledges that “[m]any indigenous peoples, local communities and governments seek IP protection for traditional knowledge (TK) and traditional cultural expressions (TCEs) as intangible assets, [which] assets can range from traditional medicine and environmental knowledge to art, symbols and music.” In addition to considering the question of IP protection for TK and TCE achievement, the initiative also seeks to address the issues which can arise in connection with the unauthorized exploitation of a community’s genetic resources, and acknowledges that while “[g]enetic resources (GRs) as such are not patentable . . . inventions based on them may be” and thus “the need for a unique, cross-cutting approach to the interface between IP and GRs.” • WIPO for Creators: A new initiative based upon the recognition that “Creators worldwide contribute to the richness and diversity of culture and . . . [i]n order for this to continue, all our valued creators must be equipped with the knowledge they need to successfully manage their intellectual property rights.” WIPO for Creators is a public–private partnership which “aims to raise awareness and increase knowledge of creators’ rights and related management practices, ensuring recognition and fair reward for all creators regardless of their geographical, cultural or economic conditions.” • The Marrakesh Treaty: Administered by WIPO, the Marrakesh Treaty “makes the production and international transfer of specially adapted books for people with blindness or visual impairments easier. It does this by establishing a set of limitations and exceptions to traditional copyright law.” The IP-SJ rationale also continues to shape the IP scholarly and policy discourse. Whereas some scholars have necessarily focused on certain, particularized problems and traditions of IP injustice, such as IP racial exploitation, gender inequality, or TKE misappropriation,70 consistent with the IP-SJ precepts of equitable access, inclusion, and empowerment, Irene Calboli and Srividhya Ragavan have illuminated how diversity per se is fundamentally innate to an effective IP legal regime: Perhaps due to factors of globalization, or the changes in geopolitics and power shifting in the international (intellectual property) arena . . . recently questions of diverse interests have benefited from rejuvenated attention . . . [T]his increasingly integrated world demands a more nuanced and balanced approach to the diversity debate within the intellectual property framework . . . Through various themes [we seek to] delve . . . into the debate of whether and how prevailing intellectual property norms can comprehensively encapsulate today’s diversityrelated identities and interests.71

As IP-SJ fosters the incorporation of diversity/equity/inclusion (DEI) aspirations into the IP policy agenda, the list of IP public interest and social activist NGOs working to achieve concrete progress in those dimensions within and through the IP ecosystem grows daily. A partial list of contributing NGOs includes the Wikimedia Foundation,72 Public Knowledge,73 the Copyright Alliance,74 70 71

72

73 74

See supra note 60. Irene Calboli & Srividhya Ragavan, Diversity in Intellectual Property; Identities, Interests, and Intersections 4, 6 (2015) (exploring the intersection of diversity and IP endeavor in the context of race, gender, religion, Traditional Knowledge and Expression (TKE) and related lenses). https://wikimediafoundation.org/news/2021/09/08/wikimedia-foundation-announces-first-grant-recipients-of-new-4-5million-equity-fund/ (last visited Dec. 5, 2022). https://publicknowledge.org/pktrains-opportunities/ (last visited Dec. 5, 2022). https://copyrightalliance.org/trending-topics/resources-supporting-bipoc-community/ (last visited Dec. 5, 2022).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

18

Lateef Mtima and Steven D. Jamar

Public Citizen,75 the National Academy of Inventors,76 the Michelson Institute for Intellectual Property,77 the U.S. Intellectual Property Alliance,78 IIPSJ,79 and others. The result has been a growing repository of IP DEI initiatives, including groundbreaking grassroots Community IP education efforts,80 all of which promote widespread and equitable inclusion in and socioeconomic empowerment through the IP ecosystem.

conclusion Intellectual Property Social Justice theory recognizes social justice as an inherent and essential obligation of the IP ecosystem. The IP-SJ rationale recaptures and restores the moral and justiceproducing dimensions of IP protection, and as demonstrated by the contributors to the present volume, it thereby maximizes participation in and the qualitative and quantitative outcomes derived through each of the IP domains. IP-SJ thus fulfills the social function of IP protection: by embracing the fundamental social justice precepts of equitable access, inclusion, and empowerment, the IP regime promotes widespread human actualization through creative and innovative endeavor, all to the greater societal good.81

75 76

77

78 79 80

81

https://www.citizen.org/topic/globalization-trade/ (last visited Dec. 5, 2022). https://www.prnewswire.com/news-releases/the-national-academy-of-inventors-announce-joint-partnership-agreementwith-the-united-states-patent-and-trademark-office-301492384.html. https://20mm.org/2021/09/07/new-michelson-hbcu-initiative-promotes-equitable-access-to-intellectual-property-educa tion/ (last visited Dec. 5, 2022). https://www.usipalliance.org/pillars-ip-diversity-inclusion (last visited Dec. 5, 2022). https://iipsj.org/programs/2022-program/ (last visited Dec. 5, 2022). https://iipsj.org/programs/take-creative-control/ (last visited Dec. 5, 2022). These and similar initiatives have moved DEI considerations to the forefront of the IP private sector agenda. See, e.g., https://diversity.google/annual-report/ (last visited Dec. 5, 2022); https://query.prod.cms.rt.microsoft.com/cms/api/am/binary/RWNrak#page=16 (last visited Dec. 5, 2022).; https://diversity.fb.com/read-report/ (last visited Dec. 5, 2022); https://usa.visa.com/about-visa/diversityinclusion.html?sitelink=inclusionanddiversity&gclid=CjwKCAjwxZqSBhAHEiwASr9n9EDJtO9nyWutMez4ngH5u rEOJBkb0UyD69skamVbYMyoY4X5TMn-RhoCEh8QAvD_BwE&gclsrc=aw.ds (last visited Dec. 5, 2022). As one of us previously demonstrated, IP-SJ ideas can operate in non-western legal systems, including in particular those premised on Islamic law: “One could not exercise one’s own rights if to do so would cause excessive damage to another’s property or person or would otherwise significantly adversely affect the rights of others. The Egyptian Civil Code approaches the subject by first providing that anyone who lawfully exercises his or her rights is not liable to another damaged by the exercise. However, the exercise must be lawful–an unlawful act is defined as one in which “the only intention is to injure another,” or the interest to be achieved by the person exercising the right is so minor as to be “entirely out of proportion to the injury caused to another,” or the interest to be achieved is unlawful. “A related idea is caring for and sharing with those less fortunate or facing hardship. The Quran is filled with passages urging, and in places requiring, Muslims to be their fellow’s keeper. It is important to note that the urgings take the form of telling people to share their wealth, not that the wealth belongs to all. That is, the property rights and contract rights are strong and sacred, but there are policy-based tensions and religious injunctions affecting the exercise of those rights. “Another important policy or concept is that of the effect of hardship. Islam has its own version of “necessity is the mother of invention” in “[h]ardship (meshaqqat) causes the giving of facility.” The effect of hardship on relaxing certain Islamic ritual requirements, for example, for those who are ill or traveling, was already noted above. Islamic law also has a number of equitable rules relating to the weighing of harms. For example, a private injury is permitted to avoid a greater public harm; when the choice is between two harms, the lesser is to be preferred; and avoidance of harm is preferred to acquisition of a benefit, e.g., a person can use his or her own property however he or she wishes, if the use does not harm another. “Though soft and difficult to articulate, the concept of public good or public interest, maslaha, exists and is used. Perhaps the most famous example of its application was when Saudi Arabia used it to justify its eminent domain condemnation of property around the Qibla in Mecca to permit the state to better accommodate the masses of pilgrims each year.” Steven D. Jamar, The Protection of Intellectual Property under Islamic Law, 21 Cap. U. L. Rev. 1079, 1091-92 (1992) (footnotes omitted).

https://doi.org/10.1017/9781108697613.002 Published online by Cambridge University Press

part i

IP Social Justice Foundations

https://doi.org/10.1017/9781108697613.003 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.003 Published online by Cambridge University Press

1 Mapping the Intellectual Property/Social Justice Frontier Peter S. Menell*

I.

Framing IP/Social Justice Analysis A. Property and Intellectual Property: Questioning the Carryover Hypothesis B. Framing the IP/Social Justice Interface: Internal Legitimacy and External Effects II. Mode-Specific Analysis A. Patent Protection 1. Internal Validity 2. External Perspectives B. Trade Secret Protection 1. Internal Validity 2. External Perspectives C. Copyright Protection 1. Internal Validity 2. External Perspectives D. Trademark Protection 1. Internal Validity 2. External Perspectives III. The Macro Social Justice Perspective A. IP, Poverty, and Inequality B. Gender and Racial Inequality C. Global IP Justice Conclusion

page 24 24 29 30 30 30 33 35 35 36 37 37 40 43 43 45 46 46 49 50 51

mapping the intellectual property/social justice frontier For a growing portion of our society, and especially younger generations, life increasingly revolves around intellectual creativity, entrepreneurship, and the digital domain. General Motors and *

Koret Professor of Law, Director, Berkeley Center for Law & Technology, and Faculty Director, Berkeley Judicial Institute, University of California at Berkeley School of Law. I thank Molly Van Houweling, Steven Jamar, Lateef Mtima, and participants at the 2019 conference held at Howard University School of Law for comments on an earlier draft. This chapter adapts and updates Peter S. Menell, Property, Intellectual Property, and Social Justice: Mapping the Next Frontier, 5 Brigham-Kanner Property Rights Conference Journal 147 (2016).

21 https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

22

Peter S. Menell

other manufacturing companies are no longer the largest and most significant economic enterprises. Digital Age startups, such as Apple, Google, Facebook, Amazon, and Netflix, provide the social and commerce platforms of daily life. They dominate the business news. Tesla is revitalizing the American automobile industry and revolutionizing automobile transportation. The balance sheets of these companies are not based on tangible resources but rather intangibles – intellectual property rights, information, and human capital. As President Obama emphasized in his final State of the Union Address,1 technological innovation provides the greatest hope for addressing the most pressing human challenges – climate change, public health, food and fresh water supply, and world peace. Social interaction occurs more and more in cyberspace, a seemingly infinite, borderless “place.” And a growing proportion of the most salient “property” rights issues that concern netizens and the U.S. judiciary relate to information resources and digital technology. The ascendency of intangible resources profoundly affects social justice – from access to lifesaving genetic information to the control of knowledge dissemination, creative freedom, group identity, and, increasingly, the distribution of wealth. Even the first-year law school property course is shifting increasingly to intangible resources. At law schools throughout the nation, and especially in California, intellectual property has become a de facto core subject. And many more of our graduates find law careers in the realm of intangible resources rather than land and other tangible resources. While use of the term “property” to characterize rights in intangible resources traces back centuries,2 the digital revolution of the past few decades has elevated intellectual property rights and issues to a new and more prominent economic, social, and political pedestal. Policymakers increasingly discuss the importance of reforming education to better prepare new generations for the information age and bridging the digital divide.3 From grade schools to universities, administrators and educators are striving to harness digital technology to improve and remake education.4 The roots of American intellectual property law trace back to the nation’s founders. Thomas Jefferson took a deep interest in the contours of intellectual property rights and the development of intellectual property institutions in the early American republic.5 Jefferson had an insatiable appetite for knowledge, which extended to architecture, civil engineering, geography, mathematics, ethnology, anthropology, mechanics, and the sciences.6 He was a successful inventor.7 And among his responsibilities as the nation’s first Secretary of State was the duty to serve – with the Secretary of the Department of War and the Attorney General – the nation’s first patent

1 2

3

4

5

6 7

See President Barack Obama, State of the Union, Jan. 12, 2016, https://www.whitehouse.gov/sotu. See generally Justin Hughes, Copyright and Incomplete Historiographies: Of Piracy, Propertization, and Thomas Jefferson, 79 S. Cal. L. Rev. 993 (2006). See Richard Pérez-Peña, Facebook Founder to Donate $100 Million to Help Remake Newark’s Schools, N.Y. Times, Sept. 23, 2010, at A27; Dale Russakoff, The Prize: Who’s in Charge of America’s Schools? (2015); Lyndsey Layton, How Bill Gates Pulled Off the Swift Common Core Revolution, Wash. Post, Jun. 7, 2014, https://www .washingtonpost.com/politics/how-bill-gates-pulled-off-the-swift-common-core-revolution/2014/06/07/a830e32e-ec3411e3-9f5c-9075d5508f0a_story.html. See, e.g., Kahn Academy, Wikipedia, Feb. 27, 2016, 4:43 p.m., https://en.wikipedia.org/wiki/Khan_Academy (describing a free online academy comprising micro-lectures across a broad range of subjects). See Adam Mosoff, Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent “Privilege” in Historical Context, 92 Cornell L. Rev. 953 (2007); Hughes, supra note 2, at 998–99, 1026–33. See Jefferson’s College Life, William & Mary, http://www.wm.edu/about/history/tjcollege/tjcollegelife/. See Graham v. John Deere Co., 383 U.S. 1, 7 (1966) (noting that “Jefferson was himself an inventor of great note. His unpatented improvements on plows, to mention but one line of his inventions, won acclaim and recognition on both sides of the Atlantic”).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

23

institution (“Commissioners for the Promotion of Useful Arts”).8 His words still resonate in modern intellectual property philosophy, policy, and jurisprudence.9 President George Washington viewed intellectual property as a vital institution for a great nation. In advocating enactment of the nation’s first intellectual property laws during the very first State of the Union Address,10 President Washington presciently declared: The advancement of agriculture, commerce, and manufactures by all proper means will not, I trust, need recommendation; but I can not forbear intimating to you the expediency of giving effectual encouragement as well to the introduction of new and useful inventions from abroad as to the exertions of skill and genius in producing them at home . . . Nor am I less persuaded that you will agree with me in opinion that there is nothing which can better deserve your patronage than the promotion of science and literature. Knowledge is, in every country, the surest basis of public happiness. In one in which the measures of government receive their impression so immediately from the sense of the community as in ours, it is proportionably essential.11

Adapting intellectual property laws in response to changing technological, social, and economic conditions remains an ongoing challenge. It has taken on greater moment as advances in digital technology have remade so much of modern life. This chapter frames this important scholarly frontier.12 We each bring our own perspective to the enterprise.13 Section I constructs a philosophical framework for thinking about the many 8

9

10

11

12

See Act of Apr. 10, 1790, ch. 7, 1 Stat. 109; Pasquale Joseph (P.J.) Federico, Operation of the Patent Act of 1790, 18 J. Pat. Off. Soc. 237, 238 (1936) (characterizing Jefferson as the moving spirit of the patent board who might well be called “the first administrator of [the U.S.] patent system”); Edward C. Walterscheid, The Hotchkiss Unobviousness Standard: Early Judicial Activism in the Patent Law, 13 J. Intell. Prop. L. 103, 107–08 (2005); Steve Mirsky, Founding Father of Invention, Sci. Am. 104 (2000). See Mosoff, supra note 5; Hughes, supra note 2; Graham, 383 U.S. 1, 7–11 (1966) (quoting Letter from Thomas Jefferson to Isaac McPherson of Aug. 13, 1813, in 13 The Writings of Thomas Jefferson 326, 334–35 (Andrew A. Lipscomb ed., 1903)); see also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 147 (1989); Diamond v. Chakrabarty, 447 U.S. 303, 308–09 (1980). See Laura Clark, The First State of the Union Address: Way Shorter, Way Less Clapping, Smithsonian, Jan. 20, 2015, http://www.smithsonianmag.com/smart-news/first-state-union-address-way-shorter-less-clapping-180953954/ (explaining how President Washington outlined the nation’s most pressing needs). George Washington, First Annual Message to Congress on the State of the Union, Jan. 8, 1790, https://www.presidency .ucsb.edu/documents/first-annual-address-congress-0; Thorvald Solberg, Library of Cong., Copyright in Congress 1789–1904, at 115 (1976) (1905). I am certainly not the first to venture into this “critical” – in multiple senses of the word – terrain. I am fortunate to stand on the shoulders of other scholars. Of particular note, Professors Anupam Chander and Madhavi Sunder convened a path-breaking conference at UC Davis’s King School of Law in 2006. See Rex R. Perschbacher, Welcoming Remarks: Intellectual Property and Social Justice, 40 U.C. Davis L. Rev. 559 (2007); Anupam Chander & Madhavi Sunder, Foreword: Is Nozick Kicking Rawls’s Ass? Intellectual Property and Social Justice, 40 U.C. Davis L. Rev. 563 (2007). The wide-ranging papers from that conference are collected in an impressive conference volume. See Intellectual Property and Social Justice, 40 U.C. Davis L. Rev. No. 3 (Mar. 2007). I also note the contributions of Professor Amy Kapczynski to framing the interplay of IP, political mobilization, and inequality. See Amy Kapczynski, The Cost of Price: Why and How to Get Beyond Intellectual Property Internalism, 59 UCLA L. Rev. 970 (2012); Amy Kapczynski, The Access to Knowledge Mobilization and the New Politics of Intellectual Property, 117 Yale L.J. 804 (2008). At an institutional level, Professors Lateef Mtima and Steven Jamar have shone a spotlight on the intersection of intellectual property and social justice. See Steven D. Jamar & Lateef Mtima, The Centrality of Social Justice for an Academic Intellectual Property Institute, 64 SMU L. Rev. 1127 (2011); see also Lateef Mtima (ed.), Intellectual Property, Entrepreneurship and Social Justice: From Swords to Ploughshares (2015). I have also benefited from the work of and discussions with my colleagues. See, e.g., Chris Jay Hoofnagle & Jan Whittington, Free: Accounting for the Costs of the Internet’s Most Popular Price, 61 UCLA L. Rev. 606 (2014); Amy Kapczynski & Talha Syed, The Continuum of Excludability and the Limits of Patents, 122 Yale L.J. 1900 (2013); David R. Hansen, Kathryn Hashimoto, Gwen Hinze, Pamela Samuelson & Jennifer M. Urban, Solving the Orphan Works Problem for the United States, 37 Colum. J.L. & Arts 1 (2013); Robert P. Merges, Justifying Intellectual Property (2011);

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

24

Peter S. Menell

cross-currents between intellectual property and social justice. Section II uses this framework to explore a range of social justice questions that arise within particular modes of intellectual property protection. Section III examines the macro interplay of intellectual property and social justice, focusing on inequality, gender and racial inclusion, and global justice challenges.

i. framing ip/social justice analysis At a basic level, it is difficult to doubt President Washington’s declaration that the promotion of science and literature serves human and social flourishing. Yet the use of exclusive rights to inventions and writings introduces significant complications for a free and just society. Such protections can hinder competition, constrain cumulative innovation, and interfere with free expression. They reinforce market-based institutions, influence the development of culture, affect the allocation of resources and distribution of wealth, and privilege particular individuals and enterprises. Thus, the interplay of intellectual property and social justice depends on many premises and factors. It is useful to start the inquiry from a tangible property foundation. Yet intellectual resources differ fundamentally from tangible resources in character and governance principles. The United States grounds patent and copyright protection in largely utilitarian purposes, as opposed to natural rights. Section A explores the carryover of tangible property concepts to the analysis of intellectual property rights. Building on the utilitarian grounding of intellectual property rights, Section B distinguishes between two levels of social justice ramifications – those internal to utilitarian purposes and those external to those purposes. A. Property and Intellectual Property: Questioning the Carryover Hypothesis It is tempting to view intellectual property through a tangible property lens.14 After all, intellectual property draws on tangible property concepts of first-in-time, exclusivity, and transferability, and scholars have explored the philosophy of tangible property rules and institutions for centuries. Yet as a young property law professor whose principal areas of interest were intangible

13

14

Kristen A. Carpenter, Sonia K. Katyal & Angela R. Riley, In Defense of Property, 118 Yale L. J. 1022 (2009); Molly Shaffer Van Houweling, Distributive Values in Copyright, 83 Tex. L. Rev. 1535 (2005); William W. Fisher & Talha Syed, Global Justice in Healthcare: Developing Drugs for the Developing World, 40 U.C. Davis L. Rev. 581 (2007); Suzanne Scotchmer, Innovation and Incentives (2004); Eric Rakowksi, Equal Justice (1991). I was trained in math, science, technology, economics, and law and have enjoyed a front row seat to the digital revolution. I pursued a Ph.D. in economics at Stanford University and a J.D. at Harvard Law School just as the digital revolution was fomenting, which inspired my early work on the economics of legal protection for computer software. See, e.g., Peter S. Menell, Tailoring Legal Protection for Computer Software, 39 Stan. L. Rev. 1329 (1987). I had the opportunity to work with Professor Paul Goldstein on one coast and Judge – later Justice – Stephen Breyer on the other. I also had direct exposure to the emerging microcomputer/software marketplace and the path-breaking network economics scholarship of Joe Farrell, Michael Katz, Garth Saloner, Carl Shapiro, and Hal Varian. Soon after joining the UC–Berkeley faculty in 1990, I laid the groundwork for the Berkeley Center for Law & Technology (BCLT), which launched in 1995. Over the past two decades, my colleagues and I have conducted a wide range of research, hosted numerous conferences, organized IP education programs for the Federal Judicial Center, and worked closely with federal agencies, much of the time focusing on the digital/information revolution. I have also had extensive experience advising Congress, government agencies, individuals, and technology and entertainment companies about intellectual property, antitrust, and technology policy issues over the past three decades. See Richard Epstein, The Disintegration of Intellectual Property? A Classical Liberal Response to a Premature Obituary, 62 Stan. L. Rev. 455 (2010); cf. Molly Van Houweling, Intellectual Property as Property, in Research Handbook on the Economics of Intellectual Property Law: Volume I Theory 2 (Peter S. Menell & Ben Depoorter eds., 2019); Merges, supra note 12, at 4–5, 237–69, 289–311.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

25

resources – intellectual property and environmental protection – I quickly came to see that Blackstonian conceptions of land and other tangible resources missed a lot of the most important economic and social concerns. Both the positive and normative analyses of resource governance depend on the characteristics of the resources, the characteristics of the communities in which the resources are situated, and the available governance institutions.15 Although intellectual property draws upon certain characteristics from the law relating to real and other tangible “property” – most notably, the concept of exclusive rights – and many parallels can be readily identified, the differences between tangible forms of “property” and “intellectual property” are profound and numerous. To take a few prominent examples – whereas the traditional bundle of rights associated with real and other tangible property involve perpetual ownership (the classic “fee simple absolute” of real property law) – two of the most prominent forms of intellectual property, patents and copyrights, protect rights for limited durations (although in the case of copyrights, the term is very long). Furthermore, exclusivity in the field of “intellectual property” is far less inviolate than it is in the traditional property domains. Intellectual property law comprises a system of policy levers that legislatures tailor and courts interpret to promote innovation and protect the integrity of markets.16 Patent protection, copyright protection, and the law of trade secrets are principally based on the utilitarian goal of promoting innovation and creativity. Trade secrecy law also brings in notions of commercial morality.17 Trademark protection, by contrast, focuses on safeguarding the integrity of markets.18 It is more of a consumer-protection regime. But by lowering consumer search costs, it also serves a commercial purpose and indirectly promotes investment in creating quality brands. The very notion of exclusive rights over knowledge and commerce conflicts with one of America’s founding principles: freedom. The American Revolution was sparked by the Boston Tea Party, a citizen revolt against government-imposed monopolization of the tea trade. Yet the Founders of the nation recognized the need to provide time-limited intellectual property to promote technological progress and expressive creativity. President Abraham Lincoln, an inventor himself,19 eloquently and concisely captured the power of intellectual property protection: “the patent system . . . added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.”20 The potential for exclusive rights attracts investors (“the fuel of interest”) and inventors (“the fire of genius”). As Justice Brennan noted, “[t]he patent laws attempt to reconcile th[e] Nation’s deep-seated antipathy to monopolies with the need to encourage progress.”21 The contingent character of intellectual property protection contrasts with the default principle of private ordering of most tangible resources. While some tangible resources, such 15

16

17

18 19

20

21

See Peter S. Menell & John P. Dwyer, Reunifying Property, 46 St. Louis U. L.J. 599 (2002); John P. Dwyer & Peter S. Menell, Property Law and Policy: A Comparative Institutional Perspective (1998). See Peter S. Menell & Suzanne Scotchmer, Intellectual Property Law, in 2 Handbook of Law and Economics 1474 (A. Mitchell Polinsky & Steven Shavell eds., 2007). See Peter S. Menell, Mark A. Lemley, Robert P. Merges, & Shyamkrishna Balbanesh, I Intellectual Property in the New Technological Age ch. 1 (2022). See Menell & Scotchmer, supra note 16, at 1536–37. See U.S. Patent No. 6,469 (Buoying Vessels Over Shoals); Owen Edwards, Abraham Lincoln: The Ingenious Inventor, Smithsonian Magazine, Oct. 2006, http://www.smithsonianmag.com/history/inventive-abe-131184751/. See 3 R. Basler, The Collected Works of Abraham Lincoln 361 (1953) (President Lincoln made these remarks in a speech delivered at Jacksonville College on Feb. 11, 1859). This quotation is engraved over the northwest entrance to the U.S. Department of Commerce at 15th and E Streets, N.W., Washington, D.C., which housed the Patent Office for many years. See Diamond v. Chakrabarty, 447 U.S. 303, 319 (1980) (Brennan, J., dissenting).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

26

Peter S. Menell

as water and air, reflect a mix of governance regimes, most land and other tangible resources fit relatively comfortably within a private-ownership framework. Standard economic models view comprehensive resource ownership in conjunction with freedom of contract to be an efficient and just resource allocation system.22 It bears mentioning, however, the extensive scholarship identifying limits to this default.23 Nonetheless, absolute, exclusive ownership in perpetuity subject to free transferability is a widely accepted starting point for land and tangible resource analysis. By contrast, intellectual property emerges as a limited exception to the free competition default. It is justified as bait to attract invention and creativity, with the recognition that overprotection of information resources or removal of knowledge from the public domain limits dissemination of knowledge and undermines the follow-on innovation and creativity that is critical to progress.24 Standard economic analysis limits the scope and duration of such rights so as to reduce the deadweight loss of monopoly exploitation25 and to encourage cumulative creativity.26 A robust public domain helps to disseminate knowledge and fuel intellectual creativity.27 Intellectual property seeks to balance the motivational pull of property rights with broad dissemination of knowledge and the cumulative creative push of building on the ideas and expression of others. The U.S. Supreme Court explained: The monopoly privileges that Congress may authorize are neither unlimited nor primarily designed to provide a special private benefit. Rather, the limited grant is a means by which an important public purpose may be achieved. It is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired. The copyright law, like the patent statute, makes reward to the owner a secondary consideration. In Fox Film Corp. v. Doyal, 286 U.S. 123, 127 [1932], Chief Justice Hughes spoke as follows respecting the copyright monopoly granted by Congress, “The sole interest of the United States and the primary object in conferring the monopoly lie in the general benefits derived by the public from the labors of authors.” It is said that reward to the author or artist serves to induce release to the public of the products of his creative genius. (United States v. Paramount Pictures, 334 U.S. 131, 158 (1948)).28

Thus, tangible property and intellectual property begin from very different locations on the ownership spectrum. Tangible resources begin with a capacious default, viewing ownership as discouraging resource use conflict and viewing contractual freedom as promoting efficient 22

23

24 25

26

27 28

See Richard A. Posner, Economic Analysis of Law 10–13 (1973); Garrett Hardin, The Tragedy of the Commons, 102 Sci. 1243 (1968). See Joseph William Singer, The Rule of Reason in Property Law, 46 U.C. Davis L. Rev. 1369 (2013); Elinor Ostrom, Understanding Institutional Diversity (2005); Peter S. Menell, Institutional Fantasylands: From Scientific Management to Free Market Environmentalism, 15 Harv. J. L. & Pub. Pol’y 489 (1992); Elinor Ostrom, Governing the Commons: The Evolution of Institutions for Collective Action (1990); Carol Rose, The Comedy of the Commons: Custom, Commerce, and Inherently Public Property, 53 U. Chi. L. Rev. 711 (1986); cf. Michael A. Carrier, Cabining Intellectual Property through a Property Paradigm, 54 Duke L.J. 1 (2004) (emphasizing property doctrines that diverge from the Blackstonian conception). See Menell & Scotchmer, supra note 16, at 1476–78. See William D. Nordhaus, Invention, Growth, and Welfare: A Theoretical Treatment of Technological Change (1969). See Suzanne Scotchmer, Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, 5 J. Econ. Persp. 29 (1991). See Eric von Hippel, Democratizing Innovation (2005). See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

27

development. Intangible resources start with a parsimonious default – only so much as is necessary to bring about desired innovation and creativity.29 This divergence in perspective derives from fundamental differences in the character of tangible and intangible resources. Tangible resources are, by the laws of physics, inherently rivalrous and excludable. They occupy physical space, and human rivalry for control of these resources undermines stability and progress. My enjoyment of an ice cream cone necessarily depletes the amount of ice cream for others. This is not to say that such resources cannot be shared in constructive ways. Societies have long developed a wide range of strategies to share rivalrous tangible resources – from land to air, beachfront, and roadways – in creative and just ways. Zoning, the public trust doctrine, and various other regimes seek to promote balanced resource use. Such rules and institutions are central to human civilization. Information resources begin at the other end of the rivalry spectrum. They can inherently be enjoyed by everyone without rivalry or depletion. Thomas Jefferson eloquently captured this distinction: Stable ownership is the gift of social law, and is given late in the progress of society. It would be curious then, if an idea, the fugitive fermentation of an individual brain, could, of natural right, be claimed in exclusive and stable property. If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property. Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody.30

Jefferson ultimately came to see the need for the granting of limited exclusive rights to encourage inventions,31 but his parsimonious instinct proved prescient. Intangible resources significantly differ from tangible resources and merit distinctive treatment. Intellectual property rules create artificial scarcity as a means to encourage the development of inventions and creative expression. When the nonrivalrous characteristic of information resources is combined with the economic feedback effects of network markets – such as telecommunications and computer software – the policy ramifications become more complex.32 In conventional markets, consumers’ utility functions are largely independent. My enjoyment of a good does not depend on 29 30 31 32

See Alan Devlin, Patent Law’s Parsimony Principle, 25 Berkeley Tech. L.J. 1693 (2010). See VI Writings of Thomas Jefferson 180–81 (Washington ed.). See Hughes, supra note 2, at 1004–05, 1031–33. See Peter S. Menell, Economic Analysis of Network Effects and Intellectual Property, 34 Berkeley Tech. L.J. 219 (2019).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

28

Peter S. Menell

others’ enjoyment of that good. In network markets, by contrast, the demand functions (and hence, welfare) of consumers are interdependent. For example, the value of a telecommunications network depends critically on the number of other consumers that are part of that network because each person’s utility depends on the number of other people with whom they can communicate. Such network externalities affect a variety of important information technology markets.33 The design of intellectual property regimes for such technologies must consider the dynamics of these markets. Interoperability and compatibility of products take on great importance. The difficulties of delineating the boundaries of intangible rights further complicate the puzzle. Tangible resources occupy physical space and hence can be observed and measured.34 Land resources can typically be represented in two-dimensional grids. The boundaries of tangible resources are typically directly observable. Fugitive and sub-surface resources, such as wild animals, oil, natural gas, and water, are more complex to map but nonetheless have definable boundaries when captured. By contrast, information resources are often difficult to delineate.35 Inventors claim their advances using words, which introduce interpretive challenges.36 More significantly, inventors typically seek to claim the full range of embodiments that flow from an inventive concept. Patent specifications typically contain prophetic examples to illustrate the inventive concept, but the claims often go further. The law seeks to balance protecting inventors’ supported claims with providing the public, including competitors and follow-on inventors, fair notice of the boundaries of the intellectual property rights.37 This often results in unclear boundaries, which has ramifications for the optimal design of defenses, remedies, and other aspects of intellectual property rules and institutions.38 We also see in the intangible realm much greater opportunism in claiming resources.39 Copyright protection introduces other notice challenges. Unlike land, the boundaries of expressive works cannot be mapped onto two-dimensional grids.40 Authors, artists, and musicians draw upon the works of others as well as unprotectable ideas and the public domain to create new works. Thus, their claim to copyright protection is less – and often, far less – than all of the 33

34

35

36

37

38 39

40

See generally Carl Shapiro & Hal Varian, Information Rules: A Strategic Guide to the Network Economy (1998). See Gary D. Libecap & Dean Lueck, Land Demarcation Systems, in Research Handbook on the Economics of Property Law 257 (Kenneth Ayotte & Henry E. Smith eds., 2011). See Peter S. Menell, Economic Analysis of Intellectual Property Notice and Disclosure, in Research Handbook on the Economics of Intellectual Property Law: Volume I Theory 424 (Peter S. Menell & Ben Depoorter eds., 2019); Peter S. Menell & Michael J. Meurer, Notice Failure and Notice Externalities, 5 J. Leg. Anal. 1 (2013). See Nautilus, Inc. v. Biosig Instruments, 572 U.S. 898, 907–10 (2014) (noting that the disclosure requirements of the Patent Act entail a “delicate balance tak[ing] into account the inherent limitations of language. Some modicum of uncertainty . . . ‘price of ensuring the appropriate incentives for innovation.’” “At the same time, a patent must be precise enough to afford clear notice of what is claimed, thereby ‘appris[ing] the public of what is still open to them’” (citations omitted)). See id.; Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950) (explaining that the doctrine of equivalents allows a patentee to proceed against the producer of a device that does not literally infringe a patent claim “if it performs substantially the same function in substantially the same way to obtain the same result” (citation omitted)). See Menell & Meurer, supra note 35. See, e.g., Jeffrey G. Sheldon, How to Write a Patent Application § 6.5.19, at 6–114 (2005) (including a section entitled “Include Ambiguous Claims,” which offers numerous “strategies” for “intentionally writ[ing] ambiguous claims”); Robert D. Fish, Strategic Patenting 7–35 (2007) (advising drafters to “[a]void . . . like the plague” claim language that clearly identifies the “gist of the invention” or the “factor” that makes it “unique”). See Peter S. Menell, Economic Analysis of Copyright Notice: Tracing and Scope in the Digital Age, 96 Boston Univ. L. Rev. (2016).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

29

elements (and the compilations of elements) that appear in their work.41 Furthermore, the fair use doctrine42 and other limiting doctrines, such as the idea/expression dichotomy that channels protection for useful articles and functional aspects of works between the patent and copyright realms,43 greatly complicate the notice of copyright boundaries.44 And given the long duration of copyright, the problems posed by difficult-to-trace and true orphan works plague artistic creativity.45 As a result of these fundamental differences between tangible and intangible resources, we must be especially cautious in extrapolating positive and normative precepts and ramifications from the realm of tangible resources to the analysis of intangible resources. Simple rules, such as full ownership and automatic injunctions, do not presumptively “carryover” to intangible resources.46 Policy analysis must address the protection of intangible resources based upon the underlying economic, social, and human effects. More complex tangible property rules – such as nuisance, servitudes, and trespass to chattels – provide some useful models for intellectual property regimes. Conventional property rules and institutions provide insight and useful metaphors, but they cannot substitute for detailed analysis of the particular characteristics of the resources, the human, cultural, social, technological, and historical dimensions of the communities in which the resources are situated, and the attributes and limitations of the full range of available institutions. B. Framing the IP/Social Justice Interface: Internal Legitimacy and External Effects The utilitarian purposes undergirding intellectual property protection directly address multiple social justice goals. To the extent that intellectual property protections function effectively, they serve a variety of economic, human, cultural, and social goals. Advances in technological knowledge increase productivity, enhance the quality and reduce the costs of goods, and improve standards of living. Technological innovation can also address climate change, cure disease, and expand what societies can accomplish with limited resources. With regard to expressive creativity, well-functioning intellectual property systems can spur investment into the production of knowledge and can entertain and inspire. Note, however, that these inferences are based on a critical assumption: “if” intellectual property regimes function effectively. They also presume that intellectual property protection is the most effective means of promoting innovation and creativity. Yet, intellectual property is but one of many approaches to promoting innovation and creativity. Direct procurement, prizes, secrecy, and various forms of indirect appropriation might be better or at least complementary mechanisms for addressing the appropriability problem that justifies intellectual property

41

42 43 44 45

46

I refer to this as the “Swiss cheese” character of copyrights. See Menell, supra note 35, at 437, 452–53. Copyright registration has never required anywhere near full specification of what is excluded from the copyright claim – i.e., the Swiss cheese holes – and the costs of doing so fall well below any realizable benefit. See 17 U.S.C. § 107. See 17 U.S.C. § 102(b). See Michael W. Carroll, Fixing Fair Use, 85 N.C. L. Rev. 1087, 1092–1120 (2007). See Pamela Samuelson, Notice Failures Arising from Copyright Duration Rules, 96 Boston Univ. L. Rev. 967 (2016); Maria A. Pallante, Orphan Works & Mass Digitization: Obstacles & Opportunities, 27 Berkeley Tech. L.J. 1251 (2012); U.S. Copyright Office, Report on Orphan Works, Jan. 2006, http://www.copyright.gov/orphan/orphan-report .pdf. These issues sparked a contentious dialogue with a prior Brigham-Kanner honoree. See Peter S. Menell, Governance of Intellectual Resources and Disintegration of Intellectual Property in the Digital Age, 26 Berkeley Tech. L.J. 1523 (2011); Epstein, supra note 14.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

30

Peter S. Menell

protection on utilitarian grounds.47 Relatedly, the negative impacts of the granting of intellectual property rights might be weighed in the balance.48 Thus, a critical primary question in assessing the interplay of intellectual property protection and social justice must focus on internal legitimacy: are intellectual property regimes the optimal mechanism for prompting innovation and creativity, and are they functioning effectively in pursuing their purported utilitarian mission? When the policy landscape extends beyond promoting innovation and creativity within a conventional, capitalist economic setting, the challenges expand significantly. The cultural setting greatly complicates the design and functioning of both tangible and intangible resource regimes. As William Cronon discovered in his seminal study of ecology in pre-colonial and colonial New England,49 different cultures can produce different, yet effective, resource governance regimes. The effects of those regimes on economic development and natural resource sustainability can vary widely. Thus, the treatment of indigenous peoples and their traditional knowledge and expression does not easily translate into conventional economic calculus. Furthermore, human and civil rights can be difficult to reconcile with economic/utilitarian goals. Human rights – such as rights to life and freedom from torture – are considered fundamental rights of every person and generally focus on the individual whereas civil rights – such as the right to vote, freedom of religion, protection from discrimination, and freedom of expression – derive from citizenship within a polity. Civil rights overlap with human rights and bring in collective and group values. In analyzing the interplay of intellectual property regimes and social justice, therefore, it is also critical to assess the external effects of utilitarian intellectual property regimes as well as interactions – conflicts and complementarities – among the array of social justice considerations: human rights, civil rights, cultural interests, and distributive justice.50

ii. mode-specific analysis Intellectual property and social justice interact on multiple levels. This section analyzes this interplay within patent, trade secret, copyright, and trademark law. It summarizes the principal trade-offs and tensions within the traditional utilitarian framing and then traces some of the larger external social conflicts. Part III then turns to macro aspects of the IP/social justice relationship. A. Patent Protection 1. Internal Validity The patent system is built upon a core economic premise that capital and talent will gravitate toward the highest bidder. In competitive markets, profits will be driven to zero, not accounting

47

48 49 50

See Michael Abramowicz, Prize and Reward Alternatives to Intellectual Property, in Research Handbook on the Economics of Intellectual Property Law: Volume I Theory 350 (Peter S. Menell & Ben Depoorter eds., 2019); Jonathan H. Adler, Eyes on a Climate Prize: Rewarding Energy Innovation to Achieve Climate Stabilization, 35 Harv. Envt’l L. Rev. 1 (2011); Brian D. Wright, The Economics of Invention Incentives: Patents, Prizes, and Research Contracts, 73 Amer. Econ. Rev. 691 (1983). See Kapczynski, UCLA L. Rev., supra note 12. See William Cronon, Changes in the Land: Indians, Colonists, and the Ecology of New England (1983). See Kapczynski, UCLA L. Rev., supra note 12 (emphasizing the internal/external dichotomy).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

31

for sunk costs such as research and development (R&D).51 From an ex ante perspective, most firms would not invest in developing new technologies if rivals could free-ride on their R&D, enter the market, and dissipate the inventors’ profits. This produces a sub-optimal level of investment in R&D, which reduces dynamic competition and innovation. The provision of time-limited exclusive rights to control a patented invention provides a mechanism for appropriating a return to R&D and commercialization.52 Within the internal utilitarian frame, patent protection has two principal defects. First, it creates exclusive rights, which can raise prices above marginal cost, thereby resulting in deadweight loss to consumers.53 Second, it can inhibit cumulative creativity to the extent that follow-on inventors face the risk of infringement (due, for example, to notice problems54) as well as transaction costs from negotiating with blocking patent holders. But intellectual property also has virtues. Every invention funded with intellectual property creates a Pareto improvement55 relative to a baseline competitive market.56 No one is taxed more than her willingness to pay for any unit she buys; otherwise she would not buy it. In contrast, funding out of general revenue runs the risk of imposing burdens on individual taxpayers greater than the benefits they receive. A second virtue is decentralization. Probably the most important obstacle to effective public procurement is in finding the ideas for invention that are widely distributed among firms and inventors. The lure of intellectual property protection does that automatically. Decentralization is especially important if private inventors are more likely than public sponsors to think of good ideas for innovations. A third virtue is that intellectual property is an effective screening device.57 Since the private value of the invention at least partially reflects social value, inventors should be willing to bear higher costs for inventions of higher value. The intellectual property mechanism encourages investors and inventors to weed out ideas for which the private costs exceed the private benefits. These considerations, however, bear on only a subset of the institutions for promoting innovation. Public procurement, regulatory mandates (e.g., such as best available technology requirements for reducing pollution and targets for zero-emission vehicles), prize systems, trade secrecy, and ancillary means of appropriating a return on R&D can encourage innovation without deadweight loss. Each of these other institutions, however, has limitations. As noted above, public procurement and centralized decisionmaking cannot easily prioritize projects and identify the best

51 52 53

54 55

56

57

See Menell & Scotchmer, supra note 16, at 1476–78. See Nordhaus, supra note 25. The early, primitive economic models of patent protection vary the duration of patent protection so as to balance incentives to invent and deadweight loss. See Nordhaus, supra note 25. This analysis, however, overlooks the complexities of cumulative innovation and the potential benefits of licensing markets. See Menell & Scotchmer, supra note 16; Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 Colum. L. Rev. 839 (1990). See Menell & Meurer, supra note 35. The Pareto standard, named for the Italian engineer, social scientist, and philosopher Vilfredo Pareto, judges social welfare based on whether it is possible to make any one individual better off without making at least one individual worse off. See generally Vilfredo Pareto, Manual of Political Economy: A Critical and Variorum Edition (Aldo Montesano et al. eds., 2014). This proposition overlooks, however, the potential of other tools, such as prizes and government procurement. See supra note 47. See Clarisa Long, Patent Signals, 69 U. Chi. L. Rev. 625 (2002).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

32

Peter S. Menell

contractors. For example, in 1990, California mandated automakers to bring a specified percentage of zero-emission vehicles into their fleets,58 yet little resulted.59 It was the entrepreneurial efforts of the private sector, with government subsidies, that ultimately produced the major breakthroughs.60 Now many of the major automobile manufacturers are feverishly competing to advance electric and other alternative energy vehicle technologies.61 The financial payoff of patent protection encourages the risk taking that can surmount major technological challenges. While centrally planned economies, such as the former Soviet Union, were able to achieve some impressive large-scale innovation goals (such as space exploration) through direct procurement, they failed miserably at promoting the broad range of innovations that proliferate in capitalist nations with robust patent systems. Patent systems identify, nurture, and cultivate needles in the technological haystack that central planners fumble to find and develop. But even in the United States, the patent system works in conjunction with other institutions. Military, space, biomedical, and basic research procurement; philanthropy; and prizes complement the patent system. The patent system plays a significant role in commercializing scientific advances. Trade secrecy can inhibit cumulative creativity by keeping unobservable knowledge from public view. Patent protection brings that unobservable knowledge into the open, even if its use is subject to time-limited exclusive rights. In the end, the internal validity of the patent system can be assessed only through a comparative institutional lens. The patent system’s efficacy depends in substantial part on a broad range of doctrinal and policy levers. The limitations of bureaucracies and discretion inevitably lead to excessive uniformity.62 Furthermore, innovation systems can be complementary. Nonetheless the parsimonious baseline remains useful in thinking about patent protection.63 The patent system produces the highest social return in those areas of innovation requiring high capital cost and involving high technological risk – such as pharmaceutical research.64 In areas such as business methods and software, the availability of alternative appropriation mechanisms – such as first mover advantage, trademark protection, copyright, trade secrecy, and ancillary means of appropriation (e.g., advertising) – suggests that we ought to be especially cautious about affording strong patent-type protection for such forms of innovation.65

58

59

60

61

62 63 64

65

See Leslie Harrison Reed, Jr., California Low-Emission Vehicle Program: Forcing Technology and Dealing Effectively with the Uncertainties, 24 B.C. Envt’l. Aff. L. Rev. 695, 708–09 (1997). See Gary E. Marchant, Sustainable Energy Technologies: Ten Lessons from the History of Technology Regulation, 18 Widener L.J. 831, 836–38 (2009). See Bradley W. Lane et al., Government Promotion of the Electric Car: Risk Management or Industrial Policy?, 4 Eur. J. Risk Reg. 227, 230–31 (2013). See Agence France-Presse, BMW, VW, Audi, Daimler Take on Tesla in Race of Electric Cars, Industry Week, Sept. 15, 2015, http://www.industryweek.com/technology/bmw-vw-audi-daimler-take-tesla-race-electric-cars. See Carroll, supra note 44; Menell, supra note 13. See Devlin, supra note 29. See James Bessen & Michael J. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk (2008); Peter S. Menell, A Method for Reforming the Patent System, 13 Mich. Telecomm. & Tech. L. Rev. 487, 493–501 (2007); Robert P. Merges, Uncertainty and the Standard of Patentability, 7 High Tech. L.J. 1 (1992). See Menell, supra note 64; Peter S. Menell & Michael J. Meurer, Nonpatentability of Business Methods: Legal and Economic Analysis (Brief Amici Curiae of Professors Peter S. Menell & Michael J. Meurer in Support of Respondent at 30–32, 36–38, Bilski v. Kappos, 130 S. Ct. 3218 (2010) (No. 08-964)), UC Berkeley Public Law Research Paper No. 1482022, http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1482022.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

33

2. External Perspectives Although the complexities of understanding and assessing the internal validity of the patent system have dominated academic discourse relating to the patent system, the search for the utilitarian holy grail tends to crowd out other important social justice considerations. Some of the most important of such considerations relate to access to medicine.66 The patent system is built upon the granting of exclusive rights. To the extent patent law achieves its utilitarian ends, it means that patent-induced technological advances – such as faster semiconductor chips and treatments for life-threatening diseases – will be available to those capable of paying and willing to pay the patent owner’s market price during the life of the patent and will be available to all capable of paying and willing to pay marginal cost upon expiration of the patent. While this system may be justifiable to a strict utilitarian, it raises serious questions for those who use a broader justice framework. Even if one is not troubled by the use of prices to ration access to faster computers, the rationing of access to treatments for life-threatening diseases amounts to a death sentence to those who cannot afford the patented treatment. The discoveries of such life-saving treatments might not have come about absent the patent incentive, but such a utilitarian position must be considered in conjunction with other important justice considerations. Other philosophical perspectives recognize an inalienable set of rights or entitlements for all citizens.67 The answer to this philosophical bind is not necessarily binary – i.e., to reject the patent system or to emphasize the lives saved. Rather, this dilemma highlights the opportunity to recognize that other rules and institutions can potentially improve upon rigid exclusive rights. Just as governments can establish patent protection, they can also provide healthcare policies and remedial limits on rationing of life-saving technologies that avoid such stark choices. Thus, it is critical to think of the patent system within a broader frame of public health policy. The internal utilitarian frame lacks the breadth to address the full social justice ramifications of granting time-limited exclusive rights for biomedical discoveries. Beyond the concern over access to life-saving treatments, the contemporary U.S. patent system has largely pushed moral and ethical questions aside.68 Whereas absolute freedom of expression may well be good social policy for a host of political, pragmatic, and institutional reasons, it is not obvious that the patent system should lack any moral compass. After all, the government is needed to evaluate and enforce patent rights. The choice to limit patent protection to “technological” innovations – i.e., “useful Arts” – is one form of policy lever, although it is typically justified on internal validity (utilitarian) grounds.69

66 67

68

69

See Kapczynski, Yale L.J., supra note 12; Fisher & Syed, supra note 12; Merges, supra note 12, at 270–87. See John Rawls, A Theory of Justice (1971) (postulating distribution of “primary goods” – “things which a rational man wants whatever else he wants” – such that they are of the greatest benefit to the least-advantaged members of society); Eleanor Kinney, Recognition of the International Human Right to Health and Health Care in the United States, 60 Rutgers L. Rev. 335 (2008); Universal Declaration of Human Rights, G.A. Res. 217(III) A, art. 25, U.N. Doc. A/RES/217(III), Dec. 10, 1948 (“everyone has the right to a standard of living adequate for the health and wellbeing of himself and of his family, including food, clothing, housing and medical care and necessary social services”). See Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999); Ex parte Murphy, 200 U.S.P.Q. (BNA) 801, 803 (Bd. Pat. App. & Int. 1977) (upholding claim for “one-armed bandit”); cf. In re Watson, 517 F.2d 465, 474–76, 186 U.S.P.Q. 11, 19 (CCPA 1975) (stating that it is not the province of the Patent Office to determine, under § 101, whether drugs are safe). See Peter S. Menell, Forty Years of Wondering in the Wilderness and No Closer to the Promised Land: Bilski’s Superficial Textualism and the Missed Opportunity to Return Patent Law to Its Technology Mooring, 63 Stan. L. Rev. 1289, 1292–95 (2011).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

34

Peter S. Menell

Patent systems can integrate moral considerations. In an earlier era, the U.S. Patent Office screened out inventions relating to gambling technologies and deception on the ground that such devices were immoral.70 European nations today bar patents on “inventions the publication or exploitation of which would be contrary to ordre public or morality.”71 The America Invents Act of 2011, for the first time, expressly excludes patents on tax strategies and human organisms.72 Even if the U.S. patent system does not engage these issues, other societal institutions should.73 These issues can, however, be extremely divisive, as reflected in debates over stem cell research,74 emergency contraception technologies,75 genetically modified seeds,76 and animal rights.77 The patent system also interacts with other market failures with broader social justice ramifications, such as climate change.78 While motivating the development of better environmental technologies, the patent system potentially constrains the diffusion of technological advances that seek to ameliorate environmental harms.79 Energy technologies involve substantial infrastructure investments. Even if advances in wind turbine and solar technologies dramatically lowered the cost of producing electricity, distributing that energy to consumers depends critically upon a grid infrastructure that can move decentralized sources of electricity to market. Moreover, such energy must compete with harmful alternatives. Without fees to internalize those harmful effects, renewable sources of energy face a competitive disadvantage. Thus, government policies and industry coordination play critical roles in the development and diffusion of renewable energy technologies. Prizes, subsidies, and externality-internalizing fees on fossil fuels offer complementary tools for balancing the R&D appropriability problem, the environmental externalities of fossil fuel consumption, and the geopolitical distortions of reliance on oil.80 Other important social justice ramifications of the patent system arise in global trade and economic development.81 70 71

72 73

74

75

76

77

78 79 80 81

See Schultz v. Holtz, 82 F. 448 (N.D. Cal. 1897); Meyer v. Buckley Mfg. Co., 15 F. Supp. 640, 641 (N.D. Ill. 1936). See Convention on the Grant of European Patents, Oct. 5, 1973, 13 I.L.M. 268, art. 53(a); Laura A. Keay, Morality’s Move Within U.S. Patent Law: From Moral Utility to Subject Matter, 40 AIPLA Q.J. 409 (2012); Margo A. Bagley, Patent First, Ask Questions Later: Morality and Biotechnology in Patent Law, 45 Wm. & Mary L. Rev. 469 (2003); Thomas A. Magnani, The Patentability of Human-Animal Chimeras, 14 Berkeley Tech. L.J. 443 (1999); Benjamin D. Enerson, Protecting Society from Patently Offensive Inventions: The Risk of the Moral Utility Doctrine, 89 Cornell L. Rev. 685 (2004); Cynthia M. Ho, Splicing Morality and Patent Law: Issues Arising from Mixing Mice and Men, 2 Wash. U. J.L. & Pol’y 247 (2000). See Pub. L. 112-29, §§ 14, 33, 125 Stat. 284 (2011). See Webber v. Virginia, 103 U.S. (13 Otto) 344, 347–48 (1880) (“Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted”). See Edward A. Fallone, Funding Stem Cell Research: The Convergence of Science, Religion & Politics in the Formation of Public Health Policy, 12 Marq. Elder’s Advisor 247 (2011). See Heather Munro Prescott, The Morning After: A History of Emergency Contraception in the United States (2011). See Gary Gregory, What’s Immoral about Monsanto: Strengthening the Roots of the Moral Utility Requirement by Amending the Patent Act, 21 Cardozo J. Int’l & Comp. L. 759 (2013). See Biotechnology in European Patents: Threat or Promise?, European Patent Office, http://legaltexts.arcdev.hu/ news-issues/issues/biotechnology.html; Deborah MacKenzee, Activists Join Forces Against the Onco-Mouse, New Scientist, Jan. 16, 1993, https://www.newscientist.com/article/mg13718560-900-activists-join-forces-against-the-oncomouse/. See Peter S. Menell & Sarah M. Tran, Intellectual Property, Innovation and the Environment (2014). See Peter S. Menell, Sarah Tran’s Inspiring Optimism, 67 SMU L. Rev. 473, 476 (2014). See Thomas Friedman, Hot, Flat and Crowded (2008). See infra section III(C).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

35

B. Trade Secret Protection 1. Internal Validity Trade secret law also aims to promote innovation, although it accomplishes this objective in a very different manner than patent protection.82 Notwithstanding the advantages of obtaining a patent – which secures the exclusive right to practice an invention for a designated period of time while disclosing technology to the public – many innovators prefer to protect their innovation through secrecy.83 They may believe that the cost and delay of seeking a patent are too great or that secrecy better protects their investment and increases their profit. They might also believe that the invention can best be exploited over a longer period of time than a patent would allow. Without any special legal protection for trade secrets, however, the secretive inventor risks that an employee or contractor will disclose the proprietary information. Once the idea is released, it will be “free as the air” under the background norms of a free market economy.84 Such a predicament would lead any inventor seeking to rely upon secrecy to spend an inordinate amount of resources building high and impervious fences around their research facilities and greatly limiting the number of people with access to the proprietary information.85 Under trade secret law, an inventor who takes reasonable steps to maintain secrecy obtains potentially strong remedies against individuals within the enterprise and individuals subject to contractual limitations who misappropriate proprietary information.86 Although trade secret law does not limit the use of ideas once they have become publicly known,87 it reduces the costs of protecting trade secrets.88 Trade secrets are the most pervasive form of intellectual property in the modern economy.89 Nearly every enterprise – whether for-profit or not – seeks to protect information about its operations, strategy, technology, funding, personnel, and customers. Employers of all types routinely require their employees and contractors to sign restrictive nondisclosure agreements (NDAs) and return confidential information upon their departure or completion of services. Without such restrictions, these enterprises would jeopardize trade secret protection and risk violating privacy and other laws. 82 83

84

85

86

87

88 89

See Menell & Scotchmer, supra note 16, at 1479. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 482 (1974) (emphasizing “the importance of trade secret protection to the subsidization of research and development and to increased economic efficiency within large companies through the dispersion of responsibilities for creative developments”). See James Pooley, Trade Secrets § 3.04[3] (2008) (noting that “the law relating to trade secrets reflects a balance of public and private interests in the encouragement of innovation, the preservation of ethics and the maintenance of a free marketplace of ideas and movement of labor”); Restatement (Third) of Unfair Competition § 1, cmt. a (1993) (observing that “[t]he freedom to engage in business and to compete for the patronage of prospective customers is a fundamental premise of the free enterprise system. Competition in the marketing of goods and services creates incentives to offer quality products at reasonable prices and fosters the general welfare by promoting the efficient allocation of economic resources”). See David D. Friedman, William M. Landes, & Richard A. Posner, Some Economics of Trade Secret Law, 5 J. Econ. Persp. 61 (1991). See National Conference of Commissioners on Uniform State Law, Uniform Trade Secrets Act §§ 2–3 (1985) (as amended). See id. at § 1(2) (“misappropriation” of a “trade secret” limited to acquisition by improper means and breach of confidence); Elizabeth A. Rowe, Trade Secret Litigation and Free Speech: Is it Time to Restrain the Plaintiffs?, 50 Boston College L. Rev. 1425 (2009); Religious Technology Center v. Lerma, 897 F. Supp. 260 (E.D. Va. 1995) (finding public disclosure notwithstanding extraordinary efforts to maintain secrecy). See Friedman, Landes, & Posner, supra note 85. See James Pooley, Trade Secrets: The Other IP Right, WIPO Magazine 2, Jun. 2013, http://www.wipo.int/wipo_ magazine/en/2013/03/article_0001.html.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

36

Peter S. Menell

Although early courts routinely characterized trade secrets as “property,”90 trade secret law, unlike patent protection, never conferred exclusive rights against the public-at-large.91 Rather, it constrains disclosure of information by contract and confidential relationship. For that reason, competitors may practice inventions that they independently develop or learn through reverse engineering or other legal means. The internal validity of trade secret protection has long been widely accepted.92 In any case, it would be difficult to override contractual arrangements to protect technological secrets without undermining general contractual freedom. 2. External Perspectives Notwithstanding that trade secrets work relatively well as a means of promoting technological innovation, the widespread use of routine blanket nondisclosure agreements to cover all proprietary information within an enterprise – including information that goes beyond the competitive sphere – raises serious social justice concerns. For example, the tobacco industry’s effort to prevent Dr. Jeffrey Wigand from disclosing the industry’s deception about the dangers of its products illustrates the societal risks of overbroad protection for corporate secrets.93 Dr. Wigand’s employer, Brown & Williamson Tobacco Corporation, persuaded a Kentucky court to issue a temporary restraining order barring Dr. Wigand from disclosing any information relating to his work at Brown & Williamson in tort litigation. Although the restraining order was eventually lifted as part of a landmark national tobacco settlement, Dr. Wigand risked tremendous liability for reporting a serious public health threat. His courage led to much-needed, farreaching changes in public health policy and compensation to states for tobacco-related healthcare costs. But for Dr. Wigand’s coming forward, the grave dangers posed by the tobacco industry’s machinations would have remained under wraps.94 We now know that asbestos manufacturers knew the causal link between asbestos and lung disease well before the public and regulatory officials became aware of the serious health risk.95 Just last year, evidence emerged that

90

91

92 93 94

95

See, e.g., Tabor v. Hoffman, 118 N.Y. 30, 23 N.E. 12 (1889) (holding that “independent of copyright or letters patent, an inventor or author has, by the common law, an exclusive property in his invention or composition, until by publication it becomes the property of the general public”); Peabody v. Norfolk, 98 Mass. 452, 458 (1868) (recognizing a “property right” in a trade secret). See Robert G. Bone, A New Look at Trade Secret Law: Doctrine in Search of Justification, 86 Cal. L. Rev. 241, 251–60 (1998); Restatement of Torts § 757, cmt. a (reporting that the property conception “has been frequently advanced and rejected,” concluding that the prevailing theory of liability rests on “a general duty of good faith”); E.I. duPont de Nemours Powder Co. v. Masland, 244 U.S. 100, 102 (1917) (Holmes, J.) (“[t]he word ‘property’ as applied to . . . trade secrets is an unanalyzed expression of certain secondary consequences of the primary fact that the law makes some rudimentary requirements of good faith. Whether the plaintiffs have any valuable secret or not, the defendant knows the facts, whatever they are, through a special confidence that he accepted. The property may be denied, but the confidence cannot be. Therefore, the starting point for the present matter is not property or due process of law, but that the defendant stood in confidential relations with the plaintiffs”). See Pooley, supra note 89. See Marie Brenner, The Man Who Knew Too Much, Vanity Fair, May 1996, at 170, 176. In fact, Dr. Wigand was reluctant to come forward, and the unraveling of the tobacco industry deception may have been delayed many more years if not decades without the persistence of Lowell Bergman, the 60 Minutes producer who recognized the importance of bringing Wigand’s story to light. See id. See Morris Greenberg, Knowledge of the Health Hazards of Asbestos Prior to the Merewether and Price Report of 1930, 7 Soc. Hist. of Med. 493, 501 (1994); Alan F. Westin, Introduction to Whistle Blowing! Loyalty and Dissent in the Corporation 1, 11–12 (Alan F. Westin et al. eds., 1981).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

37

Volkswagen had programmed software in its vehicles to mask pollution violations.96 And the New York Times recently reported a massive environmental and public health threat associated with the manufacturing of Teflon® products that DuPont Corporation officials knew about for decades.97 While robust trade secret protection makes economic sense in a contemporary business environment marked by high employee mobility, cybercrime, and international espionage, uncritical protection of all secret business information conflicts with effective law enforcement and protection of public health, safety, and welfare. Many companies use trade secrecy as a blanket tool for hiding illegal activity – from violations of civil rights, public health and workplace safety protections, securities markets regulations, and tax reporting to defrauding the government. Employees and contractors are often in the best position to know of illegal activity, yet typical NDAs and corporate onboarding practices98 discourage activities that might be seen to subtract from the company’s bottom line. This concern has taken on greater significance as companies accused of illegal conduct have filed lawsuits against whistleblowers and their counsel.99 The American civil and criminal justice systems rely on discovery and evidence-gathering models consistent with Fourth Amendment protections against unreasonable searches and seizures. Without reporting of illegal activity and access to documentary evidence supporting investigation, the government and the courts are severely hampered in their ability to enforce the law and pursue the public good.100 C. Copyright Protection 1. Internal Validity U.S. copyright protection derives from the same core economic premise and constitutional authorization as patent protection – to promote progress. The difference is that copyright protection focuses on expressive creativity. Although expressive works differ significantly from technology, they share a common economic problem: both can require significant up-front effort that competitors can easily copy or imitate. The Constitution authorizes Congress to address this market failure by “securing for limited Times to Authors . . . the exclusive Right to their . . . Writings.”101 At the nation’s founding, the printing press served as the primary means of disseminating expressive works and hence the Copyright Act of 1790 protected books, maps, and charts 96

97

98 99

100

101

See Volkswagen Emissions Scandal, Wikipedia, Feb. 23, 2016, 4:39 a.m., https://en.wikipedia.org/wiki/Volkswagen_ emissions_scandal. See Nathaniel Rich, Poisoned Ground, N.Y. Times Magazine, Jan. 10, 2016, at 36, 41–42 (reporting about the widespread release of the toxic chemical PFOA into drinking water). See Peter S. Menell, Tailoring a Public Policy Exception to Trade Secret Protection, 105 Cal. L. Rev. 1 (2017). See, e.g., J-M Manufacturing Co. v. Phillips & Cohen, LLP, and John Hendrix, Docket No. A-5867-13T2 N.J. App. Div. (affirming dismissal of trade secret complaint against whistleblower and its counsel on grounds that company should have pursued this matter in the pending California whistleblower qui tam proceeding); Walsh et al. v. Amerisource Bergen Corp., 2014 WL 2738215 (E.D. Pa. June 17, 2014) (denying relator motion to dismiss counterclaim for breach of confidentiality agreement); see also Carlton Fields, Employers Fight Back Against Whistleblowers, Lexology, Jul. 2, 2014 (noting that “[e]mployers may even have options against employees who have been successful in [false claims cases], but who have breached their employment agreements or who have stolen documents”). See Menell, supra note 98 (proposing a sealed disclosure/trusted intermediary exception to trade secret protection that would safeguard trade secrets while promoting effective law enforcement); see also Peter S. Menell, Deterring Corporate Fraud from the Inside: Encouraging Whistleblowing Without Jeopardizing Trade Secrecy, The CLS Blue Sky Blog, Jan. 12, 2016, http://clsbluesky.law.columbia.edu/2016/01/12/deterring-corporate-fraud-from-the-inside-encouragingwhistleblowing-without-jeopardizing-trade-secrecy/. See U.S. Const. art. I, § 8, cl. 8.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

38

Peter S. Menell

(nautical maps). Like England’s Statute of Anne,102 the term of protection was relatively “limited”: 14 years, plus an additional 14 years if the author was still alive.103 In contrast to patent protection, copyright protection does not confer monopoly power over ideas; rather it protects only the expression of ideas.104 Patent law enables inventors to protect applications of inventive ideas. When an inventor applies laws of nature to improve the functioning of a water pump, others may not practice that invention for the life of the patent. But when an author scripts a drama featuring young wizards, explores stories of intergalactic adventure, or develops a police drama series with multi-episode story arcs, others may write their own tales of wizardry,105 produce their own space adventures,106 or create their own television crime franchises.107 As Professor Paul Goldstein has eloquently captured: Science and technology are centripetal, conducing toward a single optimal result. One water pump can be better than another water pump, and the role of patent and trade secret law is to direct investment toward such improvements. Literature and the arts are centrifugal, aiming at a wide variety of audiences with different tastes. We cannot say that one novel treating the theme, say, of man’s continuing struggle with nature is in any ultimate sense “better” than another novel – or musical composition or painting – on the same subject. The aim of copyright is to direct investment toward abundant rather than efficient expression. Bradley Efron, of Stanford’s Statistics Department, captured this difference wonderfully when he observed that, “If Shakespeare had died as a child we should never have had Hamlet, but if Newton had died as a child we should certainly have calculus today. Of course, that is also the great advantage of science. Having seen the calculus, one can improve on it, but it is hard to imagine an improved Hamlet.”108

By excluding ideas from the scope of protection, copyright permits other creators to learn from and build on both the ideas and the market response to works of authorship. As a result, copyright protection has been less controversial than patent protection over the centuries.109 There are important limits, however, to building on the works of copyright owners. The right to prepare derivative works enables copyright owners to control their particularized expression. This even extends to characters.110 Thus, other authors may not develop sequels to the Rocky motion picture series or stories involving graphic characters, such as Spiderman or Mickey Mouse, during the life span of copyright protection without authorization. The fair use doctrine, however, provides leeway for parodies and commentary. 102 103 104 105

106

107

108

109

110

See Act for the Encouragement of Learning (Statute of Anne), 8 Ann., c. 19 (1710). See Copyright Act of 1790, ch. 15, § 1, 1 Stat. 124 (1790). See 17 U.S.C. § 102(b). See Amy Sachs, 10 Books for Adults that Are Just as Magical as the Harry Potter Series, Bustle, Oct. 19, 2015, http:// www.bustle.com/articles/117092-10-books-for-adults-that-are-just-as-magical-as-the-harry-potter-series; 62 Books to Read if You Love Harry Potter Books, July 4, 2013, http://literatureyoungadultfiction.com/books-to-read-if-you-love-harrypotter/; cf. Dennis S. Karjala, Harry Potter, Tanya Grotter, and the Copyright Derivative Work, 38 Ariz. St. L.J. 17 (2006) (exploring the scope of the derivative work right). See Litchfield v. Spielberg, 736 F.2d 1352 (9th Cir. 1984) (rejecting claim that the movie E.T. infringed a music play entitled Lokey from Maldemar); Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327 (9th Cir. 1983) (analyzing differences between Star Wars and Battlestar: Galactica to identify plot similarities). Steven Bochco’s success with police dramas (Hill Street Blues, NYPD Blue) spawned others, such as Dick Wolf (Law and Order) and Jerry Bruckheimer (C.S.I.), to develop their own successful crime investigation television series. Paul Goldstein, Infringement of Copyright in Computer Programs, 47 U. Pitt. L. Rev. 1119, 1123 (1986) (citing Stan. U. Campus Rep., May 2, 1984, at 5–6). See B. Zorina Khan, Trolls and Other Patent Inventions: Economic History and the Patent Controversy in the TwentyFirst Century, 21 Geo. Mason L. Rev. 825, 844–50 (2014) (discussing periods of patent abolition in the Netherlands and Switzerland in the late nineteenth century and early twentieth century). See Anderson v. Stallone, 11 U.S.P.Q.2d (BNA) 1161 (C.D. Cal. 1989).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

39

Notwithstanding these fundamental limits on copyright protection, a confluence of factors have tarnished copyright’s internal validity, especially since the digital revolution. Advances in technology have vastly expanded the potential for cumulative creativity, from documentary projects to music mashups. Yet the extension of copyright duration (to life of the author plus 70 years) in conjunction with the dismantling of formalities makes the determination of copyright subsistence and tracing of ownership difficult.111 The enlargement of copyrightable subject matter to all forms of expressive works, including architecture and computer programs, has strained the idea/expression doctrine.112 Further, the strengthening of infringement remedies to address concerns about Internet piracy113 has instilled fear of crushing liability in technology developers, cumulative creators, and fans.114 As technology for reproducing, remixing, and disseminating expressive works has advanced, the tension between strong copyright protection to encourage creative expression on the one hand and technological progress, the ability to build cumulatively, and the free flow of information though digital social networks on the other, has mounted. New generations of creators find the traditional, permission-based system stifling. Thanks to the Internet, artists no longer need traditional publishers and media outlets, which has led to both a creativity explosion and consternation among traditional copyright owners about piracy and unauthorized derivative works.115 Compliance with copyright law has increasingly become optional. Unlike earlier eras, in which intermediary gatekeepers – book stores, movie theaters, television broadcasters, and record stores – were the only access points for copyrighted works, the Internet provides alternative means of gaining access, some legal and some not. Many netizens, especially younger generations, gain access to copyrighted works through torrent sites and other unauthorized channels, which has escalated enforcement efforts and created a vicious cycle that has undermined copyright law’s public approval. These forces have complicated the internal validity of the copyright system. Traditional media companies have increasingly looked to alternative revenue streams, such as embedded advertising, to appropriate a return on their investment. Scholars, policymakers, traditional content companies, technology companies, creative artists, consumer organizations, and civil libertarian groups see the need to reform copyright protection for the Internet age but are deeply divided on how to get there.116

111

112

113

114

115 116

See Samuelson, supra note 45; Pallante, supra note 45; U.S. Copyright Office, Report on Orphan Works, Jan. 2006, http://www.copyright.gov/orphan/orphan-report.pdf. Courts have done a relatively good job of cabining copyright protection for computer software; see Peter S. Menell, An Epitaph for Traditional Copyright Protection of Network Features of Computer Software, 43 Antitrust-Bull. 651 (1998); although concerns remain, see David W. Hansen et al., Federal Circuit Overturns Oracle v. Google and Potentially Widens Debate over Copyright Protections, 9 Intell. Prop. & Tech. L.J. 13 (2014). See Digital Theft Deterrence and Copyright Damages Improvement Act of 1999, Pub. L. No. 106-160, 113 Stat. 1774 (raising the upper boundary for statutory damages to $150,000 per work for willful infringement). See Internet Policy Task Force, U.S. Dep’t of Commerce, White Paper on Remixes, First Sale, and Statutory Damages: Copyright Policy, Creativity, and Innovation in the Digital Economy 70–81, Jan. 2016 [hereinafter Department of Commerce White Paper]; Peter S. Menell, This American Copyright Life: Reflections on Re-Equilibrating Copyright for the Internet Age, 61 J. Copyright Soc’y U.S.A. 235, 250–52 (2014). See Menell, supra note 114, at 271–98. See Maria A. Pallante, The Next Great Copyright Act, 36 Colum. J.L. & Arts 315 (2013); Department of Commerce White Paper, supra note 113; Internet Policy Task Force, U.S. Dep’t of Commerce, Copyright Policy, Creativity, and Innovation in the Digital Economy (2013); Peter S. Menell, Envisioning Copyright Law’s Digital Future, 46 N.Y.L. Sch. L. Rev. 63, 162–97 (2002–2003) (discussing the political economy of copyright reform).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

40

Peter S. Menell

2. External Perspectives Adding to the growing dissatisfaction with copyright protection, various nonutilitarian perspectives further cloud the path forward. The rights and interests of authors and audiences clash in multiple nonutilitarian dimensions. In Europe and other parts of the world, copyright protection is seen as a natural right of authors. This moral rights tradition traces back to Jean Le Chapelier, a member of the French National Convention and the reporter of the French Copyright Law of 1793, who proclaimed “fruit of a writer’s thoughts” to be “the most sacred, the most legitimate, the most unassailable, and . . . the most personal of all forms of all properties.”117 Yet even this tradition recognizes that ideas, as opposed to their expression, must not be private property.118 The protection of authors’ moral rights – encompassing dignitary interests and the integrity of works of authorship – conflicts with a broad conception of freedom of expression.119 The United States, which belatedly acceded to the Berne Convention for the Protection of Literary and Artistic Works, has used the fair use doctrine to accommodate freedom of expression. This same freedom opens governmental protection for all manner of speech, including offensive and disparaging speech.120 Freedom of speech arguably extends beyond existing fair use boundaries.121 The integrity and availability of works of authorship also implicates important public and cultural interests.122 Copyright protection also affects distributive values, ranging from providing economic security for authors and their descendants to promoting education, access to knowledge, and career opportunities for the public-at-large and new generations of creators. The modern U.S. Copyright Act seeks to blunt the bargaining power of publishers by affording authors an inalienable right to terminate transfers of copyright interests 35 years after assignments.123

117

118

119

120

121

122

123

See Jane C. Ginsburg, A Tale of Two Copyrights: Literary Property in Revolutionary France and America, 64 Tulane L. Rev. 991, 1007 (1990). The great French author (Les Misérables) and human rights activist Victor Hugo took up the cause of authors’ rights and their relationship with the public domain, founding the Association littéraire internationale (ALI) in 1878. See Daniel Gervais, The 1909 Copyright Act in International Context, 26 Santa Clara Computer & High Tech. L.J. 185, 187–88 (2010); Max M. Kampelman, The United States and International Copyright, 41 Am. J. Int’l L. 406, 410–411 (1947). At ALI’s founding congress, Hugo proclaimed that while a book belongs to its author, ideas expressed in the book belong to humankind. See Victor Hugo, Discours d’ouverture du Congre`s litte´raire international de 1878 (1878). The ALI was later renamed the Association littéraire et artistique internationale (ALAI) and played a key role in the establishment of the Berne Convention. See Richard R. Bowker, Copyright: Its History and Its Law 314 (1914). See Roberta Kwall, The Soul of Creativity: Forging a Moral Rights Law for the United States (2009); Geri J. Yonover, The Precarious Balance: Moral Rights, Parody, and Fair Use, 14 Cardozo Arts & Ent. L.J. 79 (1996); cf. Alexandra Couto, Copyright and Freedom of Expression: A Philosophical Map, in Intellectual Property and Theories of Justice (Axel Gosseries, Alain Marciano & Alain Strowel eds., 2008); Neil Weinstock Netanel, Locating Copyright Within the First Amendment Skein, 54 Stan. L. Rev. 1 (2001). See Jed Rubenfeld, The Freedom of Imagination: Copyright’s Constitutionality, 112 Yale L.J. 1 (2002); Rebecca Tushnet, Copyright as a Model for Free Speech Law: What Copyright Has in Common with Anti-Pornography Laws, Campaign Finance Reform, and Telecommunications Regulation, 42 B.C. L. Rev. 1 (2000). See Rebecca Tushnet, Copy This Essay: How the Fair Use Doctrine Harms Free Speech and How Copying Serves It, 114 Yale L.J. 535 (2004) (criticizing existing fair use doctrine for failing to recognize important self-expression, persuasion, and affirmation interests in unauthorized nontransformative reproduction of copyrighted works). See Joseph L. Sax, Playing Darts with a Rembrandt: Public and Private Rights in Cultural Treasures (1999) (questioning the authority of private owners of great works of art or cultural treasures, such as historic papers, to destroy these works or to deny public access to them). See Peter S. Menell & David Nimmer, Pooh-Poohing Copyright Law’s “Inalienable” Termination Rights, 57 J. Copyright Soc’y U.S.A. 799, 804–08 (2010) (tracing the history of copyright’s recapture provisions).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

41

This parentalistic limitation of freedom of contract aims to enable authors, their spouses, and their children to derive a larger return on works that retain their value. As emphasized by President Washington, the promotion and diffusion of knowledge were recognized as essential to the American republic.124 The Massachusetts Constitution stressed the importance of education, access to knowledge, and encouragement of literature and science as cornerstones for a democratic society and for social harmony: Wisdom, and knowledge, as well as virtue, diffused generally among the body of the people, being necessary for the preservation of their rights and liberties; and as these depend on spreading the opportunities and advantages of education in the various parts of the country, and among the different orders of the people, it shall be the duty of legislatures and magistrates, in all future periods of this commonwealth, to cherish the interests of literature and the sciences, and all seminaries of them; especially the university at Cambridge, public schools and grammar schools in the towns; to encourage private societies and public institutions, rewards and immunities, for the promotion of agriculture, arts, sciences, commerce, trades, manufactures, and a natural history of the country; to countenance and inculcate the principles of humanity and general benevolence, public and private charity, industry and frugality, honesty and punctuality in their dealings; sincerity, good humor, and all social affections, and generous sentiments among the people.125

Thus, American copyright policy has long sought to promote access to knowledge and preserve cultural heritage.126 The emergence and development of public libraries – through both philanthropy and copyright policy – have played a key role in educating the public and providing public access to knowledge repositories.127 We can also see distributive values in the broadening of expressive opportunities for authors and artists.128 Since expression often builds on and reacts to prior expressive works, such distributive values can run counter to the provision of exclusive rights. Limiting doctrines and the fair use privilege implicitly cross-subsidize cumulative creators.129 Such freedom to build on the work of others can, however, adversely affect authors’ moral and dignitary interests.130 Copyright protection also promotes human flourishing as well as cross-cultural understanding, both of which are vital to a free, inclusive, respectful, harmonious, and democratic society. I have come to see these virtues as possibly the most important purposes served by a wellfunctioning copyright system. When I reflect on my own life, it is difficult to imagine becoming the person I am today without the creative and cultural influences of my formative years. I still vividly remember seeing my first episode of the original Star Trek series. Gene Roddenberry’s extraordinary voyages of the Starship Enterprise – “to boldly go where no man [or woman] has

124 125 126

127

128

129 130

See supra note 11. See Mass. Const. art. III, § 2. See Peter S. Menell, Knowledge Accessibility and Preservation Policy for the Digital Age, 44 Hous. L. Rev. 1013, 1022–40 (2007) (tracing the development of access and preservation policies). See Abigail A. Van Slyck, Free to All: Carnegie Libraries & American Culture, 1890–1920 (1995); Jesse Hauk Shera, Foundations of the Public Library: the Origins of the Public Library Movement in New England, 1629–1885 (1965); Sidney Herbert Ditzion, Arsenals of a Democratic Culture: A Social History of the American Public Library Movement in New England and the Middle States from 1850 to 1900 (1947); Jonathan Band & Brandon Butler, Libraries, Copyright Exceptions, and Social Justice, in The Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Van Houweling, supra note 12; Peter S. Menell, Adapting Copyright for the Mashup Generation, 164 U. Pa. L. Rev. 441 (2016). See Van Houweling, supra note 12, at 1540. See Menell, supra note 128, at 506–10.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

42

Peter S. Menell

gone before” – had a profound influence on my social values and interest in technology.131 Rebellious rock ‘n roll and Bob Dylan’s forthright poetry spoke to “My Generation”132 – fueling our innate adolescent desire to question authority and think independently. The importance of adequately funded and well-produced film, art, music, and literature is inestimable. As much as lawyers emphasize the role of legal advocacy in shifting the law, the television series Will and Grace likely had more influence in shifting the nation’s and Supreme Court’s views on gay marriage than anything that lawyers argued. Similarly, works such as To Kill a Mockingbird and The Help powerfully communicated the indignity of the Jim Crow South. The public’s gradual embrace of R&B, jazz, and gospel – what was once referred to as “race music” – played a critical role in building a more cohesive and inclusive nation.133 But just as copyrighted works can educate and inspire, they can also inflame and provoke violence and subjugation of women. Copyright protects pornography,134 violent video games,135 and hate speech.136 First Amendment values obviously complicate these issues. As with the role of morality concerns in assessing patentability, the question arises whether these issues are best addressed within copyright law or through other public policies. As with patent protection, the government’s imprimatur on these works through the granting of protection at least indirectly encourages such works. But drawing First Amendment distinctions between art and pornography or incitement of violence is especially challenging.137

131

132

133

134 135

136

137

I was not alone. Martin Luther King, Jr., was a Trekkie, and he approved of his daughters watching the show because of its diverse cast and harmonious portrayal of race and geopolitical relations. When Dr. King became aware that Nichelle Nichols, the African American actress who played the third in command on the USS Enterprise, was leaving the show, he implored her to remain: “I am the biggest Trekkie on the planet, and I am Lieutenant Uhura’s most ardent fan . . . Do you not understand what God has given you? . . . You have the first important non-traditional role, non-stereotypical role . . . You cannot abdicate your position. You are changing the minds of people across the world, because for the first time, through you, we see ourselves and what can be.” See Nichelle Nichols, Pioneers of Television, PBS KQED, http://www.pbs.org/wnet/pioneers-of-television/pioneering-people/nichelle-nichols/; see also Abby Ohlheiser, How Martin Luther King Jr. Convinced “Star Trek’s” Lt. Uhura to Stay on the Show, Wash. Post, Jul. 31, 2015, https://www.washingtonpost.com/news/arts-and-entertainment/wp/2015/07/31/how-martin-luther-king-jrconvinced-star-treks-uhura-to-stay-on-the-show/. See My Generation, Wikipedia, http://en.wikipedia.org/wiki/My_Generation (referring to The Who’s iconic song about finding one’s place in society). This is not to say that the process has been fair to African American artists. See K.J. Greene, “Copynorms,” Black Cultural Production, and the Debate Over African-American Reparations, 25 Cardozo Arts & Ent. L.J. 1179, 1193 (2008) (“The fleecing of Black artists was the basis of the success of the American music industry”). See Ann Bartow, Copyright Law and Pornography, 91 Or. L. Rev. 1 (2012). See Ned Snow, The Regressing Progress Clause: Rethinking Constitutional Indifference to Harmful Content in Copyright, 47 U.C. Davis L. Rev. 1 (2013); Paul E. Salamanca, Video Games as a Protected Form of Expression, 40 Ga. L. Rev. 153 (2005). See LaShel Shaw, Hate Speech in Cyberspace: Bitterness without Boundaries, 25 Notre Dame J.L. Ethics & Pub. Pol’y 279 (2011); cf. Lieutenant Colonel Eric M. Johnson, Examining Blasphemy: International Law, National Security and the U.S. Foreign Policy Regarding Free Speech, 71 A.F. L. Rev. 25 (2014). See Lindsay E. Wuller, Losing the Game: An Analysis of the Brown v. Entertainment Merchants Association Decision and Its Ramifications in the Area of “Interactive” Video Games, 57 St. Louis U. L.J. 457 (2013) (discussing Brown v. Entm’t Merchs. Ass’n, 131 S. Ct. 2729 (2011), which struck down a California law regulating the sale of violent video games to minors as violative of the First Amendment); Mark Tushnet, Art and the First Amendment, 35 Colum. J.L. & Arts 169 (2012); Ned Snow, The Meaning of Science in the Copyright Clause, 2013 BYU L. Rev. 259, 263 (contending that the original meaning of “Science” in the Intellectual Property Clause of the Constitution is “a system of knowledge comprising distinct branches of study” that limits legislative power to grant copyright protection); Bartow, supra note 54 (arguing that pornography lies “beyond the scope of the Intellectual Property Clause” on the grounds that pornography is “non-progressive and non-useful”); cf. Ned Snow, Content-Based Copyright Denial, 90 Ind. L.J. 1473 (2015) (contending that Congress could exclude some content areas from copyright protection without running afoul of the First Amendment).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

43

The economic models supporting content creation and dissemination also have important social justice ramifications. For a variety of technological and economic reasons, many content industries came to rely on indirect forms of appropriability to support artistic creativity.138 As one economist cynically remarked, “[p]rograms are scheduled interruptions of marketing bulletins.”139 Thus, major media channels and content producers worked symbiotically. But such a business model comes at a cost. Those who pay for the content shape its message. While consumer demand obviously drives content protection, advertising patrons influence artistic creativity. Glamorizing smoking cigarettes or drinking alcohol, both addictive products, generated high returns. Public officials eventually came to see the adverse social effects of such advertising and regulated it.140 But the phenomenon remains. The advertising that supports content creation and dissemination had doubtless fueled rising obesity rates.141 Technological advances have altered the influence of advertising in content markets in complex ways.142 With the advent of digital video recording technology and commercial skipping, advertising has been integrated within the content we view. This is far more insidious than “scheduled interruptions of marketing bulletins.” The growing integration of advertising into mass media and Internet services in the Digital Age represents a subtle but real and present threat to expressive freedom, free will, and public well-being. What began as a largely innocuous means of subsidizing print media and a solution to funding broadcast media has increasingly distorted the integrity of news reporting and creative expression. We see similar phenomena in the social media space.143 What we perceive as “free” comes at a significant human, cultural, public health, and welfare cost. D. Trademark Protection 1. Internal Validity Trademark protection, like copyright, influences the flow of information to the public. In contrast to patent, trade secret, and copyright protection, which aim principally to promote innovation and creativity, trademark law seeks primarily to safeguard the integrity of the marketplace.144 Trademark law prohibits activities that create a likelihood of confusion as to the source 138

139

140

141

142 143 144

Early broadcasting technology had no direct way of charging those who received radio and television signals. Advertising emerged as an indirect way of supporting these distribution outlets and those who produced the content. See Harold L. Vogel, Entertainment Industry Economics: A Guide for Financial Analysis 229 (6th ed. 2004). See Sandra J. Teel, Jesse E. Teel, & William O. Bearden, Lessons Learned from the Broadcast Cigarette Advertising Ban, 43 J. Marketing 45, 45–46 (1979) (describing how the Public Health Cigarette Smoking Act of 1969 established a federal program dealing with cigarette package labeling and advertising); but see 44 Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 507 n.12 (1996) (striking down a regulation prohibiting advertisement of alcohol prices on First Amendment grounds, in part because “[i]t is perfectly obvious that alternative forms of regulation that would not involve any restriction on speech would be more likely to achieve the State’s goal of promoting temperance,” including taxation, direct regulation establishing minimum prices or maximum per capita purchases, or education). See Product Placements Market Unhealthy Food to Children, Yale News, Aug. 2, 2011, http://news.yale.edu/2011/08/ 02/product-placements-market-unhealthy-food-children-0 (“[T]he majority of exposure was for regular soft drinks from just one company, Coca-Cola, which accounted for 71% of product-placement appearances viewed by children and approximately 60% of adult and adolescent exposure”); Mike Adams, Soft Drink Company Marketing Tactics: The Experts Sound Off, Natural News, Jan. 8, 2005, http://www.naturalnews.com/003914_soft_drinks&uscore;food_ politics.html (showing that Coca-Cola spent $1.6 billion in the late 1990s for advertising purposes). See Peter S. Menell, 2014: Brand Totalitarianism, 47 U.C. Davis L. Rev. 787 (2014). See Hoofnagle & Whittington, supra note 12. See supra note 18.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

44

Peter S. Menell

of goods and services. In so doing, it reduces consumer confusion and enhances incentives for firms to invest in activities (including R&D) that improve brand reputation. The efficiency of the marketplace depends critically upon the quality of information available to consumers. Proliferation of unreliable information in the marketplace increases consumers’ costs of search and distorts the provision of goods. Consumers will have to spend more time and effort inspecting goods, researching the product market, and actually testing products. Manufacturers will have less incentive to produce quality goods because others will be able to free-ride on such reputations. Like patent and copyright law, trademark law operates by protecting information – words, symbols, or other source-identifying indicia. Through such protection, product manufacturers, service providers, and collective and certification organizations can more easily police information in the marketplace. By supporting the reliability of sourceidentifying symbols, trademark protection is closely intertwined with marketing and advertising. These functions are part of a larger framework of laws and institutions that regulate the quality of information in the marketplace. Just as institutions and policies other than patent and copyright law promote innovation and creativity, a variety of mechanisms in addition to trademark protection are available to provide and regulate market information: (1) common law causes of action protecting against deceit and fraud and consumer protection statutes; (2) public regulation and public enforcement of unfair competition laws; (3) false advertising and deceptive practices/unfair competition laws; (4) industry self-regulation and certification organizations; and (5) consumer information institutions. These alternative policies work in conjunction with trademark protection to facilitate and improve consumer decisionmaking. At the level of internal validity, it is difficult to quarrel with trademark law’s basic design and functioning. Unlike patent protection, it does not confer market power over products and services.145 Like copyright protection, trademarks pose some risk of monopolizing communication, but various doctrines bar trademark protection for generic terms146 and limit protection for descriptive terms.147 The expansion of trademark law for famous marks beyond sourceidentification – what is referred to as dilution protection148 – risks undue power of symbols,149 but these areas of law have been significantly circumscribed.150

145

146

147

148

149

150

See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (limiting trademark protection in a product’s trade dress to the nonfunctional elements). See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 304 (3d Cir. 1986) (“Underlying the genericness doctrine is the principle that some terms so directly signify the nature of the product that interests of competition demand that other producers be able to use them even if terms have or might become identified with a source and so acquire ‘de facto’ secondary meaning”); Am. Cyanamid Corp. v. Connaught Labs., Inc., 800 F.2d 306, 308 (2d Cir. 1986) (“Consumers will not benefit . . . if trademark law prevents competitors from using generic or descriptive terms to inform the public of the nature of their product”). See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (discussing the descriptiveness doctrine). See Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927) (articulating dilution of a well-known mark as a form of trademark harm); see also Jonathan Moskin, Dilution or Delusion: The Rational Limits of Trademark Protection, 83 Trademark Rep. 122 (1993). See Robert N. Klieger, Trademark Dilution: The Whittling Away of the Rational Basis for Trademark Protection, 58 U. Pitt. L. Rev. 789 (1997). See David S. Welkowitz, Famous Marks Under TDRA, 99 Trademark Rep. 983 (2009); Barton Beebe, The Continuing Debacle of U.S. Antidilution Law: Evidence From the First Year of Trademark Dilution Revision Act Case Law, 24 Santa Clara Computer & High Tech. L.J. 449 (2007–2008); Clarisa Long, Dilution, 106 Columbia L. Rev. 1029 (2006).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

45

2. External Perspectives Notwithstanding trademark law’s general desirability, such protection can conflict with other social justice concerns. As with copyright law, trademark law can interfere with freedom of expression.151 Similarly, trademark protection can undermine moral, dignitary, and group interests. Creative artists, professional entertainers, and athletes can have service marks associated with their works and performances. Members of religious, ethnic, racial, and other communities have dignitary interests in words and symbols associated with their faith, race, origin, and community.152 Several recent controversies highlight inherent tensions between trademark protection, individual and group identity, and freedom of expression.153 In contrast to patent154 and copyright law,155 federal trademark law bars registration of marks that consist of or comprise “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”156 Native Americans sought to cancel registration of the National Football League’s “Washington Redskins” trademark on the ground that it is an offensive and disparaging slur.157 By contrast, Simon Tam, a member of a rock band comprised of Asian American members, challenged the TTAB’s refusal to register “The Slants.” Tam asserted that the band’s use of the name was not disparaging and instead reclaimed a racial slur. The U.S. Supreme Court ultimately resolved the trademark registration controversy by striking down Lanham Act Section 2(a)’s disparagement and scandalous bars to registration as violative of the First Amendment.158 Justice Alito explained that: “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”159 While vindicating some First Amendment values, Tam raises serious social justice concerns.160 In the aftermath of George Floyd’s tragic death and the ascendancy of the Black 151

152

153

154 155 156 157

158

159

160

See Bruce P. Keller & Rebecca Tushnet, Even More Parodic than the Real Thing: Parody Lawsuits Revisited, 94 Trademark Rep. 979 (2004). See Jon Keith Parsley, Regulation of Counterfeit Indian Arts and Crafts: An Analysis of the Indian Arts and Crafts Act of 1990, 18 Am. Indian L. Rev. 487 (1993). See Victoria F. Phillips, Beyond Trademark: The Washington Redskins Case and the Search for Dignity, 92 ChicagoKent L. Rev. 1061 (2018); Erik Stegman & Victoria F. Phillips, Missing the Point: The Real Impact of Native Mascots and Team Names on American Indian and Alaska Native Youth, Center for American Progress (July 2014); Rita Heimes, Trademarks, Identity, and Justice, 11 J. Marshall Rev. Intell. Prop. L. 133, 158–65 (2011); K.J. Greene, Trademark Law and Racial Subordination: From Marketing of Stereotypes to Norms of Authorship, 58 Syracuse L. Rev. 431, 436, 444 (2008) (discussing the role of trademarks in reinforcing racial stereotyping (noting the “Aunt Jemima” logo) and pointing out how what is considered offensive and disparaging shifts over time). See supra notes 68–77 and accompanying text. See supra notes 133–35 and accompanying text. See 15 U.S.C. § 1052(a); Lanham Act, § 2(a). See Pro-Football, Inc. v. Blackhorse,112 F.Supp.3d 439 (E.D. Va. 2015) (upholding cancellation of trademark); Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009) (ultimately dismissing challenge based on laches). See Matal v. Tam, 137 S. Ct. 1744 (2017) (striking down disparagement bar); Iancu v. Brunetti, 139 S. Ct. 2294 (2019) (striking down scandalous bar). See Matal v. Tam, 137 S. Ct. 1764 (quoting United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes, J., dissenting)). See Sonia K. Katyal, Brands Behaving Badly, 109 Trademark Rep. 819 (2019) (observing that “[j]ust as it empowered individuals like Simon Tam to reclaim and re-appropriate historically derogatory terms, [the Supreme Court’s decision] also now extends protection to the most entrepreneurial of haters, too”; and noting that the decision has led to numerous registration applications for racist terms and insignias); Margaret Chon & Robert S. Chang, The

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

46

Peter S. Menell

Lives Matter movement, some companies have begun rethinking their use of offensive trademarks.161 Trademarks also have important cultural and geographic significance.162 European nations and particular wine and food producing regions have long advocated protection of geographic designations as both an authentic indicator of source and of product quality as well as a form of regional identity. Trademark law has taken on far greater significance in the Digital/Internet Age where trademarks serve as keyword triggers for advertising. Such advertising has enabled Google, Facebook, and other Internet companies to establish robust multi-sided markets. These portals provide “free” services, such as search, email, and social networking to consumers while auctioning advertising slots, based on consumer search terms and other communications. As noted earlier,163 however, such services come at a real human cost. Advertisers, search engines, and other ad-driven services are seeking to influence and shape their audience. As political activist Eli Pariser recognized, “If you are not paying for the product, you are the product.”164

iii. the macro social justice perspective As reflected in the prior discussion, much IP scholarship and policy focuses on the efficacy of particular IP modalities. Such modal analysis is unquestionably important to better understand the particularized operation of the different regimes. Expanding that analysis to incorporate the broad range of social justice concerns is increasingly important as intellectual property plays a growing role in the Digital Age. But even this broader, bifocal frame misses important macro cross-modal issues, ranging from IP, poverty, and inequality to gender and racial inclusion and larger global justice issues. A. IP, Poverty, and Inequality As a result of the digital revolution, information resources now drive economic growth more than at any time in human history. Increasing the size of the economic pie, however, is only a part of social justice. As reflected in the scholarship of Professors Emmanuel Saez165 and Thomas Piketty,166 as well as in mounting political mobilization questioning economic

161

162

163 164 165

166

Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law, in The Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Hannibal Travis, Trademarks, Legal Remedies, and Social Injustices, in The Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Emily Heil, Quaker Is Dropping the Aunt Jemima Image and Name After Recognizing They Are “Based on a Racial Stereotype”, Wash. Post, Jun. 17, 2020; Rosa Sanchez, NFL’s Washington Redskins to Change Name Following Years of Backlash, ABC News, Jul. 13, 2020. See Justin Hughes, Champagne, Feta, and Bourbon: The Spirited Debate About Geographical Indications, 58 Hastings L.J. 299 (2006). See section II(C)(2). See Eli Pariser, The Filter Bubble: What the Internet Is Hiding from You (2011). See Emmanuel Saez & Gabriel Zucman, Wealth Inequality in the United States since 1913: Evidence from Capitalized Income Tax Data, 131 Quarterly J. Econ. (2016); Facundo Alvaredo et al., The Top 1 Percent in International and Historical Perspective, 27 J. Econ. Persp. 3 (2013); Tony Atkinson, Thomas Pikett, & Emmanuel Saez, Top Incomes in the Long Run of History, 49 J. Econ. Lit. 3 (2011). See Thomas Piketty, Capital in the Twenty-First Century (2013); Thomas Piketty & Emmanel Saez, Income Inequality in the United States, 1913–1998, 118 Quarterly J. Econ. 1 (2003).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

47

inequality in the United States and other developed nations,167 there are, however, much larger societal interests at stake.168 The burgeoning economic literature on income equality reveals significant tilting of income distribution toward the wealthy during the past several decades. Many of the newest billionaires come from the technology sector. Network economics partially explains the tremendous wealth generated by a relatively few information industry enterprises.169 And many of the wealthiest people in the world are technology entrepreneurs.170 Jeff Bezos (Amazon) leads the way, with the founders of Microsoft (Bill Gates), Oracle (Larry Ellison), Google (Sergey Brin and Larry Page), and Facebook (Mark Zuckerberg) not far behind. The sports and entertainment professions, which depend critically upon copyright, trademark, and publicity right protections also contribute to high wealth for a relatively small “superstar” class.171 The interplay among IP, poverty, and inequality more generally is beginning to emerge as IP theory advances and the digital revolution matures. At a basic level, the technological advance produces higher standards of living. It enables society to accomplish more with fewer resources and therefore increases productivity. Whether intellectual property optimally promotes innovation and creativity is a more difficult question as addressed in the internal analysis of IP modes.172 But to the extent that it does, it is Pareto-improving173 in at least a limited sense. No one is required to purchase IP-protected goods. Therefore, in an exchange economy, only those who value such goods more than their cost will purchase the goods. Furthermore, patent and copyright protection eventually expire (this framing, however, affords little solace to those who can’t afford to purchase patented, life-saving medicines). At a coarse level of granularity, modern societies have the benefit of all manner of innovation and creativity – from sanitation technologies that support safe drinking water to telecommunications and modern medicines. As such, innovation tends to reduce poverty and raise standards of living in an absolute sense over the long run (but as John Maynard Keynes famously observed, “In the long run we are all dead”174). The digital revolution has provided especially rapid advance due to the scalability of information technologies. A little more than 50 years ago, Intel co-founder Gordon Moore predicted that the number of transistors in an integrated circuit would double approximately every two years due to advances in semiconductor and related technologies.175 This projection – which has come to be known as Moore’s Law176 – has proven remarkably prescient and helps to explain important aspects of the digital revolution. Given the high cost and risk of semiconductor research, patents undoubtedly played a significant role in this remarkable trajectory. As a result, computer technology is now available to much of the population at relatively low and declining cost. 167

168 169

170 171 172 173 174 175 176

See Bernie Sanders on Economic Inequality, Feelthebern.org, http://feelthebern.org/bernie-sanders-on-economicinequality/. See Joseph E. Stiglitz, How Intellectual Property Reinforces Inequality, N.Y. Times, Jul. 14, 2013. See Michael L. Katz & Carl Shapiro, Systems Competition and Network Effects, 8 J. Econ. Persp. 93 (1994) (discussing the economics of network effects); Michael L. Katz & Carl Shapiro, Network Externalities, Competition, and Compatibility, 75 Am. Econ. Rev. 424 (1985) (describing economic circumstances leading to increasing return to the scale of demand). See The World’s Billionaires, Forbes (2019), https://www.forbes.com/billionaires/#18478d85251c. See Sherwin Rosen, The Economics of Superstars, 71 Am. Econ. Rev. 845 (1981). See supra section II. See supra note 55 (describing the Pareto standard). See Robert Skidelsky, John Maynard Keynes: The Economist as Savior, 1920–1937 62 (1992). See Gordon W. Moore, Cramming More Components onto Integrated Circuits, Electronics 114 (2015). See Moore’s Law, Wikipedia, https://en.wikipedia.org/wiki/Moore%27s_law.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

48

Peter S. Menell

The limited duration of patent and copyright serves as a form of social justice in sharing the bounty of intellectual creativity after its duration expires. One can question, however, whether the duration of either regime is optimal.177 Focusing on the consumption side of social welfare only partially addresses poverty and inequality concerns. There is reason to worry that the growing importance of information resources in the economy adversely affects the distribution of income and wealth. Moreover, even as the total social pie expands, shifts in the sources of economic activity and employment patterns may well be worsening the plight of the least well off in absolute as well as relative terms. We are far from a complete understanding of these phenomena and patterns, but there are some telltale signs. As Professors Erik Brynjolfsson and Andrew McAfee have reported, we are in the midst of an unprecedented economic transformation in which productivity increases while wage rates stagnate.178 According to their research, advances in artificial intelligence (AI) are profoundly restructuring the economy in ways that benefit a small inventive and creative class to the relative, and possibly absolute, detriment of the working class. Although the effects are complex and sectoral,179 there is good reason to believe that the digital revolution is increasingly decoupling productivity and employment.180 One only needs to look at automotive manufacturing or travel agencies to see stark shifts since the late 1990s. As Professor David Autor, who is more sanguine about the effects of AI, notes, “[i]f we automate all the jobs, we’ll be rich – which means we’ll have a distribution problem, not an income problem,”181 – which is precisely the point. And given Moore’s Law, the effects can be rapid and intensify over time. There may be some countervailing forces on the concentration of wealth among Information Age industrialists. The same competitive spirit that has driven Digital Age wealth has produced a new competitive philanthropic age.182 Notwithstanding the benefits that can flow from such philanthropy, we increasingly live in a new Gilded Age in which a new breed of Information Age titans direct social policy183 and distort the political process. These profound societal changes open up a new set of policy challenges. Progressive taxation alone might not provide the best antidote against structural sources of poverty and inequality in the Information Age. More direct engagement with intellectual property and other substantive policy interventions might be advisable. Nonetheless, the need for rapid innovation to stem climate change and public health threats grows ever more apparent, creating a trade-off for compromising IP policy. On the bright side, the increasing availability of widely accessible 177

178

179

180

181 182

183

See, e.g., Menell, supra note 13, at 1354–67, 1371–72 (recommending a short duration for software protection, far less than the life of patents or copyrights); see also Brief of George A. Akerlof et al. as Amici Curiae in Support of Petitioners at 12, Eldred v. Ashcroft, 537 U.S. 186 (2003) (No. 01-618). See Erik Brynjolfsson & Andrew McAfee, Race Against the Machine: How the Digital Revolution Is Accelerating Innovation, Driving Productivity, and Irreversibly Transforming Employment and the Economy (2011); Steve Lohr, More Jobs Predicted for Machines, Not People, N.Y. Times, Oct. 23, 2011, http://www .nytimes.com/2011/10/24/technology/economists-see-more-jobs-for-machines-not-people.html. See Timothy Aeppel, Be Calm, Robots Aren’t About to Take Your Job, MIT Economist Says, Wall St. J., Feb. 25, 2015, http://blogs.wsj.com/economics/2015/02/25/be-calm-robots-arent-about-to-take-your-job-mit-economist-says/? mod=ST1. See David Rotman, How Technology Is Destroying Jobs, Tech Review, Jun. 12, 2013, http://www.technologyreview .com/featuredstory/515926/how-technology-is-destroying-jobs/. See Aeppel, supra note 179. See Fred Barbash, Zuckerberg, Gates, Buffett and the Triumph of Competitive Philanthropy, Wash. Post, Dec. 2, 2014, https://www.washingtonpost.com/news/morning-mix/wp/2015/12/02/mark-zuckerberg-bill-gates-warren-buffettand-triumph-of-competitive-philanthropy/. See Russakoff, supra note 3 (presenting a cautionary tale about the squandering of Mark Zuckerberg’s $100 million gift to transform failing Newark public schools).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

49

information platforms, tools, and training promise to expand opportunity. Yet the forces of wealth concentration – from network effects to advances in machine learning – raise concerns for the plight of future generations. B. Gender and Racial Inequality The concentration of wealth and economic leverage that intellectual property produces places vast power in the hands of a relatively small group of entrepreneurs and their representatives. The class of venture capitalists, corporate titans, Hollywood moguls, and technology and entertainment lawyers reflect historical gender and race biases. These patterns persist in the Information Age. To some extent, these issues reflect long-standing problems in the workplace, such as gender/ race discrimination and the difficulties of achieving work/family balance.184 While cultural familiarity can promote teamwork and productivity, it also reinforces bias and limits access by underrepresented groups.185 These problems are compounded in the technology sector, where the “STEM” fields of science, technology, engineering, and mathematics have long been dominated by white males.186 The so-called “brogrammer” culture in Silicon Valley discourages greater integration across gender and racial lines.187 The issue is gaining salience,188 but progress has been slow. Similar patterns in the business and legal professions reinforce these patterns.189 Inequality and underrepresentation can distort scientific research and public health policy.190

184

185

186

187

188

189

190

See Anne-Marie Slaughter, Unfinished Business: Women Men Work Family (2015); Joan C. Williams & Rachel Dempsey, What Works for Women at Work: Four Patterns Working Women Need to Know (2014); Joan C. Williams, Unbending Gender: Why Family and Work Conflict and What To Do About It (2001). See Bonnie Marcus, The Lack of Diversity in Tech Is a Cultural Issue, Forbes, Aug. 12, 2015, http://www.forbes.com/ sites/bonniemarcus/2015/08/12/the-lack-of-diversity-in-tech-is-a-cultural-issue/#429274483577 (citing a study reporting that top universities graduate Black and Hispanic computer science and computer engineering students at twice the rate that leading technology companies hire them, indicating that the talent pool is not the primary problem). See Joan C. Williams, Katherine W. Phillips, & Erika V. Hall, Double Jeopardy? Gender Bias Against Women of Color in Science (2014), http://www.uchastings.edu/news/articles/2015/01/double-jeopardy-report.pdf; Jordan Weissman, The Brogrammer Effect: Women Are a Small (and Shrinking) Share of Computer Workers, The Atlantic, Sept. 12, 2013, www.theatlantic.com/business/archive/2013/09/the-brogrammer-effect-women-are-a-smalland-shrinking-share-of-computer-workers/279611/. See Kieran Snyder, Why Women Leave Tech: It’s the Culture, Not Because “Math Is Hard”, Fortune, Oct. 2, 2014, http://fortune.com/2014/10/02/women-leave-tech-culture/ (reporting on a survey of 716 women who left technology positions; finding that 27 percent of women cited workplace culture as a reason for leaving jobs in the technology industry, whereas 68 percent cited motherhood as a reason); Weissman, supra note 186. See Joan C. Williams, Hacking Tech’s Diversity Problem, Harv. Bus. Rev., Oct. 2014, https://hbr.org/2014/10/hackingtechs-diversity-problem; Sheryl Sandberg, Lean In: Women, Work, and the Will to Lead (2013). See Deborah L. Rhode, Law Is the Least Diverse Profession in the Nation. And Lawyers Aren’t Doing Enough to Change That. Lawyers Are Leading the Push for Equality. But They Need to Focus on Their Own Profession., Wash. Post, May 27, 2015, https://www.washingtonpost.com/posteverything/wp/2015/05/27/law-is-the-least-diverse-professionin-the-nation-and-lawyers-arent-doing-enough-to-change-that/; Deborah L. Rhode, The Unfinished Agenda: Women and the Legal Profession (2001), http://womenlaw.stanford.edu/pdf/aba.unfinished.agenda.pdf; Deidre Keller & Anjali Vats, A Primer on Critical Race Intellectual Property, in The Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries, in The Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Anita Holdcroft, Gender Bias in Research: How Does it Affect Evidence Based Medicine?, 100 J. Royal Soc. Med. 2 (2007); NIH Guidelines on the Inclusion of Women and Minorities as Subjects in Clinical Research, 59 Fed. Reg. 14508–13 (1994).

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

50

Peter S. Menell

Hollywood has long been prone to gender and racial bias as reflected in its products,191 employment practices,192 and awards.193 Beyond the injustice of biased employment practices, these patterns have far-reaching effects on cultural diversity and freedom of expression. Creative industries play a vital role in human development, cultural understanding, and democracy.194 C. Global IP Justice With the rise of information resources and global trade, intellectual property has emerged as a central battleground in trade policy. The current controversy over intellectual property rights unfolding in the Trans-Pacific Partnership process195 is the latest in a struggle dating back well over a century.196 With advances in global transportation infrastructure, policymakers and trade

191

192

193

194 195

196

On bias in music, see Reebee Garofalo & Steve Waksman, Rockin’ Out: Popular Music in the U.S.A. (6th ed. 2013) (tracing the history of music and social history); K.J. Greene, Intellectual Property at the Intersection of Race and Gender: Lady Sings the Blues, 16 Am. U. J. Gender, Soc. Pol’y & L. 365 (2008); Greene, supra note 133; Siva Vaidhyanathan, Copyrights and Copywrongs: The Rise of Intellectual Property and How It Threatens Creativity 117–48 (2001) (tracing the appropriation of blues by rock ’n roll artists over time); K.J. Greene, Copyright Culture & Black Music: A Legacy of Unequal Protection, 21 Hastings Comm. & Ent. L.J. 339 (1999); on bias in film, see Brian Locke, Racial Stigma on the Hollywood Screen: The Orientalist Buddy Film (2009); The Persistence of Whiteness: Race and Contemporary Hollywood Cinema (Daniel Bernadi ed., 2007); Vincent F. Rocchio, Reel Racism: Confronting Hollywood’s Construction of Afro-American Culture (2000); Clint C. Wilson II, Felix Gutierrez, & Lena Chao, Racisms, Sexism, and the Media: The Rise of Class Communication in Multicultural America (3rd ed. 2003); Denise B. Bielby & William T. Bielby, Women and Men in Film: Gender Equality Among Writers in a Culture Industry, 10 Gender & Society 248 (1996); Edward Guerrero, Framing Blackness: The African American Image in Film (1993). See Rebecca Keegan, The Hollywood Gender Discrimination Investigation Is On: EEOC Contacts Women Directors, L.A. Times, Oct. 2, 2015, http://www.latimes.com/entertainment/movies/moviesnow/la-et-mn-women-directors-dis crimination-investigation-20151002-story.html (citing a USC study finding that only 1.9 percent of directors of the top-grossing 100 films of 2013 and 2014 were women and a Directors Guild of America study finding that women represented just 14 percent of television directors in 2013 and 2014); Eithne Quinn, Closing Doors: Hollywood, Affirmative Action, and the Revitalization of Conservative Racial Politics, 99 J. Am. Hist. 466 (2012). See Tim Gray, Academy Nominates All White Actors for Second Year in Row, Variety, Jan. 14, 2016, http://variety .com/2016/biz/news/oscar-nominations-2016-diversity-white-1201674903/; Michael Cieply & Brooks Barnes, Diversifying Film Academy Is a Tall Order, N.Y. Times, Feb. 5, 2016, at A1 (reporting that the Academy of Motion Picture Arts, which picks the Oscar nominees and winners, is 87 percent white and 58 percent male; and two-thirds of the members are at least 60 years old). The numbers were more skewed just a few years earlier. See John Horn, Nicole Sperling & Doug Smith, Unmasking Oscar: Academy Voters Are Overwhelmingly White and Male, L.A. Times (Feb. 19, 2012), http://www.latimes.com/entertainment/envelope/oscars/la-et-unmasking-oscar-academy-project20120219-story.html (reporting that the members of the Academy of Motion Picture Arts and Sciences are 94 percent white, 2 percent African American, and less than 2 percent Latino; and 77 percent male); Esther Breger, The “Hollywood Blackout” at the 1996 Academy Awards, New Republic, Jan. 26, 2016, https://newrepublic.com/article/ 128584/hollywood-blackout-1996-academy-awards (reporting that when People magazine took aim at the lack of diversity among the nominees, celebrities were unwilling to join the protest). See supra section II(C)(2). See Sean M. Flynn et al., The U.S. Proposal for an Intellectual Property Chapter in the Trans-Pacific Partnership Agreement, 28 Am. U. Int’l L. Rev. 105 (2012); Zehra Betul Ayranci, Intellectual Property Social Justice on the International Plane, in The Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Marshall Leaffer, International Copyright from an American Perspective, 43 Ark. L. Rev. 373, 383 n.49 (1990); Gerhard Joseph, Charles Dickens, International Copyright, and the Discretionary Silence of Martin Chuzzlewit, 10 Cardozo Arts & Ent. L.J. 523 (1992); Edward G. Hudon, Literary Piracy, Charles Dickens, and the American Copyright Law, 50 Am. Bar. Ass’n J. 1157 (1964). At the time that the Berne Convention was being established, the U.S. imported far more books than it exported. See The Manufacturing Clause 4 (Study No. 35), reprinted in 2A Omnibus Copyright Revision Legislative History (George S. Grossman ed., 2001). Leading American publishers favored retention of high tariffs on imports. See id. at 5. Thus, the motivation for such protectionism was not merely to disadvantage foreign authors.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

Mapping the Intellectual Property/Social Justice Frontier

51

negotiators increasingly focus on the protection of intangible resources.197 The Internet has opened up a vast new frontier in information data flows and services. Intellectual property is a growing part of the larger international development picture. Multinational corporations promote strengthening IP rights in the developing world as a means for encouraging foreign direct investment. They advocate such development as essential to developing new local industries that can lift these nations out of poverty and nurture the creative arts.198 Skeptics see sweatshops, strip-mining, deforestation, pollution, threats to indigenous peoples, child labor, and political corruption. They also see liberalization of trade with nations lacking safe working conditions, environmental standards, and fair wages as a threat to wage and employment levels in the developed nations. Like advances in AI and robotics, globalization has contributed to stagnant wages in industrialized economies through the loss of manufacturing jobs. There is little question that shoring up of IP rights and trade liberalization affects human and cultural rights, economic inequality, labor conditions, environmental protection, and a host of other critical issues. The issues range from providing life-saving drugs to the poorest people in the world to addressing environmental degradation, protecting the global environment, combating unsafe working conditions, and eradicating abusive child labor practices. As with the interplay of IP and inequality more generally, the policy matrix is replete with paradoxes and inherent conflicts. Innovation and expressive creativity promise to help developing nations to address the often dire plight of their citizens. Yet this vision conflicts with various nonutilitarian perspectives as well as the distorting influences of corporate interests and geopolitics.

conclusion Given the growing importance of intangible resources in the economic, the social, and the political spheres, intellectual property scholars must view intellectual property law and institutions with a broader lens that integrates social justice dimensions. Several IP scholars have pointed the way.199 This chapter sketches a capacious framework. Within each mode of intellectual property protection, we need to use a bifocal lens. In addition to the conventional issues involved in assessing the internal validity of intellectual property regimes (for example, does patent law, trade secret law, and copyright promote progress as judged by the conventional utilitarian lens? Does trademark law effectively safeguard the integrity of the consumer marketplace?), scholars must also explore the broader range of social justice concerns bearing on the particular intellectual property modality: human rights, moral

197

198

199

See generally Michael P. Ryan, Knowledge Diplomacy: Global Competition and the Politics of Intellectual Property (1998) (chronicling and analyzing how the information revolution intensified efforts by multinational corporations and developed nations to establish stronger international IP protection). See Keith E. Maskus, Economic Development and Intellectual Property Rights: Key Analytical Results from Economics, in Research Handbook on the Economics of Intellectual Property Law: Volume I Theory 656 (Peter S. Menell & Ben Depoorter eds., 2019); Jean Raymond Homere, Intellectual Property Rights Can Help Stimulate the Economic Development of Least Developed Countries, 27 Colum.-VLA J. L. & Arts 277 (2004); Keith E. Maskus, Intellectual Property Challenges for Developing Countries: An Economic Perspective, 2001 U. Ill. L. Rev. 457; Sean A. Pager, Accentuating the Positive: Building Capacity for Creative Industries into the Development Agenda for Global Intellectual Property Law, 28 Am. U. Int’l L. Rev. 223 (2012); see also Laura Bradford, A Closer Look at the Public Domain, 13 Green Bag 2d 343, 344–45 (2010) (reporting that despite Ghana’s vibrant musical tradition, many of the country’s artists operate from outside the country due to the lack of enforceable copyright protections, and indigenous music is being displaced by nonnative, principally American, pop music). See supra note 12.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

52

Peter S. Menell

rights, cultural and group interests, indigenous people’s rights, distributive concerns, and other externalities, such as environmental degradation and climate change. Beyond this dual mode-specific focus, intellectual property has important ramifications for larger questions of income, wealth, power, race, and gender inequality as well as global justice. Any legal and policy regime that concentrates economic power and wealth to the extent that intellectual property protection does has far-reaching effects on economic and social justice. The technology and culture industries, grounded in intellectual property, are especially important in driving economic growth, providing telecommunication infrastructure and filling the airwaves, influencing the functioning of political institutions, educating future generations, and addressing public health, food supply, and climate-change challenges on a global scale. Intellectual property law and policy should thus be seen not just as an engine of economic progress. By incorporating the social justice principles of equitable access, inclusion, and empowerment, the intellectual property regime can also function as an engine of human and cultural flourishing and provide meaningful support for dignitary values.

https://doi.org/10.1017/9781108697613.004 Published online by Cambridge University Press

2 The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law Margaret Chon* and Robert S. Chang**

Introduction I. Contextualizing the Cases and their Consequences A. Race B. Progress II. A Tale of Three Cases: Blackhorse, Tam, and Brunetti A. The Cases B. The Consequences III. Revisiting IP Through a Racial Justice Lens A. Recalibrating Trademark Law’s Goals and Purposes B. Commodification Jujitsu IV. Tentative Conclusions? From Racial Formation to Racial Transformation

page 54 57 57 59 59 60 62 68 68 70 74

They took everything and ground it down to dust as fine as gunpowder, they fired their guns into the air in victory and the strays flew out into the nothingness of histories written wrong and meant to be forgotten. Stray bullets and consequences are landing on our unsuspecting bodies even now.1

*

Donald and Lynda Horowitz Professor for the Pursuit of Justice, Seattle University School of Law. This chapter is dedicated to the late Honorable Don Horowitz, a dear mentor and friend to both authors. Thanks are due to Galilee Kamai (class of 2022), Jenny Wu (class of 2021), Lauren Sewell (class of 2019), Mio Asami (class of 2018), and Natasha Khanna (class of 2017) for their research support, as well as Professors Charlotte Garden, Jessica Kiser, Ronald Krotoszynski, Lisa Ramsey, and David Skover for their helpful comments. This project benefited from valuable feedback from the participants of Race + IP 2021, hosted by FAMU College of Law; the Chicago IP Colloquium, cohosted by Chicago-Kent College of Law and Loyola University Chicago School of Law; the Conference on Medicine, Music, & Mascots: Furthering Social Justice in the Age of Intellectual Property, hosted by Gonzaga University School of Law’s Center for Civil and Human Rights; and the organizers of (the inaugural) Race + IP 2017, hosted by Boston College (where this project was incubated), especially Professors Anjali Vats, Deidré Keller, and Jessica Silbey. ** Professor of Law and Executive Director, Fred T. Korematsu Center for Law and Equality, Seattle University School of Law. The author served as co-counsel to various minority bar associations that filed amicus curiae briefs in support of the government’s position in In re Tam, No. 2014-1203, Fed. Cir., July 23, 2015; in support of the Blackhorse petitioners in Pro-Football, Inc. v. Blackhorse, No. 15-1874 (4th Cir., Feb. 11, 2016); and in support of the government in Matal v. Tam, 15-1293 (U.S. Supreme Court, Nov. 16, 2016). 1 Tommy Orange, There There 10 (2018).

53 https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

54

Margaret Chon and Robert S. Chang

INTRODUCTION

On January 11, 2017, The Slants™ released “The Band Who Must Not Be Named,” describing it as a “special EP that commemorates the band’s defining moment: appearing at the Supreme Court of the United States.”2 This release preceded by one week the oral argument in their facial First Amendment3 challenge to a provision in the Lanham Act that had permitted the government to reject or cancel federal registration of disparaging trademarks.4 The Trademark Trial and Appeal Board (TTAB) had upheld the denial of the band’s application to register the band’s name as its trademark on the federal register, deciding that the mark was racially disparaging.5 The Court of Appeals for the Federal Circuit initially affirmed but later vacated the denial of registration, through an en banc decision.6 In a different matter, the TTAB had previously canceled the federal registration of several marks owned by the Washington Football Team based on the same statutory provision.7 As Simon Tam, the leader of the band, challenged the denial of the registration of his mark, the corporate owner of the football team, Pro-Football, Inc., challenged the cancelation of its marks, which were versions of the racially derogatory term “R*******.”8 Tam’s legal challenge was the first to reach the Supreme Court, which accepted review of his case but rejected Pro-Football’s.9 2

3 4

5

6

7

8

9

The Band Who Must Not Be Named, The Slants: Discography, http://www.theslants.com/music/. This chapter does not refer to the band as “who,” which anthropomorphizes the band. U.S. Const., amend. I. 15 U.S.C. § 1052(a) (2006) (“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”). In re Simon Shiao Tam, 108 U.S.P.Q.2d (BNA) 1305 (T.T.A.B. 2013); aff’d by In re Simon Shiao Tam, 785 F.3d 567 (Fed. Cir. 2015) (refusing registration of Tam’s trademark application). In re Simon Shiao Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc) (reversing and vacating prior decisions to cancel Tam’s trademark registrations). Initially, Tam’s legal challenge had focused on the application of this provision to Tam’s registration application. In an as-applied challenge, the law or provision itself is not challenged. However, by the time the case came before the Supreme Court, the focus had shifted to a facial challenge to the constitutionality of the provision itself. According to Tam, his lawyers had argued nonconstitutional grounds before the initial Federal Circuit panel, among other things arguing that § 2(a) had been selectively enforced against applicants of color. However, “about a minute and a half into the oral argument, the federal judge [Kimberly Moore] said essentially we don’t care about those arguments. ‘We want to talk about free speech[,]’ which was just a minor thing in this barrage of paperwork we had.” Jacqueline Keeler, Simon Tam of the Slants Speaks with Indian Country Today: Full Interview, Jan. 5, 2016; updated Sept. 13, 2018. Professor Lisa Ramsey notes that Judge Moore (under her maiden name) wrote a paper about disparaging trademarks before she became a judge. Lisa P. Ramsey, A Free Speech Right to Trademark Protection?, 106 Trademark Rep. 797, 801 n.13 (2016) (citing to Kimberly A. Pace, The Washington R[*******] Case and the Doctrine of Disparagement: How Politically Correct Must a Trademark Be?, 22 Pepp. L. Rev. 7 (1994)). Amanda Blackhorse v. Pro-Football, Inc., 111 U.S.P.T.Q.2d (BNA) 1080 (T.T.A.B. 2014) (canceling Pro-Football’s trademark registrations based on § 2(a) of the Lanham Act). Pro-Football, Inc. v. Amanda Blackhorse, et al., 112 F. Supp. 3d 439 (E.D. Va. 2015) (affirming TTAB ruling and finding that the cancelations did not violate the First and Fifth Amendments), vacated, Pro-Football, Inc. v. Blackhorse, 709 F. App’x 182 (4th Cir. 2018) (vacating in light of Matal v. Tam, 137 S. Ct. 1744 (2017)). Throughout this chapter, the original word mark at issue will not be spelled out in full. Among the procedural peculiarities surrounding these two cases is that the Supreme Court hastened to grant certiorari in 2016 from the Federal Circuit in Tam, despite the absence of an ongoing circuit split, or even the additional insight of another circuit ruling. The Blackhorse appeal filed in 2015 had been fully briefed with oral argument tentatively scheduled during the last week of October 2016 before the Fourth Circuit. Apparently concerned that the Supreme Court had already granted review over the Tam case prior to the resolution of the Blackhorse case at the circuit court level, Pro-Football filed a petition for a writ of certiorari before judgment, which the Supreme Court denied on Oct. 3, 2016. See Dkt. No. 15-1311, https://www.supremecourt.gov/docketfiles/15-1311.htm (last visited Nov. 8, 2022). This chronology underscores not only the arguably premature nature of the review in Tam, but also how the Court seemed eager not to confront the factual record that had been established in Blackhorse through decades of litigation over the interpretation

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

55

As a result, the facts directly before the Court, in a narrative shaped by the rock group’s bandleader, presented the story of a member of a racial minority intentionally using a racially (self-)disparaging term as part of a political project of re-appropriation, rather than the less sympathetic narrative of a corporate owner seeking to protect and maximize huge profits derived from the commodification of racist marks. Having objected to these racist marks for many years,10 the many members of affected indigenous communities represented by Amanda Blackhorse and before her, Suzan Harjo, and their co-parties, were not heard, while the band (now The Slants®)11 continues to brand itself as having successfully gotten attention (although perhaps not through its music) from the Supreme Court.12 One view of this juxtaposition is that a tacit alliance between a First Amendment hero in the form of Tam and economically powerful but politically regressive corporate interests allowed Tam’s case to serve as a Trojan horse that ultimately disregarded the significant interests of other minority groups such as the Indian tribes. After the Tam decision, the Court swiftly struck down another Section 2(a) provision of the Lanham Act, which had prohibited the registration of immoral and scandalous matter, in Iancu v. Brunetti.13 Although the reasoning in Tam and Brunetti varied according to the doctrinal preferences of each of the Justices, the Court nonetheless was in unanimous agreement about the results.14 Cast against the backdrop of these recent judicial developments, this chapter is intended to be part of a larger conversation about intellectual property (IP) social justice, rather than about the specific doctrinal convolutions that resulted in the takedown of the government’s power to deny or cancel federal registration of trademarks that might be either racially disparaging, immoral, and/or scandalous.15 Relying on insights and methodologies established by critical race

10

11 12

13

14

15

of the same section of the Lanham Act. The Court also overlooked the enormous difference in assessing the use of a racial slur by members of a subject minority group, such as Tam, as opposed to its use by a member of a dominant, nonsubject group, such as Pro-Football. In doing so, it missed an opportunity to clarify socially meaningful (if not legally enforceable) differences in these two positions. See infra, text accompanying notes 69–75. Suzan Harjo and six other Native American petitioners had brought the initial petition to cancel the Washington Football Team’s federal registrations in 1992. The litigation lasted for almost a decade before the U.S. Court of Appeals for the D.C. Circuit held that the petition failed due to laches. Pro-Football v. Harjo, 565 F.3d 880 (D.C. Cir. 2009). While Harjo’s appeal was pending, six new Native American petitioners, including Amanda Blackhorse, filed a petition to cancel the same registrations owned by Pro-Football, Inc. The Blackhorse proceedings were suspended pending the disposition of the Harjo action, and resumed in 2010. Blackhorse and her co-petitioners were much younger than Harjo and were thus able to work around the laches defense and prevail at the district court level. See Pro-Football, Inc. v. Amanda Blackhorse, et al., 112 F. Supp. 3d 439 (E.D. Va. 2015). The Slants, Registration No. 5332283. Simon Tam, Slanted: How an Asian American Troublemaker Took on the Supreme Court (2019). This selfbranding through the notoriety or celebrity involved with a legal case is reminiscent of the protagonist’s ultimately flawed efforts to brand himself in David Dante Trout, Portrait of the Trademark as a Black Man: Intellectual Property, Commodification, and Redescription, 38 U.C. Davis L. Rev. 1141, 1177 (2005) (claiming Baudrillard “saw advertising at the heart of mass society, whereby social organization would increasingly become a function of signifier manipulation and socialization and popular assimilation of its codes”) (citing to Jean Baudrillard, The System of Objects, reprinted in Selected Writings 22 (Mark Poster ed., 2001)). Iancu v. Brunetti, 139 S. Ct. 2294 (2019) (majority opinion by Kagan; concurring and dissenting opinions by Breyer and Sotomayor). Matal v. Tam, 137 S. Ct. 1744 (2017) (eight justices; two plurality opinions – one by Kennedy and one by Alito); Iancu v. Brunetti, 139 S. Ct. 2294 (2019). Iancu v. Brunetti, 139 S. Ct. 2294, 2299 (2019) (“Slightly different explanations, then, but a shared conclusion: Viewpoint discrimination doomed the disparagement bar. If the ‘immoral or scandalous’ bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine . . . So the key question becomes: Is the “immoral or scandalous” criterion in the Lanham Act viewpoint-neutral or viewpoint-based? It is viewpointbased”) (Kagan, J.).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

56

Margaret Chon and Robert S. Chang

theory,16 it inquires into the complicated consequences of claims to representation created when a member of a racial minority group successfully challenges a federal regulation while others seek to rely on the same provision for protection against well-documented harmful impacts.17 While critical race theorists have explored racially harmful speech in the realms of tort law and campus speech codes,18 relatively few have yet analyzed the impacts of racialized commercial speech.19 Yet, as pointed out by Hannibal Travis elsewhere in this volume, trademarks can give rise to expressional harms, often associated with media such as advertising campaigns, yet with limited remedies provided under the dominant theories that undergird trademark law here or elsewhere.20 Deployed within national (indeed international) media markets, and protected in the U.S. under the First Amendment, the pervasiveness of symbols such as trademarks circulating via social media and other digital networked technologies magnifies cultural and social harms that may have been mitigated to some extent previously by the ‘stickiness’ of print media. And the Supreme Court’s recent trademark decisions can be contextualized within a trend towards a deregulatory First Amendment, in which the banner of expressive freedom is waved over the burial of other, arguably equally compelling liberty interests,21 all against the backdrop of a disturbingly rapid sea change in the media environment as it relates to protected speech.22 In section I of this chapter, we first describe what we mean by “race” – an often ambiguous yet highly charged term. We also briefly consider the larger policies and purposes of IP, introducing its overlooked social justice dimensions. In section II, we discuss the Supreme Court’s Tam plurality opinions, which all endorsed a particular approach toward race, as well as toward IP as it relates to a shared public communicative sphere: a view in which a color-blind and formal opportunity to participate is all that matters. We argue that this simplistic account ignores not

16

17

18

19

20

21

22

See Deidré A. Keller & Anjali S. Vats, A Primer on Critical Race Intellectual Property, ch. 26 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Anjali Vats & Deidré A. Keller, Critical Race Theory as Intellectual Property Methodology, in Handbook of Intellectual Property Research 777 (Irene Calboli & Maria Lillà Montagnani eds., 2021). Arianne E. Eason, Laura M. Brady, & Stephanie A. Fryberg, Reclaiming Representations & Interrupting the Cycle of Bias Against Native Americans, Daedalus (Spring 2018) (“Widely available media representations of Native Americans carry significant consequences, as they undermine Native Americans’ psychological well-being and hopes for future success. For example, Stephanie Fryberg and colleagues demonstrated through multiple studies that negative stereotypes of Native Americans and sports mascots such as the Cleveland Indians’ Chief Wahoo depressed Native Americans’ self-esteem, decreased perceptions of their Native community’s worth, and made them less likely to envision successful futures (such as earning good grades, finding a job, or completing a degree”) (citing to Stephanie A. Fryberg et al., Of Warrior Chiefs and Indian Princesses: The Psychological Consequences of American Indian Mascots, 30 Basic & App. Soc. Psych. 208–18 (July 2008)). Richard Delgado & Jean Stefancic, Four Observations About Hate Speech, 44 Wake Forest L. Rev. 353 (2009); Mari Matsuda et al., Words that Wound: Critical Race Theory, Assaultive Speech, and the First Amendment (1993). Sonia Katyal, Semiotic Disobedience, 84 Wash. U. L. Rev. 489 (2006) (“Principles of trademark and copyright ownership have allowed corporations to consecrate their symbols and images, allowing for a particularly robust form of incontestability”); Jessica Silbey, Intellectual Property Harms: A Paradigm for the Twenty-First Century, 99 B.U. L. Rev. 2247, 2451 (2019) (describing IP harms as “harms to communities, systems, and institutions. Although unmistakably composed of individual people, the health of these communities, systems, and institutions as such is the focus of IP complaints”). See Hannibal Travis, Trademarks, Legal Remedies, and Social Injustices, ch. 6 in The Cambridge Handbook of Intellectual Property and Social Justice, Steven D. Jamar & Lateef Mtima eds., 2023) (pointing out, for example, that the “recent ban in British Advertising Codes on harmful gender stereotypes in advertising raises questions about externalities imposed on both women and men from biased representations and derogatory imagery in ad-supported media”). See Charlotte Garden, Deregulatory First Amendment Strikes Back, Take Care, July 3, 2018, https://takecareblog.com/ blog/the-deregulatory-first-amendment-strikes-back (last visited Nov. 8, 2022). Cf. Trout, supra note 12, at 1177.

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

57

only the persistent, systemic, and powerful asymmetries in the communication of shared cultural symbols protected by IP laws,23 but also the complicated ways in which language and culture work together. The Court’s decisions also necessarily call into question the reach of civil rights statutes premised on Congressional power to address discrimination in public accommodations and other communicative arenas associated with a robust public sphere. Following this, section III of the chapter maps how commerce clause-based IP laws, such as trademark law, can be reimagined in the service of racial – and more generally – social justice within IP. It locates commerce-based IP as operating within simultaneous marketplaces of goods and communication, both of which are regulated by the state, which manages the competing and sometime conflicting freedoms of participants. We elaborate on a proposed framework, which we call “commodification jujitsu,” in which the exclusive rights of IP are deployed to further the goals of IP justice. Understood this way, IP potentially can contribute to racial transformation instead of the re-inscription of derogatory expression harmful to racial minority groups. I . CONTEXTUALIZING THE CASES AND THEIR CONSEQUENCES

This section focuses on two key terms – race and progress – to frame the chapter’s discussion of the Supreme Court cases and their implications for IP social justice. A. Race Critical race theorists view race as a type of social construction constantly in formation, a process rather than a category, more of a verb than a noun.24 The continuing process of racial formation through cultural, economic, political, and social systems is often (although not always) consistent with and shaped by the imperatives of white supremacy. Yet, despite the premise of what a beloved pioneer, Derrick Bell, called the permanence of racism, the question of how IP, and particularly IP law, contributes to racial formation and hierarchy is not as clear cut a story as other examples squarely drawn from narratives of civil rights struggles such as Korematsu v. U.S.25 Nonetheless, we claim that IP legal doctrines, as do all areas of law, construct racialized subjects and systems of racial domination.26 And IP laws and policies can create conflict with the fundamental commitments of civil rights laws to promote racial equality, not to mention other types of human rights such as gender equality. In the process of exploring how IP constructs or “forms” race, the conceptual vessel of race risks being oversimplified in several critical ways. It can overlook the many differences in how we each 23

24

25

26

C. Edwin Baker, Scope of the First Amendment Freedom of Speech, 25 UCLA L. Rev. 964, 974–81 (1978); Lisa McLaughlin, Feminism and the Political Economy of Transnational Public Space, in After Habermas: New Perspectives on the Public Sphere 156, 162 (Nick Crossley & John Michael Roberts eds., 2004) (“increases in commercialization, concentration in media ownership and an unprecedented growth in large media corporations have been accompanied by an erosion of community and national control over media”). Michael Omi & Howard Winant, Racial Formation in the United States: From the 1960s to the 1990s (1996) (describing racial formation as the “the sociohistorical process by which racial categories are created, inhabited, transformed, and destroyed” specifically through “historically situated projects in which human bodies and social structures are represented and organized”). Korematsu v. United States, 323 U.S. 214 (1944). In 1984, after evidence was discovered the government knowingly withheld information from the courts during World War II on the critical question of military necessity, Fred Korematsu’s wartime conviction was vacated. Korematsu v. United States, 584 F. Supp. 1406 (N.D. Cal. 1984). Keller & Vats, supra note 16; see also Seeing Race Again: Countering Colorblindness Across the Disciplines (Kimberlé Williams Crenshaw et al. eds., 2019) (arguing that all disciplines have contributed to color-blindness, therefore masking white supremacy).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

58

Margaret Chon and Robert S. Chang

engage simultaneously as dominant and subordinate racialized individual actors within IP and other legal regimes. And at the group level, the various ways in which any particular racial group is simultaneously more and less powerful vis-à-vis other groups27 is fraught with potentials for misunderstanding and miscommunication among those of otherwise parallel political commitments. A prime example is the tension between the goals of Simon Tam and those of Amanda Blackhorse (and, before her, Suzan Harjo).28 Compare Blackhorse’s premise that Section 2(a) of the Lanham Act was a legitimate regulation of speech providing an important legal basis to recognize the harmfulness of Pro-Football’s marks to her and the communities she represented with Tam’s ardent perspective that the government’s decision to deny federal registration of his mark violated his speech rights.29 Both Blackhorse and Tam were plausibly fighting for the rights of minority groups to exert some form of representational sovereignty, that is, to control the use of racially derogatory symbols directed at their communities and to place power back in the hands of those people who have traditionally been harmed by the racist language in question.30 These competing narratives of freedom from harm raise complex questions of how antiracist activists and scholars engage in coalitional strategies that speak back against dominant frameworks. They also bring into question the role of IP legal doctrines in framing these challenges, especially when the affected stakeholders may disagree on strategies.31 Another important critical race theory insight is that the intersectional identities we each embody cannot be reduced to this one, albeit critically important social category of race. The spheres of gender, class and/or socio-economic status, sexual orientation – and, importantly, in the context of decolonization, of indigeneity, nationality, and geopolitical history – as well as other key identity attributes – cannot be separated from the main analytical bucket of race without violence to the integrity of the overall endeavor of reaching for social justice.32 No doubt, it is ambitious to embrace both directions – acknowledge difference both among racial categories and with regard to other social categories – while focusing on the strategically essentialist33 project of race and IP. These twin insights carry great methodological challenges to identify the “articulate silences”34 of the doubly or triply displaced, such as the Blackhorse litigants who were ultimate silenced in the unforeseen intertwining of their ongoing efforts with Tam’s.

27

28

29

30

31

32

33

34

Eric K. Yamamoto, Interracial Justice: Conflict & Reconciliation in Post-Civil Rights America 109–110 (1999) (coining the term “simultaneity” to denote such relative relationships among different groups of color). Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015), vacated, 709 F. App’x 182 (4th Cir. 2018); Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009). Tam, supra note 11. Indeed, Tam has expressed support for the antimascoting campaigns of Native American groups. See Keeler, supra note 6. Representational sovereignty by communities of color could be viewed as the flip side of cultural oppression. See Iris Marion Young, The Five Faces of Oppression, in Diversity, Social Justice, and Inclusive Excellence 3, 24 (Seth N. Asumah & Mechthild Nagel eds., 2014) (defining cultural imperialism as “the universalization of a group’s experience and culture, and its establishment as a norm . . . [such that these] groups project their own experience as representative of humanity as such”). Richard Schur, Authentic Black Cool? Branding and Trademarks in Contemporary African American Culture, in Are You Entertained? Black Popular Culture in the Twenty-First Century 175, 179–81 (Simone C. Drake & Dwan K. Henderson eds., 2020) (analyzing how hip hop brand culture may reify negative stereotypes of Black communities). Kimberlé Crenshaw, Demarginalizing the Intersection of Race and Sex: A Black Feminist Critique of Antidiscrimination Doctrine, Feminist Theory and Antiracist Politics, 1989 U. Chi. Legal F. 139, 167 (1989). Strategic essentialism is defined as a “political tactic employed by a minority group acting on the basis of a shared identity in the public arena in the interests of unity during a struggle for equal rights,” Oxford Reference, Strategic essentialism. King-Kok Cheung, Articulate Silences (1993) (exploring the symbolic roles of silence vis-à-vis speech in Asian American texts).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

59

B. Progress The master constitutional narrative of copyright and patent laws in the U.S. is the promotion of progress.35 This mandate, forged within the European Enlightenment and transplanted to North America, brought with it the well-documented baggage of dichotomies: between what was deemed to be civilized versus uncivilized, between a better future and a lesser past, toward a glorious denouement of technological success, while leaving the primitive behind. This built-in conceptual binary and forward trajectory is reflected in legal doctrine, where the border between original and traditional, between novel and already known (between what the late legal scholar Keith Aoki playfully called the difference between cooked and raw knowledge36), constitutes a legal boundary between intangible things that are commercially viable – and therefore valuable – as opposed to those that are not. Federal trademark law is premised on the interstate commerce power of Congress37 rather than upon its patent and copyright power through the “progress” clause. It extends the commercial rights rationale of copyright and patent law to the use of marks to identify source of origin of goods and services sold across state lines. Thus, while all U.S. IP tends towards market-based rationales (or economic instrumentalism rather than personality or other bases for protection), trademark law is arguably the most nakedly commerce-oriented of all the various species of IP.38 Nonetheless, trademark law aligns with copyright and patent law under the general rubric of the so-called big three of IP, through the regulation of so-called intangible goods to maximize social welfare, with the overall goal of human actualization. And as we develop further in section III, the enhancement of social welfare via trademark law has moved far beyond mere source identification and contributes in often under-estimated ways to IP social justice, characterized by “tenets of socially equitable access, inclusion, and empowerment.”39 As commercial identities, trademarks are referenced by all market participants (not just trademark owners), which imbue them with great symbolic power, going far beyond mere economic policy goals. The juxtaposition of the Blackhorse, Tam, and Brunetti cases highlights the tension between the commercial harms recognized within standard trademark doctrine and an IP social justice orientation toward and understanding of the noncommercial harms that trademarks can inflict through nationwide circulation of demeaning symbols. The next section further explores this tension. II . A TALE OF THREE CASES : BLACKHORSE , TAM , AND BRUNETTI

This section turns to the three Supreme Court cases and their immediate consequences to the marketplace of goods as well as the so-called marketplace of ideas. It explores the intersections 35 36

37

38

39

U.S. Const., art. I, § 8, cl. 8 (“to promote the Progress of Science and useful Arts”). Keith Aoki, Food Forethought: Intergenerational Equity and Global Food Supply: Past, Present, and Future, 2011 Wis. L. Rev. 399, 405 (2011). Aoki’s playful yet urgently justice-oriented scholarship also inspired the term we have coined here: “commodification jujitsu.” U.S. Const. art. I, § 8, cl. 3 (Congress shall have power “[t]o regulate Commerce with Nations, and among the several States, and with the Indian tribes”). Sonia Katyal, Trademark Intersectionality, 57 UCLA L. Rev. 1601, 1613–14 (2010) (“Unlike patents and copyrights, which are governed by Article I, § 8, and are concerned with preserving incentives to create, trademarks’ intellectual origins lie mostly within the Commerce Clause, which grounds its purpose in facilitating the smooth functioning of the marketplace of goods”). Lateef Mtima, IP Social Justice Theory: Access, Inclusion, and Empowerment, 55 Gonz. L. Rev. 401, 416 (2019) (original emphasis) (citations omitted).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

60

Margaret Chon and Robert S. Chang

with other commerce clause-based regulations such as civil rights laws, foregrounding the dissonance between the Court’s recent hands-off approach to promoting access and equality through commerce and its historical approval of the vehicle of interstate commerce to encourage an inclusive national market. A. The Cases In Matal v. Tam,40 the Supreme Court struck down a portion of Section 2(a) of the Lanham Act, which had authorized the government to withhold certain commercial benefits in its federal trademark registration program by denying or canceling federal registration of trademarks that are disparaging. This grounds for denial of registration had allowed the government to play a role, albeit sometimes inconsistently, in safeguarding the rights of minorities and ensuring their full participation in our nation’s economic life. However, a majority of the Court (speaking through two plurality opinions) decided that this provision violated the First Amendment rights of the registrant Tam. In doing so, “it opened the door to wide-ranging free speech challenges to trademark laws in the United States.”41 As Lisa Ramsey has pointed out, up until the Tam litigation, courts had generally avoided explicit First Amendment analysis of trademark law, and had accommodated speech concerns through various doctrines such as the requirements of use in commerce and commercial use, and defenses such as descriptive fair use, as well as other doctrines.42 Indeed, both the Federal Circuit and the Fifth Circuit previously had been guided by the approach taken by the Federal Circuit, through its predecessor court, which had held that the PTO’s refusal to register an applicant’s mark does not infringe First Amendment rights as “[no] conduct is proscribed . . . and no tangible form of expression is suppressed.”43 It is unclear why the Supreme Court decided to “constitutionalize” trademark law this way, particularly in contrast to its continued reticence to do so with federal copyright law,44 which is arguably even more imbued with First Amendment-protected expression. As the Court itself recognized, the federal Lanham Act exists within an ecology that consists of federal and state law (unlike patent and copyright law, which both pre-empt most state law). The federal government does not create, grant, or confer trademarks. Trademarks and the rights that flow from them are established by their use, and are protected not just by federal law but also by state statutory and long-standing common law dating back to the ancient tort of “passing off.” Thus, the denial or cancelation of the federal registration of a trademark is not the same as denying or canceling a trademark, and certainly does not prevent or forbid the use of a name. Regardless of the availability of federal registration, both Tam and Pro-Football remained free to use their respective marks and to sue anyone who infringed them, under common law. Of course, benefits accrue to federally registered trademarks, such as nationwide constructive notice to putative infringers, but Tam was always able to use his preferred mark to denote the source of origin of goods and services sold by his band. And from a speech perspective, as

40 41 42 43

44

Matal v. Tam, 137 S. Ct. 1744 (2017). Lisa P. Ramsey, Free Speech Challenges to Trademark Law After Matal v. Tam, 56 Hous. L. Rev. 401, 403–404 (2018). Id. In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981); Test Masters Educ. Servs. v. Singh, 428 F.3d 559, 578 n.9 (5th Cir. 2005). Campbell v. Acuff Rose, 510 U.S. 569, 579 (1994) (“breathing space” for expressional liberty adequately safeguarded through fair use doctrine); Golan v. Holder, 565 U.S. 302 (2012); Eldred v. Ashcroft, 537 U.S. 186 (2003) (rejecting First Amendment challenge to § 104A).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

61

numerous IP scholars have pointed out, the grant of a federal trademark registration could result in the unintended and perhaps paradoxical effect of curbing rather than promoting free expression, through the trademark owner’s nationwide enforcement of rights that could discourage or chill, as a practical matter, certain uses of the mark.45 Indeed, Tam had been using the S-word as his band’s name since 2006. He continued using it even after federal registration was denied. Through his usage, he successfully established trademark rights and could sue to protect against infringement in the geographic areas where his band was the first to use the mark. Importantly, the denial of federal registration did not impinge disproportionately upon his political project of re-appropriation.46 Yet, Judge Kimberly Moore, writing for the majority of the en banc U.S. Court of Appeals for the Federal Circuit, made much of the expressive dimension that trademarks can involve.47 And similarly, Justice Alito’s plurality opinion (joined by Chief Justice Roberts, as well as Justices Breyer and Thomas) rejected the government’s “interest in preventing ‘underrepresented groups’ from being ‘bombarded with demeaning messages in commercial advertising.’”48 Instead, he announced: “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”49 IP scholars have long recognized the expressive dimensions of the otherwise commercial speech represented by trademarks.50 However, in minimizing the government’s interest in protecting the orderly flow of commerce through his characterization of Section 2(a) as “a happy-talk clause,”51 Justice Alito’s plurality opinion is stunning in its silence about the harms inflicted by hate speech, and seemingly oblivious to the elephant in the room – the Blackhorse challenge to Pro-Football’s trademark registration. It ignores this related litigation even as it quotes liberally from Pro-Football’s amicus brief (while ignoring those supportive of Blackhorse’s position).52 Equally disturbing from a racial justice perspective is Justice Kennedy’s plurality opinion, joined by three liberal members of the Court (Justices Ginsburg, Kagan, and Sotomayor). While reaching the same result by a different doctrinal avenue,53 nothing in the Kennedy opinion ever 45

46

47

48

49

50

51 52 53

Katyal, supra note 38, at 1686; Leah Chan Grinvald, Shaming Trademark Bullies, 2011 Wis. L. Rev. 625 (2011); Jessica Kiser, To Bully or Not to Bully: Understanding the Role of Uncertainty in Trademark Enforcement Decisions, 37 Colum. J.L. & Arts 211 (2014). However, Tam claimed that it was difficult to get a record label deal without a federal registration. See Keeler, supra note 6. In re Simon Shiao Tam, 808 F.3d 1321, 1338 (Fed. Cir. 2015) (“This case exemplifies how marks often have an expressive aspect over and above their commercial-speech aspect. Mr. Tam explicitly selected his mark to create a dialogue on controversial political and social issues. With his band name, Mr. Tam makes a statement about racial and ethnic identity. He seeks to shift the meaning of, and thereby reclaim, an emotionally charged word. He advocates for social change and challenges perceptions of people of Asian descent. His band name pushes people. It offends. Despite this—indeed, because of it—Mr. Tam’s band name is expressive speech”); cf. In re Simon Shiao Tam, 108 U.S.P.Q.2d (BNA) 1305 (T.T.A.B. 2013) (“Thus, all members of the Asian-American public may encounter the mark THE SLANTS in advertising in newspapers, billboards or on a website”). Matal v. Tam, 137 S. Ct. 1744, 1764 (2017) (quoting Brief for Petitioner at 48 (quoting In re Simon Shiao Tam, 808 F.3d 1321, 1364 (Fed. Cir. 2015) (Dyk, J., concurring in part and dissenting in part))). Id. Paradoxically, Alito rejected the embrace of “freedom to ‘express the thought we hate’” in his dissenting opinion in Snyder v. Phelps, 562 U.S. 443 (2011). See, e.g., Rochelle C. Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 Notre Dame L. Rev. 397 (1990). Matal v. Tam, 137 S. Ct. at 1765. Id. at 1757. Id. at 1765 (the “First Amendment’s protections against viewpoint discrimination apply to the trademark here . . . [and this] rationale renders unnecessary any extended treatment of other questions raised by the parties”).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

62

Margaret Chon and Robert S. Chang

raised (if only to dismiss) any considerations of the social costs of racially harmful speech, much less called out the Alito plurality on its inappropriately light-hearted and minimizing “happy talk” language. Instead, this group of Justices reiterated that “Justice Holmes’ reference to the ‘free trade in ideas’ and the ‘power of . . . thought to get itself accepted in the competition of the market’ . . . was a metaphor. In the realm of trademarks, however, the metaphorical marketplace of ideas becomes a tangible, powerful reality.”54 Needless to say, this language illustrates a complete collapse of the metaphor into the reality it is supposed to represent, with no critical awareness of harms within an actual communicative marketplace in which the rules of expressive “competition” are not fairly drawn. B. The Consequences These various opinions demonstrate a type of First Amendment exceptionalism. The intersection of this civil liberty with the expressive components of IP in copyright55 as well as trademark law,56 is given much more prominence than the application of other civil and human liberties and rights. To be sure, freedom of expression is an important component of the civil rights shields against government oppression, and a distinctly durable component of the U.S. human rights regime. It could be argued, as it often is, that the answer to bad speech is more speech.57 Furthermore, the argument goes, the strategy of “counterspeech”58 can be effective in the commercial marketplace, where antidiscrimination laws are unnecessary because discrimination is inefficient and will naturally dissipate through the sheer will and power of rational wealth-maximizers. However, these rationales misapprehend the existence and strength of people’s taste for discrimination, whereby employers, employees, business owners, and customers may and often do prefer certain individuals and groups over others based on race (and/or other characteristics) and, if given the chance, act on these preferences.59 The Court’s decisions overlooked or trivialized ongoing communication and information asymmetries in its idealized marketplace of ideas metaphor and thus rendered moot the long accumulation of record evidence regarding the history of oppressive use of language via racial sports mascots. In doing so, it essentially silenced a decades-long campaign by certain indigenous groups to be represented fairly in a highly visible and profitable national commercial market.60 It also ignored a highly detailed record of harm that had been established in the 54 55 56 57

58 59

60

Id. at 1767–68 (quoting Abrams v. United States, 250 U.S. 616, 630 (1919) (dissenting opinion)). Campbell v. Acuff Rose, 510 U.S. 569, 579 (1994). Ramsey, supra note 41; see also Dreyfuss, supra note 50. Nadine Strossen, Hate: Why We Should Resist It Through Free Speech, Not Censorship 158 (2018) (emphasis added) (“counterspeech comprises a potentially broad range of expression, including speech that directly refutes the ideas the ‘hate speech’ conveys; broader, pro-active educational initiatives; and the expressions of remorse by discriminatory speakers”). Id. National Bureau of Economic Research, Employers’ Replies to Racial Names, The Digest (Sept. 2003) (documenting that “[j]ob applicants with white names needed to send about 10 resumes to get one callback; those with AfricanAmerican names needed to send around 15 resumes to get one callback”). This contrasts with the many non-U.S. jurisdictions that still prohibit racially derogatory marks. See Mariana Bernal Fandiño, Controversial Trademarks: A Comparative Analysis, ch. 21 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); see also Mark Conrad, Matal v. Tam: A Victory for The Slants, A Touchdown for the R[*******], But an Ambiguous Journey for the First Amendment and Trademark Law, 36 Cardozo Arts & Ent. L.J. 83, 137 (2018) (“With the exception of the United States, the near universality of this kind of ban of offensive marks and its application to disparaging terms through interpretation or actual text could give rise to an argument that it has become a rule of customary international law”).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

63

clearly related case, of which it had to have been aware. And it also brushed aside the probability – indeed the certainty, given our nation’s record with regard to racial inequality – of market failure with regard to these nationally circulating marks.61 The Civil Rights Act of 1964 illustrates the importance of harnessing government power to address this type of “preference for discrimination” market failure. The cases upholding the 1964 Act clearly recognize the constitutionality of governmental market intervention, notwithstanding the First Amendment. Title II of the 1964 Act authorizes the federal government to interfere with private individuals and businesses who engage in conduct and speech that prevent a person from full enjoyment of certain places of public accommodation on the basis of race, despite the expressive ideas and viewpoints contained in those acts of racial discrimination. Providing separate drinking fountains for Black and white persons and relegating Black restaurant patrons to take-out windows, with sit-down service reserved for whites, convey clear messages of racial degradation. Yet despite the fact that this kind of conduct and signage includes a strong expressive dimension, such discriminatory behavior is not insulated from government interference; indeed, the Court has rejected similar First Amendment arguments with regard to sincerely held religious beliefs that justified racial discrimination.62 The federal government’s power under Section 2(a) of the Lanham Act to deny or cancel federal registration of racially disparaging trademarks was very much consistent with, although ultimately far weaker than, its power under the Civil Rights Act. Tam had argued that his use of the term “THE SLANTS” was not negative but in fact a positive re-appropriation of a typically negative term (had it been used, for example, in a dark alley against him by white assailants). Conceding this argument, nonetheless the use of racist trademarks by Pro-Football is a prime example of the “preference for discrimination” type of market failure. For decades, this team called itself by a racial slur. The use of its trademark is so pervasive that the slur has been bandied about on primetime television, even on the same networks that would not tolerate the use of other racial slurs.63 The Court’s plurality opinions in Tam are arguably out of step with the increasingly common decisions of sports teams to change their mascots, marks, and logos from those that represent historically oppressive images of American Indians to those that are more neutral.64 Interestingly, the NFL itself penalizes as unsportsmanlike conduct the use of certain racially derogatory language on the field during the same time that it tolerated the R-skins slur.

61

62

63

64

For example, Rosemary Coombe meticulously discusses the historical uses of racialized trademarks to consolidate a white national identity in the U.S. in the late nineteenth century, and argues that the requirement of trademark “distinctiveness” for federal protection in national markets, combined with the need for marks to be “recognizable to millions of people, from diverse ethnic backgrounds and language groups, many of whom were illiterate,” contributed to the choices of widespread racialized commercial imagery that persists to this day. The systematic commodification of these images as “marks” then systematically puts on the defensive those whose bodies are being marked within a pervasive media culture – and compromises their ability to engage equally to challenge and alter their meanings.” Rosemary Coombe, The Cultural Life of Intellectual Properties, Authorship, Appropriation, and the Law 175 (1998). Bob Jones University v. United States, 461 U.S. 574, 602 (1983) (finding that race discrimination “cannot . . . be applied to schools that engage in racial discrimination on the basis of sincerely held religious beliefs”); Runyon v. McCrary, 427 U.S. 160 (1976). Ending the Legacy of Racism in Sports & the Era of Harmful “Indian” Sports Mascots, National Congress of American Indians, Oct. 10, 2013, http://www.ncai.org/resources/ncai_publications/ending-the-legacy-of-racism-insports-the-era-of-harmful-indian-sports-mascots. Id.

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

64

Margaret Chon and Robert S. Chang

It was a surprise to the sports world when the team’s owner announced in 2020, three years after its proxy victory in Tam, that it would be rid of the name and logo that it spent decades publicly defending.65 However, during the age of COVID-19, Black Lives Matter, and after years of litigation, not to mention terrible playing seasons, the reckoning has been for some, a long time coming.66 The fact that the team eventually decided to change its name does not atone for the deficits of the status quo trademark regime, which allowed the team not just to use the harmful and offensive mark for so long but also, to add insult to injury, to profit heavily from its use. The federal government’s power to regulate commerce is especially important because racially disparaging trademarks can lead to a return to a segregated marketplace, based on protection of “viewpoints.” In his dissent in the en banc Federal Circuit decision, Judge Jimmie Reyna imagined a hypothetical restaurant called “Spics Not Welcome,” which, if it did not deny service to Latinos, might not run afoul of Title II of the Civil Rights Act of 1964. Judge Reyna’s hypothetical finds its analogue in reality, with gun shops in several states posting signs declaring themselves to be “Muslim Free Zone[s].”67 Though nothing prevents these signs, through their usage, from becoming trademarks, the federal government should not support such discriminatory behavior by conferring benefits to the mark-holders through federal registration. Private acts and expressions of racism can be terrible and damaging, but they take on a wholly different meaning, and are particularly corrosive to our ideal of an integrated society, when they occur with the sanction of the government. In that regard, Justice Breyer’s dissent in the subsequent Brunetti decision is insightful.68 His analysis rejects categorical approaches to the First Amendment analysis in favor of a proportionality analysis, in which the question “[d]oes ‘the regulation at issue wor[k] harm to First Amendment interests that is disproportionate in light of the relevant regulatory objectives’?”69 Furthermore, he recognizes that: [a]ttention-grabbing words, though financially valuable to some businesses that seek to attract interest in their products, threaten to distract consumers and disrupt commerce. And they may lead to the creation of public spaces that many will find repellant, perhaps on occasion creating 65

66

67

68

69

John Keim, How the Events of 2020 forced the Washington NFL Team’s Name Change, ESPN, July 14, 2020, https:// www.espn.com/nfl/story?id=29460299&_slug_=how-events-2020-forced-washington-nfl-team-name-change (last visited Nov. 8, 2022). Even though the team’s current coach Ron Rivera stated that its owner Dan Snyder had been thinking about changing the name well before George Floyd’s murder, others who had worked for Snyder believed he would rather sell the team than use a new name. See Adam Schefter, Washington NFL Team to Use “Washington Football Team” for 2020 Season, ESPN, July 23, 2020, https://www.espn.com/nfl/story/_/id/ 29524343/washington-nfl-team-use-washington-football-team-now-sources-say (last visited Nov. 8, 2022). See id.; see also Roman Stubbs & Scott Allen, Activists, Politicians, Players Weigh in on R[*******] Name Change: “Start of the New Era,” Wash. Post, July 13, 2020 (Former Washington running back Brian Mitchell stated in an interview, “I remembered when Dan [Snyder] made that comment, that he was never going to change it . . . I remember a conversation with a friend of mine that [the name change] was coming, believe me. You could see it. It was the climate for it. All I said was if anybody put pressure on the sponsors, it would happen, and we saw it happen”). Peter Holley, “Muslim Free” Gun Shop Owner Takes Aim After Judge Tosses Lawsuit Against Him, Wash. Post, Nov. 30, 2015. Iancu v. Brunetti, 139 S. Ct. 2294, 2304 (2019) (Breyer, J., concurring) (“In my view, a category-based approach to the First Amendment cannot adequately resolve the problem before us. I would place less emphasis on trying to decide whether the statute at issue should be categorized as an example of ‘viewpoint discrimination,’ ‘content discrimination,’ ‘commercial speech,’ ‘government speech,’ or the like. Rather, as I have written before, I believe we would do better to treat this Court’s speech-related categories not as outcome-determinative rules, but instead as rules of thumb”). Id. at 2306.

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

65

the risk of verbal altercations or even physical confrontations. (Just think about how you might react if you saw someone wearing a t-shirt or using a product emblazoned with an odious racial epithet.) The government thus has an interest in seeking to disincentivize the use of such words in commerce by denying the benefit of trademark registration.70

Regarding the communication asymmetry experienced by minority groups, Rosemary Coombe has observed that: Th[e] power differential [among social groups] has many consequences, for example, making “mythic and imaginary images of Native Americans more visible than they are as living peoples with contemporary concerns and pressing political problems.” And this repetitive (“mimetic”) marking of Native bodies operates in multiple and often conflicting ways to provide national identity to non-Natives, serving as “totemic forms that mark and galvanize [their non-Native] bodies in public rituals of homosocial bonding.”71

The challenge to the Pro-Football marks under Section 2(a) was the latest iteration of a legal effort beginning in the 1990s72 to counter this systematic marking of nonwhite bodies within a pervasive media culture. After over 20 years of challenging Pro-Football’s marks, first by Suzan Harjo and then Amanda Blackhorse, much evidence had been generated about the many harmful effects of these marks on indigenous communities, and much of this evidence was before the Court via amicus briefs.73 Yet the Tam Court, including its liberal wing, took notice of none of this extensive fact-finding in this related albeit separate case – presumably deciding that the correct doctrinal approach to free expression did not have to account for speech harms. This judicial sleight of hand by which the Court accomplished a free speech “win” then did not have to be fully accountable to the losers in the policy debate, thereby resulting in procedural gaslighting, and furthering what some call a deregulatory First Amendment that is deployed to support laissez-faire markets.74 The multiple ways in which communication and meaning are shaped in the commercial (and increasingly digital) public square are quite the opposite, then, of liberal legalism’s unexamined pre-supposition of equal freedom to participate in a fairly refereed marketplace of ideas. Conflicting and, more importantly, skewed avenues of participation in such a marketplace are easily overlooked by this metaphor, which was eagerly reinforced by the courts in Tam. It is a liberal oversimplification of a much more complex reality. And this ideal of democratic discourse within the U.S. constitutional framework is belied by a comparative analysis of speech regimes, which reveals other democratic societies limiting hate speech consistently with general principles of freedom of expression.75 What is the progressive antiracist position then? Although one might have a certain faith in markets, what happens when there is market failure in that racially discriminatory behavior is not only tolerated but even encouraged by such flagrant symbols despite the assumption that better ideas will ultimately prevail and despite the social and economic inefficiencies associated with 70 71 72 73

74

75

Id. at 2307. Coombe, supra note 61, at 189. See supra notes 7–10. Victoria F. Phillips, Beyond Trademark: The Washington R[*******] Case and the Search for Dignity, 92 Chi.- Kent L. Rev. 1061 (2018); Anjali Vats, Temporality in a Time of Tam, or Towards a Racial Chronopolitics of Intellectual Property Law, 61 IDEA 673 (2021). Garden, supra note 21; Elizabeth Sepper, Free Exercise Lochnerism, 115 Colum. L. Rev. 1553 (2015); Adam Liptak, How Conservatives Weaponized the First Amendment, N.Y. Times, June 30, 2018, https://www.nytimes.com/2018/06/ 30/us/politics/first-amendment-conservatives-supreme-court.html. Ramsey, supra n. 47, at 821–32; see also Conrad, supra note 60. See Fandiño, Controversial Trademarks: A Comparative Analysis, supra note 60.

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

66

Margaret Chon and Robert S. Chang

such behavior? Tam states a commitment to a faith in free speech that is heedless of the dynamics of communication in which dominant and/or majoritarian viewpoints wield undue and asymmetric power over other points of view. It is arguably part and parcel of a cultural and technological moment in which verifiable facts can be turned into so-called “fake news,” which then are treated as completely fungible with unverified factual assertions, and repeatedly endorsed in false equivalencies through powerful media channels.76 Applied in such a formally symmetrical fashion, the First Amendment not only protects minorities eager to engage in controversial expression (Tam), but protects market-dominant actors as well from the consequences of their socially harmful expression (Pro-Football). Moreover, this perspective–that each speaker has an equally powerful platform for expression – ignores the structural developments in the social media industries, which are currently highly concentrated with relatively little regulatory oversight, whether via internal governance mechanisms or otherwise.77 In addition, this view of free expression principles ironically allows government-sanctioned (albeit limited) IP monopoly power asserted by both individuals and corporations to generate profit from discrimination, whether from their own discriminatory impulses or the discriminatory impulses of their consumers.78 And it conceivably results in an impoverishment rather than an enrichment of a marketplace of ideas through the trademark holder’s potential enforcement against critical or other uses of the marks.79 Combined with the religious freedom clause of the First Amendment, this approach to speech has potentially enormous consequences for justice. Consider Masterpiece Cakeshop case, decided one year after Matal v. Tam, in which the Court considered a baker’s alleged sincerely held religious beliefs that prevented him from making a cake to celebrate a same-sex couple’s wedding. The Court stated: A principled rationale for the difference in treatment of these two instances cannot be based on the government’s own assessment of offensiveness. Just as “no official, high or petty, can prescribe what shall be orthodox in politics, nationalism, religion, or other matters of opinion,” West Virginia Bd. of Ed. v. Barnette, 319 U. S. 624, 642 (1943), it is not, as the Court has repeatedly held, the role of the State or its officials to prescribe what shall be offensive. See Matal v. Tam, 582 U. S. ___, ___–___ (2017) (opinion of ALITO, J.). The Colorado court’s attempt to account for the difference in treatment elevates one view of what is offensive over another and itself sends a signal of official disapproval of Phillips’ religious beliefs.80

76

77 78

79

80

Tim Wu, Is the First Amendment Obsolete?, Columbia Public Law Research Paper No. 14-573, (Sept. 2017), https:// knightcolumbia.org/content/tim-wu-first-amendment-obsolete (last visited Nov. 11, 2022); Andrew Marantz, Opinion, Free Speech is Killing Us, N.Y. Times, Jan. 2, 2020, https://www.nytimes.com/2019/10/04/opinion/sunday/free-speechsocial-media-violence.html (last visited Nov. 11, 2022); Dangerous Speech Project, https://dangerousspeech.org (last visited Nov. 11, 2022). See, e.g., Mike Isaac, Facebook Plans to End Hands-Off Approach to Politicians’ Posts, N.Y. Times, June 3, 2021. See, e.g., Richard Delgado, Toward a Legal Realist View of the First Amendment, 113 Harv. L. Rev. 778 (2000) (reviewing Stephen H. Shiffrin, Dissent, Injustice, and the Meanings of America (1999)). See also Baker, supra note 23. Katyal, supra note 38, at 1686 (“Viewed in this light, then, it is important to note that § 2(a) directly affects the enforcement of trademark protection, rather than the expression itself. When the law applies § 2(a) and cancels a registration, a trademark owner is not barred from using the mark, but is only barred from stopping others . . . from doing so. Ironically, then, § 2(a) might indirectly facilitate or enable the secondary, unintended result of adding more speech, rather than less, to the marketplace of both goods and ideas in the process”). Masterpiece Cakeshop, Ltd. v. Colorado Civil Rights Com’n, 138 S. Ct. 1719, 1731 (2018).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

67

Note the Court’s reliance on Tam. This is carried forward in Justice Gorsuch’s concurring opinion, which states: In this country, the place of secular officials isn’t to sit in judgment of religious beliefs, but only to protect their free exercise. Just as it is the “proudest boast of our free speech jurisprudence” that we protect speech that we hate, it must be the proudest boast of our free exercise jurisprudence that we protect religious beliefs that we find offensive. See Matal v. Tam, 582 U. S. ___, ___ (2017) (plurality opinion) (citing United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes, J., dissenting)).81

One wonders, however, what the judicially requisite level of respect is for a person’s sincerely held religious beliefs that is used [to] justify discrimination based on race, gender, or sexuality. This reliance on Tam to strike down protective legislation illustrates the workings of the “recyclable sentences of the Deregulatory First Amendment,” whereby glib pronouncements issued by the Court can later be used in other civil rights contexts as precedent.82 And this language and selective citation appear to ignore instances when the Court explicitly rejected a similar argument in the context of free exercise and race discrimination.83 The path of the law regarding government regulation of our public sphere is instructive.84 Though the U.S. Supreme Court in 1883 held that the government could not interfere when private parties chose to discriminate by businesses providing public accommodations,85 the Court reversed course following the passage of the Civil Rights Act of 1964.86 That earlier period, 1883–1964, might be characterized as a time when the government left things to the free market, and the government was to be agnostic about discriminatory behavior in commerce. The Civil Rights Act of 1964 might be understood as the government’s response to market failure. In the commercial realm, it became expected that government was to make assessments about what unacceptable discriminatory behavior. And courts upheld these assessments when private persons and corporations engaged in the public commercial sphere. The judiciary now appears to be in retreat, adhering to a perverse First Amendment triumphalism that ignores the problem of market failure. In Tam, the Supreme Court reinforced this trend by inexplicably ignoring the various ways in which free expression values were not threatened by Section 2(a)’s rather limited regulatory reach.87 Civil rights perspectives on the commerce clause power provide insight into how federal trademark law, also based on the interstate commerce power, can further IP social justice. Yet, they also reveal the huge challenge of wielding commodification strategies in IP to yield consistent benefits for subordinated racial groups, especially when legal doctrines can be easily deployed to preserve the racial status quo. It is to these market-based IP strategies that this chapter now turns.

81 82

83 84

85

86 87

Id. at 1737. Nikolas Bowie, The Recyclable Sentences of the Deregulatory First Amendment, Take Care, July 5, 2018, https:// takecareblog.com/blog/the-recyclable-sentences-of-the-deregulatory-first-amendment (last visited Nov. 11, 2022). Bob Jones University v. United States, 461 U.S. 574, 602 (1983). Robert S. Chang, Will LGBT Antidiscrimination Law Follow the Course of Race Antidiscrimination Law?, 100 Minn. L. Rev. 2103 (2016). Civil Rights Cases, 109 U.S. 3 (1883) (finding the Civil Rights Act of Mar. 1, 1875, which was intended to “protect all citizens in their civil and legal rights,” was unconstitutional). Heart of Atlanta Motel, Inc. v. U.S., 379 U.S. 241 (1964); Katzenbach v. McClung, 379 U.S. 294 (1964). Brief of Law Professors as Amici Curiae in Support of the Petitioner, Lee v. Tam, (2016) (No. 15-1293), 2016 WL 6833413.

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

68

Margaret Chon and Robert S. Chang III . REVISITING IP THROUGH A RACIAL JUSTICE LENS

In this section, we posit how commerce-based IP laws, such as trademark laws, might incorporate critical race theory insights, such as the enduring nature of inter-racial inequality.88 It attempts to imagine a future of IP in which, as Lateef Mtima writes, the intellectual property regime is structured and implemented to ensure the broadest and most equitable and inclusive participation therein. To achieve its social utility purpose of human nourishing and flourishing, the intellectual property law must therefore adhere to inherent precepts of socially equitable access, inclusion, and empowerment.89

A. Recalibrating Trademark Law’s Goals and Purposes As forms of legal entitlement, IP’s exclusive rights encourage persons to engage in their creative and inventive pursuits – or, in the case of trademark law, to pursue legitimate competition with others. And yet the existence of limits to the scope of IP protection, whether in the form of legally recognizable boundaries to protectable subject matter,90 legally sanctioned uses by others such as fair use,91 or other exceptions and/or limitations such as compulsory licensing,92 suggests that IP’s exclusive rights must give way to other social interests when necessary.93 In these scenarios, IP can provide a legal boundary against the offensive act represented by a finding of IP infringement; that boundary is set not only by the internal logic of IP but also through the incorporation of other social welfare-enhancing objectives. As Lateef Mtima underscores: [I]t should be recalled that the Constitutional IP directive does not call for the production of IP output as an end in itself, but rather is intended to promote the progress of the arts and sciences, which requires the production and dissemination of intellectual property toward the ultimate goal of human actualization. This is the most fundamental objective of IP protection and coincidentally the attribute which best illuminates its social justice aspirations. While the 88

89

90

91

92

93

Keller & Vats, supra note 16; see also Margaret Chon, Intellectual Property Research and Critical Theories, in Handbook on Intellectual Property Research 746 (Irene Calboli & Maria Lillà Montagnani, eds., 2021) (discussing various tenets of critical theory and their influence on IP scholarship). Lateef Mtima, The Idea Exclusions in Intellectual Property Law, 28 Tex. Intell. Prop. L.J. 343, 381 (2020); see also Madhavi Sunder, From Goods to a Good Life (2012). In federal trademark law, registration is predicated on “use in commerce.” 15 U.S.C. § 1051(a)(1) (“Application for use of trademark”). Generally, trademark law simultaneously promotes free speech and fair competition through its doctrines of distinctiveness, nonfunctionality, and use as a trademark. See Lisa P. Ramsey, Using Failure to Function Doctrine to Promote Free Speech and Competition in Trademark Law, 104 Iowa L. Rev. 70, 74 (2020) (responding to Alexandra J. Roberts, Trademark Failure to Function, 104 Iowa L. Rev. 1977, 1981–85 (2019). In copyright law, some of the same policy goals of promoting free speech and fair competition are partially effectuated through the idea/ expression distinction, codified at 17 U.S.C. § 102(b) (“Subject matter of copyright: In general”). Federal trademark law’s statutory fair use defense is codified at 15 U.S.C. § 1115(b)(4) (“Incontestability; defenses”), as well as in the antidilution provisions codified at § 1125(c)(3) (“Exclusions”). Cf. 17 U.S.C. § 107 (“Limitations on exclusive rights: Fair use”). In federal trademark law, a discriminate refusal to certify can be a basis for canceling a certification mark. 15 U.S.C. § 1064(5)(D) (2006) (“Cancelation of registration”). Copyright law has several compulsory licensing provisions. See, e.g., 17 U.S.C. § 115 (2018) (“Scope of exclusive rights in non-dramatic musical works: Compulsory licensing for making and distributing phonorecords”). See generally Margaret Chon, Intellectual Property Infringement and the Right to Say No, 114 Nw. U. L. Rev. Online 169 (2019) (reviewing Anita Bernstein, The Common Law Inside the Female Body (2018)); see also Shyamkrishna Balganesh, The Pragmatic Incrementalism of Common Law Intellectual Property, 63 Vand. L. Rev. 1543 (2010) (examining the tort law basis of IP).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

69

opportunity for self-fulfillment is important to all human beings, such opportunities are particularly significant to the socially marginalized and underserved. Participation in the IP ecosystem enables these individuals to develop and share their talents in the cause of personal fulfillment, uplift, and socio-economic advancement. Whether one labors in the fields of entertainment, science, or entrepreneurship, the IP regime can provide a path of socio-economic upward mobility and foster individual and communal empowerment.94

Important values in IP, such as the realization of human rights, human development, and human dignity, not to mention democratic participation and equality, are under-emphasized through IP’s undue focus on commercial instrumentalism.95 Dominant views of IP’s mandates often obscure any nonmarket alternatives96 – resulting in what Andrew Giddens has termed “market gibberish.”97 The failure to acknowledge IP goals and values other than economic incentives thereby distorts other possibilities.98 Increasingly, IP scholars have made the case that knowledge goods implicate cultural content,99 critique,100 affect,101 experiment,102 and a plethora of other human activities and values,103 in addition to or perhaps in spite of economic incentives to creators. These observations about the multiple functions of IP equally apply to commerce clausebased IP laws, such as trademark laws.104 Indeed, the functions of trademark law have expanded 94

95

96

97 98

99

100

101

102

103

104

Lateef Mtima, IP Social Justice Theory: Access, Inclusion, and Empowerment, 55 Gonz. L. Rev. 401, 415 (2019) (original emphasis) (citations omitted). Possible counterbalances to IP’s utilitarian origins, which tend to emphasize economic instrumentalism, are the regimes of international human rights and human development. For example, the international human rights regime has been partially successful in mobilizing broad global social movements such as Access to Medicines, Access to Knowledge, and ultimately in imbuing social justice and distributional concerns within the global IP space. See, e.g., Lawrence R. Helfer, Regime Shifting: The TRIPS Agreement and the New Dynamic of International Intellectual Property Law-Making, 29 Yale J. Int’l L. 1, 42, 78 (2004) (arguing that multinational lobbyists achieved their goal of shifting global IP discussions from WIPO to the WTO (to link IP to trade and in turn, human rights activists succeeded partially in shifting the conversation to global regimes such as human rights)); accord Amy Kapczynski, The Access to Knowledge Mobilization and the New Politics of Intellectual Property, 117 Yale L. J. 804 (2008); Margaret Chon, Intellectual Property from Below: Copyright and Capability for Education, 40 U.C. Davis L. Rev. 803 (2007) (“The human development framework is . . . heavily driven by attention to disparities in the quality of life between [different groups] . . . [and i]f reducing these disparities became a central focus (as part of the “Progress” mandate of intellectual property), what might be some of the policy consequences for the regulation of knowledge goods?”). Jessica Silbey, Against Progress: Intellectual Property and Fundamental Values in the Internet Age (2022). Andrew Gilden, Copyright’s Market Gibberish, 94 Wash. L. Rev. 1019 (2019). See Silbey, supra note 96. Market-based metrics of progress remain a remarkably durable construct. As Barton Beebe reminds us, “Progress-driven, intellectual property law operates at the very center of modernity and thus shares – as Holmes did in Bleistein – in its tensions and pathologies . . . The ‘giant warehouse’ of intellectual commodities that our copyright law continues to pursue has increasingly taken on the characteristics of an ‘iron cage.’ The overriding imperative of the pursuit is the accumulation of ever more things. This pursuit has taken on a life of its own, one that has outlived the technological and cultural conditions in which it was born.” Barton Beebe, Bleistein, The Problem of Aesthetic Progress, and the Making of American Copyright Law, 117 Colum. L. Rev. 319, 396 (2017). See generally Ann Bartow, Fair Use and the Fairer Sex: Gender, Feminism, and Copyright Law, 14 Am. U. J. Gender & Soc. Pol’y & L. 551 (2006). See generally Rebecca Tushnet, My Fair Ladies: Sex, Gender, and Fair Use in Copyright, 15 Am. U. J. Gender & Soc. Pol’y & L. 273 (2007). Zahr K. Said, Law and Literature in Intellectual Property Methodologies, in Handbook of Intellectual Property Research 361 (Irene Calboli & Maria Lillà Montagnani, eds., 2021). Madhavi Sunder, Intellectual Property in Experience, 117 Mich. L. Rev. 197 (2018) (discussing experience and experiment in child development); Julie Cohen, Configuring the Networked Self: Law, Code, and the Play of Everyday Practice (2012) (discussing critical importance of play in human development). See generally Handbook on Intellectual Property Research (Irene Calboli & Maria Lillà Montagnani eds., 2021). See, e.g., Dreyfuss, supra note 50; Katyal, supra note 19.

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

70

Margaret Chon and Robert S. Chang

enormously with the ubiquity of commercial marketing and advertising. Of course, the classic purpose of trademark goodwill as a type of informational public good is to increase overall social welfare, primarily through signals to consumers of source of origin or manufacture. Nonetheless, the enhancement of social welfare via trademark law has gradually but inexorably evolved to the point where the concept of “brand citizenship”105 has become a tenable frame for broader participation by various market participants. Through brand citizenship, multiple market participants co-create the attentional value of brands. And as these stakeholders exchange meanings with each other in highly distributed commercial markets, they also create potentially accountable communities of global governance. In order to participate in these market exchanges – whether of goods and services, or of information and symbols – all market players refer, whether directly or indirectly, to the marks representing valuable brands. For example, global consumer boycotts around undesirable corporate practices – such as a campaign against Facebook by #StopHateForProfit106 – can potentially send powerful messages to market actors about the importance of racial inclusion, especially when these efforts impact the bottom line of brand owners. As a type of social movement pressure, brand citizenship in furtherance of social values is often targeted to underlying trademarks in the context of “cognitive capitalism,”107 in which the new informational scarcity is attention rather than content.108 As the collision of the Blackhorse and Tam cases illustrates vividly, pure utilitarian approaches to commerce clause-based IP laws can be derailed or hijacked easily by dominant economic interests – in this case, Pro-Football’s. Accordingly, building upon these expanding functions of trademark law, we propose a modified commodification approach, which we explore in the next section. B. Commodification Jujitsu A modified commodification approach to IP – or ‘commodification jujitsu’ – would deploy the commercial incentives and exclusive rights supplied by IP, including trademark laws, to further IP social justice. This proposal recognizes the dominance of commercial rationales for IP, at the same time creating space for other values that are currently under-expressed in IP. It harnesses the power of the market for social change and justice impact, and attempts to contribute to the antiracist redesign of a largely commerce-driven IP. Commodification jujitsu recognizes market failures endemic in the production and distribution of IP-protected content, but at the same time attempts to leverage private rights to further social goals. It can be aligned with what IP scholars view as policy flexibilities within IP regimes: for example, statutory exceptions and limitations such as fair use in both copyright and trademark law – both of which preserve space for pro-competitive and pro-expressive market activities. An example of commodification jujitsu in the copyright domain is the Creative 105

106

107

108

Margaret Chon, Slow Logo: Brand Citizenship in Global Value Networks, 47 U.C. Davis L. Rev. 935, 950 (2014) (“Brand citizenship goes beyond the formal legal boundaries of trademarks and embraces as well their non-legal (that is to say, economic, political and social) implications. This recognition of the broader context in which trademark law operates then frames a similarly broader participation by various stakeholders in an accountable community of governance”). Tiffany Hsu & Eleanor Lutz, More Than 1,000 Companies Boycotted Facebook. Did It Work?, N.Y. Times, (Aug. 1, 2020, updated Oct. 5, 2021), https://www.nytimes.com/2020/08/01/business/media/facebook-boycott.html. Margaret Chon, Trademark Goodwill as a Public Good: Brands and Innovations in Corporate Social Responsibility, 21 Lewis & Clark L. Rev. 277, 292–93 (2017) (defining both brand citizenship and cognitive capitalism). Relatedly, trademark law’s functions now arguably include the provision of “trust” as well as source identification throughout complex global value networks (otherwise referred to as supply chains). Id.

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

71

Commons license, which reverses the presumption of “all rights reserved” to all rights given to the public unless otherwise noted.109 With respect to patent laws, the open COVID-19 pledge is another way to leverage the exclusive rights conferred by the patent statute in order to promote collaborative scientific research in the face of the pandemic.110 Commodification jujitsu is consistent with proposals for examining both the commercial and cultural components of trademark law,111 and therefore can amplify shared foundational values such as racial dignity and racial equality. It could also more intentionally account for the activities of what media studies scholars have termed ‘prosumers,’ who are both producers as well as consumers, adding value (or sometimes subtracting value) to IP through their activities in relation to big brands.112 These activities might highlight ethical and social justice (including racial justice) dimensions through commercial activity facilitated by IP. The Washington Football Team’s entrenched racial mascotry finally ceased only because the public, including most significantly the team’s corporate sponsors, firmly and collectively turned against its continued use.113 Whether one views this development as a triumph of corporate social responsibility efforts or as a market failure because this change took so long (and only after the intervention of powerful market actors), mainstream commercial establishments seeking to build strong national and international market power may now think twice before deploying racially offensive marks. This may be especially true where multinationals seek to market their goods and services outside of the U.S., where such marks might not be registrable.114 Seen this way, a combination of governance pressure via brand citizenship and regulatory constraints might guide trademark owners to more racially just decisionmaking, even in the face of individual tastes for discrimination. While commodification jujitsu may have some traction around the edges of the commercial public sphere, it fell short of addressing the dilemma highlighted by the collision between the Tam and Blackhorse litigation strategies. Consumer boycotts or litigation and public education campaigns such as Blackhorse’s depend upon the existence of a powerful brand against which to act, whereas an ironically self-referential project such as Tam’s does not. And powerful trademark owners can marshal enormous resources to protect their market advantage, even in the face of socially questionable activities. In this context, it is interesting to note post-Tam developments in which the USPTO has refused to register hate symbols such as the swastika on the ground the matter fails to function as a mark, where the applicant is allegedly an individual who wants to prevent hate groups from deploying these symbols as marks.115 Tam’s impact is arguably limited to registration, and these 109

110 111 112

113

114 115

About CC Licenses, Creative Commons, https://creativecommons.org/about/cclicenses/ (last visited Nov. 11, 2022). See Ronald Snijder, Better Sharing Through Licenses? Measuring the Influence of Creative Commons Licenses on the Usage of Open Access Monographs, 3 J. Librarianship & Scholarly Comm. 2 (2015) (“Creative Commons organisation describes its set of licenses as a ‘simple, standardized way to give the public permission to share and use your creative work – on conditions of your choice’”). Open Covid Pledge, https://opencovidpledge.org/ (last visited Nov. 11, 2022). Katyal, Trademark Intersectionality, supra note 38, at 1607. George Ritzer & Nathan Jurgenson, Production, Consumption, Prosumption: The Nature of Capitalism in the Age of the Digital “Prosumer,” 10 J. Consumer Culture 13, 29–30 (2010). A group of 87 investment firms (worth $620 billion) sent a letter on July 1, 2020, to shareholders of the team’s corporate sponsors, including PepsiCo, Nike, and FedEx, asking them to pressure the team financially to change its name. Stadium Sponsor FedEx Asks R[*******] to Change Nickname, ESPN, July 2, 2020 (last visited Nov. 11, 2022). See Fandiño, supra note 60; Nadra Nittle, Exorcising Aunt Jemima, Eater, May 25, 2021. Vicki T. Huang, Trademarks, Race and Slur Appropriation: An Inter-Disciplinary and Empirical Study, 2021 U. Ill. L. Rev. 1605. Ramsey, supra note 90, at 88 (discussing the intent to use application of Snowflake Enterprises, LLC, on the principal register for the swastika (design only) as a mark for “[f]abrics that may or may not have printed patterns and designs thereon for use in textile applications, namely, the manufacture of apparel, upholstery, signage, flags, banners and wallpaper.” U.S. Trademark Application Serial No. 87/503998 (filed June 24, 2017)). According to news

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

72

Margaret Chon and Robert S. Chang

agency decisions might indicate an awareness of the commercial consequences of marginalizing various groups via trademark registration, which can deter full participation of minority group members in the economy as IP producers, consumers, and repurposers.116 At the same time, while “Tam and Brunetti are not likely to produce a massive shift in infringement and false endorsement analysis, they might fuel challenges to dilution claims, particularly viewpoint-based determinations of tarnishment,” according to Jennifer Rothman.117 This might lead to the greater circulation of arguably harmful symbols. While commodification jujitsu may not be apropos in all cases, its flexibility in response to slow-changing legal doctrines can support social justice efforts within IP. Thus, (if and) when conceding the dominant commercial rationale of IP, commodification jujitsu insists on asking impertinent questions grounded in critical race theory. These questions include the critique of rights: whether and under what circumstances IP rights can create more equality for nondominant racial individuals or groups. They also include analysis of interest convergence: how the interests of racially dominant and racial and numerically smaller minority groups might converge around values that promote racial equality through human flourishing for all persons. Other questions might include an assessment of the social constructionist approach towards race: when does IP-generated storytelling give members of the dominant racial group more understanding of and empathy with what it means to be nonwhite?118 A full social justice broadside against the IP status quo must incorporate fundamental critical insights, particularly that communication asserted through media channels (like other systems) is loaded in favor of powerful economic interests.119 As a result, the commercial rewards of IP, perhaps especially those derived from digital networked technologies, are more frequently allocated to the usual physical (white and male) bodies than to others, even as the cultural and social impacts of intellectual property are less predictable.120 The current disenchanting evidence of illiberal semiotic democracy121 via social media channels may foretell an increasing

116 117

118

119

120

121

outlets, the applicant is claiming that he applied to register the mark so he can prevent others from using it. Alisa Chang, After Supreme Court Decisions, People Race To Trademark Racially Offensive Words, Nat. Pub. Radio, July 21, 2017, https://www.npr.org/2017/07/21/538608404/after-supreme-court-decision-people-race-to-trademark-raciallyoffensive-words (last visited Nov. 11, 2022). Sonia Katyal, Brands Behaving Badly, 109 Trademark Rep. 819 (2019). Jennifer E. Rothman, Valuing the Freedom of Speech and the Freedom to Compete in Defenses to Trademark and Related Claims in the United States, in Handbook of International and Comparative Trademark Law (Jane Ginsburg & Irene Calboli eds., 2020). Mandalit del Barco, “This Is About Lifting Culture,” Says History-Making Producer Charles D. King, Apr. 7, 2021, Profile: Charles D. King, Producer of “Judas and the Black Messiah”: NPR (last visited Nov. 11, 2022); see also Inlying Lee, COVID-19 and the Continuing Asian American Movement: Narratives from the Midwest, 10 Wake Forest L. Rev. 149 (2020). Baker, supra note 23. See generally Margaret Chon, Radical Plural Democracy and the Internet, 33 Cal. W. L. Rev. 143 (1997). Gender bias within the copyright industries is well-documented. See, e.g., Martha M. Lauzons, Ctr. for the Study of Women in Television & Film, San Diego State Univ., The Celluloid Ceiling: Behind-theScenes Employment of Women on the Top 100, 250, and 500 Films of 2018 (2019), https://womenintvfilm.sdsu .edu/wp-content/uploads/2019/01/2018_Celluloid_Ceiling_Report.pdf (summarizing the proportion of female directors, writers, producers, etc. in the 250 highest-grossing U.S. films in 2018) (last visited Nov. 11, 2022); Stacy L. Smith, Marc Choueiti, & Katherine Pieper, USC Annenberg Inclusion Initiative, Inclusion in the Recording Studio? Gender and Race/Ethnicity of Artists, Songwriters & Producers Across 700 Popular Songs from 2012–2018 (2019), http://assets.uscannenberg.org/docs/aii-inclusion-recording-studio-2019.pdf (detailing the percentage of female artists and producers in the music industry compared to men from 2012 to 2018) (last visited Nov. 11, 2022). Cf. Katyal, supra note 19 (focusing on the power of cultural dissent within pervasive media environments of semiotic democracy). But see Coombe, supra note 61, at 264–66, 271 (“a dialogic theory of human social life provides a means to reconceptualize and reorient the law of free speech or freedom of expression so that it focuses more on the

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

73

intractability and possibly even a hardening of racial categories, even within a proliferation of creative content celebrating racial diversity.122 Culture-race123 is an aspect of racial formation that celebrates racial diversity and difference (liking Mexican food) but by itself is probably too weak a carrot to change powerful economic and other incentives indifferent to such values (endorsing anti-Mexican immigration laws or exploiting racial stereotypes of Mexicans in branding campaigns124). These IP social justice questions surely must also include a critique of liberalism: why IP is riddled with liberal conceits such as the ideology of color-blindness while minimizing strong evidence of race-consciousness, for example, that Asian American entertainers struggle for recognition in comparison to members of other groups, such as African Americans.125 As Lauren Berlant has written, the citizen is not just a political subject but also “is someone with attachments and intentions and pain capacities – for example, as a subject of feelings – who longs for what everybody is said to long for, a world that allows access to vague belonging, a sense of unanxious general social membership that ought to be protected by the institutions that bind power to ordinary life.”126 Differences between communities of color may relate to the particular ways of expressing the anxieties of not belonging to a white national body politic – whereas an Asian American strategy can be to act as a super-American, perceived as a model minority (even a free speech warrior), perhaps a Native American strategy can be to resist the colonialism that so vividly marks indigenous communities via mascotry and other forms of dehumanization.127 In Tam’s case, the Asian American quest for inclusion was poignantly rewarded by his First Amendment victory at the highest level of the federal judiciary. Indeed, Tam claims to have been inspired by the quest of Dykes on Bikes to register its marks.128 Re-appropriations of harmful cultural content undoubtedly has potential to reframe exploitative practices; the use of re-appropriation to speak back to dominant imagery and the affective content – or structures of feelings – associated with them can be symbolically powerful. Yet, even conceding that re-appropriation through trademarks may be a viable strategy to counteract harmful images, we might also query whether re-appropriated imagery largely reinforces or disrupts our

122

123

124

125

126

127

128

conditions of interaction than on the interacting individuals – freedom not as a lack of all constraints but as the ability to participate in engaged conversations . . . It is, however, necessary to avoid a position of left romanticism that views all forms of local cultural expression as resistance”). We may be witnessing the latest version of what Reva Siegel characterized as the preservation-through-transformation of the racial status quo. Reva Siegel, Why Equal Protection No Longer Protects: The Evolving Forms of StatusEnforcing Action, 49 Stan. L. Rev. 1111 (1997) (quoted in Michelle Alexander, The New Jim Crow: Mass Incarceration in the Age of Colorblindness 21 (2012)). Neil Gotanda, A Critique of “Our Constitution is Color-Blind,” 44 Stan. L. Rev. 1 (1991) (setting forth a taxonomy of different kinds of race-consciousness). Steven W. Bender, Greasers and Gringers: Latinos, Law, and the American Imagination 106, 180, 210 (2003) (describing boycotts of Frito Bandito advertising campaign). Memorandum from Mio Asami on Asian American Celebrity Branding (on file with author); see also Aisha Harris, Sandra Oh on “Killing Eve” and Her Historic Emmy Nomination, N.Y. Times, July, 12, 2018, https://www.nytimes .com/2018/07/12/arts/television/sandra-oh-emmy-nomination.html (last visited Nov. 11, 2022). Anjali Vats, The Color of Creatorship: Intellectual Property, Race, and the Making of Americans 31 (2020) (quoting Lauren Berlant, The Female Complaint: The Unfinished Business of Sentimentality in American Culture 145 (2008)). Compare Ellen D. Wu, The Color of Success: Asian Americans and the Origins of the Model Minority (2015) with Leanne Betasamosake Simpson, As We Have Always Done: Indigenous Freedom through Radical Resistance (2021). See, e.g., McDermott v. San Francisco Women’s Motorcycle Contingent, 240 Fed. Appx. 865 (Fed. Cir. 2007), denying certiorari, 552 U.S. 1109, 128 S. Ct. 893, 169 L. Ed. 2d 746 (2008) (holding that the plaintiff failed to establish reasonable belief that he would be damaged by the trademark).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

74

Margaret Chon and Robert S. Chang

pre-existing cognitive biases and confirmation biases regarding categories of race and racial identity.129 It is important to note that the Court used the Tam case to continue promulgating its color-blind jurisprudence, all the while rewarding a member of the so-called model minority for taking the unmistakable hint to advance free speech arguments that had not been initially raised below. Intentionally anticolonial and antiracist interventions have the potential to interrupt the overall dynamic of turning creative and inventive choices into whiteness as intellectual property.130 As Anjali Vats has argued in the context of racialized IP systems, “decolonial approaches to [IP] law are helpful for combating the ‘hidden agenda of modernity’ that is deeply intertwined with racial and (neo)colonial oppression . . . They provide conceptual frames for imagining how to enfranchise people of color through divestment from [IP’s] racial histories and radically equal conceptions of creatorship and personhood.”131 But it is not a given that race-based trademarks, even when controlled by individual registrants of color, will benefit all communities of color.132 To return to the discussion in section I of IP progress, the Supreme Court’s recent decisions currently strongly align with their narrative of racial progress that includes a normative vision of a post-racial rather than antiracist present and future. The question of how to reconcile Tam’s grievances with Blackhorse’s is still very relevant from a political standpoint. Their competing perspectives go to the very heart of the challenges in forming inter-racial coalitions to further racial justice. If the goal for such coalitional work is not just to avoid falling into the trap of racial essentialism (all people of color have the same interests), but also, more broadly, to further antidiscrimination and antisubordination, then it is necessary to imagine mutually beneficial rather than zero-sum or winner-take-all solutions. IV . TENTATIVE CONCLUSIONS ? FROM RACIAL FORMATION TO RACIAL TRANSFORMATION

Regardless of the now-moot debates over the band’s legal choices, the members of The Slants are part of an arc of Asian American musical artists seeking self-representation – from the early folk rock band Yellow Pearl (a play on the racist term Yellow Peril)133 to the current folk rock project No-No Boy,134 which is a strong nod to a seminal Asian American text protesting the loyalty questionnaires administered to incarcerated Japanese Americans.135 With regard to musical artists, it is ironic to note the common invisibility challenges Tam and other Asian American rock musicians face with musicians such as Link Wray, an American Indian affiliated with the Shawnee tribe, whose revolutionary guitar sound, in his 1958 song Rumble, was banned

129

130

131 132 133

134 135

Schur, supra note 31; see also Margaret Chon, Erasing Race: A Critical Race Feminist View of Internet Identity Shifting, 3 J. Gender Race & Just. 439, 441 (2000) (the “tendency to revert to pre-existing cultural scripts is exacerbated by the ability of Internet users to control their informational environment to a greater extent than attainable in the material world, an effect that has been called ‘oversteer.’ This greater control can result of course, in the filtering out of information that might challenge or contradict these pre-existing categorical constructs of race”). Vats, supra note 126, at 73 (describing the race liberal intellectual property citizen as a white subject) (citing to Cheryl Harris, Whiteness as Property, 106 Harv. L. Rev. 1709 (1993)). Id. at 193. Schur, supra note 31. Sojin Kim, A Grain of Sand: Music for the Struggle by Asians in America, Smithsonian Folkways Mag. (Spring 2011). KEXP, Hapa Book Club: An Annotated Playlist + Reader by No-No Boy (kexp.org). John Okada, No-No Boy (1957).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

The Indians Not Heard and the Band That Must Not Be Named

75

by U.S. radio stations because the music (not the lyrics or the name of the band) apparently challenged the status quo.136 As seen in so many legal contexts outside of IP, the facial neutrality of laws has differential impacts on different groups.137 Many questions – methodological, normative, political – can and should be asked in the interface of race with IP.138 We suggest here that IP can and should contribute to racial transformation – and to the larger project of social justice – by insisting on answers to the racial inequality questions, so as to counteract forces contributing to a continuing systematic asymmetry within the marketplace – whether of goods and services or ideas.139 Acknowledging both the fluidity and yet durability of social categories such as race is an essential prerequisite for moving toward something approximating racial and therefore social justice through IP. Otherwise, legal regimes for rebalancing IP can overlook powerful racial formation processes that value certain creative and innovative activities and devalue others, not just in terms of price but also with regard to social inclusion and other opportunities to employ our nation’s unique bounty of human diversity in the cause of intellectual property endeavor and achievement toward the greater societal good.

136

137

138 139

Rumble: The Indians Who Rocked the World (Rezolution Pictures 2018), https://www.rumblethemovie.com/ home. Vats, supra note 126, at 17 (describing intellectual property law as “doubly inflected by race, first as a space for the negotiation of racial desire and second in the implementation of policies and proposals that further entrench systems of racial capitalism.”). See herein Zvi S. Rosen, Unequal Copyright in the Nineteenth Century, ch. 11 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (detailing how laws relegating women to second-class citizenship affected their participation in the American copyright ecosystem. Vats, supra note 126. Margaret Chon, Intellectual Property Equality, 9 Seattle J. Soc. Just. (2010) (arguing for greater connection between the equality and progress mandates in the Constitution).

https://doi.org/10.1017/9781108697613.005 Published online by Cambridge University Press

3 Intellectual Property Social Justice: A Theoretical Rationale Lateef Mtima*

I.

The Leading IP Rationales page 77 A. The Economic Utility Rationale 79 B. Natural Rights Rationales 80 C. The Prevailing Theoretical Rationales’ Indifference to Social Justice Obligations 82 D. Transcending the Prevailing Theoretical Rationales: The Necessity and Elegance of IP-SJ 86 II. Intellectual Property Social Justice: A Positive Social Utility Rationale for IP Protection 87 A. First Postulate: Promoting Socially Beneficial Intellectual Endeavor 87 B. Second Postulate: Constructing and Implementing a System That Maximizes Equitable IP Participation and Quantitative/Qualitative Outcomes 90 C. Third Postulate: Adherence to Principles of Socially Equitable Access, Inclusion, and Empowerment in Implementation, Administration, and Enforcement 93 III. IP-SJ Theory Provides a Complete Rationale for IP Protection 95 A. IP-SJ: A Unified Theory of IP Protection 97 Conclusion 98

At the heart of all social theory is the contrast between humans as motivated almost exclusively by narrow self-interest and humans as motivated by concern for others or for society as a whole. – Thomas Dietz1

* I would like to thank Margaret Chon, Debora Halbert, Peter Menell, Adam Mossoff, Sean Pager, Metka Potočnik, Zvi S. Rosen, and Erik Stallman for their thoughtful comments, and my co-editor Steven Jamar for his many insights and suggestions in shaping this chapter. I would also like to thank the participants at the 2021 Akron Law IP Scholars’ Forum, the Michigan State University College of Law’s 2021–2022 Faculty Workshop Series, and the IP Mosaic Conference for their insightful comments on earlier drafts of this chapter. 1 Thomas Dietz, The Drama of the Commons 4 (2002); see also Garrett Hardin, The Tragedy of the Commons, 162 Science, 1243–48, 1244, Dec. 13, 1968) (“Adam Smith . . . contributed to a dominant tendency of thought that has ever since interfered with positive action based on rational analysis, namely, the tendency to assume that decisions reached individually will, in fact be the best decisions for an entire society . . . If the assumption is not correct, we need to reexamine our individual freedoms to see which ones are defensible”).

76 https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

77

i. the leading ip rationales Legal and other scholars offer and regularly debate a variety of theories of justification for intellectual property protection.2 After all, the intellectual property law helps to determine what kinds of intellectual property people produce and who has access to the products of intellectual property endeavors, including the knowledge and information contained in books and even the life-saving benefits of drugs and medicines.3 While lawmakers can weigh and balance competing societal needs and interests and then promulgate specific laws to achieve particular social objectives, it falls to judges to construe and implement those rules. In doing so, the judges, aided by legal scholarship, identify and articulate the principles, policies, and purposes that, together with the rules themselves, both statutory and common law, supply the bases and justifications for their interpretation and application of the law. Much the same as other legal regimes, and at times even more so given the nature of at least some types of works addressed by IP law, IP law must be shaped to accommodate technological advances and changing social conditions. When changes in technology, society, culture, and in other law impact IP and IP law (and vice versa), judges and legislators alike often find it necessary to revisit the goals of and bases for IP protection, and reconfirm and articulate the theoretical bases of and justifications for their construction, interpretation, and administration of the law, which will determine the substantive rights and responsibilities of those who produce, disseminate, and use IP.4 The various theoretical rationales offered to justify IP protection and how the IP law should be applied span the gamut. Leading rationales include natural rights5 and positive social utility6 and employ both consequentialist7 and nonconsequentialist8 implementation schemas. While the

2

3

4

5

6

7 8

See generally Peter S. Menell, Intellectual Property: General Theories, in 2 Encyclopedia of Law and Economics: Civil Law and Economics 129 (Boudewijn Bouckaert & Gerrit De Geest eds., 2000); Jia Wang, Conceptualizing Copyright Exceptions in China and South Africa: A Developing View from the Developing Countries 1623 (2018); Justin Hughes, The Philosophy of Intellectual Property, 77 Geo. L.J. 287, 315 (1988); Eric Claeys, Intellectual Property and Practical Reason, 9 Jurisprudence 251–78 (2017) (“[M]any different authors have applied to IP the property theories of John Locke, John Rawls, contemporary ‘capabilities’ theorists and other thinkers who ground personal rights on non-consequentialist normative foundations”). Of course, law generally restricts individual action and even imposes affirmative duties; discussion and debate over theoretical justification of legal regimes is thus not limited to intellectual property law. See, e.g., Mark A. Lemley, Faith-Based Intellectual Property, 62 UCLA L. Rev. 1328, 1330–31 (2015) (“IP rights represent government interventions . . . that seek to achieve th[e] desirable social end [of encouraging innovation and creation] by restricting the freedom of some people (consumers, reusers, critics) to do what they want with their own real and personal property in order to improve the lives of other people (inventors and creators)”); see also Lateef Mtima, What Is Intellectual Property (And Why Should You Care About It Anyway?), Prolusion in The Cambridge Handbook of Intellectual Property and Social Justice 1–2 (Steven D. Jamar & Lateef Mtima eds., 2023). William Fisher, Theories of Intellectual Property, in New Essays in the Legal and Political Theory of Property 168, 168–98 (Stephen Munzer ed., 2001) (“[One] reason why intellectual-property theory retains value is that it can catalyze useful conversations among the various people and institutions responsible for the shaping of the law”). See, e.g., Wendy Gordon, A Property Right in Self-Expression: Equality and Individualism in the Natural Law of Intellectual Property, 102 Yale L.J. 1533 (1993). See, e.g., Adam Mossoff, Patents as Constitutional Private Property: The Historical Protection of Patents Under the Takings Clause, 87 B.U. L. Rev. 689, 718 (2007) (explaining the economic social utility directive of the Constitutional IP Clause “[notwithstanding that the] nineteenth-century conception of patents as serving to reward labor and remunerate the expense of inventive activities reflected a more substantive conception of property dominant at that time. It was a moral concept and legal right predicated on the labor-based theories of the natural rights philosophers”); see also Jane C. Ginsburg, International Copyright: From a “Bundle” of National Copyright Law to a Supranational Code?, 47 Journal of the Copyright Soc’y of the U.S.A. 265, 267 (2000). See, e.g., Lemley, supra note 3, at 1344. See, e.g., David McGowan, Copyright Nonconsequentialism, 69 Mo. L. Rev. 1, 3 (2004).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

78

Lateef Mtima

various theoretical perspectives can conflict and contradict each other, they also often overlap and reinforce each other.9 One common but unfortunate feature of many prevailing IP theoretical rationales is that they tend to be operationally agnostic toward the legitimate demands of social justice.10 Throughout the world, myriad conditions of IP-related social deficiency and injustice are tolerated within sophisticated IP regimes built upon and sustained by the predominant IP theoretical rationales. From the lack of affordable access to patented drugs and medicines to the unchecked neocolonial misappropriation of marginalized community traditional knowledge and expression, the major IP regimes often fail to serve many of those most in need. As intellectual property has become increasingly central to the pursuit of daily life, also increasingly evident is that a more socially balanced and responsive theoretical underpinning to support the social function of IP protection in the political economy is needed throughout the global society. This chapter offers a theoretical rationale of IP protection that explicitly requires consideration of social justice values of equitable access, inclusion, and empowerment in the construction and administration of IP law. Based upon recognition of the interdependent relationship between the social utility goals of IP protection and the social justice effects and obligations of the IP legal regime, the IP Social Justice (IP-SJ) rationale places ecumenical human actualization and beneficent social progress at the center of IP protection. The chapter begins by briefly summarizing the two leading historical theoretical rationales for IP protection, economic positive social utility and natural rights theory, and highlights the failure of those rationales to consider how conditions of IP social injustice not only harm and fail people, but actually undermine the overarching social function of the IP system itself. The chapter then details the social justice rationale of IP protection, which posits an inherent and interdependent relationship between the social utility function of IP protection and its social justice obligations and effects: In order to achieve its positive social utility purpose of promoting socially beneficent intellectual activity through human actualization, the intellectual property regime must be conceived and structured so as to promote the most widespread and socially equitable participation in the resulting IP ecosystem. Accordingly, to ensure that the IP regime performs its function in a manner consistent with its social justice obligations as a matter of 9

10

See, e.g., Fisher, supra note 4, at 7 (analyzing four leading theories of intellectual property and noting how jurists sometimes blend “discrete” theoretical perspectives); Alfred C. Yen, Restoring the Natural Law: Copyright As Labor and Possession, 51 Ohio St. L.J. 517, 531 (1990) (“Even though economics became the ostensibly sole basis of copyright, modern copyright somehow evolved along lines similar to those suggested by the natural law. This can be seen most clearly by outlining the basic copyright doctrines of originality and the idea/expression dichotomy and then comparing them to the natural law of property through labor and possession . . . [M]odern American copyright appears to vindicate an author’s right to property in the fruits of her labor, but subject to the limits of what can be feasibly possessed”); cf. David McGowan, Copyright Nonconsequentialism, supra note 8, at 3 with Hughes, supra note 2, at 305–306 (respectively invoking labor theory to support nonconsequentialist and consequentialist justifications for IP protection). While the term social justice is perhaps best defined in the context of the circumstances which require its invocation, social justice is commonly understood to mean “fair treatment of all people in a society, including respect for the rights of minorities and equitable distribution of resources among members of a community”), https://www.dictionary .com/browse/social-justice. See also https://www.investopedia.com/terms/s/social-justice.asp (“Social justice is a political and philosophical theory which asserts that there are dimensions to the concept of justice beyond those embodied in the principles of civil or criminal law, economic supply and demand, or traditional moral frameworks . . . Historically . . . the idea of social justice is that all people should have equal access to wealth, health, well-being, justice, privileges, and opportunity regardless of their legal, political, economic, or other circumstances”); Allison Newton, A Picture Is Worth a Thousand Lives: Student Athletes’ Publicity Rights and Social Justice, 12 Sci. & Intell. Prop. L. Rev. 42, 46 (2019) (“[t]he concept of egalitarianism or the equal distribution of wealth, opportunities, and privileges in society”); Maj. Gen. Charles J. Dunlap, Jr., Social Justice and Silicon Valley: A Perspective on the Apple-FBI Case and the “Going Dark” Debate, 49 Conn. L. Rev. 1685, 1687 (2017) (“[g]enerally equated with the notion of equality or equal opportunity in society”); see generally Amartya Sen, Development as Freedom (1999).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

79

practice as well as in theory, the IP ecosystem must be regularly assessed, and as necessary revised, for adherence to fundamental principles of socially equitable access, inclusion, and empowerment. A. The Economic Utility Rationale Throughout much of the twentieth century, the economic positive social utility rationale of intellectual property dominated global IP law and policy discourse, particularly in the United States.11 In essence a consequentialist utilitarian methodology,12 under the prevailing interpretation, the fundamental premise of the economic utility rationale is that people require pecuniary incentives to produce intellectual property, without which most potential innovators and creatives will instead devote their energies toward other, remunerative pursuits.13 To promote IP endeavor, the IP law provides the necessary IP production incentives through the recognition of private property rights in IP output, such as books or pharmaceutical drugs, which rights IP producers can exploit for their financial gain.14 While the economic utility rationale is centered around economic incentives, it further cautions that IP production incentives should be cost efficient – in other words, society should limit such incentives to those which are actually necessary to induce IP endeavor, particularly where providing incentives will negatively affect the interests of society as a whole.15 Consequently, IP law should strike an optimal balance between the provision of private property 11

12

13

14

15

See, e.g., Mossoff, supra note 6, at 716 (“Courts and scholars have justified the patent’s right to exclude on the grounds that it provides an incentive to invent, which achieves social utility by advancing the constitutional purpose in promoting the useful arts”). See generally William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. Legal Stud. 325 (1989); William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law 5 (2003); Stanley M. Besen & Leo J. Raskind, An Introduction to the Law and Economics of Intellectual Property, 5 J. of Econ. Persp. 3–27 (1991). See generally Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Yochai Benkler, Through the Looking Glass: Alice and the Constitutional Foundations of the Public Domain, 66 Law & Contemp. Probs. 173, 176 (2003) (“Ours is a self-consciously utilitarian, not moral, theory of (intellectual property) rights”); McGowan, supra note 8, at 8 (“Utilitarianism is welfare consequentialism. This means utilitarian ethics evaluates acts, rules, or states of affairs by their consequences, and evaluates consequences using welfare as a measure”); John Duffy, Rethinking the Prospect Theory of Patents, 71 U. Chi. L. Rev. 439 (2004) (“Traditionally, the economic rationale for granting intellectual property rights in innovations has been that the rights provide an incentive or reward for the sizeable investments needed to create the intellectual property disclosed in the patent document”); Ward S. Bowman, Jr., Patent and Antitrust Law: A Legal and Economic Appraisal 2 (1973) (“Invention, like other forms of productive activity, is not costless. Those who undertake it, therefore, must be rewarded”); Samuel Oddi, Un-Unified Economic Theories of Patents: The Not-Quite-Holy Grail, 71 Notre Dame L. Rev. 267, 275–81 (1996). See generally Robert P. Merges, Justifying Intellectual Property (2011) (describing and critiquing the dominant utilitarian justification for IP rights). See, e.g., Mark A. Lemley, The Economics of Improvement in Intellectual Property Law, 75 Tex. L. Rev. 989, 1074–76 (1997); Yochai Benkler, Siren Songs and Amish Children: Autonomy, Information, and Law, 76 N.Y.U. L. Rev. 23, 59–60 (2001). See, e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558 (1985) (“The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in ‘Science and useful Arts’”); Justin Hughes & Robert P. Merges, Copyright and Distributive Justice, 92 Notre Dame L. Rev. 513, 514 (2016) (“[T]he dominant methodological approach in the field emphasizes incentives for aggregate production of information goods. The primary aim of this utilitarian framework is to provide economic encouragement to creators while insuring maximum access to the works creators produce”). See, e.g., Landes & Posner, supra note 11 at 325; Harper & Row Publishers, Inc., 471 U.S. at 558; Lemley, supra note 13, at 1045–46.

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

80

Lateef Mtima

right incentives and their social cost, i.e., the corollary restrictions upon the public’s right to use IP works. “The goal is to set the incentives just right, so society receives the maximum number of works of the highest quality at the lowest possible overall social cost.”16 B. Natural Rights Rationales In many European and other nations, the predominant IP theoretical rationale is based on natural rights theory17 and encompasses both consequential and nonconsequential dimensions.18 Natural rights theory generally affirms the entitlement of all individuals to fundamental human rights merely by virtue of being human. They are premised on the concept of the inherent worth and dignity of each person and they have been applied to create and support both civil and political rights and liberties,19 and economic, social, and cultural rights.20 Combined, these two classes of rights support realization of an individual’s liberty and selfactualization. Whereas the economic utility rationale supports IP protection as a means by which to achieve an important social goal (typically economic progress), IP natural rights theorists generally invoke natural rights rationales to support the idea that IP producers have a natural right to exercise dominion over their own intellectual creations. The idea is that a person’s creative act and the results produced thereby are extensions of that person and that it is in the nature of being that one owns what one creates. Many natural rights IP theorists employ an absolutist conception that strictly curtails the rights of IP users to engage with others’ IP output in the pursuit of their own self-fulfillment.21 16

17

18

19

20 21

Hughes & Merges, supra note 14, at 514. See also McGowan, supra note 8, at 13 (“Limiting the term of [copyright protection] is consistent with expression maximization, and probably with utilitarianism”); William Fisher, supra note 4, at 1. Hugh Breakey, Natural Intellectual Property Rights and the Public Domain, 73 Mod. L. Rev. 208–39 (2010); Sue Leimer, On the Origins of Le Droit Moral: How Non-Economic Rights Came to Be Protected in French IP Law, 19 J. Intell. Prop. L. 65 (2011) https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1907263 (discussing the origins and objectives of moral rights as an aspect of the natural rights perspective toward IP protection). See, e.g., Hughes, supra note 2, at 296–97 (“Locke’s [natural rights] theory of property is itself subject to slightly different interpretations. One interpretation is that society rewards labor with property purely on the instrumental grounds that we must provide rewards to get labor. In contrast, a normative interpretation of this labor theory says that labor should be rewarded . . . Locke’s labor theory, under either interpretation, can be used to justify intellectual property”). See, e.g., International Covenant on Civil and Political Rights, arts. 1 & 27 (entry into force 23 March 1976) (art. 1, in part: “1. All peoples have the right of self-determination. By virtue of that right they freely determine their political status and freely pursue their economic, social and cultural development”); see also International Covenant on Economic, Social, and Cultural Rights. See generally Creating Selves: Intellectual Property and the Narration of Culture (Joanna Gibson ed., 2006). Id. International Covenant on Civil and Political Rights, art. 1 See, e.g., Adam D. Moore, A Lockean Theory of Intellectual Property, 21 Hamline L. Rev. 65 (1997); Tom G. Palmer, Are Patents and Copyrights Morally Justified? The Philosophy of Property Rights and Ideal Objects, 13 Harv. J. L. & Pub. Pol’y 817 (1990). Such interpretations notwithstanding, natural rights theory does not countenance absolute rights in property or in any other interest; all rights are subject to the limitations that arise from the social, cultural, and political interests of society at large. Even the most fundamental and absolute rights like freedom of expression can be limited by other societal interests of sufficient weight. See, e.g., Krista L. Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See generally ICCPR, art. 19; Steven D. Jamar, A Social Justice Perspective on the Role of Copyright in Realizing International Human Rights, 25 Pac. McGeorge Global Bus. & Dev. L.J. 289, 296–97 (2012) (“Natural rights . . . are subject to limitations for the overall public good – indeed, serving the public good is an obligation under the social contract between a society and its citizens . . . Intellectual property . . . founded on natural law is properly subject to similar limitations for the public good. As with core human rights like freedom of expression, intellectual property rights cannot be so absolute that they unduly impinge on other rights . . . or undermine the public good”); Gordon, supra note 5, at 1535 (“Natural rights theory . . . is necessarily concerned

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

81

Perhaps the most common instantiation of natural rights theory in IP law can be found in the application of John Locke’s labor theory of property to IP protection.22 Locke’s labor theory is based upon the axiom from his religious world view that in the state of nature, resources are held in common by everyone through a grant from God. However, says Locke, in this natural state many such resources cannot be enjoyed by human beings. Thus, according to Locke’s reasoning, it is necessary that individuals exert their personal labor upon natural resources, and by doing so they add value to these natural goods and are thus entitled to private property rights therein.23 Today, IP scholars frequently invoke Locke’s labor theory to support the proposition that individuals who apply their intellectual labors to produce intellectual goods are entitled to property rights in their IP products, just as Locke claimed for real and tangible personal property.24 However, just as the economic utility rationale acknowledges the need for limitations on IP rights granted to incentivize production, the labor theory employs equitable limiting principles to restrict an individual’s right obtained by applying her labor to appropriate natural goods. The “Lockean Proviso” restricts such individual action to “at least where there is enough, and as good, left in common for others.”25 Consequently, where a resource is scarce or unique, an individual should not be permitted to acquire it unilaterally to the exclusion of others’ ability to access that resource, especially if that resource is essential to the well-being or survival of others.26 In addition, the labor theory abhors the wasteful appropriation of resources from the common stock, where others might have applied their labors toward the productive development of such resources. In the context of IP protection, these limiting principles have been invoked to support public access to the “raw materials,” e.g., existing works created by others, needed to produce IP, as well as to IP works generally.27

22

23

24

25

26

27

with the rights of the public as well as with the rights of those whose labors create intellectual products”). See also Benjamin G. Damstedt, Limiting Locke: A Natural Law Justification for the Fair Use Doctrine, 112 Yale L. J. 1179 (2003). See John Locke, Second Treatise of Government, in Two Treatises of Government (P. Laslett rev. ed. 1963) (3d ed. 1698) §§26–29, 127–28, §§ 138–40 (P. Laslett rev. ed. 1963) (3d ed. 1698). See Walton H. Hamilton, Property: According to Locke, 41 Yale L.J. 864, 867–68 (1932); Henry Moulds, Private Property in John Lock’s State of Nature, 23 Am. J. of Econ. & Soc. 179, 179 (1964). “Now there must be some rightful means by which the individual may appropriate for consumption from the common stock.” In this context Locke was not referring to intellectual property but specifically to real property and tangible personal property. See, e.g., McGowan, supra note 8, at 68 (“If we secularize Locke, we have . . . the notion that one owns one’s body, and thus one’s labor, and thus the products of one’s labor”); Gordon, supra note 5, at 1540 (“[C]ourts have extended common law protection to intangibles on the Locke-like ground that no entity should ‘reap where it has not sown’”). See generally Robert P. Merges, Locke for the Masses: Property Rights and the Products of Collective Creativity, 36 Hofstra L. Rev. 1179, 1180 (2008); Robert P. Merges, Locke Remixed, 40 U.C. Davis L. Rev. 1259, 1265 (2007). John Locke, Second Treatise of Government, in Two Treatises of Government (P. Laslett rev. ed. 1963) (3d ed. 1698). Jorn Sonderholm, Ethical Issues Surrounding Intellectual Property Rights, in New Frontiers in the Philosophy of Intellectual Property 110, 117 (Annabelle Lever ed., 2012) (“The natural right of appropriation central to libertarianism has an important proviso . . . which is an ‘enough and as good’ clause on original appropriation . . . Where resources are scarce, one cannot legitimately stake a claim to something by annexing one’s labour to it . . . If the resource is necessary for the continued well-being of others, then the fact that x was the one who developed or improved the resource does not give x exclusive rights over it. x’s entitlement to reward for her labour is overridden by the entitlement of others to that which is necessary for their survival”). See Moulds, supra note 23, at 183 (“But waste would be robbery because the common stock would be depleted”); Hughes, supra note 2, at 298 (“What justly can be reduced to property in this primitive state also is limited by Locke’s introduction of the non-waste condition. This condition prohibits the accumulation of so much property that some is destroyed without being used”). See generally Robert Nozick, Anarchy, State, and Utopia 178–82 (1974). See Jessica Litman, The Public Domain, 39 Emory L.J. 965 (1990); Lateef Mtima, The Idea Exclusions in Intellectual Property, 28 Tex. Intell. Property L.J. 343, 371–74 (2020) (explaining how Locke’s limiting principles preclude ownership of the “raw material” of ideas, which would result in artificial depletion and thus waste of these resources);

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

82

Lateef Mtima

C. The Prevailing Theoretical Rationales’ Indifference to Social Justice Obligations IP scholars and policymakers rely upon economic social utility and natural rights theories to support various IP regimes throughout the Western world and in many non-Western nations. These theories tend to be used primarily to justify granting IP rights in general and in supporting an expansive view of them in favor of commercial owners and transactors in particular. As noted above, these theories often cherry-pick ideas from their sources thereby distorting the more complete versions of their originators by ignoring the social benefit and societal claims that limit even Locke’s original presentation of his more balanced and nuanced approach. Even utilitarians such as Bentham and Mills agreed that there are proper and just societal limits at least insofar as the calculus of utilitarian benefits encompassed social benefit, not just individual benefit. However, the more recent versions of these theories extending them into IP domains are rarely interpreted or applied so as to require or to fulfill affirmative obligations of social justice. For some proponents of the leading theoretical rationales, deliberate social justice objectives seem to be, if not alien to IP protection, then at best an uneasy fit.28 For example, in advocating in favor of a strict economic-incentive utilitarian rationale of IP protection, legal scholar Mark Lemley characterizes IP rationales based on moral principles as “faith-based,” asserting that unlike utilitarian theories, moral-centered rationales are not amenable to empirical assessment of their social efficacy. “[O]nce one abandons utilitarianism it is hard to find a basis for a prepolitical right to IP . . . A utilitarian IP framework has a metric for deciding whether we should give control over [intellectual goods] to the people who claim them.”29 From this perspective, to the extent that social justice objectives or effects are incompatible with empirical metrics, they fail to provide a legitimate rationale for IP protection.30 The economic incentive/empirical metrics “hand-in-glove superiority” perspective has two principal weaknesses. First, a “moral-centered” IP rationale, such as IP-SJ, is not per se antithetical to empirical metrics; some aspects of IP law effects with respect to social justice (or at least social injustice) are measurable. Miriam Marcowitz-Bitton and Emily Michiko Morris have undertaken empirical analyses of the distributive justice effects of “amoral”/utilitarian registration prerequisites to IP protection.31 Professors Marcowitz-Bitton and Morris

28

29

30

31

Damstedt, supra note 21 (arguing that unnecessary restrictions upon access to nonrivalrous IP goods violates the waste principle, because society is needlessly denied the benefits that would be derived from some unauthorized uses of IP products). Barbara Friedman, From Deontology to Dialogue: The Cultural Consequences of Copyright, 13 Cardozo Arts & Ent. L.J. 157, 171–72 (1994); Kenneth Himma, Toward a Lockean Moral Justification of Legal Protection of Intellectual Property, 49 San Diego L. Rev. 1105, 1116 (2012); Peter Lewin, Creativity or Coercion: Alternative Perspectives on Rights to Intellectual Property, 71 J. Bus. Ethics 441, 441 (2007); Reuben Binns, Justifying Patents: A Critique of the Deontological Approach 21 (2011); Jeremy Sheff, The Ethics of Unbranding, 21 Fordham Intell. Prop. Media & Ent. L.J. 983, 1005 (2011). Lemley, supra note 3, at 1338, 1341. Professor Lemley does seem to acknowledge, however, that some nonutilitarian values might be considered in deciding upon the social objectives of the IP regime. Notwithstanding his predilection for empirical confirmations, Professor Lemley concedes that the conclusions that can be drawn from the empirical assessment of the IP regime are far from black and white. See Lemley, supra note 3, at 1334. See also Glenn Lunney, Copyright’s Excess 84–122 (2018) (detailing the complexity of confirming a positive correlation between copyright economic incentives and qualitative outcomes in the music industry). Consequently, the “incompatible with empirical metrics” challenge to moral-centered IP rationales seems more pretextual than substantive. See Miriam Marcowitz-Bitton & Emily Michiko Morris, The Distributive Effects of IP Registration, 23 Stan. Tech. L. Rev. 306, 328–46 (2020). Professors Marcowitz-Bitton and Morris therein recount the litany of utilitarian functions that registration requirements serve. Id. at 312–15.

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

83

conclude that these social justice-agnostic mechanisms have empirically measurable impacts upon IP social justice (and consequently IP social utility) outcomes: [A]lthough many [commentators] have noted the disparate impact sometimes caused by the criteria used to grant or deny [IP] rights . . . the registration process itself can also systematically restrict access to full IP rights. Three major characteristics of the various intellectual property regimes cause this long-overlooked lack of accessibility. The first is the cost of the registration process, including filing and maintenance fees, legal advice, and more . . . The second characteristic is examination by human agents as a condition for registration and the inevitable biases, whether conscious or unconscious, to which this gives rein . . . The third characteristic is that registering for IP rights requires at least some understanding of the registration process and the advantages it can offer. Inventors and creators who lack access to the requisite knowledge will thus be at a disadvantage in protecting their works.32

Certainly, the effects of social justice-targeted modification of IP registration procedures (e.g., reducing registration fees for marginalized IP producers) can be empirically confirmed (i.e., mapping the ensuing increases in minority and women IP registrants).33 Moreover, Professors Marcowitz-Bitton and Morris advocate that social justice-oriented enhancement of the protections available for unregistered IP achievements, among other things, can help to level the playing field for IP producers who lack the tools for successful navigation of formal registration procedures.34 The effects of implementing such proposals could likewise be empirically monitored and confirmed. In a similar vein, M. Schuster, E. Davis, K. Schley, and J. Ravenscraft have undertaken empirical analyses of the patent application grant rates in the United States for women and minorities.35 Their research determined that “that nonwhite applicants are less likely to secure a patent [and] consistent with implicit bias theories, data on social stereotypes, and the existing literature on gender and patenting – some negative bias is introduced during prosecution of female inventor applications.”36 A social justice rationale of IP protection would contemplate these outcomes as inconsistent with the goals of the IP regime, and the results of measures adopted to correct these imbalances are clearly amenable to empirical confirmation.37 These analyses demonstrate that social justice and possibly other “moral” rationales for IP protection are amenable to empirical testing.38 Moreover, the foregoing research and analysis 32 33

34 35

36 37

38

Id. at 309. See, e.g., https://www.uspto.gov/about-us/news-updates/uspto-releases-updated-study-participation-women-us-innov ation-economy-0. Other IP Social Justice objectives are also amenable to empirical assessment. See https://www .americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/september-october/diversity-patentlaw-data-analysis-diversity-patent-practice-technology-background-region/; https://iwpr.org/iwpr-general/the-genderpatenting-gap/; https://www.ipwatchdog.com/2022/03/24/data-show-uspto-patent-pro-bono-program-working-womenminorities/id=147830/#:~:text=A%202019%20USPTO%20study%20found,program%20self%2Didentified%20as% 20Hispanic. Id. at 361–73. W. Michael Schuster et al., An Empirical Study of Patent Grant Rates as a Function of Race and Gender, 57 Am. Bus. L.J. 281 (2020). For a similar empirical analysis of copyright registration rates, see Robert Brauneis & Dotan Oliar, An Empirical Study of the Race, Ethnicity, Gender and Age of Copyright Registrants, 86 Geo. Wash. L. Rev. 46, 50 (2018). Schuster et al., supra note 35, at 303–304. See id. at 315–17 (proposing anonymous patent application procedures and implicit bias training for patent examiners as corrective measures.) Consequently, it would seem that in this respect the IP-SJ rationale would actually satisfy Professor Lemley’s criteria (“If your theory is one that can be tested, and if you will update your beliefs as new evidence comes in, good for you”). See Lemley, supra note 3, at 1345. See also Brauneis & Oliar, supra note 35, at 46. Jessica Milli et al., Equity in Innovation: Women Inventors and Patents, C448-Equity-in-Innovation.pdf (iwpr.org).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

84

Lateef Mtima

would seem to suggest that the issue is not whether IP social justice outcomes and effects can be empirically determined, but rather whether social justice outcomes and effects provide assessment metrics that some empirically minded IP theorists would consider important in the first place.39 An even more significant weakness of the economic incentive/empirical metrics perspective is the failure to recognize that not all of the social goals or effects of IP protection can or should be empirically determined. For example, it may not be possible to empirically confirm that, as a result of various racially biased copyright provisions and practices, numerous Black creators were either deprived of their copyright interests or simply chose to abandon expressive pursuits given the reality of unequal opportunity or justice under copyright. Nonetheless, there is little doubt that such injustices occur and concomitantly undermine the social function of copyright. It is the “blind faith” in the presumed social objectivity and empirical provability of economic mechanisms that has rendered the IP regime operationally oblivious to the debilitating effects of conditions of racism, sexism, and other social inequities upon the IP legal and transactional apparatus.40 While the detrimental impact of IP social injustice upon IP social utility can sometimes be empirically measured, limiting the goals and assessment metrics of IP protection to only those that can always be empirically tested or confirmed unnecessarily narrows the function of IP protection in the political economy. Another misapprehension towards “moral-centered” IP rationales expressed by some IP theorists is that such rationales are difficult if not impossible to delimit.41 Conditions of social injustice or deficiency can be pervasive, from illiteracy to hunger to pestilence. Consequently, if the IP system is rendered subordinate or even merely responsive to such concerns, the rights of IP producers would become hopelessly indefinite, if not outright illusory. Whether it be an IP consumer in need of some IP product, an individual IP producer seeking to rescind an unfavorable license agreement, or any other claim of IP-related social injustice, addressing the asserted social inequity would take precedence over the rights and interests of the IP rightsholder. The concern that recognition of the social justice obligations and effects of the IP regime will upend the IP ecosystem is not only unwarranted, but it reflects a fundamental misconception of the social function and goals of IP protection. The purpose of the IP regime is to promote the widest possible engagement in IP endeavor towards society’s ultimate benefit. In order to achieve this goal, the system must be structured so as to ensure equitable access to IP output, in order to

39

40

41

Thus, it seems that some strict consequentialists favor empirical metrics not because they accurately assess the total efficacy of the IP regime, but because they are especially well-suited to measuring outcomes and effects which tend to confirm the efficacy of strict consequentialist approaches to IP protection. Moreover, many scholars challenge the purported “objectivity” of free market economic mechanisms and other neoliberal features of the prevailing rationales. Metka Potočnik mounts a direct challenge to this presumption. See Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries, ch. 23 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Elsewhere in this volume other scholars similarly debunk the “neutrality” of the rules of IP protection. See Robert F. Brauneis, Copyright, Music, and Race: The Case of Mirror Cover Recordings; Seán M. O’Connor, The Lead Sheet Problem in Music Copyright; Elizabeth L. Rosenblatt, User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks; Shubha Ghosh, Patenting Custom Fit, Aspiring for Social Justice; and Deidré A. Keller & Anjali S. Vats, A Primer on Critical Race Intellectual Property, respectively chs. 9, 14, 16, 25, and 26 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima, eds., 2023). See, e.g., Friedman, supra note 28, at 171–72 (arguing that consequentialist approaches to IP protection better serve society as “[d]eontological formulations of property rights obscure important insights about the goals intellectual property should serve”); see also Michael A. Kanning, A Philosophical Analysis of Intellectual Property: In Defense of Instrumentalism, https://digitalcommons.usf.edu/cgi/viewcontent.cgi?article=5290&context=etd.

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

85

spark further IP endeavor, as well as equitable inclusion in the IP ecosystem, in order to ensure widespread and sustained contribution to the societal IP storehouse. In short, the construction and implementation of an efficacious IP regime requires an understanding of the interdependent relationship between IP social utility and IP social justice: adherence to social justice mandates does not undermine the integrity and success of the IP regime but instead ensures it.42 Whereas IP-SJ arguably remaps the contours of IP protection it by no means eliminates the boundaries that preserve IP rights and interests. Not every instance of unmet IP need or unredressed IP injury will impede the overarching social function of the IP regime. However, systemic IP injustice neuters the overall efficacy of the IP ecosystem.43 In other words, the parameters of IP social justice are dictated by the overarching requirements of IP social utility. Whether systemic IP injustice manifests as endemic racial exploitation in IP industries, obdurate gender disparity in IP production attribution and compensation, or nocuous lack of access to health and medicines, the social justice rationale of IP protection not only permits but requires that the system take notice of such inequities and provide redress as necessary to preserve the integrity and efficacy of the system as a whole.44 In some ways similar to economic utilitarian theorists’ skepticism towards social justice rationales of IP protection, many contemporary natural rights theorists also eschew social justice mandates in their idealized IP regimes. As discussed above, many IP theorists invoke natural rights theories in support of IP producer property interests but rarely resort to such theories to support social justice as a direct or mandatory obligation of IP protection. Although social justice mandates are certainly consonant with natural rights theories of IP protection,45 many national natural rights-oriented IP regimes, and to some extent even the framework of international IP law, tend to prioritize the commercial interests of IP rightsholders and place little emphasis upon

42

43 44

45

See Lateef Mtima, IP Social Justice Theory: Access, Inclusion, and Empowerment, 55 Gonz. L. Rev. 401, 413, 414–15 (2020) (“[T]he [IP Social Justice] analysis seeks to determine whether social justice obligations and aspirations can be shown to be intrinsic to fulfillment of the intellectual property social function . . . [T]he nature of IP endeavor is such that in order to participate, one must typically first gain access to the IP ecosystem: access to preexisting IP output, which can inspire new IP endeavor, and access to the IP infrastructure and the opportunity to share the results of one’s efforts with society. Moreover, such access must be socially equitable in order to maximize the efficacy of the regime; everyone must enjoy equitable access to IP inspiration, as well as equitable opportunity to contribute IP output and obtain the rewards attendant to IP production. In this regard, unjust traditions of inequitable treatment of marginalized IP producers cannot be tolerated. At best, such practices divert IP production incentives away from prospective IP producers; at worse, they discourage participation in the IP regime altogether”). Mtima & Jamar, supra note 11. See Adam Mossoff, The Trespass Fallacy in Patent Law, 65 Fla. L. Rev. 1687, 1695–96 (“[C]ommentators and judges employ a trespass standard to evaluate, or more precisely to criticize, the operation of the patent system today. It is alleged that trespass doctrine is determinate and efficient because fences define clear physical boundaries for real estate. Thus, patents, or more precisely patent claims, should be as equally clear as fences and thus as equally determinate as trespass doctrine . . . The problem with the trespass standard in patent law is that it is fundamentally mistaken – it is conceptually invalid and empirically unverified. In converting a descriptive analogy into a normative standard, the advocates of the indeterminacy critique have created a fallacy – the trespass fallacy. Conceptually, this standard improperly compares the boundaries of a complete legal right (patent) with a single doctrine (trespass) that constitutes only one part of another legal right (real estate). Empirically, this standard asserts without any actual proof whatsoever that boundary disputes of real estate are clear, determinate, and efficient”). See, e.g., Adam Mossoff, Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent “Privilege” in Historical Context, 92 Cornell L. Rev. 953, 971–73 (2007); Jamar, supra note 21, at 296–97. See also Cox, supra note 21 (“[IP-access] rights are well recognized in the international community and exist in both soft law documents – such as the Universal Declaration on Human Rights – as well as hard law – such as the International Convention on Economic, Social, and Cultural Rights (ICESCR), the International Convention on Civil and Political Rights (ICCPR); Convention on the Rights of the Child (CRC) and the Convention on the Rights of Persons with Disabilities (CRPD)).”

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

86

Lateef Mtima

the public’s right to engage with the tangible fruits of IP endeavor.46 Moreover, the impetus of natural rights as applied to IP tends to focus on individuals (whether producers or users) as opposed to collective societal needs or objectives. Consideration of the public’s interest in a balanced IP ecosystem is generally a secondary concern, and when addressed at all, it is treated more as a matter of achieving “social interoperability” with human rights edicts, which are considered external to the IP regime.47 D. Transcending the Prevailing Theoretical Rationales: The Necessity and Elegance of IP-SJ The socially imbalanced interpretation and application of the predominant IP rationales has resulted in an unbalanced global IP ecosystem. The global IP regime is rife with systemic conditions of racial exploitation48 and gender inequity,49 neocolonial misappropriation of the indigenous knowledge and expression of developing nations and marginalized groups and cultures,50 insufficient investment toward meeting many of society’s critical albeit “non-commercial” IP needs,51 and other examples of systemic vitiation of the function of IP protection in the total political economy.52 In the modern global society in which IP affects all aspects of daily life, the need for a more socially capacious perspective of IP protection, one which 46

47

48

49

50

51

52

See Cox, supra note 21, at xx (“Despite the existence of several treaties noting the importance of access to knowledge and information, intellectual property laws can pose a barrier to these rights . . . The success of the Marrakesh Treaty was a historic one: it is the first WIPO treaty to focus on the rights of the user, rather than the right of the rightsholders”). See Cox, supra note 21, at 1–2; see also Lateef Mtima, Copyright and Social Justice in the Digital Information Society: “Three Steps” Toward Intellectual Property Social Justice, 53 Hous. L. Rev. 459, 487–92 (2015). See Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See also Brauneis, supra note 40; Potočnik, supra note 40; O’Connor, supra note 40; and Keller & Vats, supra note 40. See J. Janewa Osei-Tutu, Intellectual Property, Social Justice and Human Development: Empowering Female Entrepreneurs Through Trademark Law, ch. 20 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See also Brauneis, supra note 40; Potočnik, supra note 40; and O’Connor, supra note 40. See Madhavi Sunder, Intellectual Property After George Floyd, ch. 27 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Rosenblatt, supra note 40; see also Angela R. Riley, Recovering Collectivity: Group Rights to Intellectual Property in Indigenous Cultures, 18 Cardozo Arts & Ent. L.J. 175–76 (2000). Debora Halbert and Billy Meinke, Intellectual Property and Social Justice Futures, ch. 24 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Hannibal Travis, Copyright Class Struggle 17 (2018) (“In theory, the [copyright] law guarantees a right for anyone to protect, license out, and grow rich from ideas, images, and genre archetypes. Digital technology and legal gymnastics severely curtail this right in practice . . . The dilemma is that individual creators are often frustrated when they invoke the generous rights that are advertised. Problems persist in remedying content theft by copyright conglomerates, ensuring impartial treatment of distinct types of creators, and guaranteeing due process to the poor or middle-class author”); Lateef Mtima, Digital Tools and Copyright Clay: Restoring the Artist/Audience Symbiosis, 38 Whittier L. Rev. 104, 106–108 (2018) (“[E]ven the copyright property-rights typically afforded to creators can be vitiated such that they tend to undermine, rather than benefit, creator interests . . . Creators typically use these rights to enter into collaborative enterprise with commercial distributors, who own or control fixation and dissemination technologies, such as publishing houses or record companies . . . Unfortunately . . . [u]nder the prevailing industry contractual mechanisms and corollary accounting practices, creators are often surprised to discover that the licensing of their copyrights and interests nets them little to no monetary compensation . . . the result of an arcane business framework rooted in archaic music industry traditions, perpetuated by recording company oligopoly control and sustained through the general absence of artist bargaining power”); see also Stacy F. McDonald, Comment, Copyright for Sale: How the Commodification of Intellectual Property Distorts the Social Bargain Implicit in the Copyright Clause, 50 How. L.J. 541, 570–71 (2007).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

87

acknowledges the interdependent relationship between the social utility function and the social justice obligations and effects of the IP regime, is self-evident.53

ii. intellectual property social justice: a positive social utility rationale for ip protection Much the same as the economic utility rationale of intellectual property protection, the IP-SJ rationale is not based on any acknowledgment of IP producer divine rights in the fruits of their labors nor even on IHR premises of the inherent nature of human dignity,54 but rather contemplates IP protection as a means through which to achieve important social ends. The theory of IP-SJ can thus be considered as a species of positive social utilitarianism.55 This utilitarian foundation is articulated in IP-SJ’s three core postulates: 1. The purpose of and justification for intellectual property protection is to promote particular kinds of intellectual endeavor in the cause of human actualization toward the greater societal good. 2. The social function of the IP regime can only be fully achieved by the adoption and implementation of a system of legal rights and restrictions designed to maximize socially equitable IP participation and concomitant quantitative and qualitative outcomes. 3. In order to ensure that the IP regime performs its function in a manner consistent with its social justice obligations as a matter of practice as well as in theory, the IP ecosystem must be regularly assessed regarding its realization of fundamental principles of socially equitable access, inclusion, and empowerment. A. First Postulate: Promoting Socially Beneficial Intellectual Endeavor IP social justice theory contemplates intellectual property protection as a social ordering mechanism through which society progresses by promoting and nurturing particular kinds of socially beneficent intellectual activity.56 Like all other social ordering mechanisms (such as law generally), intellectual property protection is but one part of a complex and organic

53

54

55

56

See Peter Menell, Property, Intellectual Property, and Social Justice: Mapping the Next Frontier, 5 Prop. Rights Conf. J. 147, 149 (2016) (“The ascendency of intangible resources profoundly affects social justice – from access to lifesaving genetic information to the control of knowledge dissemination, creative freedom, group identity, and, increasingly, the distribution of wealth”). It is consonant with those ideas, e.g., its emphasis on human actualization, but not premised on them as necessary axioms. See, e.g., Cox, supra note 21, at 1 (“The positive social utility aspirations articulated in the IP Clause of the U.S. Constitution emphasize the public benefit in the recognition of IP property rights and thus manifest the IP Social Justice Rationale”). Nonetheless, IP-SJ’s prioritization of the greater societal good does not place it at odds with natural rights rationales. As discussed infra, IP-SJ contemplates IP endeavor as a fundamental embodiment of human actualization, and the social function of IP protection to be that of directing such self-development toward society’s benefit. Thus, under the IP-SJ rationale, IP protection promotes the pursuit of he “divine right” to self-fulfillment through IP endeavor and toward the betterment of society as a whole. See Menell, supra note 53, at 155 (“[T]he founders of the nation recognized the need to provide time limited intellectual property to promote technological progress and expressive creativity”); Lateef Mtima, Intellectual Property, Entrepreneurship, and Social Justice 265 (Lateef Mtima ed., 2015) (“Intellectual property social justice provides a context through which to consider the role of intellectual property protection in the total political economy . . . intellectual property protection is but one function within a complex and organic social system designed to promote the well-being of the societal body as whole”).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

88

Lateef Mtima

socio-economic system designed to promote the well-being of the societal body as a whole.57 The specific social function of IP protection in the total political economy is to foster human nourishing, flourishing, and actualization by promoting particular kinds of socially productive intellectual pursuits.58 The social justice articulation of the function of IP protection differs from the narrower function advanced by some adherents to the economic utility rationale, insofar as IP-SJ does not share the constrained economic social utility perspective that implicitly presumes that IP production, as incentivized by economic inducements, is beneficial to society. As various IP scholars have noted, proponents of the economic utility rationale rarely specify why or how the production of IP is socially positive, but instead generally consider such benefits to be selfevident.59 Even empiricists like Prof. Lemley seem to assume the value of the primacy of an economic focus for IP regimes. However, an explicit requirement that IP protection promote socially beneficial intellectual endeavor is not a merely distinction without a difference; IP-SJ demands more than mere blind faith that economic incentives will ensure IP endeavor beneficent to the social welfare. Ponzi schemes and weapons of mass destruction can constitute patentable subject matter,60 hate speech comprises copyrightable expression,61 and the United States Supreme Court has recently ruled that racial slurs can function as legitimate trademarks.62 State law IP regimes can also promote socially pernicious activity – trade secret protection encompasses racially discriminatory algorithms63 and the unlicensed exploitative use of the images and personae of racial minorities is often accommodated by state law deference to First Amendment interests.64 Accordingly, a legal regime that incentivizes IP endeavor per se,

57

58

59

60 61 62 63

64

See, e.g., John C. Reitz, Centennial World Congress on Comparative Law: Political Economy as a Major Architectural Principle of Public Law, 75 Tul. L. Rev. 1121, 1125, 1127–28 (2001) (“Each country’s principle of political economy . . . is a normative statement reflecting the conception that predominates within that country of what the appropriate relationship between the individual and the state should be . . . [T]he United States has an especially market-oriented political economy . . . The social welfare states of western Europe have more state-centered political economies . . . though less so than socialist states like the People’s Republic of China”); Vincent Mosco, The Political Economy of Communication 24 (2d ed. 2009) (“One can think about political economy as the study of the social relations, particularly the power relations, that mutually constitute the production, distribution, and consumption of resources”). For example, in the United States, the positive social utility function of IP protection is articulated as “to promote the progress of the Arts and Sciences,” as set forth in art. I, § 8 of the Constitution. As discussed below, while the economic rationale of IP protections supports this express objective, its full achievement requires recognition of the social justice effects and obligations of the IP regime. See, e.g., Mason Marks, People Are the Lifeblood of Innovation, ch. 4 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); see generally Sen, supra note 10 (1999). See, e.g., Christopher Buccafusco & Jonathan S. Masur, Intellectual Property Law and the Promotion of Welfare, in Research Handbook on the Economics of Intellectual Property Law 98, 99 (Ben Depoorter & Peter S. Menell eds., 2019) (“Although there is considerable consensus regarding IP law’s philosophical orientation, there has been little discussion of its deeper normative goals. Most courts and scholars agree with the idea that IP law should provide incentives to creators, but there has been almost no analysis of why creativity and innovation are good. This is simply taken as given”). 35 U.S.C. § 101. 17 U.S.C. § 102. See Chon & Chang, supra note 51. See Steven D. Jamar, Trade Secrets from an Intellectual Property Social Justice Perspective, ch. 7 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Yolanda M. King & Lateef Mtima, Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice?, ch. 8 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

89

without consideration of the social function of IP in the total political economy, is not one that ensures socially beneficial IP outcomes.65 From the social justice perspective of the social function of the IP regime, IP protection is a means towards socially productive ends. Peter Menell describes this social objective as the “macro cross-modal” ratiocination for IP protection. The utilitarian purposes undergirding intellectual property protection directly address multiple social justice goals [and] serve a variety of economic, human, cultural, and social goals. Advances in technological knowledge increase productivity, enhance the quality and reduce the costs of goods, and improve standards of living. Technological innovation can also address climate change, cure disease, and expand what societies can accomplish with limited resources. With regard to expressive creativity, well-functioning intellectual property systems can spur investment into the production of knowledge and can entertain and inspire.66

At the same time, however, the IP-SJ rationale does not envision that the IP regime itself determine or dictate society’s social needs. To the contrary, IP-SJ “[does] not presume to offer any particular teleology for intellectual property. Rather, that is the domain of the democratic process.”67 The IP-SJ rationale places socially harmful IP output outside the protection of a legitimate IP regime.68 In this same respect, IP-SJ abhors misogynistic, racially discriminatory, and xenophobic mechanisms or practices within the IP ecosystem, because such conduct impedes efficacious participation in the production, dissemination, and use of IP, and is therefore inimical to IP’s social function.69 Accordingly, IP-SJ mandates the construction, implementation, and maintenance of a legal regime that consciously rejects such socially negative practices, outputs,

65

66 67

68

69

As Peter Menell notes in ch. 1 in this volume, at 33, consideration of the external social effects of IP protection is critical to the ultimate social efficacy of the IP regime and thus “it is not obvious that the patent system should lack any moral compass.” Professor Menell’s observations regarding trade secret protection and the tobacco litigation are especially apt. Id. at 36–37. Similar observations can be made about the prevailing applications of natural rights theory to IP protection: recognizing IP ownership interests solely in order to reward individual investment in IP production does not distinguish between socially useful and socially harmful IP output. See Menell, supra note 53, at 161. Anupam Chander & Madhavi Sunder, Is Nozick Kicking Rawls’s Ass? Intellectual Property and Social Justice, 40 U.C. Davis L. Rev. 563, 577 (2007). As discussed above, IP Social Justice does not presume any particular teleology for the IP regime and thus does not require that said regime dictate society’s specific IP needs or priorities. Instead, those assessments are left to the extrinsic democratic or other political process. So for example, in the United States, Congress has determined that private innovation in atomic weaponry would pose a major threat to society and thus has withheld patent protection from such activities, irrespective of whether they result in novel innovation. See 42 U.S.C. § 2181 (2000); Hobbs v. U.S., 376 F.2d 488, 491–92 (5th Cir. 2000) (patent protection is unavailable for inventions useful only “in the utilization of special nuclear material or atomic energy in atomic weapons”). Professor Sean Pager has helpfully noted that with respect to copyright protection, denying protection to “socially harmful” speech would conflict with the First Amendment, as it would discriminate against certain kinds of speech, i.e., “hate speech”. As Margaret Chon and Robert S. Chang have discussed elsewhere in this volume, withholding government sanction from certain speech, such as denying trademark protection to racial slurs, does not prohibit such speech. Moreover, and specifically with respect to copyright, the ideas embodied in hate speech would be treated the same as the ideas embodied in other speech, as copyright protection does not extend to the ideas embodied in a copyrighted work. 17 U.S.C. 102. In any event, copyright protection could be “effectively withheld” from such speech in the same way that it is effectively withheld from libel or assault; by rendering such speech actionable under other, non-IP law, copyright protection, e.g., the exclusive right to reproduce such speech, is withheld as a practical matter. Indeed, with regard to the articulation of the social function of IP protection in the United States, such practices do more to undermine than to promote the progress of the arts and science, by virtue of their exclusionary and disincentivizing effects. Further, these practices can hardly be characterized as socially beneficial IP endeavor generally and certainly not with respect to those who are discriminated against.

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

90

Lateef Mtima

by-products, and related external effects, in favor of maximizing IP participation and the concomitant quantitative and qualitative outcomes. B. Second Postulate: Constructing and Implementing a System That Maximizes Equitable IP Participation and Quantitative/Qualitative Outcomes In order to achieve its social purpose, the intellectual property regime must be conceived, structured, and administered to promote the most widespread and socially equitable participation in the resulting IP ecosystem.70 The social justice rationale of intellectual property acknowledges this inherent and interdependent relationship between the social utility function of IP protection and its social justice obligations and effects, and accordingly mandates that the IP regime be constructed around principles of socially equitable access, inclusion, and empowerment. An IP regime designed and administered to guarantee socially equitable access to its benefits irrespective of wealth, class, race, ethnicity, group, or gender status, ensures that the widest possible network of minds and hearts will find the inspiration to conceive, invent, express, share, and experience beneficent intellectual product. The socially just construction, application, and enforcement of intellectual property rights ensures the equitable inclusion of everyone, including marginalized members of society, and preserves everyone’s secular incentives to contribute and disseminate the fruits of their intellectual endeavors. And socially balanced exploitation of intellectual property in accordance with the dictates of social justice helps equalize health and education standards, promotes socio-economic empowerment, and fosters universal respect for the intellectual property system.71 Metka Potočnik offers a particular social justice-oriented perspective toward IP protection through which the IP regime can achieve these aspirational goals. Potočnik proposes that relational feminism provides an appropriate lens through which to structure the IP regime in that “it reasserts the importance of human beings in the liberal legal order and it stresses the need to diversify the understanding of a multitude of human perspectives . . . [B]y reconceptualizing the human being . . . in a way that centralizes precisely the experiences, emotions, 70

71

See Menell, supra note 53, at 187–92 (“The interplay among IP, poverty, and inequality more generally is beginning to emerge as IP theory advances and the digital revolution matures . . . The so-called “brogrammer” culture in Silicon Valley discourages greater integration across gender and racial lines . . . Inequality and under-representation can distort scientific research and public health policy . . . Beyond the injustice of biased employment practices, these patterns have far reaching effects on cultural diversity and freedom of expression”); Lateef Mtima & Steven D. Jamar, Fulfilling the Copyright Social Justice Promise: Digitizing Textual Information, 55 N.Y.L. Sch. Rev. 77, 83 (2010) (“Social justice includes not only access to, but also inclusion in, the social cultural, and economic life of the country . . . These very same principles are echoed in the grant of power to Congress over copyrights and patents: the power is granted for the progress of all, not for the benefit of a few”). Mtima, supra note 56, at 17. See also Sharon Sandeen, The Value of Irrationality in the IP Equation, in Intellectual Property Law: Economic and Social Justice Perspectives 63 (2010) (“The policy question that arises [where marginalized communities do not participate in the IP system] is whether people will value a system from which they are excluded. If a substantial number of people cannot benefit directly from a system of IPRs, how likely are they to engage in the inventive and creative endeavors that it is supposed to inspire? Of equal importance, how likely are they to respect the IPRs of others?”); Christine Haight Farley, Registering Offense: The Prohibition of Slurs as Trademarks, in Diversity in Intellectual Property: Identities, Interests, and Intersections 105, 110, 111–12 (Irene Calboli & Srividhya Ragavan eds., 2015) (“Recent psychological evidence demonstrated the negative effects associated with stereotypical and derogatory references to Native American people . . . Besides this psychological harm, an additional and more symbolic harm occurs when someone’s cultural identity is literally, and legally, owned by another entity . . . By trademarking a racial referent, the message is that the referent is owned, and the owner has the legal right to use the racial term; perhaps even the obligation to use it . . . And by going into business under harmful words, the owner causes others – fans and consumers – to endlessly utter them”).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

91

ambitions, fears and dreams shared by many [of those] marginalized by liberal conceptions of the human . . . If we centralize [these] experiences to the definitional and tentative accounts we give of humanity, a different and truer picture might emerge.”72 The relational feminist emphasis on intersectionality is consistent with IP-SJ, inasmuch as it identifies the values of diversity and inclusion as essential to efficacious social ordering, just as IP SJ prioritizes these values as essential to the ultimate social efficacy of the IP regime. Indeed, IP-SJ achieves the social aspirations of the IP system precisely because it is based on a broad range of social justice-cognizant values and objectives and is not limited to economic incentives and metrics. As a result of its broader, inclusive perspective, IP-SJ theory supersedes the prevailing applications of the predominant theories supporting IP protection, which have long abided or even abetted racist, misogynistic, and other socially pernicious and unjust conditions throughout the global IP ecosystem.73 Such conditions arguably pass muster under economic utility and some other rationales of IP protection, despite having enabled the inequitable exploitation of marginalized community creative, athletic, and other talents, because they have supported corporate conglomerates and generated billions in commercial revenues – one measure of economic success.74 For those exploited by these practices, however, these “successes” perpetuate long-standing traditions of inequitable access to, exploitative inclusion in (or even exclusion from), and precious little empowerment through the intellectual property regime. From only the most myopic view of IP social utility can such outcomes be considered socially productive. These systemic abuses sap the vitality of the IP ecosystem, particularly when they disincentivize the production and use of intellectual property. Systemic indifference toward such IP social injustice only undermines the overarching social function of intellectual property protection of maximizing IP participation and the desired qualitative and quantitative outcomes.75 Despite the abuses allowed or which necessarily resulted from the exclusive focus on the economic incentives and metrics emphasized by the prevailing IP rationales, economic considerations are nonetheless thoroughly compatible with IP-SJ – indeed, they are an essential component of the calculus we advocate. While human instinct provides natural and powerful 72

73

74

75

Potočnik, supra note 40, at 484, citing Robin West, Relational Feminism and Law, in Research Handbook on Feminist Jurisprudence 65–72 (Robin West and Cynthia Grant Bowman eds., 2019). See generally Madhavi Sunder, From Goods to a Good Life (2012); Christophe Geiger, Research Handbook on Human Rights and Intellectual Property (2015). See also Ghosh, supra note 40, at 518–19. See, e.g., O’Bannon v. NCAA, 802 F.3d 1049, 1070 (9th Cir. 2015) (applying antitrust “Rule of Reason” exception to sustain NCAA policies which deny compensation to student athletes); Claeys, supra note 2, at 255, n.20 (“Consequentialisms’ critics wonder: on what grounds some consequences are classified as valuable and others as not valuable; whether and on what grounds ‘valuable consequences’ incorporate concerns about justice, fairness, or participating in a well-structured social life; how a consequentialist justification decides which beings’ consequences matter and which do not; how to make trade-offs when some beings benefit and others suffer from a given policy; and how to relate the consequences to particular individuals to consequences to the community generally”). See Schuster et. al., supra note 35, at 311–14 (“To the extent that patents are intended to encourage creation of new technologies the system may fail to achieve the proper level of innovation where patents are not equally available to all . . . Prior research finds invention to be ‘an established driver of long-term economic growth.’ That goal is undermined where significant portions of the population are disincentivized from pursuing careers in innovation or undertaking acts of invention . . . First, society loses would-be great inventors where large groups are disenfranchised from participating in invention. Second, the quality of invention diminishes in the face of largely homogeneous inventors . . . Bell et al. describe the misallocation of potentially talented inventors into other professions where their natural gifts are squandered. This concept – dubbed ‘Lost Einsteins’ – relies on career-allocation mechanisms unrelated to intelligence or aptitude for invention . . . [and] deprives society of a quantum of new inventors, and . . . improved quality of invention . . . Diverse groups of inventors . . . explore a wider scope of solutions and are more likely to arrive at an efficient resolution relative to a homogeneous group”).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

92

Lateef Mtima

motivation to create and invent,76 secular incentives and opportunities can augment the innate drive to achieve. Accordingly, the IP regime necessarily employs economic as well as nonsecular incentives to promote engagement in intellectual endeavor.77 Even more germane, economic participation incentives can be especially critical to those whose socio-economic circumstances and options are such that dedication to creative and innovative pursuits demands great personal and communal sacrifice. In marginalized communities, such dedication is often justified both by economic drives attendant to the potential for individual and communal entrepreneurial empowerment,78 as well as by noneconomic drives including politico-cultural self-determination.79 The flaw in the prevailing application of the IP economic utility rationale is its narrow premise that virtually absolute and inviolate primacy must be afforded to economic incentives and metrics to ensure adequate IP activity.80 While IP-SJ considers economic mechanisms as one of the legitimate means through which the IP regime incentivizes IP endeavor, IP-SJ is principally concerned with what kind of IP endeavor is incentivized and the structural and output effects of the regime’s incentives. Accordingly, and similar to relational feminism, IP-SJ encompasses a broad and diverse spectrum of social values and interests, and moreover, acknowledges the symbiotic importance of systemic safeguards, such as certain exclusionary doctrines which limit the scope of IP protection81 as well as various exceptions to and limitations on IP rights,82 such as fair and experimental use of IP, which limit IP producers’ control over IP output. These and other safeguards limit IP producer rights and incentives in favor of a balancing of all IP constituent interests, and thus help to ensure that the overarching goals of human actualization and the greater societal good are accorded primacy throughout the IP ecosystem.83 76

77

78

79

80

81 82

83

See, e.g., Nathan H. Lents, Why Do Humans Make Art?, Psychol. Today, Sept. 5, 2017, https://www.psychologytoday .com/us/blog/beastly-behavior/201709/why-do-humans-make-art. Mtima, supra note 42, at 417 (“Human beings often direct their intellectual energies toward creative and inventive endeavor as a matter of innate curiosity, aesthetic inspiration, or utilitarian needs. The human drive toward selfexpression and useful innovation has been manifest since the first cave paintings and the invention of the wheel. Nonetheless, material incentives to undertake specific kinds of intellectual endeavor can further stimulate such activity”). See, e.g., Kim Zetter, Teen’s DIY Energy Hacking Gives African Village New Hope, Wired, Oct. 2, 2009, 1:32 p.m., https://www.wired.com/2009/10/kamwamba-windmill/. See Osei-Tutu, supra note 49, at 435; Hughes, supra note 2, at 291 (“Of limited duration and obtainable by anyone, intellectual property can be seen as a reward, an empowering instrument, for the talented”); Mtima, supra note 56, at xvii (“To gain control over your intellectual property – the products of your mind, talent, and cultural traditions – is to gain control over resources that can give you the leverage to do business in the national and global marketplace on a level playing field”). See, e.g., Shubha Ghosh, The Merits of Ownership; or, How I Learned to Stop Worrying and Intellectual Property, 15 Harv. J.L. Tec. 454, 475 (2002) (“As long as some inventors respond to monetary rewards, the argument that intellectual property law spurs innovation still stands. [However,] basing intellectual property on the policy of stimulating progress through monetary rewards fails to answer some basic questions and creates an impoverished copyright and patent law . . . ‘[P]romoting progress’ necessarily entails addressing some fundamental questions of redistributive justice”); Daniel J. Gervais, Intellectual Property and Human Rights: Learning to Live Together, in Intellectual Property and Human Rights 14 (Paul Torremans ed., 2008) (“[I]n the very spirit of law & economics, it may be useful to question the monopoly of economic analysis on the theoretical discourse surrounding the foundations and evolution of copyright policy”). See Marks, supra note 58, at 7; Mtima, supra note 27, at 345–46. See Jonathan Band and Brandon C. Butler, Libraries, Copyright Exceptions, and Social Justice, ch. 17 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Robert P. Merges, Philosophical Foundations of IP Law: The Law and Economics Paradigm, in Economics of Intellectual Property Law 72, 92 (Ben Depoorter & Peter S. Menell eds., 2019), wherein Professor Merges

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

93

Perceiving IP protection through a social justice lens illuminates an array of social, cultural, and economic harms that can flow from the failure to appreciate the fundamental and interdependent relationship between the IP regime’s social utility objectives and its social justice imperatives.84 Intellectual property social justice (IP-SJ) thus pragmatically rejects any conceptualization of IP protection devoid of noneconomic/social justice attributes and objectives and instead prioritizes the pursuit and achievement of social justice as an inherent and fundamental purpose integral to any legitimate IP regime.85 Toward this end, the fulsome nature and range of IP regime obligations requires the development and application of proper metrics to confirm that these social justice obligations are met. C. Third Postulate: Adherence to the Principles of Socially Equitable Access, Inclusion, and Empowerment in Implementation, Administration, and Enforcement To ensure that the social justice obligations of IP protection are fulfilled in practice, the design and implementation of the IP regime must adhere to and be regularly assessed against its social justice obligations of socially equitable access, inclusion, and empowerment. These values must be explicitly applied to reveal socially unjust effects and exclusionary impacts, whether intended or unintended, within the IP ecosystem and must guide actions to reform the IP ecosystem to achieve IP social justice. Virtually all leading rationales supporting IP protection recognize some social utility goal,86 either as an explicitly articulated objective or as a benefit appurtenant to the recognition of

84

85

86

explains how economic incentives to produce IP output function as the operational means for achieving the IP regime’s broader, “extra-economic” goals: “[D]ollars and cents considerations – efficiency – is to be seen here as a tool in the service of some other, ultimate criterion. Efficiency is an operational principle meant to best implement a decision made for other (non-efficiency) reasons.” Other commentators have offered similar perspectives that confirm a positive relationship between economic incentives and broader, social justice-oriented IP objectives. See McGowan, supra note 8, at 71 (“Copyright law, like all law, is a social construct . . . [that] is at best partly utilitarian. [C]onstruction of the law begins with nonconsequentialist first principles, whose sails are trimmed until they can sustain a plausible consequentialist story”). See Anne Flanagan & Maria Lilla Montagnani, Intellectual Property Law: Economic and Social Justice Perspectives xiii (2010) (“[C]onsideration must be given . . . to the regulatory dimension [of IP law] in terms of the social goals that can be achieved through their construction. This approach is essential, if not the only one that can be employed . . . if IPRs are truly to be granted for the ultimate goal of welfare maximization”); Mtima & Jamar, supra note 70, at 81–82 (“Together, the recognized rights and interests of authors and of the public are intended to form a synergistic framework to effectuate the social utility objectives of the Copyright Clause . . . the aim of the copyright law is progress; the means is the granting of limited copyright property rights . . . The ends sought are the protection of the public interest, progress, and the public good . . . Copyright is therefore not about profit for the person–it is about ‘profit’ for society”). See Mtima, supra note 56, at 266 (“Intellectual property social justice occupies a unique space in the IP social reform discourse. Whereas the predominating reformist rhetoric confronts the challenge as one of importing pertinent social values into the IP regime, intellectual property social justice eschews any implicit conceptualization of intellectual property protection as inherently devoid of non-economic/socially benign objectives . . . Intellectual property social justice regards the values of equitable access, inclusion and empowerment as essential and indeed intrinsic to the enterprise”). See e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558 (1985) (“The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in ‘Science and useful Arts’”; Sony Corp. of Am. v. Universal Studios. Inc. 464 U.S. 417, 429 (1984) (“[T]he limited grant is a means by which an important public purpose may be achieved. It is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired”); Mtima, supra note 52, at 105–106 (proposing that the purpose of copyright is to incentivize authors to embrace information dissemination technologies “and thus increase the quantity and diversity of ideas and expression available to society”).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

94

Lateef Mtima

individual IP rights.87 For example, the fundamental premise of the economic utility rationale is that economic incentives will spark rational self-interest to fuel the engine of IP production, dissemination, and use. Motivated by the prospect of financial gain, creators and innovators will endeavor to produce IP products in accordance with “socially neutral” rules and parameters, such as patentable subject matter, copyright originality, and the like, whereupon the public purchases the resulting IP commodities it deems desirable. Consumer preference thus informs IP producers as to the public’s particular IP needs and interests. This information enables IP producers to devote their energies toward supplying the commercial marketplace with the most desired IP commodities at prices the market will bear. Undue emphasis on “objective” economic rights and incentives can actually narrow the breadth of IP social efficacy. Economic and other purportedly neutral rules and parameters can exclude creative and innovative achievements, such as improvisational jazz or indigenous medicinal techniques, from IP protection.88 Moreover, the inner workings of the IP ecosystem are not hermetically impervious to external social attitudes and conditions. Unquestioning belief in the objectivity of the IP regime has rendered it operationally vulnerable to race and gender biases and other prevalent social inequities.89 Marginalized IP producers who lack genuine freedom of contract or the access to economic and social capital presumed by neutral economic rules do not enjoy the full menu of economic incentives and rewards available to other creators and innovators. Similarly, critical societal needs that IP products could address but that lack significant commercial profit potential simply go unmet.90 Exclusive reliance upon the commercial marketplace to provide the rules of engagement, together with “hidden hand” metrics to determine the efficacy of the IP ecosystem, render that system oblivious to pertinent social inequities which may lack commercial resonance, but nonetheless negatively impact IP social utility. As Sean Pager has cogently observed in the context of copyright protection: Economic theories of intellectual property often equate progress with wealth maximization. They treat copyright laws as nothing more than a set of dials to modulate the field strength of market exclusivity to achieve the optimal output-maximizing level of creative rents, with “optimal” defined in terms of market valuations. Such narrow conceptions of “Progress” have attracted mounting criticism . . . ‘[D]evelopment’ should not be reduced to income alone [and] IP innovation cannot be captured purely in terms of commercial value. Cultural diversity, artistic

87

88

89

90

See, e.g., Katherine J. Strandburg, What Does the Public Get? Experimental Use and the Patent Bargain, 2004 Wis. L. Rev. 81, 104 (“The ‘incentive to disclose’ theory [as justification for patent protection] is based on the notion that a patent is a quid pro quo in which an inventor teaches her invention to the public in exchange for a limited period of exclusive rights to the invention”). See generally Intellectual Property Rights, Development, and Catch-Up: An International Comparative Study (Hiroyuki Odagiri et al. eds., 2010); Wang, supra note 2, at 16–25. Consequently, a determination that a particular IP mechanism is not intentionally racist does not render said mechanism race neutral. See, e.g., Brauneis, supra note 40 at 196–98; O’Connor, supra note 40, at 291–92. It is the “blind faith” in the neutrality of the IP regime that often perpetuates many of its unjust effects. Indeed, even under natural rights regimes, wherein creator and innovator interests are generally afforded primacy, marginalized IP producers are often deprived of their rights and interests. See, e.g., Anne D. Waters, Trade, Intellectual Property, and the Development of Central and Eastern Europe: Filling the GATT Gap, 26 Vand. J. Transnat’l L. 927, 943 (1993); Nicole Jantzi et al., 2019 IP Law Year in Review: European Issues, Nat. L. Rev., Feb. 11, 2020, https://www.natlawreview.com/article/2019-ip-law-year-review-european-issues; Dietmar Harhoff, Intellectual Property Rights in Europe: Where do We Stand and Where Should We Go?, Max Planck Institute for Innovation & Competition 7 (2006). See Marks, supra note 58, at 144–45.

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

95

integrity, personal expression/identity, democratic discourse, cultural dynamism, dissemination of knowledge–all of these afford richer metrics by which Progress can and should be measured.91

IP-SJ fills these and other structural gaps unaddressed by the prevailing IP rationales. IP-SJ weighs a broad range of cultural, moral, pedagogical, technological, and social values, as well as economic values, to balance and protect the interests of all IP producers, distributors, and users, including scholars, activists, and repurposers. Perceiving IP protection through a social justice lens thus allows us to see and then create an IP regime that is both fair and equitable as well as more responsive to society’s diverse and complex needs.92 Although the IP-SJ rationale provides for a more socially efficacious IP regime, it too has its limits. IP-SJ is neither intended to serve nor can it serve as a magical social panacea. As noted above, not every social deficiency that might be in some way mitigated by the intervention of IP products or activities warrants systemic modification or invocation of the IP regime. Problems of widespread poverty or inequitable access to education or healthcare are social deficiencies of societal dimension and warrant solutions on a scale well beyond the reach of IP regulation generally. IP-SJ can help address those broader issues enervating IP social utility, but no IP regime or theory would be sufficient to solve all systemic problems of social justice. Nonetheless, because the IP regime does play an important role in addressing societal problems, the IP regime must have effective tools through which to identify and correct unjust conditions and effects and to address the procedural and doctrinal inadequacies which enable them to occur. IP-SJ theory fills that need. IP justice is not a cure-all. Nonetheless, its modest requirement that conditions of social justice which impair the IP regime’s function in the total political economy warrant a systemic response is a powerful step toward justice. Consequently, evaluating the IP ecosystem for adherence to social justice edicts of access, inclusion, and empowerment only ensures that IP legal mechanisms effectuate the social function of IP protection in the real world and not merely as a theoretical aspiration. The precepts of IP-SJ thus fulfill the social promise of IP protection and help to ensure that the resultant social benefits extend well beyond enumerated artistic, scientific, and entrepreneurial advances and instead reach all dimensions of human culture and social and political development and power.93

iii. ip-sj theory provides a complete rationale for ip protection The prevailing economic utility and natural rights rationales of intellectual property reflect strict consequentialist perspectives of IP protection: by prioritizing producer rights and interests,

91 92

93

Sean Pager, Cultivating Capabilities for Creative Industry Upstarts, 21 Mich. St. Int’l. L. Rev. 547, 554 (2013). See Halbert & Meinke, supra note 51, at 499; Sunder, supra note 73, at 2–3 (“[L]aw must facilitate the ability of all citizens, rich or poor, brown or white, man or woman, straight or gay, to participate in making knowledge of our world and to benefit materially from their cultural production. Democratic cultural production promotes not only economic development from market exchanges in a Knowledge Age, but also human development. Enhancing one’s capacity to participate in cultural production and critique engenders autonomy and equality, learning, critical thinking, sharing, sociability, and mutual recognition and understanding”). See, e.g., Mtima & Jamar, supra note 58, at 85–86 (“The constitutional principles of justice, progress, equality, and liberty are directly applicable when they arise in the intellectual property context: everyone is to be included; none should be excluded; the common welfare and progress are the foci; and, although the individual should be able to benefit from his or her own creation, societal advancement is the paramount goal”); Menell, supra note 53, at 162 (“In analyzing the interplay of intellectual property regimes and social justice . . . it is also critical to assess the external effects of utilitarian intellectual property regimes . . . among the array of social justice considerations: human rights, civil rights, cultural interests, and distributive justice”).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

96

Lateef Mtima

society will obtain the desired result of increased IP activity.94 The operational priorities and policy objectives of IP-SJ are more variegated than these one-dimensional approaches to IP protection, and indeed encompass these considerations. In this regard, both economic utility and natural rights perspectives may be thought of as being completed by IP social justice theory. As discussed above, IP-SJ theory includes as one of its principles the social value of economic incentives and rewards in promoting IP activity: IP Empowerment95 for marginalized groups and communities which includes these economic aspects. Likewise, IP-SJ is not only consonant with natural rights respect for individual IP producer interests, it amplifies such concerns on behalf of those marginalized creatives and innovators historically and systemically disenfranchised of their IP rights and interests, while insuring consideration of broader effects as well. At the same time, however, IP-SJ categorically rejects consequentialist interpretations of economic utility and natural rights rationales which prioritize the interests of IP producers at the expense of other interests and concerns. IP-SJ weighs additional values, including deontological96 perspectives of IP protection, which consider the IP regime’s moral obligations to people and to benefit the greater societal good. For example, various IP scholars have invoked John Rawls’ deontological philosophy of distributive justice,97 which requires that legal systems provide the most benefit to those least advantaged,98 in the justification of IP protection. These scholars argue that IP protection satisfies Rawlsian distributive justice, in as much as the regime provides concrete opportunity for those least advantaged to acquire wealth through IP production.99 The access, inclusion, and empowerment precepts of IP-SJ not only implement such socially propitious wealth redistribution for the historically IP-underserved, they go further to require that IP protection affirmatively advance the full range of socio-economic interests of marginalized groups, and otherwise equalize knowledge, health, and other social privileges. Both results and means used to achieve them matter, including within the underlying theoretical approach to balancing interests. In this sense IP-SJ attends both to outcomes and means and thus takes a deontological stance of including social justice principles as integral to any decisions made with respect to the IP ecosystem. Another “socially conscious” theoretical rationale sometimes applied to IP protection is the “Theory of the Commons,”100 an ecological theory which identifies the social challenge of efficient management of commonly available natural resources, such as fishing ponds or timber forests. In the absence of proper regulation, such “common pool resources” are vulnerable to overuse and depletion, resulting in a “tragedy of the commons”,101 i.e., the loss of the resource altogether. Commons theory has also been applied to IP protection in support of the efficient 94

95

96 97 98 99

100

101

See generally Walter Sinnott-Armstrong, Consequentialism, in Stanford Encyclopedia of Philosophy (2019), https://plato.stanford.edu/entries/consequentialism/; Wikibooks, Introduction to Philosophy/Deontology, https://en .wikibooks.org/wiki/Introduction_to_Philosophy/Deontology. See Mtima, supra note 56, at 5, 8 (invoking the social engineering theories of Charles Hamilton Houston to construct “IP Empowerment” as a social movement to promote grassroots IP education and social entrepreneurship). See generally F.M. Kamm, Intricate Ethics: Rights, Responsibilities, and Permissible Harm (2007). See, e.g., Hughes & Merges, supra note 14, at 552. See generally John Rawls, A Theory of Justice (1971). Hughes & Merges, supra note 14, at 547–61. For a comprehensive discussion of copyright and distributive justice, see Lateef Mtima, Copyright Social Utility and Social Justice Interdependence: A Paradigm for Intellectual Property Empowerment and Digital Entrepreneurship, 112 W. Va. L. Rev. 97 (2009). See, e.g., William Foster Lloyd, Two Lectures on Checks to the Population, https://en.wikisource.org/wiki/Two_ Lectures_on_the_Checks_to_Population/Lecture_1. See Garrett Hardin, The Tragedy of the Commons, 162 Science 1243, 1244 (1968); Elinor Ostrom et al., The Drama of the Commons 3, 17 (Paul C. Stern et al. eds., 2002).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

Intellectual Property Social Justice: A Theoretical Rationale

97

management of the “natural resource” of human creative and innovative ingenuity.102 IP-SJ similarly requires the socially responsible management of IP output, and then proceeds to transcend the concerns of efficient management of shared resources to mandate affirmative cultural and technological progress as the raison d’être of the IP regime. IP-SJ theory thus combines what are perhaps the most socially beneficent attributes of the leading theories of IP protection and then adds something unique to the mix. IP-SJ theory essentially states that regardless of whether IP protection is considered an instantiation of natural law, a tool of positive social utility, a means of wealth and privilege equalization, or a mechanism for efficient resource management and dissemination, a properly conceived IP regime must be structured to cultivate human development to society’s ultimate collective benefit.103 In recognizing that this goal can only be fully achieved in accordance with the precepts of socially equitable access, inclusion, and empowerment, IP-SJ theory recaptures the moral and justiceproducing dimensions of IP protection as intrinsic to IP social utility and thereby restores the IP regime to its full function in the total political economy.104 A. IP-SJ: A Unified Theory of IP Protection Although consequentialist and deontological implementation rationales employ different strategies toward the achievement of IP social utility, these perspectives commonly regard the relationship between IP producers and society as one of tension and even conflict.105 Consequentialist and deontological rationales of IP are thus primarily concerned with delineating the societal attitudes toward IP producers most likely to maximize IP outcomes. These differing strategies toward IP social utility can be reductively depicted as two simple equations: Consequentialist (Economic Utility, Natural Rights): Production Incentives + Individual Intellectual Activity = Maximum IP vs. Deontological (Distributive Justice, Commons Theory): Social Regulation + Individual Intellectual Activity = Maximum IP

In blending core elements of consequentialist and deontological perspectives of IP protection, IP-SJ theory offers the most comprehensive and perhaps most satisfying approach toward shaping 102

103

104

105

See Mtima, supra note 27, at 367–71 (explaining how the IP regime precludes property rights in ideas as a “quasicommon pool” resource, to society’s ultimate collective benefit). See Halbert & Meinke, supra note 51 at 507. Other scholars have similarly perceived the primary function of the IP regime as one of promoting human actualization. See, e.g., Brett M. Frischmann, Capabilities, Spillovers, and Intellectual Progress: Toward a Human Flourishing Theory for Intellectual Property, 14 Rev. Econ. Research on Copyright Issues 1–38 (2017) (arguing in support of a “capabilities” perspective, which justifies IP protection as investment in the development of human potential); Buccafusco & Masur, supra note 59, at 99 (“The principal consequentialist goal of IP laws should be to maximize social welfare, where welfare is understood as subjective wellbeing”); Neil Weinstock Netanel, Copyright and a Democratic Civil Society, 106 Yale. L.J. 283, 288 (1996) (introducing the perspective of “copyright law as a state measure designed to enhance the independent and pluralist character of civil society”). See Mtima, supra note 99, at 98, 135 (“This approach . . . acknowledges that certain social deficiencies gnaw at the very foundations of [intellectual property] protection”); Sunder, supra note 73, at 3 (“[I]intellectual property laws shaped only by the narrow economic view that predominates today results in a crabbed understanding of culture and law’s role in promoting culture”). See, e.g., William Fisher, supra note 4, at 8 (“In contemporary philosophic debates, natural law, utilitarianism, and theories of the good are generally seen as incompatible perspectives”); McGowan, supra note 8, at 70 (“Industry representatives make personal digital copying sound like Armageddon. User advocates make Congress and the industry sound like fascists or Javert-like monomaniacs. Both positions are exaggerated”).

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

98

Lateef Mtima

a socially efficacious relationship between IP producers and society.106 When viewed through the lens of IP-SJ, IP producers are not perceived as being in an all-or-nothing conflict with the general public, but rather are seen as vital participants in a symbiotic ecosystem. The IP-SJ perspective not only dispels the notion of a perennial adversarial conflict between IP producers and the public, it also better comports with the interests and motivations of all IP constituents, who are rarely driven exclusively by the prospects for personal economic or other gain or social altruism. Indeed, even those motivated by predominantly pecuniary interests may well be motivated by more than a selfish focus on personal economic gain, and are sometimes driven by goals and aspirations for communal economic “uplift” and empowerment writ large.107 There will always be competing interests to be accommodated; those will not disappear. What IP-SJ provides is what we consider the best way to evaluate and accommodate those competing interests. IP-SJ accordingly contemplates the IP regime as a balanced system of symbiotic incentives and constraints intended to maximize the myriad social benefits that can be derived from intellectual property endeavor: Consequential Incentives + Individual Intellectual Activity + Deontological Regulations = IP Social Utility and Social Justice

IP-SJ thus offers a unified theoretical underpinning for intellectual property protection, one which encompasses both interest-based property rights and socially responsible moral obligations.108 Under IP-SJ, the concepts of social utility and social justice are interdependent aspirations in a unified theory of an optimized intellectual property regime.

conclusion IP-SJ theory recognizes social justice as an inherent and essential obligation of the IP regime. This perspective embodies an aspirational rationale for intellectual property protection which encompasses broad goals of individual achievement and societal progress, to be achieved in part through utilitarian mechanisms of property rights (and other) production incentives in concert with recognition of other social values and concerns. By adhering to the social justice precepts of access, inclusion, and empowerment, the IP regime can promote diverse and socially propitious participation in, and global respect for the intellectual property regime, and thereby fulfill its best and highest function in the total political economy.

106

107 108

See, e.g., Merges, supra note 83, at 91 (“For many IP scholars the choice between deontology and consequentialism is difficult; each seems to capture something important about the field. Their instinct is to fight the binary choice, [to] compromise, to reconcile, to integrate”). See generally John Sibley Butler, Entrepreneurship and Self-Help Among Black Americans (1991). See Mtima, supra note 27, at 389–92. Brett Frischmann proposes a similarly blended perspective toward the social function of IP protection (“The Capabilities Approach could reorient our understanding of IP in interesting and useful ways . . . the means of private rights would serve the instrumental purpose of promoting the end of progress, which could be evaluated in terms of capabilities rather than utility . . . law-supported or facilitated spillovers can be seen . . . as social investments in the capabilities of others. In essence, society invests in capabilities by spillovers (third party benefits in the form of certain legally sanctioned freedoms to use valuable [IP] resources) and for spillovers (social benefits associated with and produced by a more capable community”). Frischmann, supra note 103, at 2–3.

https://doi.org/10.1017/9781108697613.006 Published online by Cambridge University Press

part ii

IP Social Justice in Major Intellectual Property Domains

https://doi.org/10.1017/9781108697613.007 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.007 Published online by Cambridge University Press

4 People Are the Lifeblood of Innovation Mason Marks*

Introduction I. The Constitutional Argument for the Judicial Exceptions II. European Origins and Social Benefits III. Modern Patent Rights: Economic Incentives and Metrics Conclusion

page 101 107 109 110 114

introduction In 2019, a fierce debate erupted over the future of patent law.1 The most heavily contested issue was the fate of the judicial exceptions to patentability, rules created by federal courts that describe which types of inventions are ineligible for patent protection.2 The exceptions include abstract ideas, laws of nature, and natural phenomena.3 Throughout the twentieth century, the Supreme Court declared that these categories of discovery should be “free to all men and reserved to none” because they are the “basic tools of scientific and technological work.”4 On one side of the debate are those who believe Congress should expand the scope of patent eligibility by abolishing the judicial exceptions and limiting the role of courts to define such boundaries.5 Because this group aims to overhaul Section 101 of the U.S. patent law, which outlines the threshold requirements for patent eligibility, I call them the 101 Revisionists.6 On the other side of the debate are those who believe that the judicial exceptions serve important functions and that courts play an essential role in defining the limits of patent eligibility.7 This *

Florida Bar Health Law Section Professor, Florida State University College of Law; Senior Fellow and Project Lead of the Project on Psychedelics Law and Regulation (POPLAR), Petrie-Flom Center for Health Law Policy, Biotechnology, and Bioethics, Harvard Law School; Affiliated Fellow, Information Society Project, Yale Law School. Thank you to Lateef Mtima, Steven Jamar, and Doron Dorfman for helpful comments. 1 See Megan Molteni, Congress Is Debating – Again – Whether Genes Can Be Patented, Wired (June 5, 2019, 6:21 p.m.), https://www.wired.com/story/congress-is-debating-again-whether-genes-can-be-patented/. 2 Id. 3 Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013). 4 Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948); Gottschalk v. Benson, 409 U.S. 63 (1972). 5 See Eileen McDermott, Draft Text of Proposed New Section 101 Reflects Patent Owner Input, IPWatchdog (May 22, 2019, 4:42 p.m.), https://www.ipwatchdog.com/2019/05/22/draft-text-proposed-new-section-101-reflects-patent-ownerinput/id=109498/. 6 Mason Marks, Presentation at the Gonzaga University School of Law Second Annual Social Justice Conference: Medicine, Music, & Mascots: Furthering Social Justice in the Age of Intellectual Property, Sept. 20, 2019. 7 Id.

101 https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

102

Mason Marks

group argues that Congress should at most hone those boundaries instead of abolishing them. I call this group the 101 Conservationists.8 The ongoing debate is not purely academic; its outcome has real implications for the lives of millions.9 The bounds of patent eligibility affect drug prices, basic science research, and access to life-saving medicines.10 With these effects in mind, this chapter takes a novel approach to resolving the patent eligibility debate. It argues that Congressional action to abolish the judicial exceptions to patentability would be unconstitutional because it undermines explicit and implicit mandates of the Intellectual Property Clause of the U.S. Constitution (the “IP Clause”), which empowers Congress to create the patent system and its laws.11 By interpreting the IP Clause through a variety of lenses, the chapter concludes that the judicial exceptions must be inferred from its text, letters written by its primary author James Madison, and historical documents that influenced those who drafted and ratified the Constitution. Madison envisioned a patent system in which the interests of inventors and society were aligned and there was little danger of abuse of the monopoly rights granted by the system.12 Nearly 250 years later, the patent system is rife with abuse and countless instances in which the interests of inventors, or more specifically the corporations to which individual inventors typically assign their patents, no longer align with the interests of society. Powerful industries lobby Congress to influence the patent system and strengthen their intellectual property rights.13 Drug companies holding monopolies on life-saving drugs price their inventions beyond the reach of most people, exacerbating inequality and contributing to negative health outcomes.14 Weakening or eliminating the judicial exceptions is inconsistent with Madison’s vision for the patent system. It would exacerbate harms associated with the current regime such as the creation of patent thickets, inhibition of basic science research, rising drug prices, the emergence of nonpracticing entities (“patent trolls”), and growing inequality between those who can afford life-saving medical treatments and those who cannot.15 To support this position, the chapter provides evidence from the pharmaceutical and biotechnology industries to demonstrate that expanding the scope of patent eligibility will contribute to social inequality. In this respect, the chapter contributes to a growing body of scholarship on intellectual property and social justice (IP-SJ), which cautions against interpreting IP issues through a purely

8 9 10

11 12

13

14

15

Id. Id. Id. See also chs. 12 (discussing how the judicial exceptions to patentability preserved the public access to diagnostic methods for treating breast cancer) and 24 (discussing how patents restrict access to medicines in developing nations) in this volume. U.S. Const., art. I, § 8, cl. 8. James Madison, Detached Memoranda, CA. 31 January 1820, Nat’l Archives, https://founders.archives.gov/docu ments/Madison/04-01-02-0549. Emmarie Huetteman, Senators Who Led Pharma-Friendly Patent Reform Also Prime Targets for Pharma Cash, Kaiser Health News (Mar. 24, 2020), https://khn.org/news/senators-who-led-pharma-friendly-patent-reform-also-primetargets-for-pharma-cash/ (reporting that in 2019, Senator Thom Tillis became chairman of the Senate Judiciary Committee’s subcommittee on IP rights and received more than $156,000, more than any other member of Congress, from lobbyists tied to the pharmaceutical industry. His democratic colleague on the subcommittee, Senator Chris Coons, received over $125,000 in drug industry contributions that year, making him the third highest recipient in Congress). See Ken Alltucker, A New Drug Costs $2.1 Million for Children With a Muscle-Wasting Disease, USA Today (May 24, 2019, 4:18 p.m.), https://www.usatoday.com/story/news/health/2019/05/24/zolgensma-2-1-million-drug-nations-mostexpensive/1223666001/; see also Aaron S. Kesselheim, Jerry Avorn & Ameet Sarpatwari, The High Cost of Prescription Drugs in the United States, 316 JAMA 858, 859 (2016) (explaining how rising drug prices reduce affordability and patient adherence to therapies contributing to negative health outcomes). Marks, supra note 6.

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

People Are the Lifeblood of Innovation

103

economic lens.16 IP-SJ scholars argue that promoting “social justice is an inherent obligation of intellectual property law.”17 The chapter joins this movement and concludes that any efforts by Congress to reform the patent system should not expand the scope of patent eligibility, which would decrease access to the building blocks of innovation, and useful inventions, while promoting inequality. Instead, patent reform should focus on fulfilling the original promise of the IP Clause, which when properly interpreted, aims to promote innovation that is both useful and accessible to members of society by leveraging people’s innate drive to create and innovate. To achieve these ends, the mechanisms of IP production and protection must be equally accessible to all. The chapter’s title is inspired by the phrase “patents are the lifeblood of innovation,” which is commonly recited by patent attorneys, IP scholars, and their disciples.18 The phrase promotes the notion that patents are the driving force behind innovation and, without them, the explicit mandate of the IP Clause would not be met. However, this chapter presents an alternative view. It argues that people, not patents, are the lifeblood of innovation.19 Humans have an innate drive to create and innovate, and America’s Founders knew it. This drive has been hardwired into humanity by years of evolution, and it allows us to explore, survive, and thrive in nearly any environment on Earth, and in some cases beyond. The human spirit of adventure and innovation is what prompted the Founders to break from England and establish their own, innovative form of government that has been replicated around the world. When they drafted and ratified the IP Clause, they likely had this social conception of innovation in mind, and the judicial exceptions to patentability necessarily flow from it. As described in this book’s Introduction, over time, the social directive of the IP Clause was supplanted by an economic rationale that frames financial investment and commodification as goals of the IP clause, perhaps even goals on a par with promoting socially beneficial innovation. This economically focused view of patent law undermines the original meaning of the IP clause and its explicit and implicit mandates. The explicit mandate of the IP clause, and the patent and copyright systems that it authorizes, is to “promote the progress of science and the useful arts.”20 The judicial exceptions to patentability help fulfill this mandate by ensuring that the raw materials of innovation – abstract ideas, laws of nature, natural phenomena, and the like – are not monopolized by patent holders, which would stifle innovation and social progress. The implicit mandate of the IP Clause can be summarized as follows: To achieve the explicit mandate of the IP Clause, the machinery of the IP system must be inclusive, the system must not unduly burden certain segments of society (including those who constitute a minority), and its fruits must be accessible and useful to all segments of the population.21 Section 101 and the 16

17 18

19 20

21

See Lateef Mtima, IP Social Justice Theory: Access, Inclusion, and Empowerment, 55 Gonz. L. Rev. 401, 410 (2020) (explaining why the social directive of the IP Clause, to promote the progress of science and the useful arts, encompasses “a broad mandate of social equality which ensures that everyone has an equitable opportunity to participate in the IP regime,” and the system “must be equitably inclusive if it is to achieve its purpose”). Id. at 402. See, e.g., Gene Quinn, Patents, the Lifeblood of Innovation, IPWatchdog, Apr. 28, 2011, 5:49 p.m., https://www .ipwatchdog.com/2011/04/28/patents-the-lifeblood-of-innovation/ (arguing that, without patents, there would be far less investment in innovation by venture capital firms). Marks, supra note 6. See Lateef Mtima and Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Mtima, supra note 16, at 10 (describing the social directive of the IP Clause and its broad mandate to ensure “that everyone has an equitable opportunity to participate in the IP regime,” and that “the IP system must be equitably inclusive if it is to achieve its purpose”).

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

104

Mason Marks

judicial exceptions to patentability help fulfill this implicit mandate by ensuring that the building blocks of innovation, and the mechanisms of patent protection, are available to all, regardless of their resources, social status, and political influence. They inhibit patent holders from monopolizing life-saving innovations and charging prices only the privileged can afford. They serve an equalizing function without which the explicit mandate of the IP Clause cannot be fulfilled. The 101 Revisionists hope to change that. The patent eligibility debate of 2019 started in May when Senators Thom Tillis and Chris Coons published a draft of their patent bill (the “Tillis-Coons Bill”). They led the Senate Judiciary Subcommittee on Intellectual Property (the “IP Subcommittee”), and their bill would have amended Section 101 of the U.S. patent law.22 Congress created Section 101 with passage of the Patent Act of 1793, five years after the Constitution was ratified.23 This enduring section of U.S. patent law states that inventors can patent only certain types of things: new and useful processes, machines, manufactures, or compositions of matter.24 If an invention falls into one of these four categories, then it is patent eligible. If not, then the invention is not patentable. It is no coincidence that this part of U.S. patent law is called Section 101. When patent agents at the U.S. Patent and Trademark Office (USPTO) evaluate the merits of patent applications, they start by evaluating whether they comply with Section 101.25 There are many other requirements for obtaining a patent. However, if an invention fails this threshold test, then the patent application will be rejected. Over many decades, the Supreme Court has interpreted Section 101 and crafted a set of rules that further refine the scope of patent eligible subject matter.26 The Court’s interpretations, and those of other federal courts, constitute the judicial exceptions to patentability. They exclude abstract ideas, laws of nature, and natural phenomena from patent eligibility.27 If a purported invention falls into one of these categories, it cannot be patented, even if it falls into one of the four categories described by Section 101. Laws of nature include mathematical formulas like Einstein’s E = MC2 and Newton’s laws of motion, including F = ma (force equals mass times acceleration). If scientists formulated these equations today, they could not obtain patent protection on them due to their inclusion within the judicial exceptions. Natural phenomena include naturally occurring species of plants and animals, including human bodies, organs, and genes. Due to this exception, pharmaceutical companies cannot patent unmodified human DNA sequences or botanical compounds discovered in nature. Abstract ideas are more difficult to define. According to the USPTO, they include mathematical calculations, mental calculations, and means of organizing human behavior. The basis for this restriction is the notion that abstract ideas are so important to science, commerce, and general human flourishing that allowing inventors to patent them would bring many areas of human activity to a halt. Numerous U.S. Supreme Court cases establish that inventors cannot patent the classes of inventions that fall within the judicial exceptions. In one prominent case decided in 2012, Mayo v. Prometheus,28 the Court held invalid a patent on a medical diagnostic test because the patent 22

23 24 25 26 27 28

Sens. Tillis and Coons and Reps. Collins, Johnson, and Stivers Release Draft Bill Text to Reform Section 101 of the Patent Act, Thom Tillis U.S. Senator for North Carolina, May 22, 2019, https://www.tillis.senate.gov/2019/5/sens-tillisand-coons-and-reps-collins-johnson-and-stivers-release-draft-bill-text-to-reform-section-101-of-the-patent-act. The Patent Act of 1793, ch. 11, § 1, 1 Stat. 318. 35 U.S.C. § 101 (2012). Section 101 is the threshold requirement of patentability. See Paul Gugliuzza, The Procedure of Patent Eligibility, 97 Tex. L. Rev. 571, 581 (2019). Id. at 581–82. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

People Are the Lifeblood of Innovation

105

claimed a law of nature. According to the Court, the patent claims merely described the relationship between blood levels of a drug’s metabolite and the drug’s toxicity, and this mathematical relationship was a law of nature that fell within that judicial exception to patentability. The Court stated that “‘[p]henomena of nature . . . are not patentable, as they are the basic tools of scientific and technological work.’ And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.”29 A second prominent case on judicial exceptions was decided in 2013, Association for Molecular Pathology v. Myriad Genetics.30 In the Myriad case, the Court invalidated Myriad’s patents on the DNA sequence of human BRCA genes, which are linked to an increased risk of developing breast cancer. The Court based its ruling on the fact that the relevant DNA sequence occurs naturally in the body. Myriad had developed a screening test for the DNA sequence and the concomitant risk of developing the disease, and the patent thus gave Myriad a monopoly on BRCA testing, which allowed it to price many patients out of the market. While interpreting Section 101, the Court cited Mayo, stating: “We have long held that this provision [Section 101] contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” After the Myriad decision, many companies rushed into the market, developing their own screening tests for the presence of the relevant DNA sequence and the price of BRCA testing became more affordable.31 A third influential case on judicial exclusions was decided in 2014, Alice v. CLS Bank, which reinforced the rule that abstract ideas are not patentable.32 The Alice Corporation owned patents on a method for using computers to exchange information about financial obligations. The Court held that the method was an abstract idea, merely being applied by a generic computer, and if one takes an abstract idea and simply says, “implement this on a computer,” then one cannot receive a patent. According to the Court, one needs something more than mere automation using computers. Through these three cases, and many that preceded them, the Court clearly articulated that laws of nature, products of nature, and abstract ideas are off limits to the patent system because they are fundamental building blocks of innovation and human progress; everyone should be free to use them, and they should not be owned by anyone. Prohibiting patents on the building blocks of innovation fulfills the explicit mandate of the IP Clause by preventing their monopolization. Ensuring that these building blocks and the machinery of IP protection are available to everyone helps fulfill its implicit mandate. The Tillis-Coons Bill proposed in 2019 would have wiped the slate clean, erasing over 100 years of Supreme Court precedent on patent eligibility including the holdings in Mayo, Myriad, and Alice. Accordingly, there was an outcry in response to the proposed Bill. One group that opposed the Tillis-Coons Bill was led by the American Civil Liberties Union (ACLU).33 This group of 101 Conservationists drafted a letter that was signed by 170 scientific, civil rights, and patient advocacy groups, including the University of Washington (a leader in medical research), numerous cancer advocacy groups, and MIT’s Broad Institute, a pioneering 29 30 31

32

33

Mayo quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013). See, e.g., Robert Cook-Deegan & Annie Niehaus, After Myriad: Genetic Testing in the Wake of Recent Supreme Court Decisions about Gene Patent, 2 Current Genetic Med. Reports 223 (2014). CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013). The case involved a method for exchanging financial information, however, the patented “method” consisted merely of programming a computer to perform an abstract idea. See Sandra Park & Kate Ruane, Who Controls Our Genes? Congress Is Deciding Right Now and It Could Harm Our Health, ACLU (June 3, 2019), https://www.aclu.org/blog/privacy-technology/medical-and-genetic-privacy/who-con trols-our-genes-congress-deciding-right.

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

106

Mason Marks

center of biomedical innovation.34 They sent the letter to Tillis and Coons urging their committee to revise the Bill.35 They argued that if there are current problems with the patent system, there are more appropriate, narrower solutions to those problems than sweeping over a century of Supreme Court precedent under the rug.36 The 101 Revisionists also weighed in by sending a letter to the IP Subcommittee.37 They supported wiping the slate clean and getting rid of all judicial exceptions to patentability.38 They claimed the ACLU letter contained “misstatements of law and misleading rhetoric.”39 If the 101 Revisionists had their way, there would be few explicit rules barring inventors from patenting abstract ideas, laws of nature, or natural phenomena.40 According to the groups that signed the ACLU letter, such an outcome could be disastrous, leading to “higher costs for patients, payers, and the healthcare system overall.”41 On August 2, 2022, Tillis introduced a new version of the Tillis-Coons Bill, which is entitled the Patent Eligibility Restoration Act of 2022.42 According to the Electronic Frontier Foundation (EFF), the Act “would revive some of the cruelest patent abuses of the past two decades.” For instance, it would overturn Alice43 and implicitly allow patents on mental processes that do not occur “solely in the human mind.”44 Consequently, the EFF fears that under the Act, merely writing a mental process down or communicating it to someone could make it patent eligible.45 Further, the Act would overturn Myriad,46 and naturally occurring human genes could potentially be patented if they are merely “isolated, purified, enriched, or otherwise altered.”47 The following sections explain why the Tillis-Coons Bill, the Patent Eligibility Restoration Act of 2022, and any act of Congress eliminating the judicial exceptions to patentability, would be unconstitutional because the exceptions are implicit within the text of the IP Clause and its legislative history. Specifically, the IP Clause’s explicit mandate that patent rights “promote the progress of science and the useful arts” should be interpreted to require that the judicial exceptions exist. Moreover, the roots of the judicial exceptions reach back even farther to centuries of English common law, which is believed to have influenced the drafters of the Constitution and the IP Clause, providing evidence to support its implicit mandate.48

34

35 36 37

38 39 40 41 42

43 44

45 46 47 48

Coalition Letter Opposing Draft Legislation of Section 101 Patent Act, ACLU (June 3, 2019), https://www.aclu.org/ letter/coalition-letter-opposing-draft-legislation-section-101-patent-act?redirect=letter/coalition-letter-opposing-draftlegislation-section-101-patent-law. Id. Id. Letter to Tillis and Coons from law professor, former government officials, and scholars, Patently-O (July 30, 2019), https://patentlyo.com/media/2019/08/Letter-to-Congress-re-101-Reform-7.30.19-1.pdf. Id. Id. Id. Coalition Letter, supra note 34. Eileen McDermott, Coons Announces He Will Co-Sponsor Tillis’ Patent Eligibility Restoration Act, IPWatchdog, Sept. 28, 2022, 8:15 p.m., https://ipwatchdog.com/2022/09/28/coons-announces-he-will-co-sponsor-tillis-patent-eligibil ity-restoration-act/id=151766/. CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013). Joe Mullin, New Bill Would Bring Back Terrible Software and Genetic Patents, Electronic Frontier Found., Aug. 18, 2022, https://www.eff.org/deeplinks/2022/08/new-patent-bill-would-open-floodgates-return-terrible-softwareand-genetic-patents. Id. (In Alice, the Court held that merely performing an abstract idea on a computer does not make it patent eligible.) Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013). Id. (In Myriad, the Court held that isolating a gene from other genetic material “is not an act of invention.”) See H. Jared Doster, The English Origins of the Judicial Exceptions to 35 U.S.C. § 101, 11 Landslide (2019).

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

People Are the Lifeblood of Innovation

107

i. the constitutional argument for the judicial exceptions James Madison is often regarded as the Father of the Constitution.49 He was also chief architect of the IP Clause and its first major interpreter.50 His personal correspondence suggests that he disapproved of monopolies in general.51 Likely out of concern for abuse by patent holders, Madison proposed issuing prizes to inventors instead of patents at the Constitutional Convention of 1787.52 However, he later acknowledged that limited monopolies could be useful, so long as the interests of the inventor and society were aligned and there was little risk that inventors could abuse the system.53 Madison concluded that the risk of abusing monopoly rights to inventions was lowest in a democratic republic where the people have representation.54 In a 1788 letter to Thomas Jefferson, Madison wrote: “Where the power is in the few it is natural for them to sacrifice the many to their own partialities and corruptions. Where the power, as with us, is in the many not in the few, the danger can not be very great that the few will be thus favored.”55 In Federalist Paper No. 43, Madison said of monopoly rights granted to written works and inventions: “The public good fully coincides in both cases with the claims of individuals.”56 Scholars disagree about what Madison meant by public good. One interpretation holds that he intended for all of society to benefit from the rights granted to inventors. This interpretation is supported by dictionaries of the time.57 Certain IP scholars support this utilitarian view of patent rights as privileges granted in exchange for the social utility of inventions.58 Others claim patents are natural rights conferred upon inventors by virtue of the labor they expend to invent.59 Regardless, Madison appears to have believed that patented inventions must confer a tangible social benefit. In 1820, he wrote that limited monopolies should be granted with caution in exchange for actual benefits to the community.60 Not all Madison’s contemporaries were convinced that granting monopoly rights to inventors made sense under any circumstances. Founding Fathers Benjamin Franklin and Thomas Jefferson were among those skeptics. In his autobiography, Franklin wrote: “As we enjoy great advantages from the inventions of others, we should be glad of an opportunity to serve others by any invention of ours; and this we should do freely and generously.”61 A prolific inventor, he 49 50 51

52

53 54

55 56 57

58

59 60 61

See Harold S. Schultz, James Madison: Father of the Constitution?, 37 Q. J. Libr. Cong. 215 (1980). See Sean M. O’Connor, The Overlooked French Influence on the IP Clause, 82 U. Chic. L. Rev. 733, 749–50 (2015). See James Madison, From James Madison to Thomas Jefferson, 17 October 1788, Nat’l Archives, https://founders .archives.gov/documents/Madison/01-11-02-0218 (describing monopolies as “justly classed among the greatest nusances [sic] in Government”). See Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 Univ. Chic. L. Rev. 1017, 1026 n.36 (1989). See Madison, supra note 12. James Madison, From James Madison to Thomas Jefferson, 17 October 1788, Nat’l Archives, https://founders.archives .gov/documents/Madison/01-11-02-0218. Id. Madison, supra note 12. Samuel Johnson, A Dictionary of the English Language (1768) (defining “public” as “belonging to a state or nation, not private,” or “regarding not private interest, but the good of the community,” and defining “good” as “well, not ill,” or “wholesome, salubrious.” Taken together, these definitions suggest that when Madison referenced the public good, he meant that the patent claims of individuals should promote the well-being of the nation and its inhabitants). See Adam Mossoff, Who Cares What Thomas Jefferson Thought About Patents: Reevaluating the Patent Privilege in Historical Context, 92 Cornell L. Rev. 953, 962 (2007). Id. at 957. Madison, supra note 12. Benjamin Franklin, Franklin’s Autobiography 130 (H. Holt ed., 1912).

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

108

Mason Marks

sought no patents on his creations, which included the lightning rod, a metal-lined fireplace that served as a stove, and a musical instrument called the glass harmonica. Franklin’s belief that inventions should be donated freely for the benefit of others suggests that he can be viewed as an early proponent of IP-SJ. Like many of their peers, Franklin and Jefferson had an aversion to monopolies that was inspired by the events leading up to the America Revolution. In 1788, Jefferson wrote to Madison from France arguing for a provision of the Bill of Rights to restrict private monopolies.62 He argued that “the benefit even of limited monopolies is too doubtful to be opposed to that of their general suppression.”63 Some of Franklin and Jefferson’s contemporaries expressed stronger views. In New York, one anonymous “Son of Liberty” wrote: “Monopolies in trade [will be] granted to the favorites of government, by which the spirit of adventure will be destroyed, and the citizens subjected to the extortion of those companies who will have an exclusive right.”64 Over two centuries later, this statement seems eerily prophetic. The modern U.S. patent system is rife with abuse and countless instances in which it appears to serve the interests of inventors, and more often their corporate assignees, above the interests of the people. Between 1999 and 2018, the drug and health product sector spent an average of $233 million every year lobbying the federal government.65 When corporate lobbyists have millions to spend influencing patent policy, the deck is stacked against members of the public who lack the resources to mount an adequate defense. Private corporations that pursue the interests of their shareholders above all else exert an outsize share of influence over patent law, threatening Madison’s vision for an IP system without abuse in which the interests of inventors and society align. Madison’s confidence that the power of the many will keep the power of the few in check may have been accurate at the time of the Founding. However, it now appears misplaced. The patent system has become so complex that it is beyond the comprehension of most members of society, including highly trained lawyers who practice in other fields, and even those who practice in other areas of intellectual property law. Patent law is shaped by specialized patent attorneys and judges, lobbyists, and wealthy corporations. Reforming it to weaken or eliminate the judicial exceptions will enhance the influence of this privileged few and further divorce patent rights from their public benefit purpose. Professor Shubha Ghosh argues that the Tillis-Coons draft bill would have violated the separation of powers under article III of the Constitution.66 The Bill would have barred the judiciary from creating additional exceptions to patentability. According to Ghosh: “If enacted, the amendment would not only remove established exceptions to patentable subject matter, but also would limit the power of the federal judiciary to create exceptions based on its own reasoning and interpretation of the Patent Act. Such legislation is in conflict with the longestablished relationship between federal courts and Congress . . . The proposed amendment would very likely be found unconstitutional.”67 62

63 64

65

66

67

Thomas Jefferson, To James Madison From Thomas Jefferson, 31 July 1788, Nat’l Archives, https://founders.archives .gov/documents/Madison/01-11-02-0147. Id. Tyler T. Ochoa & Mark Rose, The Anti-Monopoly Origins of the Patent and Copyright Clause, 84 J. Pat. & Trademark Off. Soc’y 909, 927 (2002). Olivier J. Wouters, Lobbying Expenditures and Campaign Contributions by the Pharmaceutical and Health Product Industry in the United States 1999-2018, 18 JAMA Internal Med. 1 (2020). See Shuba Ghosh, A Fitter Statute for the Common Law of Patents, Patently-O (Aug. 1, 2019), https://patentlyo.com/ patent/2019/08/fitter-statute-patents.html; see also United States v. Klein, 80 U.S. 128 (1817). Id.

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

People Are the Lifeblood of Innovation

109

This chapter argues that in addition to violating the separation of powers created by article III, amending patent law to substantially weaken or eliminate the judicial exceptions would violate article I, and the IP Clause itself, because the exceptions to patentability can be inferred from its text and the intent of its drafters and ratifiers. Specifically, the phrase “promotion of science and the useful arts” should be interpreted to mean that intellectual property rights must advance useful knowledge and technology and, by useful, the framers meant knowledge and technology that benefits all members of society. If an act of Congress has the tendency to promote intellectual property rights that do not benefit society, and to misalign the interests of inventors and the public, then it frustrates the purpose of the IP Clause, and the act is arguably unconstitutional.

ii. european origins and social benefits The Framers of the Constitution were influenced by the English patent system, and examining pre-U.S. patents reveals that even these early IP systems contained social justice measures. King Henry VI of England issued one of the earliest known patents in 1449.68 The recipient was a Flemish glassmaker named John Utynam, and the king wanted Utynam’s glass to adorn the windows of Eton College in Windsor.69 Utynam’s patent differed from modern patents in several ways. In the U.S. patent system, inventors must disclose the details of their technologies to the USPTO in exchange for the exclusive right to make and use those inventions. This is the “quid pro quo” of U.S. patent law. However, in 1449 England, instead of submitting the details of his technology in written format, Utynam was required to teach local artisans how to use the glassmaking technology he possessed in exchange for a 20-year exclusive right to use the technology. In fact, Utynam’s bargain with the king required him to teach local craftsmen skills in other areas outside of glassmaking.70 In addition to benefiting Utynam and the king, this arrangement enriched the community by empowering the workers who would train under Utynam in glassmaking and other skills. Nearly 400 years later, in a letter to inventor Isaac McPherson, Thomas Jefferson wrote: “He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and the improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation.” Patent scholar Adam Mossoff credits Jefferson with foresight, because he anticipated the utilitarian justification for patent law that is popular today.71 However, Jefferson might be recalling past practices.72 His description of the spread of ideas and instruction around the globe resembles Utynam’s training of English artisans. These craftsmen, and the region where they lived, benefited from the existing IP protection regime. Unlike modern patent systems where inventors solicit patent protection from the granting authority, in Utynam’s case, it was the granting authority, King Henry VI, who requested 68

69 70 71 72

Marcio Luis Ferreira Nascimento, The First Patents and the Rise of Glass Technology, 9 Recent Innovations Chemical Engineering 1 (2016). Id. Id. at 8. Mossoff, supra note 62, at 962. Id.

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

110

Mason Marks

Utynam’s services. The king had a problem that he wished to solve, and he imported Utynam from Flanders to address it. In contrast, under an economic view of U.S. patent law, inventors and their assignees often seek patent protection for its own sake, to signal their financial health or competitive advantage in the marketplace to the public and investors. In other words, they seek patents regardless of whether their inventions meet societal needs, and the IP Clause’s goal of enhancing social welfare through innovation is often forgotten, suppressed by a seemingly insatiable drive to acquire patents at all costs. Utynam’s patent differs from many modern patents because the fruits of his agreement were accessible to the public, including disadvantaged members of society.73 The king built Eton College “to provide free education to 70 poor boys who would then go on to King’s College, Cambridge, which he founded in 1441.”74 The windows of Eton were part of his plan to build a locus of spiritual pilgrimage, and construction of the chapel brought publicity and economic prosperity to the surrounding region.75 When the chapel was completed, it employed 10 priests and hosted 14 religious services a day.76 Thus, Utynam’s patent was granted to benefit the socioeconomically disadvantaged, the inhabitants of Eton, and the whole of English society. The British Crown issued a second patent to a glassmaker in 1552. This time, King Edward VI granted a monopoly to Henry Smyth of London.77 The agreement required Smyth to instruct workers to become expert in making Normandy glass.78

iii. modern patent rights: economic incentives and metrics In the twenty-first century, instead of promoting the creation of groundbreaking innovation that can benefit society and propel humanity forward to a healthier and more prosperous future, the patent system often incentivizes only meager improvements to existing technologies. Often, inventors and their corporate benefactors do not invent to serve the public. Instead, they invent to gather patents, hoard intellectual property, defend their intellectual property empires, and boost profits for their shareholders. Pharmaceutical and biotechnology companies patent life-saving treatments and charge millions of dollars for a single dose.79 Diabetics increasingly cannot afford insulin, and people with allergies cannot afford life-preserving epinephrine.80 As a result, some individuals have resorted to manufacturing their own home-grown insulin in makeshift laboratories.81 It would be as if instead of using Utynam’s glass to decorate a publicly accessible place of worship, King Henry used the glass to decorate his private residence and sold it at inflated prices that only wealthy landowners could afford. Many firms hoard patents for reasons unrelated to social welfare. Kimberly A. Moore, a judge of the U.S. Court of Appeals for the Federal Circuit, describes patents “of great private value” that 73 74 75 76 77 78 79

80

81

Id. at 1; see The Chapel, Eton College, https://www.etoncollege.com/TheChapel.aspx. Id. Id. Id. Nascimento, supra note 72, at 9. Id. Rob Stein, At $2.1 Million, New Gene Therapy Is the Most Expensive Drug Ever, NPR All Things Considered, May 24, 2019, 3:52 p.m., https://www.npr.org/sections/health-shots/2019/05/24/725404168/at-2-125-million-new-gene-therapyis-the-most-expensive-drug-ever. Chirlane McCray, EpiPens save lives. If they cost too much, kids will die, Wash. Post (Aug. 25, 2016, 6:00 a.m.), https://www.washingtonpost.com/posteverything/wp/2016/08/25/epipens-save-lives-if-they-cost-too-much-kids-will-die/. Dana G. Smith, Biohackers with Diabetes Are Making Their Own Insulin, Elemental (May 30, 2019), https:// elemental.medium.com/biohackers-with-diabetes-are-making-their-own-insulin-edbfbea8386d.

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

People Are the Lifeblood of Innovation

111

provide “some advantage to its owner regardless of the advance for society.”82 In part, obtaining patents has become a goal in and of itself, and the original goal of the patent system, promoting useful and accessible innovation for the benefit of society, has fallen by the wayside. Companies increasingly acquire patents to extract rents from consumers who have no choice but to purchase the patented inventions. They use patents to build massive legal bulwarks against litigation.83 For instance, drug maker AbbVie holds over 100 patents on its biologic drug Humira. Patents can also serve a marketing function by signaling to competitors and the public that the patented products are superior or that their manufacturer is technologically advanced (even when they are not).84 The patent system has facilitated the rise of nonpracticing entities (sometimes called “patent trolls”), which are organizations that invent nothing and exist solely to buy and sell patent rights.85 Meanwhile, there is decreased investment in fields with an urgent need for innovation such as psychiatry and neurology, and people die because they cannot afford insulin and other lifesaving treatments.86 In these fields, instead of investing in groundbreaking innovations that will push medicine forward, and benefit society, companies often iterate on existing technologies producing only shallow innovation. They extend patent terms for inventions through evergreening and product hopping, expand their patent empires, and claim as novel subtle variations on existing drugs or natural compounds that have been used for decades or centuries.87 The market for antidepressants has been stagnating for years, despite rising rates of depression and suicide.88 The same can be said of the market for antibiotics, despite the looming threat of antibiotic resistant bacteria.89 If patents were the lifeblood of innovation, we would see incredible innovation in these areas because patent protection is fully available. Instead, we see firms

82

83 84 85

86

87

88

89

Kimberly A. Moore, Worthless Patents, 20 Berkeley Tech. L. J. 1521, 1521 (2005), https://papers.ssrn.com/sol3/papers .cfm?abstract_id=566941. Id. at 2. Id. at 3. See, e.g., Gerard N. Magliocca, Blackberries and Barnyards: Patent Trolls and the Perils of Innovation, 82 Notre Dame L. Rev. 1809 (2007). See Darby Herkert, Pavithra Vijayakumar, & Jing Luo, Cost-Related Insulin Underuse Among Patients with Diabetes, 179 JAMA Internal Med. 112–14 (2019) (describing the phenomenon of cost-related insulin underuse, which is more frequently reported by patients with lower incomes); see also Samantha Wilner, Robin Whittemore, & Danya Keene, “Life or Death”: Experiences of Insulin Insecurity Among Adults With Type 1 Diabetes in the United States, 11 SSM – Population Health (2020), https://www.ncbi.nlm.nih.gov/pmc/articles/PMC7352063/ (reporting that without insulin, people with Type 1 diabetes “will die from hyperglycemia within days or weeks”). See generally Madhavi Sunder, Intellectual Property After George Floyd, ch. 27 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (detailing how prevailing perspectives toward patent rights subordinate access to health imperatives to commercial profits and related interests). See, e.g., Michael A. Carrier & Steve D. Shadowen, Product Hopping: A New Framework, 92 Notre Dame L. Rev. 167, 168 (describing the process of “product hopping,” which occurs when pharmaceutical companies switch from one formulation of a drug to another closely related formulation. The new drug may offer little or no benefit to patients, while increasing the price and inhibiting competition); see also Roger Collier, Drug Patents: The Evergreening Problem, 185 Can. Med. Ass’n J. E385 (2013) (describing the process of evergreening, in which pharmaceutical “companies patent ‘new inventions’ that are really just slight modifications of old drugs”); see also Mason Marks & Glenn Cohen, https://harvardlawreview.org/wp-content/uploads/2022/02/135-Harv.-L.-Rev.-F.-212.pdf Patents on Psychedelics: The Next Legal Battlefront of Drug Development, 135 Harv. L. Rev. F. 212, 218-20, 224-30 (2022) (describing how drug makers game the patent system and exploit Indigenous technologies without adequate acknowledgment or compensation, a practice called biopiracy). See Steven E. Hyman, Psychiatric Drug Development: Diagnosing a Crisis, Cerebrum, Apr. 2, 2013, https://dana.org/ article/psychiatric-drug-development-diagnosing-a-crisis/. Rachael Harper, Lack of New Antibiotics Threatens Battle Against Drug-Resistant Infections, WHO Says, Eur. Pharmaceutical Rev., Jan. 20, 2020, https://www.europeanpharmaceuticalreview.com/news/110723/lack-new-antibi otics-threatens-combat-drug-resistant-infections-who/.

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

112

Mason Marks

using the patent system to benefit themselves at society’s expense. Hundreds of millions of taxpayer dollars fund scientific research, which is leveraged to commercialize proprietary drugs.90 Patents either protect meager innovations on existing medications, providing little improvement in overall welfare, or when groundbreaking innovations are occasionally made, they allow firms to price them well beyond the reach of most consumers. Returning to the issue of subject matter eligibility, granting inventors and their corporate assignees patents on inventions excluded by the judicial exceptions would grant them monopoly power over the building blocks of scientific and technological progress. It would be antithetical to the stated goal and implicit spirit of the IP Clause, and would exacerbate existing problems associated with the patent system. The 101 Revisionists argue that, unless the judicial exceptions are substantially weakened or eliminated, companies will leave the U.S. in droves for countries with more permissive patent systems such as China and EU Member States. This claim is an act of misdirection because it is not a country’s patent system that incentivizes companies to conduct business there. Regardless of where their operations are based, companies routinely patent their inventions globally. Some U.S. companies are thriving, while rejecting patent protection. One example is Tesla, the most profitable automaker in history.91 Tesla’s CEO Elon Musk is a controversial figure whose actions are widely criticized. Referencing Tesla in this chapter is not intended to condone or endorse Musk’s activities generally. The company employs nearly 100,000 individuals and is more than its CEO. Tesla’s engineers have made unprecedented contributions to the auto industry, increasing the company’s inventiveness and success since 2014, when Tesla effectively gave its electric vehicle patents to the public.92 In a press release, Musk made the following pledge: Yesterday, there was a wall of Tesla patents in the lobby of our Palo Alto headquarters. That is no longer the case. They have been removed, in the spirit of the open source movement, for the advancement of electric vehicle technology. Tesla Motors was created to accelerate the advent of sustainable transport. If we clear a path to the creation of compelling electric vehicles, but then lay intellectual property landmines behind us to inhibit others, we are acting in a manner contrary to that goal. Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.93

Concerns regarding Musk notwithstanding, the effects of Tesla’s patent policy on innovation and the automotive industry are noteworthy and illustrate the potential of a social justiceoriented approach to the IP ecosystem. Through its patent pledge Tesla elevates the social good, the need to protect the environment by creating innovative sustainable transportation, above the need to safeguard the company’s intellectual property from copycats. If the assumptions of the 101 Revisionists are correct, and patents are necessary for innovation, then investors should have lost all hope in Tesla. The company suddenly and effectively had no patent protection on electric vehicle technology, and accordingly, it should have lost its incentive to innovate. Yet Tesla continues to be one of the most groundbreaking automakers, 90

91

92

93

See Jason Cone, Pharmaceutical Corporations Need to Stop Free-Riding on Publicly Funded Research, The Hill, Mar. 3, 2018, 1:00 p.m., https://thehill.com/opinion/healthcare/376574-pharmaceutical-corporations-need-to-stop-freeriding-on-publicly-funded. See Sergei Klebnikov, Tesla Is Now the World’s Most Valuable Car Company with a $208 Billion Valuation, Forbes, Jul. 1, 2020, 12:58 p.m., https://www.forbes.com/sites/sergeiklebnikov/2020/07/01/tesla-is-now-the-worlds-most-valuablecar-company-with-a-valuation-of-208-billion/. Brian Solomon, Tesla Goes Open Source: Elon Musk Releases Patents to “Good Faith” Use, Forbes, Jun. 12, 2014, 1:21 p.m., https://www.forbes.com/sites/briansolomon/2014/06/12/tesla-goes-open-source-elon-musk-releases-patents-to-goodfaith-use/. Elon Musk, All Our Patents Are Belong to You, Tesla, Jun. 12, 2014, https://www.tesla.com/blog/all-our-patent-arebelong-you

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

People Are the Lifeblood of Innovation

113

and perhaps one of the most innovative companies.94 Since making its 2014 pledge, Tesla’s profits have skyrocketed, and the firm introduced some of the most innovative vehicle designs. In 2020, its market capitalization surpassed $100 billion, exceeding the valuations of all other U.S. automakers, including GM and Ford, which each hold hundreds of patents.95 By late 2020, Tesla’s market capitalization surpassed $500 billion, where it remained for two years.96 Other automakers followed Tesla’s lead. In 2019, Toyota made a similar pledge regarding 24,000 patents on hybrid- and electric-vehicle technology.97 Companies in other industries have also promised not to enforce their patent rights against competitors who use their technologies in good faith. For instance, during the COVID-19 pandemic, many companies took an Open COVID Pledge, agreeing not to enforce pandemic-related patent rights.98 Patent pledges have limitations. It can be unclear whether they are legally binding, and patent holders may retain significant control over how and when they enforce their rights.99 Moreover, despite Tesla’s patent pledge, criticisms of Musk serve as reminders that merely dedicating patents to the public without considering other social obligations and effects of the intellectual property regime distorts and undermines its social benefit purpose.100 Just as the narrow economic rationale for patents overemphasizes their incentive function, a singular focus on how the relinquishment of rights can promote certain immediate social benefits obscures how such benefits could ultimately be outweighed by harms resulting from the absence of a comprehensive social perspective on the entire intellectual property system. Nevertheless, companies that become highly inventive industry leaders despite eschewing patent protection challenge the notion that patents are essential to innovation. SpaceX is another example. Despite largely forgoing patents, the company revitalized the U.S. space industry and is valued at over $125 billion.101 When claiming that patents drive innovation, the 101 Revisionists

94

95

96

97

98

99

100

101

Jeff Dyer & Hal Gregerson, Tesla’s Innovations Are Transforming the Auto Industry, Forbes (Aug. 24, 2016, 7:45 a.m.), https://www.forbes.com/sites/innovatorsdna/2016/08/24/teslas-innovations-are-transforming-the-auto-industry/?sh= 3ec17af019f7. Carmen Reinicke, Tesla Surpasses $100 Billion Market Value for the First Time, Business Insider, Jan. 22, 2020, 8:50 a.m., https://markets.businessinsider.com/news/stocks/tesla-stock-price-gain-brings-market-value-100-billion-first-20201-1028835953; Dana Hull & Edward Ludlow, Musk’s Second Blowout Quarter Sends Tesla Soaring, Burns Shorts, Bloomberg, Jan. 29, 2020, 4:31 p.m., https://www.bloomberg.com/news/articles/2020-01-29/tesla-profit-and-model-yarrival-send-stock-soaring-past-600. Jessica Bursztynsky, Tesla hits $500 billion market cap for first time, CNBC, Nov. 24, 2020, https://www.cnbc.com/ 2020/11/24/tesla-market-cap-blows-past-500-billion.html; Esha Dey, Tesla Closes Below $500 Billion Market Cap for First Time in Two Years, Bloomberg, Dec. 14, 2022, https://www.bloomberg.com/news/articles/2022-12-14/tesla-closesbelow-500-billion-valuation-first-time-in-2-years?leadSource=uverify%20wall. Naomi Tajitsu, Toyota to Give Royalty-Free Access to Hybrid-Vehicle Patents, Reuters, Apr. 2, 2019, 6:29 p.m., https://www.reuters.com/article/us-toyota-patents-idUSKCN1RE2KC. Make the Pledge to Share Your Intellectual Property in the Fight Against COVID-19, OPEN COVID PLEDGE, https://opencovidpledge.org. See Jorge L. Contreras, Patent Pledges, 47 Ariz. St. L.J. 543, 592–94 (2015) (describing the enforceability of different types of public statements regarding patents). See Daniel Wiessner, Tesla Fired Workers for Criticizing Company Policies, Say New Complaints, Reuters, Dec. 19, 2022, 2:54 p.m., https://www.reuters.com/legal/litigation/tesla-fired-workers-criticizing-musk-company-policies-saynew-complaints-2022-12-19/ (describing employee complaints filed against Tesla with the U.S. National Labor Relations Board). See Michael Sheetz, The Space Industry Is on Its Way to Reach $1 Trillion in Revenue by 2040, Citi Says, CNBC (crediting SpaceX’s Falcon 9 rocket with reducing launch costs to unprecedented levels, “30 times lower than NASA’s Space Shuttle’s costs and 11 times lower than the previous historical average”), https://www.cnbc.com/2022/05/21/ space-industry-is-on-its-way-to-1-trillion-in-revenue-by-2040-citi.html; Berber Jin & Micah Maidenberg, SpaceX Eyes Higher Valuation in Offering Employee Shares for Sale, Wall St. J., Dec. 13, 2022, 7:00 p.m., https://www.wsj.com/ articles/spacex-eyes-higher-valuation-in-offering-employee-shares-for-sale-11670976045 (citing SpaceX’s valuation of $125 billion).

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

114

Mason Marks

overlook the central roles of human capital and knowledge, which Professor Orly Lobel describes as “the dominant assets of the twenty-first century.”102 As stated in Tesla’s patent pledge: “Technology leadership is not defined by patents, which history has repeatedly shown to be small protection indeed against a determined competitor, but rather by the ability of a company to attract and motivate the world’s most talented engineers.”103 People, not patents, are the lifeblood of innovation.

conclusion Through the Tillis-Coons Bill, and its successor the Patent Eligibility Restoration Act of 2022, the 101 Revisionists aim to expand the scope of patent eligible subject matter, allowing companies to patent more objects and phenomena. The U.S. already offers strong patent rights to inventors, and that has not promoted innovation in many areas where it is urgently needed. Broadening the scope of patent eligible subject matter will not improve the situation. It will worsen inequality and dim the light of creativity and innovation that burns within us all. The judicial exceptions to patentability help to ensure that the natural resources to which no individual can claim ownership, including natural phenomena, natural laws, and abstract ideas, remain freely available to fuel human innovation. The judicial exceptions guarantee the rights of everyone, from women and minority researchers to rural entrepreneurs and urban startups, to apply their innovative talents to these common resources and thereby achieve their personal potential while contributing toward the greater social good.104 Those important exceptions are justified by and reinforce intellectual property social justice aims of equitable inclusion, access, and empowerment. To foster innovation and explicit and implicit mandates of the IP Clause, the patent system should remember that people are the lifeblood of innovation. Instead of granting additional patent rights to industry, Congress should reform patent laws to better tap humanity’s innate drive to create, realizing the original promise of the IP Clause: “To promote the progress of science and useful arts to advance the cause of social good.”

102

103 104

Orly Lobel, Talent Wants to Be Free: Why We Should Learn to Love Leaks, Raids, and Free Riding 15 (2013). Musk, supra note 97. See, e.g., Lateef Mtima, The Idea Exclusions in Intellectual Property Law, 28 Texas Intell. Prop. L.J. 343, 380, 384 (2020) (proposing that the judicial exception which precludes patenting abstract ideas protects the opportunities for minorities and small inventors to follow after wealthy corporations and further develop ideas for additional inventions).

https://doi.org/10.1017/9781108697613.008 Published online by Cambridge University Press

5 Copyright and the Interdependent Relationship Between Social Utility and Social Justice Lateef Mtima*

I. Copyright Social Utility and Social Justice Interdependence page 119 II. Copyright Racial Injustice: Racial Bias and Mirror Cover Recordings 120 III. Copyright Racial Injustice: The Disparate Impact of the Written Music Notation Registration Requirement 122 IV. Copyright and Racial Justice: A Path to “IP Empowerment”? 123 V. Re-Envisioning Copyright: The Social Justice Imperative of Copyright Social Utility 125 VI. Copyright Social Justice: Transcending the Past, Charting the Future 128 Conclusion 130

Copyright is the legal regime intended to promote and regulate expressive intellectual endeavor.1 As such, copyright is concerned with the intellectual activity which epitomizes the purpose of intellectual property protection: the achievement of human actualization.2 Unlike practical intellectual endeavors, expressive undertakings generally do not result in things that you can eat, that will cure disease, or enable people to move swiftly across vast distances. Indeed, quintessential expressive works – literature, poetry, art, music, choreography – typically don’t “do” anything, at least not in the conventional sense of the word. Rather, the aim of expressive intellectual endeavor is to find the concepts, words, musical notes, colors, shapes, and movements through which to better understand one’s self and world and then to give voice to the ensuing perceptions and imaginings, thoughts and feelings, knowledge and *

1

2

I would like to thank the participants at the 2023 Colloquium on Philosophical Methods in Intellectual Property, hosted by the Classical Liberal Institute, NYU School of Law, for their many insightful comments on this chapter. See Prolusion at xxix: “Examples of copyrightable expressive works include literary, dramatic, musical, cinematic, and other artistic material. Other kinds of expressive works include educational and instructive materials, including newspaper articles, sermons, gospels, textbooks, recipe books, [and] instruction manuals . . . Just as artistic works express or describe aesthetic ideas, these other works express or describe factual concepts or information, and copyright protects all kinds of creative expression whatever the subject.” Bill Ivey, Arts, Inc.: How Greed and Neglect Have Destroyed Our Cultural Rights 29 (2008) (“America’s expressive life is a mirror of our society’s evolving values and aspirations. Part of our expressive life is all about autonomy and achievement – art that conveys our individual voices, a marker of independence and personal authority. But expressive life also is a container for heritage – the accumulated creativity of our community and our nation”). Recent U.S. Supreme Court cases emphasize that the essence of liberty is the power of self-realization through freedom to define oneself individually and in relation to others through the choices one makes to express oneself. See Obergefell v. Hodges, 576 U.S. 644 (2015); Lawrence v. Texas, 539 U.S. 558 (2003).

115 https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

116

Lateef Mtima

comprehension, and dreams and aspirations. Creative endeavor commences with selfexploration and culminates in self-expression – and often sparks the self-same cycle of inquisition, cognition, comprehension, and communication in others. Whereas utilitarian intellectual endeavor can result in useful innovations, such as machines and drugs which have the potential to improve daily life for human beings, expressive intellectual endeavor can result in aesthetic and informative works which have the potential to improve humanity itself. Despite the inherent significance of the copyright ideal, the implementation of copyright to effectuate human empowerment and self-actualization has often fallen short. As with any legal regime, the copyright law can be used abusively. In the United States and throughout much of Western society, the history of copyright is fraught with some of the most egregious social inequities, including long-standing traditions of racial exploitation and cultural misappropriation, traditions extant in all of the intellectual property domains. Particularly in the United States, the systemic conversion of the artistic acclaim and monetary revenues due African American and other marginalized creatives is well known and today widely condemned.3 The history of the American recording industry alone is replete with accounts of the blatant arrogation of the rights and interests of Black creatives by white artists, publishers, promoters, agents, and others who enjoy the advantages of corporate power, wealth, and/or racial privilege.4 Indeed, even after the Civil Rights Movement brought about important legal and social advances for African Americans in many other areas of American society,5 racial inequity and injustice remains pervasive throughout most if not all of the commercial industries and institutions shaped and supported by copyright.6 From the recording 3

4

5

6

See, e.g., K.J. Greene, “Copynorms,” Black Cultural Production, and the Debate Over African-American Reparations, 25 Cardozo Arts & Ent. L.J. 1179, 1180–81 (2008) (“For many generations, black artists as a class were denied the fruits of intellectual property protection – credit, copyright royalties and fair compensation. Institutional discrimination teamed with intellectual property and contract law resulted in the widespread under-protection of black artistic creativity . . . The mass appropriation of the work of black artists and inventors reflects the systemic subordination based on race that characterized most of U.S. history”); K.J. Greene, Copyright Culture & Black Music: Legacy of Unequal Protection, 21 Hastings Comm. & Ent. L.J. 339, 357–58 (1999). See, e.g., Robert Braunies, Copyright, Race and Music: The Case of Mirror Cover Recordings, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Sean O’Connor, The Lead Sheet Problem in Music Copyright, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See generally Neela Kartha, Digital Sampling and Copyright Law in the Social Context: No More Colorblindness!! 14 U. Miami Ent. & Sports L. Rev. 218, 219–23 (1997); John Collis, The Story of Chess Records 117 (1998); James Lincoln Collier, The Making of Jazz: A Comprehensive History 106 (1978); Evans C. Anyanwu, Let’s Keep It on the Download: Why the Educational Use Factor of the Fair Use Exception Should Shield Rap Music from Infringement Claims, 30 Rutgers Computer & Tech. L.J. 179, 181–82 (2004); Olufunmilayo B. Arewa, Copyright on Catfish Row: Musical Borrowing, Porgy and Bess and Unfair Use, 37 Rutgers L.J. 277, 350–51 (2006); Henry Self, Digital Sampling: A Cultural Perspective, 9 UCLA Ent. L. Rev. 347, 352–53 (2002). Recent events, however, reveal that racial equality in America has not progressed to the extent that many believed. See Jose A. Del Real et al., How the Black Lives Matter Movement Went Mainstream, The Washington Post (Jun. 9, 2020), https://www.washingtonpost.com/national/how-the-black-lives-matter-movement-went mainstream/2020/06/09/ 201bd6e6-a9c6-11ea-9063-e69bd6520940_story.html (“As consensus grows about the existence of systemic racism in American policing and other facets of American life, longtime organizers of the Black Lives Matter movement are trying to extend its momentum beyond the popularization of a phrase”); Toluse Olorunnipa & Griff White, How Systemic Racism Shaped George Floyd’s Life and Hobbled His Ambition, The Washington Post, Oct. 8, 2020, https:// www.washingtonpost.com/graphics/2020/national/george-floyd-america/systemic-racism/; Zach Budryk, Loeffler Calls for Swift and Immediate Probe of Shooting of Unarmed Black Jogger, The Hill, May 6, 2020, 2020 WL 2176910. In the commercial entertainment industry alone, it is probably impossible to tally the billions of dollars that African American and other marginalized artists and entertainers have been robbed of through the unauthorized and inequitable exploitation of their aesthetic genius. From the annals of Jazz to tap to Rock and Roll, many of the originators of some of America’s most significant art forms languished in poverty and perished in obscurity, while their white imitators enjoyed fame, riches, and unearned places in history. See, e.g., K.J. Greene, Intellectual Property at the

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

Social Justice & Social Utility Interdependence in Copyright

117

industry7 to the motion picture business8 to the publishing trade,9 copyright dependent commercial enterprise in America seems all but impervious to racial equality and related social progress. One explanation for the virulent racial exploitation that infects American copyright commercial enterprise is the innately subjective nature of the evaluation of expressive work, particularly when it comes to assessing its potential for popular acceptance and commercial success. Unlike scientific research, technological enterprise, competitive sports, and other such fields of human endeavor, expressive undertakings do not easily lend themselves to objective or universal qualitative metrics. Consequently, Black (and other marginalized) creative commercial prospects are often subject to the cultural tastes and racial biases of the gatekeepers to commercial distribution networks, such as major record labels and Hollywood studios, a situation exacerbated by the general lack of bargaining power suffered by most Blacks.10

7

8

9

10

Intersection of Race and Gender: Lady Sings the Blues, 16 Am. U. J. Gender Soc. Pol’y & L. 365, 381 (2008); Kartha, supra note 4, at 232–34. See, e.g. Greene, Copynorms, supra note 3, at 1183–84 (“Black artists did not share rewards commensurate with their enormous creativity. From an economic perspective, black artists sustained losses through deprivation of copyright protection that would constitute a massive sum”); Nathacha Bien-Aime, Jay Z 4:44 Highlights Racial Disparity in Copyright & Entrepreneurship in the Entertainment Field, 5 St. Thomas J. Complex Litig. 32, 35 (2019); Sharon LaFraniere, Johannesburg Journal: In the Jungle, The Unjust Jungle, A Small Victory, The N.Y. Times, Mar. 22, 2006, at A1 (reporting that the song now known as “The Lion Sleeps Tonight” was originally written and recorded in South Africa by Solomon Linda, a Black man from Swaziland). Rasha Ali, The Oscars Were Never Meant to Be Diverse, and We Can Stop Pretending as if They Were, USA Today, Feb. 6, 2020, https://www.usatoday.com/story/entertainment/movies/oscars/2020/02/06/oscars-why-we-need-stopwaiting-diverse-nominations/4595861002/; April Reign, #OscarsSoWhite Is Still Relevant This Year, Vanity Fair, Mar. 2, 2018, https://www.vanityfair.com/hollywood/2018/03/oscarssowhite-is-still-relevant-this-year; Manohla Dargis & A.O. Scott, Hollywood, Separate and Unequal, The N.Y. Times, Sept. 16, 2016, https://www.nytimes.com/2016/ 09/18/movies/hollywood-separate-and-unequal.html; Jessica P. Ogilvie, Whites, Camera, Action: How Can Hollywood Unions Promote Diversity?, L.A. Wkly, Feb. 4, 2016, http://www.laweekly.com/news/whites-camera-action-how-can hollywood-unions-promote-diversity-6556106; Monique W. Morris, Black Stats: African Americans by the Numbers in the Twenty-First Century 32–38. Mark Savage, Black Artists May Have Received Unfair Record Contracts, Says BMG Report, BBC News, Dec. 18, 2020, https://www.bbc.com/news/entertainment-arts-55366694; Drew Schwartz, Black Artists Are Still Getting Ripped Off the Way Little Richard Was, Vice, Oct. 21, 2020, https://www.vice.com/en/article/z3vb5j/little-richard-made-millions-it-allwent-to-his-label; Jem Aswad, BMG Completes Review of Its Catalog’s Contracts for Racial Discrimination, Variety, Dec. 18, 2020, https://variety.com/2020/music/news/bmg-catalogs-racial-discrimination-1234865532/. See, e.g., Jeff Carter, Strictly Business: A Historical Narrative and Commentary on Rock and Roll Business Practices, 78 Tenn. L. Rev. 213, 228–29 (2010) (“Almost without exception, the blues pioneers came from the hardscrabble existence known to millions of black sharecroppers during the first half of the twentieth century . . . Muddy Waters, literally stepped off a tractor in Stovall, Mississippi, packed a bag and his guitar, and caught a ride to Chicago to seek a better life . . . This was compounded by the sharecropper mentality peculiar to the blues pioneers, known as the ‘furnish.’ The furnish was a practice by which the white plantation owners literally furnished everything the black farmhand might need, such as food, clothing, housing, and equipment, in return for the farmhand’s services in the cotton fields. Indeed . . . the relationship that existed between Muddy Waters and [Chess Records was] nothing more than another furnish, whereby in return for Waters’ recordings, Chess saw to it that Waters had a new car in the drive, his bills paid in full, and food in his refrigerator. This was apparently the case with other independent labels as well; upon returning home from an extended tour, James Brown returned to find that King Records . . . had purchased Brown a new Cadillac, a new suit, and a case of wine to enjoy during Brown’s two-week holiday, only to charge the entirety of the cost for these items back to Brown’s account as against Brown’s sales royalties”); Greene, supra note 6, at 366 (“The treatment of blacks, women, and indigenous peoples in the IP system reflects the unfortunate narrative of exploitation, devaluation, and promotion of derogatory stereotypes that helped fuel oppression in the United States . . . and abroad. The treatment of women blues artists in the IP system illustrates the racial and gendered nature of IP rights, and that IP has been central to racial subordination from both an economic and cultural standpoint”). See generally Ian Ayers, Pervasive Prejudice? 1–15, 22, 48–54 (2001) (“The process of bargaining, already inefficient in many ways, becomes all the more problematic when it works to the detriment of traditionally disadvantaged members of our society”); Morris, supra note 8, at 99–114.

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

118

Lateef Mtima

Some scholars, however, offer an alternative explanation for the enduring blight of racial inequity upon copyright commercial enterprise. Scholars such as K.J. Greene, Olufunmilayo Arewa, Betsy Rosenblatt, Deidre Keller, Anjali Vats, and others argue that the root of the problem lies in salient attributes of copyright protection that are intrinsically hostile to many African American original art forms and creative techniques.11 For example K.J. Greene has observed that “The [copyright] idea-expression doctrine has . . . penalized the most innovative artists in blues, jazz, and rock, essentially denying protection of their signature styles and denying compensation for the creation of genres.”12 Moreover, Professor Greene avers that some of the legal prerequisites to copyright protection further disadvantage Black creatives. “Perhaps the most taxing structural element of the copyright regime vis-à-vis Black artists has been the requirement of reducing works to a tangible form.”13 Betsy Rosenblatt has argued that copyright is inherently biased against African American art forms in that “copyright law’s narrative of value discourages cumulative creativity in ways that exacerbate racial inequalities and silence diverse voices.”14 Professor Rosenblatt asserts that copyright allocates pride of place to “mainstream” creative forms and techniques. [C]opyright law, as currently constructed and construed, defines a discourse that privileges the creative works and practices of incumbents and dominant cultures, while devaluing the works and practices of newcomers and disadvantaged cultures. Copyright systemically assigns value to some expressions and creators over others, and that value disparity works particular harm on underrepresented creators and their ability to use the expressive tools of dominant culture to “talk back” to inequality.15

Not all scholars agree, however, that the copyright system is innately antagonistic to African America creative enterprise. Pointing to the considerable fortunes that some African Americans have managed to amass through their participation in various expressive industries, Justin Hughes and Robert Merges have argued that copyright can serve as an effective tool for African American economic empowerment. “Our strong claim is that the copyright system as it presently functions arguably provides the most robust mechanism for African Americans to accumulate wealth in American society and, therefore . . . contributes substantially to the existence of a cluster of social ‘positions’ that are truly ‘open to all under conditions of fair equality of opportunity.’”16 Professors Hughes and Merges’ empirical analysis suggests that copyright can in fact be used to protect Black creative output and interests, and thereby provide Black creatives and their communities important opportunities for increasing Black wealth and socio-economic independence.

11

12

13 14 15 16

See Deidre Keller & Anjali Vats, A Primer on Critical Race Intellectual Property, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); see generally Anjali Vats, The Color of Creatorship: Intellectual Property, Race and the Making of Americans (2020); see also Olufunmilayo Arewa, Blue Lives: Promise and Perils of Musical Copyright, 27 Cardozo Arts & Ent. L.J. 573, 592 (2010); Betsy Rosenblatt, Copyright’s One-Way Racial Appropriation Ratchet, 53 U.C. Davis L. Rev. 591, 606 (2019). See generally Jia Wang, Conceptualizing Copyright Exceptions in China and South Africa: A Developing View from the Developing Countries 24–25 (2018) (discussing how Western copyright premise of individual control over intellectual creations is inconsistent with many African, North American, and other indigenous cultural perspectives of communal creative and innovative achievement and concomitant ownership). K.J. Greene, Copyright, Culture & Black Music: A Legacy of Unequal Protection, 21 Hastings Comm. & Ent. L.J. 339, 375–76, 382–83 (1999). Id. at 378. Elizabeth L. Rosenblatt, Copyright’s One-Way Racial Appropriation Ratchet, 53 U.C. Davis L. Rev. 591, 595 (2019). Id. at 596; see also Arewa, supra note 11. Justin Hughes & Robert P. Merges, Copyright and Distributive Justice, 92 Notre Dame L. Rev. 513, 552 (2016).

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

Social Justice & Social Utility Interdependence in Copyright

119

These opposing views of the role of copyright in promoting racial fairness and parity implicate the larger question as to the relationship between copyright’s core social function of supporting expressive endeavor and the concerns of social justice generally: Is copyright’s schema for promoting expressive intellectual activities inherently indifferent to and perhaps even incompatible with the goals of racial and other social justice? Put differently, can and should the copyright system be structured or adapted to interweave these diandrous social aspirations into a single and internally symbiotic societal goal – in short, can copyright be imagined and utilized as a tool to promote social justice?

i. copyright social utility and social justice interdependence This chapter considers the issue of copyright racial and other social justice with respect to its relationship to and effect upon copyright’s social purpose of promoting expressive intellectual endeavor. Under the unduly narrow “economic utility”17 perception of intellectual property that dominated copyright law and policy throughout the twentieth century, the copyright regime was rendered largely agnostic (at best) toward social justice and other “non-economic” concerns. Indifference to the social justice dimensions of copyright provided fertile ground in which various traditions of copyright injustice flourished. Such injustice was sometimes the result of consciously discriminatory or exploitative statutory provisions, administrative policies, judicial decisions, and business practices. Sometimes such injustice arose as the unintended consequences of socially myopic or naive interpretations and applications of the law. As explained below, however, regardless of what gave rise to the unjust implementation of copyright, that implementation always undermined copyright’s constitutional and fundamental function of promoting the broadest possible participation in the production, dissemination, and use of expressive works. The social justice rationale of intellectual property mandates explicit consideration of unjust effects and exclusionary impacts whether intended or unintended. Those denied access to or abused by the copyright ecosystem have little reason to engage therein, while those who benefit from such injustice have diminished incentives to expend the effort to develop their own creative talents and thus invest in expressive labors of their own. When perceived from the vantage point of IP social justice (IP-SJ), the copyright ecosystem can neither ignore nor tolerate pertinent racial inequity or other social injustice. Instead, socially equitabe access, inclusion, and empowerment are understood as essential to copyright’s function of fostering the broadest and most diverse participation in expressive intellectual endeavors and to enhancing the quantitative and qualitative harvest therefrom. Through the lens of IP-SJ, copyright social utility (promoting expressive endeavor) and copyright social justice (the equitable inclusion of everyone in the copyright enterprise writ large) are seen as anything but incompatible or even separate concerns, but rather they are understood to be the interdependent, indeed, if properly understood, inseparable, goals of copyright protection.18 17

18

As explained in the Introduction to this volume, IP-SJ acknowledges the important role of economic incentives in promoting intellectual property endeavor. However, the predominant, “unduly narrow” perception of IP pecuniary metrics emphasized economic interests and effects to the exclusion of all other social considerations, and thereby narrowed and distorted the social function of IP protection. See Lateef Mtima, Copyright Social Utility and Social Justice Interdependence: A Paradigm for Intellectual Property Empowerment and Digital Entrepreneurship, 112 W. Va. L. Rev. 97, 119–29 (2009). See Krista Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law; Jonathan Band & Brandon Butler, Libraries, Copyright Exceptions, and Social Justice; Elizabeth L. Rosenblatt, User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks; and John Whitman, Intellectual Property Empowerment and Protection for Prisoners,

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

120

Lateef Mtima

This chapter considers some specific evidence and analyses as to whether copyright inherently promotes or impedes racial justice. A few concrete examples are explored immediately below to illustrate the foregoing ideas. These examples further serve as support for and a bridge to the major theme of this chapter: whether copyright systemically promotes or impedes racial and other social justice depends largely upon what we demand of the intellectual property regime as a whole. Although the prior, myopic application of the economic utility rationale aided and even abetted indifference to social justice concerns, thereby permitting and indeed enabling copyright to be often misused as a tool of racial exploitation, the rationale of IP-SJ broadens our expectations of copyright to mandate a richer harvest of expressive endeavor. Through adherence to the precepts of social equitably access, inclusion, and empowerment, copyright can transcend the socially counterproductive inequities of the past and instead fulfill its potential for IP Empowerment.19

ii. copyright racial injustice: racial bias and mirror cover recordings Social inequity or injustice in the copyright ecosystem is not restricted to blatant racial exploitation – systemic social inequities exist in a broad range of diverse forms, from institutionalized predatory business practices20 to the pervasive derogation of the contributions of women21 to the failure to accommodate many forms of indigenous cultural expression.22 Much the same as

19

20

21

22

all in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Lateef Mtima, An Introduction to Intellectual Property Social Justice and Entrepreneurship: Civil Rights and Economic Empowerment for the 21st Century, in Intellectual Property, Entrepreneurship, and Social Justice 5, 8 (Lateef Mtima ed., 2015) (invoking the social engineering theories of Charles Hamilton Houston to construct “IP Empowerment” as a social movement which applies IP-SJ theory to promote grassroots IP education and social entrepreneurship); see generally Roger A. Fairfax, Jr., A Tribute to Charles Hamilton Houston: Wielding the DoubleEdged Sword, 14 Harv. Blackletter J. 17, 18 (1998) (“Charles Hamilton Houston, the chief architect of the legal assault on Jim Crow laws, sought a new method for pursuing Black equality before the law . . . recognizing the inadequacy of Legal Realism and its philosophy of deference to the legislature for racial justice, Houston developed the philosophy of ‘social engineering’ . . . [which] prompted jurists to challenge statutes and state actions that denied full citizenship rights to Americans who were Black . . . Charles Hamilton Houston’s wielding of the double-edged sword of judicial activism was antecedent to the Warren Court activism that brought about many of the civil rights gains of the second half of the twentieth century”). See, e.g., Don E. Tomlinson, Everything that Glitters Is Not Gold: Songwriter-Music Publisher Agreements and Disagreements, 18 Hastings Comm. &Ent. L.J. 85, 93–95 (1995); Ian Brereton, The Beginning of a New Age?: The Unconscionability of the “360-Degree” Deal, 27 Cardozo Arts & Ent. L.J. 167, 168 (2009); Lamberto O. Abeleda, Jr., Digital Compensation: Recording Artists’ Collective Fight for True and Fair Compensation, 31 Sw. U. L. Rev. 701, 708 (2002); Theresa E. Van Beveren, The Demise of the Long-Term Personal Services Contract in the Music Industry: Artistic Freedom Against Company Profit, 3 UCLA Ent. L. Rev. 377, 382–83 (1996); see generally Hannibal Travis, Copyright Class Struggle (2018). See, e.g., https://en.wikipedia.org/wiki/Artemisia_Gentileschi; https://www.nationalgallery.org.uk/artists/artemisia-genti leschi; Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See generally Greene, supra note 6, at 381; Ann Bartow, Fair Use and the Fairer Sex: Gender, Feminism, and Copyright Law, 14 Am. U. J. Gender Soc. Pol’y & L. 551, 555 (2006); Kara Swanson, Intellectual Property and Gender: Reflections on Accomplishments & Methodology, 24 Am. U. J. Gender Soc. Pol’y & L. 175, 183 (2015); Emily Chaloner, A Story of Her Own: A Feminist Critique of Copyright Law, 6 I/S: J. L. & Pol’y for Info. Soc’y 221, 230 (2010); Danielle Fischetti, Lost in Transcription: The Impact of Copyright Legislation on Female Folk Musicians of the Twentieth Century, 33 Women’s Rts. L. Rep. 285, 286 (2012). See, e.g., J. Osei-Tutu, Harmonizing Cultural IP Across Borders, 51 Akron L. Rev. 1198 (2018); Dalindyebo Bafana Shabalala, Intellectual Property, Traditional Knowledge, and Traditional Cultural Expressions in Native American Tribal Codes, 51 Akron L. Rev. 1125 (2017).

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

Social Justice & Social Utility Interdependence in Copyright

121

when racial injustice occurs elsewhere in society, racial injustice in the copyright domain can result from conscious racial bias, from unconscious racial bias, and from the racially disparate racial impact of facially neutral rules and policies. Sometimes a copyright provision that now seems facially neutral is in fact the result of actions driven by conscious racial bias. For example, as recounted by Robert Brauneis elsewhere in this volume, the practice of “mirror cover recordings” ultimately led to the codification of conscious racial bias into the Copyright Act. Imitating the recorded performances of Black vocalists to produce white “mirror cover recordings” for distribution to white music consumers was a common practice in the 1940s and 1950s.23 In Supreme Records, Inc. v. Decca Records, Inc.,24 the plaintiff, a Black-owned independent record label had produced a recording of A Little Bird Told Me, featuring the Black vocalist Paula Watson. Watson’s vocal stylings were subsequently imitated on a recording of the song performed by white vocalist Evelyn Knight and produced and distributed by the defendant Decca Records, a major record label. Fed up with the practice of “mirror cover recordings”, Supreme Records (and presumably with Paula Watson’s support) brought suit. As Professor Braunies details, the court’s disposition of the dispute appears to be based upon the deciding judge’s racial attitudes towards Black creative capabilities. Judge Yankwich is . . . unafraid to present his musical tastes as objective judgments, and to use them as a basis for declaring that the two recordings could not be confused. Those tastes decidedly weigh against the Supreme recording and in favor of the Decca recording. The Paula Watson recording, Yankwich declares, is “thick, mechanical, lacking inspiration, containing just the usual accompaniments and the usual intonations which one would find in any common recording.” By contrast, he asserts, the Decca recording “is rich, against a musically colorful background. It sounds full, meaty, polished. The difference derives from the different quality of the voices of the artists, the more precise, complex and better organized orchestral background, the fuller harmonization of the responses, [and] the clearer intonation and expression.” Yankwich seems to be preoccupied with denying any value or originality to the creations of those involved with the Supreme recording in particular, and African American composers and musicians more generally. In two remarkable footnotes . . . Yankwich traces call-andresponse patterns back to the thirteenth century in England and then to Greek antiquity, likely in an attempt to show that they appeared in Europe before any documented appearance in Africa.25

Moreover, as Professor Brauneis further observes, the substantive decision in the case was eventually incorporated into the Copyright Act. The 1971 [Copyright] Act provided sound recordings with narrower protection than other works of authorship, and a principal limitation was derived directly from a common understanding of the holding in Supreme Records. In 1957, the Copyright Office cited Supreme Records in “The Unauthorized Duplication of Sound Recordings,” one of the studies it prepared in preparation for a comprehensive recodification of copyright law, as principal support for the position that imitation of “the style of performance and manner of interpretation” captured in a sound recording is not actionable. Discussants in a succeeding series of roundtables referred to Supreme Records . . . and likewise saw it as precedent for the position that performances captured on a sound recording could be freely imitated. Drafts of what would become the 1971 Sound

23 24 25

See Braunies, supra note 4 (Steven D. Jamar & Lateef Mtima eds., 2023). 90 F. Supp. 904 (S.D. Cal. 1950). See Brauneis note 4 supra at 193–94.

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

122

Lateef Mtima

Recording Act and the 1976 Copyright Act included language implementing that position, and it survives in the current version of § 114(b) of the Copyright Act.26

Whether or not Congress was aware of Judge Yankwich’s specific reasoning in Supreme Records, Congress effectively codified the judge’s racial attitudes, or at least the result of his racially influenced legal analysis, into law. While Section 114 of the Copyright Act appears racially neutral on its face, Professor Brauneis’ historical analysis proves otherwise.27

iii. copyright racial injustice: the disparate impact of the written music notation registration requirement Many copyright racial inequities result from copyright provisions and policies promulgated without any apparent consideration of race or similar social issues. In his contribution to this volume, Sean O’Connor discusses one such prior policy of the Copyright Office,28 which mandated that the copyright registration deposit for a musical work be made in the form of written music notation. In practice this was taken to mean the formal music staff notation originally developed in Europe for sacred and secular classical music forms.29 The Copyright Office’s registration deposit policy discriminated against composers who were neither trained to compose in the European classical or formal music tradition, nor to read or write music in European staff notation. Many composers instead play and compose music “by ear.” Musicians who play and compose in this “aural music tradition”30 could not notate their compositions and thus were not permitted to register their works. Aural composers who could find someone to transcribe their works31 were vulnerable to unscrupulous managers, record labels, or music publishers who included themselves as composers or “co-authors” (and thus cocopyright owners) of the registered works.32 Moreover, as these transcriptions were not undertaken by the composer, errors and omissions were made. For example, the transcriptions often inaccurately represent the actual melody and chords composed, or omit other important, original elements of the composition, such as an original bass line.33 Nonetheless, as the official 26

27

28 29 30

31

32

33

Id. at 198. Moreover, the codification of Judge Yankwich’s decision indirectly reinforced the Copyright Office Policy which excluded from copyright protection creative expression that is orally fixed, such as captured in the Watson sound recording, as opposed to that amenable to written notation. See infra., at 122. For an argument in favor of the adoption of a “music vocalist inalienable copyright,” independent of the sound recording copyright and thus recognizing a vocalist right of authorship in her performance, see Tuneen E. Chisolm, Whose Song Is That? Searching for Equity and Inspiration for Music Vocalists Under the Copyright Act, 19 Yale J.L. & Tech. 274, 277–78 (2017) (“[T]he success of even the best written lyrical song depends upon the music vocalist’s performance of it. The talent-specific vocal stylings of certain recording artists have been responsible for astronomically propelling sales and public recognition of songs written and sometimes even previously recorded by other artists with limited or no commercial success . . . Yet, non-composer music vocalists typically end up with no copyright from their performance”). The policy was promulgated by the Copyright Office and was not a provision of the Copyright Act. See O’Connor, supra note 4. In its amicus brief filed in Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018), the Institute for Intellectual Property and Social Justice coined the term aural music tradition to denote the “playing by ear” nature of the methods of learning, playing and composing music directly on instruments. The term is further intended to distinguish such methods from the “oral tradition” which connotes folk and other traditions through which knowledge, art forms, and cultural history, customs, and practices are verbally preserved and transmitted across generations. In many cases, music publishers and record labels, whose copyright interests are often distinct from those of composers, would assign employees trained in European staff notation to transcribe the recordings of aurally composed works in order to protect their own interests. See, e.g., Hughes & Merges, supra note 16, at 92, 103, nn.191, 192 (citing Howard Reich & William Gaines, Jelly’s Blues: The Life, Music, and Redemption of Jelly Roll Morton 91–92 (2003) and noting the practice allowed publishers to “double-dip, collecting the publisher’s traditional 50 percent of royalties, as well as an additional 50 percent of the songwriter royalties”). See, e.g., Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018).

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

Social Justice & Social Utility Interdependence in Copyright

123

registration deposits, these versions were typically considered to constitute the whole musical work for purposes of copyright protection.34 While it does not appear that the Copyright Office’s written music notation registration requirement was racially motivated, it has had a disparate impact on Black composers, who have as a group enjoyed less access to formal music education and thus many have composed aurally. As a consequence, the door to copyright protection has been closed to some of our nation’s greatest music innovators.35

iv. copyright and racial justice: a path to “ip empowerment”? Despite the conditions of racial exploitation and inequity which plague the copyright ecosystem, some copyright scholars argue that copyright can nonetheless provide important opportunities for African American socio-economic advancement. Applying a theory of distributive social justice advanced by twentieth century deontological philosopher John Rawls, which dictates that societal rules must allocate rights and opportunities fairly and tolerate inequities only to the extent that they serve a measure of distributive justice,36 Justin Hughes and Robert Merges

34

35

36

See Bob Clarida, Music, Deposit Copies, and Skidmore v. Led Zeppelin – A Workaround, New York Law Journal Online March 20, 2020. https://plus.lexis.com/api/permalink/401cfda4-c923–4e11-ab6f-f4612d4b4c88/?context=1530671. “If the scope of the copyright in a musical work is limited to the details that were incorporated into the Notation submitted to the [Copyright Office], and those details are materially incomplete, relative to the recorded version of the work, it might be impossible for the composer to show an infringement of other significant elements of original authorship contained in the recorded version of the registered composition, no matter how direct and flagrant the defendant’s copying of those other elements. There is a disconnect . . . between the music known and beloved by the public . . . in its recorded form, and the notated music a court is willing to protect against infringement.” Other commentators have noted that the compulsory license provisions of § 115 of the Copyright Act have a similarly disparate impact on Black composers. See Kartha, supra note 4, at 218, 219–23, 234 (1997) (“The compulsory license made it possible for white artists to shanghai the African-American songbook. Pat Boone was notorious for covering Little Richard’s music, and eventually, songs ‘by niggers for niggers’ realized a catalog value as great as those of Tin Pan Alley tunesmiths . . . A great deal of revenue was generated by white groups covering Black hits . . . Eric Clapton is an excellent example of an artist who reached long term fame using a lot of unoriginal music and styles taken from Black artists . . . When he was with John Mayall’s Bluesbreakers he recorded (blues artist) Freddie King’s ‘Hideaway,’ Otis Rush and Willie Dixon’s ‘All Your Love,’ Robert Johnson’s ‘Ramblin’ On My Mind,’ and later, with the rock group Cream, he recorded ‘Crossroads,’ another Robert Johnson song. When he was with Derek and the Dominos he recorded Willie Dixon’s ‘Evil,’ Elmore James’s ‘The Sky Is Crying,’ and later in his solo career he imitated reggae music”; see also Arewa, supra note 11, at 600–601 (2010) (“[C]opyright law provisions that permit cover recordings have, particularly in the past, been used in a way that reinforces existing racial hierarchies”). See generally John Rawls, A Theory of Justice (1971). In essence, Rawls’ theory of social justice is based on the premise of an “Original Position” whereat individuals come together to form a society in their common interest, and wherein all are unaware of their personal characteristics. Accordingly, every individual has an interest in supporting rules that are fair to all, in as much as to discriminate against any particular set of characteristics could be to discriminate against oneself. Individuals can then formulate fair and just rules guided by two fundamental principles, first, that “Each person is to have an equal right to the most extensive total system of equal basic liberties compatible with a similar system of liberty for all” and, second, “Social and economic inequalities are to be arranged so that they are both: (a) to the greatest benefit of the least advantaged . . . and (b) attached to offices and positions open to all under conditions of fair equality of opportunity.” In other words, conditions of inequality are permitted provided they inure to the benefit of those most disadvantaged and every person has fair and equal opportunity to advance her situation in society. See, e.g., Michael Lacewing, Rawls and Nozick on Social Justice, https://michaellacewing .files.wordpress.com/2017/12/4-rawls-and-nozick-on-social-justice.docx (Dec. 2017). “John Rawls’ theory of distributive justice . . . is based on the idea that society is a system of cooperation for mutual advantage between individuals . . . Principles of justice should ‘define the appropriate distribution of the benefits and burdens of social co-operation’ . . . and any inequalities in social positions must be justified. And so the principles of justice . . . must be ‘the principles that free and rational persons concerned to further their own interests would accept in an initial position of equality as defining the fundamental terms of their association’ . . . In the original position . . . we will only agree to an equal distribution . . . [though] we would agree to inequality if that will work to everyone’s advantage . . . for example . . . [by] provid[ing] incentives which will generate more wealth for everyone.”

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

124

Lateef Mtima

adduce and analyze evidence of African American wealth accumulation derived from participation in copyright and related creative industries. In light of this evidence, Professors Hughes and Merges assert that copyright satisfies core distributive justice mandates, in as much as it supports “improvement in the material situation” of some of society’s most disadvantaged groups, including African Americans.37 [C]opyright has been a rare if not unique institution providing opportunity for African Americans to achieve the greatest economic success: the list of the wealthiest black citizens of the United States is utterly dominated by people whose fortunes are rooted in the copyright industries: entertainment, music, sports, publishing, and the like. Given the massive economic barriers facing the African-American community generally, this is a striking realization. Not that copyright in itself is an effective antipoverty program; not that it offsets structural racism in its myriad forms. Our point here is simply that copyright has been uniquely effective in permitting African Americans something closer to fair equality of opportunity to achieve the highest levels of wealth.38

While Professors Hughes and Merges readily acknowledge that “there’s been a lot of exploitation in music, particularly in this country with black musicians,”39 they maintain that it is also important to distinguish racially exploitative business policies and practices from evidence of racial animus in the provisions of the copyright law. “Specific claims for historical racial bias have pointed to low royalty payments to African-American artists, unfair and often downright fraudulent contract practices to deprive African Americans of IP rights, and music publishers frequently ‘claim[ing] co-authorship for famous blues songs, although the publishers themselves played no role in creating such songs.’”40 Accordingly, Professors Hughes and Merges aver that “[m]uch of the criticism that has been leveled against copyright on behalf of African Americans has really been about business practices or, at best, the interaction of copyright, contract law, and unscrupulous (and racist) business people [including] downright fraudulent contract practices to deprive African Americans of IP rights.”41 Professors Hughes and Merges therefore conclude that while copyright is by no means a social panacea for systemic racial injustice, its unique and concrete potential for promoting distributive justice should not be ignored. “We want to emphasize that in presenting [this analysis] we are not saying that copyright is ‘the’ solution to black poverty, or to poverty generally. But as far as we can tell, this correlation between copyright-based industries and African-American wealth has been true for several years.”42 Consequently, they conclude that this concrete evidence of African American IP Empowerment supports “the strong claim that the copyright system as it 37

38 39

40 41 42

Hughes & Merges, supra note 16, at 576 (“[F]rom the limited evidence available, the copyright system appears to contribute positively and significantly to economic distributive justice in the U.S. economy . . . Copyright is, and can be, an important tool to promote a just distribution of income and wealth in society”). Id. Id. at 557, quoting Chris Ruen, Free Loading: How Our Insatiable Hunger for Free Content Starves Creativity 138 (2012). Id. at 557. Id. at 557. Id. at 555. Moreover, Professors Hughes and Merges further acknowledge that the nigh-absolute exclusion of Blacks from fields unrelated to entertainment also accounts for Blacks’ comparative success in copyright-dependent enterprise: “We have no doubt that this correlation is partly a function of racial barriers in other professions and business structures. Indeed, it is really no surprise that as early as the 1920s, one of the most successful African-American-owned businesses was in a copyright industry: the short-lived Black Swan Records, based in Harlem.” Id. at 555. However, the argument proves too much to the extent that it characterizes the IP regime as “[h]istorically . . . essentially neutral laws embedded in and interrelated to discriminatory laws and practices”. Id. at 556. As Professors Brauneis and O’Connor demonstrate, the provisions of copyright are not always “neutral.” Conditions of IP social injustice are the result of internal deficiencies within, as well as external influences upon the intellectual property legal system.

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

Social Justice & Social Utility Interdependence in Copyright

125

presently functions, warts and all, arguably provides the most robust mechanism for disadvantaged groups, particularly African Americans, to accumulate wealth in American society.”43 The foregoing analyses of copyright racial inequity on the one hand and copyright socioeconomic empowerment on the other substantiate the claims that both condemn and condone the role of copyright in the achievement of racial justice. Copyright’s ultimate potential for promoting or impeding racial and other social justice, however, depends upon our understanding of the role of social justice generally in the achievement of copyright’s specific social function of promoting the creation and dissemination of expressive works.

v. re-envisioning copyright: the social justice imperative of copyright social utility In the United States, article I, section 8 of the Constitution empowers Congress to enact intellectual property laws in order “to promote the progress of the arts and sciences.”44 The Constitutional directive is not expressed in terms of promoting the production of intellectual property for its own sake, acknowledging any natural rights on behalf of intellectual property producers, or guaranteeing intellectual commercial enterprise, but rather it explicitly denotes copyright and other intellectual property law as a social engineering mechanism intended to foster cultural and technological achievement towards society’s ultimate gain.45 As demonstrated above and in many chapters in this volume, however, the intellectual property law, including copyright, does not always achieve its constitutionally mandated function. Entire creative cohorts are systemically deprived of various rights and interests provided under the law. The resulting deleterious effects of such social injustice upon copyright social utility should be self-evident. Marginalized creatives who have little or no expectation of pecuniary or other reward from copyright protection lack the secular incentive to produce expressive works. Moreover, while some of these creatives will certainly find other inspiration to create, they lack the incentive of copyright protection to fix their works. While fixation is critical to a variety of copyright social utility objectives, for the copyright disenfranchised, fixation is a prerequisite to a functionally worthless legal interest. Coincidentally, fixation also makes it easier for others, especially those with wealth and racial privilege, to steal one’s work.46 In addition to the hazards of diminished incentives to create and of a “fixation disincentive,” systemic copyright racial exploitation and other such injustice can also lead to a sort of “artistic xenophobia.” Some marginalized artists are likely to be fearful of sharing their works with the 43 44 45

46

Id. at 549. U.S. Const. art. I, § 8. See Steven D. Jamar, A Social Justice Perspective on IP Protection for Artificial Intelligence Programs, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023): “The balance advanced by IP social justice originates in the Constitution’s grant of power to Congress to provide inventors and authors patents and copyrights, ‘To promote the Progress of Science and useful Arts’ . . . If ‘we the people’ are to benefit from the fruits of intellectual property, access, inclusion, and empowerment, especially historically marginalized communities, must be woven into the fabric of the intellectual property law and administration.” See also Jason S. Rooks, Constitutionality of Judicially-Imposed Compulsory Licenses in Copyright Infringement Cases, 3 J. Intell. Prop. L. 255, 257 (1995) (“Read literally, three fundamental policies are advanced by the [copyright] clause: (1) to promote learning; (2) to benefit authors; and (3) to ensure public access . . . Of these three policies, two benefit the public and one the author; and the benefit to the author is a means to the ends of promoting learning and protecting the public domain”). Consequently performers and composers who create orally or aurally have fewer copyright incentives to create and to fix their creative output. Of course, such creatives may nonetheless fix their work for other purposes; the point is that copyright is often irrelevant to the decision.

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

126

Lateef Mtima

general public, wary of losing ownership of their work or being cheated out of the commercial revenues their work might generate.47 The detrimental effects of racial inequity and other injustice upon copyright social utility extend beyond the curtailment of the rights and interests of marginalized creatives. When corporate wealth and power are misused improperly to restrict access to or use of copyrighted works, members of the public may well be denied their right to learn from or be inspired by such works.48 When that denial of access occurs, society’s storehouse of expressive achievement is deprived of the potential contributions that might have been inspired through proper exposure to and use of such preexisting material. Moreover, the ultimate objective of copyright, and not incidentally a core underpinning of the constitutional protection of liberty, that of human actualization, is undermined.49 Considered in the light of the Constitution as a whole, adopted and ordained “to form a more perfect union”, to “secure Justice,” and to “promote the General Welfare,” copyright social injustice is a significant social blight.50 The examples of copyright racial injustice discussed above further demonstrate how such social injustice ultimately enervates copyright social utility as a whole. The final legacy of the decision in Supreme Records is that the Copyright Act today denies protection to the expressive artistry of all recording artists. “Because it generally is viewed as merely a contribution to a sound recording, the vocalist’s performance falls into a gap in the protections extended for musicrelated nondramatic works. Entrenched in United States copyright law . . . is the notion that the only two copyrights at issue for nondramatic music are those for music compositions and sound recordings . . . There is no recognition of a music vocalist’s performance as a copyrightable work, standing alone . . . [a] view that is not inconsistent with the discounted treatment that musical

47 48

49

50

See Sean O’Connor, Creators, Innovators, and Appropriation Mechanisms, 22 Geo. Mason L. Rev. 973 (2015). See Band & Butler, supra note 18; Debora Halbert and Billy Meinke-Lau, IP and Social Justice Futures, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See also Neil Weinstock Netanel, Impose a Commercial Use Levy to Allow Free Peer-to-Peer File Sharing, 17 Harv. J.L. & Tech. 1, 3 (2004) (“P2P file sharing is not just downloading music and movies for free. It is a vehicle for finding works that are otherwise not available, discovering new genres, making personalized compilations, and posting creative remixes, sequels, and modifications of popular works. By engaging in such activities, people who might previously have been passive consumers now assert a more active, self-defining role in the enjoyment, use, and creation of cultural expression”). See generally Peter S. Menell, Envisioning Copyright Law’s Digital Future, 46 N.Y.L. Sch. L. Rev. 63, 67 (2002); Douglas L. Rogers, Increasing Access to Knowledge Through Fair Use: Analyzing the Google Litigation to Unleash Developing Countries, 10 Tul. J. Tech. & Intell. Prop. 1, 11–14 (2007); Douglas L. Rogers, Increasing Access to Knowledge Through Fair Use: Analyzing the Google Litigation to Unleash Developing Countries, 10 Tul. J. Tech. & Intell. Prop. 1, 47–51 (2007); Ruth Okediji, Givers, Takers, and Other Kinds of Users: A Fair Use Doctrine for Cyberspace, 53 Fla. L. Rev. 107 (2001); Hannibal Travis, Building Universal Digital Libraries: An Agenda for Copyright Reform, 33 Pepp. L. Rev. 761, 763 (2006). Obergefell v. Hodges, 576 U.S. 644 (2015) (“The Constitution promises liberty to all within its reach, a liberty that includes certain specific rights that allow persons, within a lawful realm, to define and express their identity”). See, e.g., the Authors Alliance at https://www.authorsalliance.org/our-issues/reaching-audiences/, a nonprofit collective of authors organized around the premise that authors “‘write to be read’ and hope to see their knowledge and products of their imagination widely disseminated.” The mission of the Authors Alliance is to “help authors identify online platforms, journals, libraries, and other tools, techniques . . . that can help them get and keep their works in the hands of readers.” See generally Steven D. Jamar, Copyright and the Public Interest from the Perspective of Brown v. Board of Education, 48 How. L.J. 629, (2005); Julie E. Cohen, Copyright and the Perfect Curve, 53 Vand. L. Rev. 1799, 1801–1808 (2000); Carla D. Pratt; Way to Represent: The Role of Black Lawyers in Contemporary American Democracy, 77 Fordham L. Rev. 1409, 1410 n.1 (2009) (“[In] a participatory model of democracy . . . all citizens have equal opportunity for full and active participation in not only government institutions, but also in non-governmental institutions such as corporations, schools, and unions. Under this broad view of democracy, equality means not just political equality for citizens, but social equality as well”).

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

Social Justice & Social Utility Interdependence in Copyright

127

performance historically received by musicologists up until the mid-1980s or so.”51 Thus, the ultimate legacy of Judge Yankwich’s racial biases is its impact on the creative output of all recording artists, and not only the “thick, mechanical” renderings of Black vocalists.52 Similarly, even though the Copyright Office’s written music staff notation deposit policy disparately impacted Black and other historically marginalized composers, it also functionally disenfranchised composers in virtually every genre of American music from copyright protection. European written music staff notation is largely irrelevant to the aural music traditions in which many of America’s greatest composers created their works. Many of the innovators of the original and inherently American music art forms such as jazz, country, bluegrass, R&B, and rock and roll, including such legendary music icons as Marvin Gaye, Robert Johnson, Hank Williams, Jimi Hendrix, Irving Berlin, Michael Jackson, Elvis Presley, and Glenn Campbell composed in the aural music tradition. Needless to say, this technical “limitation” had little impact on their ability to convey their compositions to other musicians to perform, particularly in as much as many musicians in the pop, jazz, country, and other indigenous American genres also were not fluent in European staff notation. In failing to account for the fact that many “grassroots” musicians and composers would not have access to (or for that matter even need) training in European written music staff notation, the Copyright Office effectively denied copyright protection to some of the nation’s greatest music innovators, in deference to received nineteenth century European traditions wholly inapt to uniquely American creativity. Articulating problems of copyright social injustice and then applying these revelations to evaluate the ensuing offense to the copyright ecosystem illuminates a detriment to copyright social utility that transcends the injustice toward a marginalized few. The undertaking reveals a theory of copyright social justice firmly embedded in the Constitutional bedrock of copyright. To achieve its mandate of promoting expressive endeavor, the copyright regime must acknowledge and work to fulfill its constitutional and inherent obligations to social justice.53 When construed, constructed, and implemented properly, copyright is therefore anything but inherently or irreparably inimical to social justice and the attendant precepts of socially equitable access, inclusion, and empowerment. Instead, a theory of copyright that respects the interdependent relationship between copyright social utility and copyright social justice precludes

51 52

53

Tuneen Chisolm, supra note 27, at 291. See Edward T. Saadi, Sound Recordings Need Sound Protection, 5 Tex. Intell. Prop. L.J. 333, 338–39 (1997) (“Congress’ desire to reward songwriters but not recording artists with performance royalties implies that there is little valuable artistry to be found in the recording process, and that the act of musical creation does not extend beyond composition. This logic disregards the significance of the recording artist’s talent, style, and interpretation of a musical score. It denies the performer his right to be recognized as an artistically important part of the creation of music; it treats the recording artist as if he were merely a computer or player-piano, translating notes contained on sheet music into audible form, imparting no feeling of his own into his performance”). Moreover, the fixed albeit nonliteral creative renderings of other creatives, such as a film director’s expressive arrangement of a movie scene, are typically eligible for copyright protection. Thus, the treatment of recording artists seems wholly out of sync with that of other creative cohorts. Elizabeth L. Rosenblatt, Social Justice and Copyright’s Excess, 6 Tex. A. & M. J. Prop. L. 5, 11–12 (2020) (“[P]romoting social justice among potential authors also promotes the creation and dissemination of works . . . Authors need to be able to afford to create, and making authorship economically feasible for a more diverse array of authors is likely to promote creation of more works and more appealing works . . . Advancing potential authors’ sociocultural, personal, emotional, and mental well-being is a way of making it feasible for them to create. Promoting diversity in authorship – that is, promoting the creation of works by the widest possible array of authors – doubtless promotes the creation of more works, not to mention more diverse works. And perhaps more importantly, if we think that promoting well-being and diversity among authors would not promote progress, we should rethink our concept of progress: A system that maximizes creation and dissemination of works by diminishing the well-being and diversity of those who might make them is hardly ‘progress’”).

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

128

Lateef Mtima

the social harms that flow from racial as well as other social injustice in the copyright ecosystem and optimizes the quantitative and qualitive outcomes of copyright protection.

vi. copyright social justice: transcending the past, charting the future Perceiving copyright through the lens of IP-SJ reveals a broad array of social cultural, and economic harms that can flow from the failure to appreciate the innate and interdependent relationship between copyright’s social utility objectives and its social justice imperatives. The IP-SJ perspective not only uncovers the broad social harms that can flow from a myopic perspective toward copyright’s social purpose, but it also provides guidance in devising solutions to the challenges revealed.54 For example, with respect to the issue of the lack of copyright protection for sound recording vocal artistry, the IP-SJ rationale requires specific consideration of the impact on the access, inclusion, and empowerment interests of recording artists. For instance, what copyright benefits are derived from excluding their creative renderings from the ambit of copyright protection and do those benefits outweigh the impact upon the creation incentives and personal and artistic dignity of performance creatives? A social justice-oriented assessment of these and related issues could support a rebalancing of the relevant equities that would reflect greater respect for the interests of vocal artists and indeed all performing musicians. So many popular songs are simple structurally, musically, and lyrically and gain their emotive impact from the performance. The source of that impact, the performers, should be rewarded.55 With respect to the issue of the written music notation registration requirements, while the current copyright statute permits registration deposits in other formats, there are many musical works still affected by the former policy.56 Copyright attorney Bob Clarida offers the inspired mechanism of “Undeposited Authorship” through which to provide an IP-SJ-cognizant solution to the problem: Many musical compositions, as released to the public, embody far more creative authorship than does the corresponding Notation deposited to register those compositions . . . I will refer to all the musical material that is audible on the composer’s publicly released recording of a song, but not visible in the Notation, as the “Undeposited Authorship” of that song. It might take the form of an instantly-recognizable instrumental introduction, or a guitar solo, or vocal backgrounds, a bass line, an extra verse, or any other element of the song’s composition or arrangement . . . A composer should be able file a new, fresh, second application to cover previously Undeposited 54

55

56

See Sean Pager, Cultivating Capabilities for Creative Industry Upstarts, 21 Mich. St. Int’l. L. Rev. 547, 552–53 (2013) (“As it stands, the copyright system may not be configured with the interests of [small to medium copyright actors] at heart. However, it should be. [Such actors] exemplify the potential for creative industries to innovate both commercially and creatively . . . If we take seriously the promise of copyright laws as an incentive for creative innovation, [small to medium copyright actors] belong at the center of this calculus, and capabilities should be a central focus of copyright policy. For copyright law to unleash the dynamic potential that [these actors] embody, we need to address systemically the capacity constraints that hold [them] back”). Saadi, supra note 52, at 347 (“[W]hen a performer obtains the right to use a rock & roll composition, he has by default also obtained the right to impersonate those aspects of the original performance which contributed at least as much as the underlying composition to the success of the original recording. In effect, Congress has created a disincentive to creativity by refusing to recognize a recording artist’s role in musical creation. Why should a recording artist be eager to create new recordings when he has no legal recourse against the financial harms imposed by imitators?”). One possible remedy would be to reside ownership of the copyright in the sound recording in the performer as a matter of law, much the same as the composer retains the copyright in the musical composition performed. See, e.g., Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018); Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020).

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

Social Justice & Social Utility Interdependence in Copyright

129

Authorship in an existing composition, supported by a deposit copy consisting of the original sound recording, which the law now permits. Perhaps the new registration could be called an “arrangement” of the originally registered composition, to avoid ambiguity about what it covers, and it could specifically disclaim the previously registered Notation and claim authorship only in the Undeposited Authorship.57

The “Undeposited Authorship” device allows composers who work in the aural tradition to obtain copyright protection for works composed when the former policy was in effect, which not only supports the access, inclusion, and empowerment rights and interests of these composers, but enhances the social function of American copyright as a whole. While these and other applications of IP-SJ can correct many copyright social inequities, we are not so naive as to expect that IP-SJ can eradicate all conditions of racial or other social injustice in the copyright ecosystem. As the previous, undue reliance on the “economic objectivity” of copyright informs, inflexible confidence in even the most well-intentioned legal infrastructure can lead to many socially unproductive albeit unintended results. No matter how carefully the dictates of IP-SJ are adhered to in promulgating and interpreting copyright law, vigilant assessment of facially objective rules for real-world effects remains critical. Moreover, it is critical to be ever mindful that the inner workings of the copyright legal system are not hermetically impervious to external social attitudes and conditions. As this chapter has shown, even economic and other socially “objective” rules can be manipulated and misapplied to serve subjective bias and other unjust ends. A recent case involving legendary Motown composer and performer Barrett Strong provides an important example. The writer and composer of Motown’s first hit record “Money (That’s What I Want)”, Strong was originally included on the copyright registration application filed by Motown, but his name was removed by Motown three years later when the label filed an amended registration statement without Strong’s knowledge.58 The “copyright external” realities of unequal access to information and legal and other resources can render even relatively innocuous administrative procedures vulnerable to social abuse.59 Finally, while IP-SJ confirms that identifying and correcting copyright injustice is critical to the achievement of copyright’s social function in the total political economy, it is important to understand that remedying copyright social injustice is not a “one-solution fits all” problem. Whether manifest as racial exploitation, gender inequality, or cultural misappropriation, each copyright social injustice challenge warrants nuanced assessment toward specifically responsive redress. As noted in the Introduction chapter in this volume, theories and methodologies grounded in the relevant IP-SJ-conscious disciplines, such as IP and Human Rights and Development or Critical Race IP, can best tailor problem-specific investigative tools and remedial policies. 57

58

59

Bob Clarida, supra note 34, at 2. In fact, Mr. Clarida observes that “the [Copyright Office] has already accepted such belated ‘arrangement’ filings. To cite one example, a second ‘arrangement’ registration was filed in 1988 for the 1968 Rolling Stones composition “Sympathy for the Devil.” Id. at 3. See Larry Rohter, For A Classic Motown Song About Money Credit Is What He Wants, The N.Y. Times, August 31, 2013, https://www.nytimes.com/2013/09/01/arts/music/for-a-classic-motown-song-about-money-credit-is-what-he-wants .html. See Sean Pager, Cultivating Capabilities for Creative Industry Upstarts, 21 Mich. St. Int’l. L. Rev. 547, 550 (2013) (“[Small to medium copyright constituents] operate under conditions of resource scarcity. Pursuing litigation or even seeking advice from legal counsel can be prohibitively expensive. Given the baroque complexities into which current copyright laws have devolved, [these constituents] often lack even a basic awareness of their legal rights and, as a result, fail to take even common sense measures necessary to use the system to their advantage. Such forgone potential undermines the incentives the copyright systems seek to foster”). Moreover, the system’s vulnerability to such abuse, and the difficulty of its detection, raise the question as to whether criminal penalties might not prove an appropriate disincentive to engage in such conduct.

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

130

Lateef Mtima

conclusion The achievement of copyright’s function in the total political economy is not indifferent to the pursuit of social justice generally, but rather is dependent upon it. Appreciation for this innate and interdependent relationship ensures that copyright will promote the widespread expressive undertakings and cultural advancement essential to any vibrant society. By adopting the social justice perspective of copyright, law and policymakers enhance copyright’s function: fueling a perpetual cycle of human enlightenment through individual reflection and expressive exchange.

https://doi.org/10.1017/9781108697613.009 Published online by Cambridge University Press

6 Trademarks, Legal Remedies, and Social Injustices Hannibal Travis*

Introduction I. Trademarks Defined II. From a Common-law Rule to Federal Statute III. Forms of Justice and Trademark’s Aspirations IV. Issues of Justice in Trademark Acquisition V. Intellectual Property Social Justice in Trademark Transfer and Loss VI. Trademark Enforcement and Corrective and Social Justice VII. Limiting Trademarks for Distributive Purposes VIII. Corrective and Distributive Justice in Trademark Remedies IX. Frontiers of Trademark (In)justice: Applying IP Social Justice Theory Conclusion

page 131 132 133 136 139 142 143 147 150 153 156

introduction This chapter explores trademark law and issues of moral and social justice that arise in its implementation. By promoting similar treatment of similar branding efforts and removing unnecessary barriers, the intellectual property (IP) system could promote interpersonal justice in several areas of life. The sports and entertainment sector, retail, restaurants, and consumer goods markets are highly dependent on brands, trademarks, and goodwill. In some respects, the role of trademark law in promoting moral and social justice may be the most evident of all the IP domains because trademarks regulate nearly every enterprise in society, and target some of the more blameworthy forms of commercial fraud. Trademark law may contribute to the promotion of high quality in the marketplace and to greater fairness in terms of information provision and the quality of direct-to-consumer advertisements. This function emerged from common-law principles and evolved into national legislation and international norms. Assessing trademark protection in view of social justice highlights unnecessary barriers to access. There are instances of exclusion from trademark protection as a platform for economic and social capital accumulation. This chapter will consider the origin and extent of trademark rights, brand equity, goodwill, income growth, entrepreneurship, economic inequality, small and medium-sized enterprises, and social impact. Many of these concepts will also be explored *

I thank Steven Jamar and Lateef Mtima for helpful comments on the first draft, Riquan King for research assistance on trademark law, and Lateef Mtima and the other organizers of the 2019 Mosaic conference for inviting me to participate.

131 https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

132

Hannibal Travis

in other chapters of this book. Maximizing the social utility function of trademark protection requires attention to economic power, entrepreneurial opportunities, and impediments to personal and professional development. Surveying disputes involving trademark acquisition, use, and enforcement, this chapter analyzes the implications of core trademark law doctrines for a participatory economic and social order.

i. trademarks defined A trademark is a word, name, image, color, sound, or other designation that helps to identify the producer of goods, or of services in the case of service marks. A trademark right is an exclusive right to adopt and use a name, term, symbol, or a device to differentiate the goods or personal property made or sold by the owner thereof or its licensee(s).1 At various points in time, a trademark has been called a “property right.”2 In the structuralist or anti-monopoly heyday of the Sherman Act and hostility to certain assertions of patent and trademark rights, trademarks were called a “monopoly” right in the owner or owners of a registered trademark or trademarks.3 Despite some controversy, there is a trend to regard trademarks as limited statutory rights that are not monopolies. This chapter presents a brief summary of pertinent doctrines and controversies in the field of trademark and unfair competition law. An especially important question is who has access to the trademark system. In some countries, trademarks are issued without much or any inquiry into the history of the underlying business or the products or services covered by the trademark. The United States has considerably more complex standards for federal trademark protection, which may exclude many individuals and smaller enterprises from enjoying the benefits of brand awareness that sellers and resellers alike leverage into commercial success. At the same time, however, these limitations are also defensible on grounds of widening inclusion and promoting empowerment, for they delimit a public domain in words and symbols from which all may draw in crafting new brand identities and related imagery, facilities, and packaging. A dominant theoretical perspective on trademarks regards them as promoting economic efficiency and the building of a national economy based on brand names. To serve those aims, trademark law seeks to deter inefficient and inequitable practices that misidentify the source of goods, while incentivizing producers and distributors of goods to promote high quality because their customers can rely on the trademarks.4 Competing theories articulate rationales for trademarks based on policies of rewarding labor or respecting expressions of unique personalities.5 Trademark law also serves functions analogous to libel or compelled-speech doctrine in First Amendment law: protection of reputation from false claims and fake endorsements.6 The civil rights of freedom of expression, democratic participation, and respect for individual dignity and welfare make up part of the fabric of the social justice effects of IP protection, alongside the

1 2 3 4

5

6

United States v. Steffens, 100 U.S. 82, 92 (1879). Id.; see also Lucasfilm, Ltd. v. High Frontier, 622 F. Supp. 931, 933–34 (D.D.C. 1985). S.C. Johnson & Son, Inc. v. Johnson, 266 F.2d 129, 136 (6th Cir. 1959). See, e.g., S. Rep. No. 79-1333, at 4 (1946); William Landes & Richard Posner, Trademark law: An Economic Perspective, 30 J.L. & Econ. 265 (1987). See Justin Hughes, The Philosophy of Intellectual Property, 77 Geo. L. Rev. 287, 288–89, 300, 353–54 (1987); Glynn Lunney, Trademark Monopolies, 48 Emory L.J. 486 (1999). See Hughes, supra note 5, at 354–65.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

133

economic utility goals of the IP legal regime.7 Indeed, social democracy or “dialogic democracy,” in Rosemary Coombe’s work, could be alternative forms of the IP social justice ideal.8 Professors Lateef Mtima and Steven Jamar, the progenitors and editors of this anthology, advance an IP social justice theory that expressly balances the property rights attendant to IP protection with the interests in protecting access, inclusion, and empowerment of people in the IP ecosystem, with a special emphasis on the inclusion in economic and social benefits and statuses of persons or groups that traditionally have been excluded from full participation.9 To address trademark law in the context of this theory, the present chapter begins with a description of the sort of injustice that trademark law was traditionally envisioned as correcting. It then turns to ways in which trademark law might be more or less inclusive of full participation in economic and social life, across the two distinct problems of exclusion from the marketplace due to trademark law remedies, and exclusion from potential branding or financing opportunities by denial of trademark registration or causes of action. Finally, it looks to the near future, when trademark law confronts problems of brain–computer interfaces, virtual realities, social media influencers, and 3D printers. One implication of trademark law in its U.S. and Canadian variants is that it is fraught with implications for racial, ethnic, and gender-based exclusion. These issues are explored elsewhere in this book and will not be addressed here.10

ii. from a common-law rule to a federal statute In Britain, it was said that over “a long period Trade Mark Law and practice resembled the earth at its creation – being without form; but, in the light thrown upon them by experience and judicial decisions,” took on a more “definite shape” in the late nineteenth century with several Acts of Parliament.11 British trademark law was revised thoroughly in 1994, implementing European law among other things.12 On the eastern and western coasts of the United States, trademark protection arose as a common-law remedy for a form of fraud upon a purchaser to the

7

8

9

10

11

12

See Peter S. Menell, Mapping the Intellectual Property/Social Justice Frontier, ch. 1 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Lateef Mtima, From Swords to Ploughshares: Towards a Unified Theory of Social Justice, in Intellectual Property, Entrepreneurship and Social Justice: From Swords to Ploughshares 265–70 (Lateef Mtima ed., 2015). See Rosemary Coombe, The Cultural Life of Intellectual Properties, Authorship, Appropriation, and the Law 264–96 (1998). On economic democracy, see, e.g., Introduction, in Karl Marx: Early Political Writings xxi (Joseph O’Malley with Richard Davis ed. and trans. 1994); The Cornel West Reader xx (Cornel West ed., 2000); Richard Wolf, Democracy At Work: A Cure for Capitalism 14–98, 145–151, 165–166 (2012). See Lateef Mtima & Steven Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); see also Lateef Mtima, Introduction, Symposium on Intellectual Property and Social Justice, 48 Howard L.J. 571 (2005). See, e.g., Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law, ch. 2 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Mariana Bernal Fandiño, Controversial Trademarks: A Comparative Analysis, ch. 21 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Henry Kerby & Peregrine Varnals, Practical Guide for Trade Mark Owners. Containing Directions for Registration, with Notes of Legal Decisions 2 (1887). See Great Britain Law Commission, Patents, Trade Marks and Design Rights: Groundless Threats, a Consultation Paper 19–24 (2013) (citing Trade Marks Act 1994 [U.K.]; Trade Mark Directive 89/104/EEC; British Sugar Plc v. James Robertson & Sons Ltd. [1996] RPC 281 at 292); see also H.E. Norman, Perfume, Whisky and Leaping Cats of Prey: A U.K. Perspective on Three Recent Trade Mark Cases Before the European Court of Justice, 20 Euro. Intell. Prop. Rev. 306 (1998).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

134

Hannibal Travis

detriment of the business and reputation of a competing seller or service provider in the market.13 By employing a trademark, a seller or service provider can immediately distinguish its goods and services in the marketplace, aiding consumers in more easily identifying a desired source or brand and ensuring that repeat purchases or versions that are of a sought-after nature or quality. Federal legislation currently recognizes several types of harm suffered by trademark owners. The U.S. code provides remedies in civil actions for damages and injunctions and authorizes criminal prosecution in certain extreme cases. One type of harm is misuse of a registered trademark to cause confusion, deception, or mistake as to the source or sponsorship of goods that are sold in interstate commerce.14 If a spurious imitation of a well-known registered mark is at issue, infringement may rise to the level of counterfeiting.15 Another type is similar to the first, except that an unregistered mark may also be at issue, and uses which do not create confusion as to source or sponsorship may also be actionable as “unfair competition.”16 A third example is dilution or “unfair dealing,” in which injury to the captivating or at least informative power of a famous trademark is rectified despite a lack of confusion or deception.17 Finally, there is cybersquatting or the bad-faith adoption of a word or phrase confusingly similar to an identifiable and famous trademark in order to divert web surfers or hijack brand value.18 Since 1946, and even before that, trademark owners have been able to register their names, symbols, etc. in federal registers.19 Even descriptive terms or phrases such as American Airlines, Bank of America, General Motors, and (arguably) iPhone, Microsoft, and Windows can be registered when consumers associate the term or phrase with a single producer and its reputation rather than simply with its primary meaning as a description of a type of product/service (and its location).20 Federal codification changed certain ideas about trademark infringement as an intentional tort premised upon knowing misuse of protected names or characteristics of tradable assets. At common law, it was necessary to show that the party charged with misusing a trademark knew or intended to use it to the injury of another with a better claim.21 This rule persists in the requirement of many federal circuits and state courts that to obtain damages for infringement, a trademark owner may need to show bad faith use, as distinguished from injunctive relief against ongoing post-suit use, which may not require this.22 One origin of this distinction is 13

14 15 16

17 18 19 20 21

22

Harry Dwight Nims, The Law of Unfair Competition and Trade-Marks 20–21 (2d ed. 1921) (citing, inter alia, Taylor v. Carpenter, 23 F. Cas. 742, 2 Sandf. Ch. 676 (C.C.D. Mass. 1844); Hopkins Amusement Co. v. Frohman, 103 Ill. App. 613 (Ill. Ct. App. 1st Dist. 1902), aff’d, 202 Ill. 541 (1903), subsequent proceedings at 131 Ill. App. 307 (Ill. Ct. App. 1st Dist. 1907), rev’d, 87 N.E. 327 (Ill. 1909), aff’d, 223 U.S. 424 (1912)); 6 William Wait, A Treatise Upon Some of the General Principles of the Law 21–22, 30 (1879) (citing, inter alia, Taylor, 2 Sandf. Ch. 676; Woodward v. Lazar, 21 Cal. 448 (1863)); 3 William Wait, A Treatise Upon Some of the General Principles of the Law 741–43 (1878) (citing, inter alia, Congress Spring Co. v. High Rock Spring Co., 45 N.Y. (1871); Hennessy v. Wheeler, 69 N.Y. 271 (1877)). See 15 U.S.C. § 1114. See 15 U.S.C. § 1125(c). See 15 U.S.C. § 1125(a); Rudolf Callman, Trade-Mark Infringement and Unfair Competition, 14 L. & Contemp. Probs. 185, 185–86 (1949). Callman, supra note_16, at 185–86. See 15 U.S.C. § 1125(d). 15 U.S.C. § 1052. 15 U.S.C. § 1051 et seq.; see also 15 U.S.C. § 1125(a). Tony Bortolin, Intention: Is It Truly Irrelevant to the Awarding of Damages or Profits in Canada and Abroad? 106 Trademark Rep. 1037, 1046–47 (2016). See George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1540 (2d Cir. 1992); Blake Tierney, Missing the Mark: The Misplaced Reliance on Intent in Modern Trademark Law, 19 Tex. Intell. Prop. L.J. 229, 234–36, 255–61 (2010). For

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

135

stated as follows: “If a plaintiff has the absolute right to the use of a particular word or words as a trade mark, then if an infringement is shown, the wrongful or fraudulent intent is presumed, and although allowed to be rebutted in exemption of damages, the further violation of the right of property will nevertheless be restrained.”23 Described as a type of bad-faith misleading conduct, trademark infringement resembles other intentional torts, which are justifiable variously as correcting a wrong knowingly done, redistributing ill-gotten gains, and deterring harms. Although the Lanham Act was supposed to be declaratory of the common law,24 it harmonized technical standards and provisions that may have been more fluid previously. One area in which the impact may have been greatest is by creating a consensus among the federal courts that damages may be obtained in a trademark case without proof of intent to defraud or confuse.25 Another is by clarifying, to some extent, that while intent may show infringement, it is not needed.26 The Lanham Act codified several forms of trademark and unfair competition remedies.27 Actual damages, the defendants’ profits, injunctions, and statutory damages are available under various circumstances in cases of infringement of trademarks or false or misleading

23 24 25

26

an explication of this proposition in Canada, see, e.g., Sund v. Beachcombers Restaurant, 34 C.P.R. 225, 229 (B.C.S.C.) (1960). For accounts of numerous related precedents from the United Kingdom, see Bortolin, supra note 21. But see Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 554 (5th Cir. 1998) (accounting of defendant’s profits is not completely barred where defendant lacked intent to confuse or deceive consumers). Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 674 (1901). See H.R. 13109, § 30, 70th Cong., 1st Sess. (1928). See Romag Fasteners, Inc. v. Fossil, Inc., 817 F.3d 782, 790 (Fed. Cir. 2016) (citing 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30.75 (2015)). In 2020, the Supreme Court took up a circuit split on recovery of defendant’s profits under Section 1117(a) of the Lanham Act, holding that while good or bad faith on the infringer’s part is relevant and “highly important” in fashioning a remedy, bad faith or willfulness is not a strict requirement for the profits remedy. See Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. ___, 140 S. Ct. 1492 (2020). It is noteworthy that some versions of the legislation that led to the Lanham Act’s passage would have clarified that “‘there shall be no recovery of profits from any defendant whose adoption and use of an infringing mark was in good faith . . .,’” but this language was dropped as enacted. H.R. 13109, § 18, 70th Cong., 1st Sess. (1928); H.R. 13486, § 18, 69th Cong., 2d Sess. (1926); S. 2679, § 18, 68th Cong., 1st Sess. (1923). See Dreamwerks Prod. Group v. SKG Studio, 142 F.3d 1127, 1131 n.12 (9th Cir. 1998); Vector Products, Inc. v. Hartford Fire Ins. Co., 397 F.3d 1316, 1319 (11th Cir. 2005); Johnson & Johnson v. Carter-Wallace, Inc., 631 F.2d 186 (2d Cir. 1980); Parkway Baking Co. v. Freihofer Baking Co., 255 F.2d 641, 648 (3rd Cir. 1958). As the court observed in Parkway Baking, Section 3 of the Act of March 19, 1920, ch. 104, 41 Stat. 533, which was superseded by Section 43(a) of the Act of 1946, required a showing of wilfulness [sic] and intent to deceive. This proof of wilfulness [sic] made enforcement of Section 3 practically impossible. Parfumerie Roger et Gallet Société Anonyme v. Godet, Inc., 17 Trade-Mark Rep. 1, 2 (S.D.N.Y. 1926). Accordingly, in a bill introduced by Senator Ernst in 1928, S. 2679, 68th Cong., 2d Sess. § 30 (1925) the requirement of willfulness and intent to deceive had been stricken, and these elements were kept out in the Vestal Bill, H.R. 6248, 69th Cong., 1st Sess. § 36 (1926) and in the Lanham Bill. Id. at 648 n.7. As the court stated in Johnson & Johnson: The passage of [Section 43(a)] represented a departure from the common law action for trade disparagement and from the need to prove actual damages as a prerequisite for injunctive relief. This departure marked the creation of a “new statutory tort” intended to secure a market-place free from deceitful marketing practices. L’Aiglon Apparel v. Lana Lobell, Inc., 214 F.2d 649, 651 (3d Cir. 1954); Bose Corp. v. Linear Design Labs, Inc., 467 F.2d 304, 311 (2d Cir. 1972). The new tort, as subsequently interpreted by the courts, differs from the common law action for trade disparagement in two important respects: (1) it does not require proof of intent to deceive, and (2) it entitles a broad range of commercial parties to relief.

27

Id. at 189. 15 U.S.C. §§ 1114, 1125.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

136

Hannibal Travis

representations of fact, acts of unfair competition, and the like.28 Federal court jurisdiction is authorized regardless of the residence (diversity of citizenship) of the parties or the amount in dispute.29 As amended in 1996 and again in 1999, the trademark laws create a cause of action in certain circumstances against noncompetitive, nonconfusing actions in commerce that are likely to cause the loss of a trademark’s distinctiveness or to use it in bad faith in a domain name.30

iii. forms of justice and trademark’s aspirations Several forms of moral or social justice are potentially applicable to trademark disputes, as well as to other areas of law. Corrective justice explains or systematizes principles relating to the restoration of wronged parties to a position closer to that which they originally occupied.31 In some trademark and false designation of product origin cases, consumers and/or competing producers suffer a wrong, the former losing money in exchange for something they did not want and the latter losing a sale and perhaps a lifelong customer (and word-of-mouth purveyor).32 Distributive justice, as regulating just shares of scarce or endangered resources, may also justify aspects of trademark law, as described below.33 Just as in a scenario in which every person is allocated a predetermined plot of land or monthly basic income check, but one person trespasses on another’s plot or forges a signature on another’s check, if every person is entitled to use their own name or their town’s name as a trademark but one person uses the name or town belonging to another, distributive fairness would be threatened. Although the standards governing trademark distribution are considerably more complex than equal shares, disruptions of an assumedly fair initial distribution of trademark rights could be seen as distributive injustices. Rule utilitarianism and other conceptions of social justice may also endorse some laws regulating marks or advertising claims as part of a balanced regime for promoting social welfare via legal rules.34 In the trademark context, welfare potentially involves equitable access to opportunities for economic and social advancement as well as aggregate consumption, utility, or like measures.35 Irrespective of socio-economic status or background, anyone who invests the effort to imbue their products or services with unique or superior qualities can protect that 28 29 30

31

32

33

34 35

Id. Id.; see also 18 U.S.C. § 1338(b) (1948). Id. § 1125(c)–(d). The causes of action pre-dated the federal amendments to some degree, as similar relief could be had under existing federal or state laws regarding trademark infringement or dilution. See, e.g., Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q.2d (BNA) 1479 (W.D. Wash. Feb. 9, 1996); MTV Networks, Inc. v. Curry, 867 F. Supp. 202 (S.D.N.Y. 1992); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). See Wolfgang Kersting, Politics, Freedom, and Order: Kant’s Political Philosophy, in The Cambridge Companion to Kant 342, 249 (Paul Guyer ed., 1992); Richard A. Posner, The Economics of Justice 73 (1983). For a variety of examples, see Stephen Calkins, August Horvath, & John Villafranco, Consumer Protection Law Developments 728–41 (2009). For insightful discussions of concrete legal implications of one distributive justice theory, that of John Rawls, see Justin Hughes & Robert Merges, Copyright and Distributive Justice, 92 Notre Dame L. Rev. 513 (2016); Frank Michelman, In Pursuit of Constitutional Welfare Rights: One View of Rawls’ Theory of Justice, 121 U. Penn. L. Rev. 962 (1973); Robert Nozick, Anarchy, State, and Utopia 149–82 (1974). For the explication by Rawls himself, see John Rawls, A Theory of Justice (1971). For more radical but potentially more influential theories of distributive justice, see Alan Gilbert, An Ambiguity in Marx’s and Engels’s Account of Justice and Equality, 76 Am. Pol. Sci. L. Rev. 328 (1982); Derek Ryan Strong, Proudhon and the Labour Theory of Property, 22 Anarchist Stud. 52 (2014); Why Franklin Roosevelt’s ‘Four Freedoms’ Are Still Relevant Today (Editorial), The Nation, Jan. 25–Feb. 1, 2016, https://www .thenation.com/article/archive/why-franklin-roosevelts-four-freedoms-are-still-relevant-today. Cf. Mtima, Introduction, Symposium, supra note 9, at 573 (invoking similar “balanced” interests in copyright). See Mtima, Introduction, Symposium, supra note 9, at 269–70; cf. Margaret Chon, Global Intellectual Property Governance (Under Construction), 12 Theoretical Inq. L. 349, 358 (2011).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

137

investment (and the resulting customer preference) by using a trademark to distinguish their goods in the marketplace. An equitable chance to become wealthy by becoming or creating a brand supports a social justice view of trademarks; guaranteeing such a chance prevents a “what’s mine is mine but what’s yours is ours” dynamic from being perpetuated, especially as to oppressed and/or marginalized nations or groups.36 Mtima highlights several examples where African American athletes sued trading-card or video-game sellers, and received no recovery under Lanham Act or right of publicity theories where white athletes or singers (in part) might have been more successful in court, and two cases involving somewhat disparate treatment of singers, one African American, one not, although there were some differing facts.37 There may be reason, Mtima suggests, to utilize equitable or other doctrines to ensure a real equality of opportunity under IP law, or even to move towards equality of outcomes.38 Some market participants and legal scholars see a risk of disempowerment and exclusion when traditional agricultural or community knowledge or practices are appropriated as trademarks without consultation of those who developed the knowledge or practices or any sharing of the benefits of exclusive rights. Zenobia Ismail and Tashil Fakir cite the “Texmati” and “Jasmati” rice as U.S. trademarks evolving out of efforts to patent basmati rice strains, triggering outcries from farmers and others.39 Health products and natural so-called remedies are prime targets of this sort of tactic, with terms from developing countries’ traditional knowledge cropping up in U.S. trademarks, notably ayurvedic, neem, Rooibos, turmeric, kava, yoga, and others.40 An IP social justice consciousness might help courts or legislators address not only the conventional issues of corrective or distributive justice but also “piracy” of cultural or traditional “knowledge.”41 36

37

38 39

40

41

Lateef Mtima, What’s Mine Is Mine But What’s Yours Is Ours: IP Imperialism:, The Right of Publicity, and Intellectual Property Social Justice in the Digital Information Age, 15 SMU Sci. & Tech. L. Rev. 323 (2012). See id. at 325–26, 355–386 (contrasting Brooks v. Topps Co., 86 U.S.P.Q.2d (BNA) 1361 (S.D.N.Y. 2007), with Haelan Labs., Inc. v. Topps Chewing Gum, 202 F.2d 866 (2d Cir. 1953), and Roberson v. Rochester Folding Box Co., 64 N.E.2d 442, 451(N.Y. 1902), and contrasting Brown v. Elec. Arts, Inc. v. No. 2:09-cv-01598, 2009 U.S. Dist. LEXIS 131387 (C.D. Cal. Sept. 23, 2009), aff’d, 724 F.3d 1235 (9th Cir. 2013), with No Doubt v. Activision Publishing, Inc., 122 Cal. Rptr. 397 (Cal. Ct. App. 2011), and Keller v. Elec. Arts, Inc., 94 U.S.P.Q.2d (BNA) 1130 (N.D. Cal. 2010), and contrasting Laws v. Sony Music Entmt., 448 F.3d 1134 (9th Cir. 2008), with Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (3d Cir. 2008), and [perhaps] Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988), and Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. 1970)). The differing fact in Brooks as opposed to Haelan was that the former apparently brought suit outside the limitations period. See id. at 358. The differing fact in Laws as compared with Midler is that the defendants in Laws licensed a sample and did not use a song-alike singer to capture a famous voice singing the same composition for an ad to suggest an endorsement. 448 F.3d at 1135–36. The differing procedural fact in Brown as compared with Keller and No Doubt was that Brown was a Lanham Act case, whereas the latter two involved the right of publicity. 724 F.3d at 1240 n.2. There was also an unfair competition claim under state law in No Doubt; however, that might have been construed to reach similar conduct to the Lanham Act. Cal. Bus. Prof. Code 17200; see Cleary v. News Corp., 30 F.3d 1255, 1262–63 (9th Cir. 1994) (17200 and Lanham Act claims “congruent”). See Mtima, supra note 9, at 386. See Zenobia Ismail & Tashil Fakir, Trademarks or Trade Barriers? Indigenous Knowledge and the Flaws in the Global IPR System, 31 Int. J. of Soc. Econ. 173, 179–80 (2004). See, e.g., U.S. Trademark Reg. No. 2,066,984 (“Yoga Works”); U.S. Trademark Reg. No. 3,147,410 (“African Red Tea Rooibos”) (canceled); U.S. Trademark Reg. No. 4,412,365 (“Rooibos Robusto”); U.S. Trademark Reg. No. 4,510,742 (“Kava”); U.S. Trademark Reg. No. 5,116,296 (“Super Turmeric”); U.S. Trademark Reg. No. 5,298,559 (“Ayurvedic Healing”); U.S. Trademark Reg. No. 5,362,592 (“Neem Biotech”); U.S. Trademark Reg. No. 5,477,426 (“TurmericUSA”); U.S. Trademark Reg. No. 5,699,607 (“Neemorganics”); U.S. Trademark Reg. No. 5,699,568 (“Neem Active Toothpaste”); U.S. Trademark Reg. No. 5,818,149 (“Turmeric Power 400X”); U.S. Trademark Appl. Serial No. 87,509,219 (“Nano Ayurvedic Medicine”). See, e.g., Vandana Shiva, Protect or Plunder?: Understanding Intellectual Property Rights (2001); Madhavi Sunder, IP3, 59 Stan. L. Rev. 257 (2006); J. Janewa Osei-Tutu, A Sui Generis Regime for Traditional Knowledge: The Cultural Divide in Intellectual Property Law, 15 Marquette Intell. Prop. L. Rev. 147 (2011).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

138

Hannibal Travis

Trademarks and trade dress aid producers in achieving similar business and marketing objectives, but operate a little differently as intangible assets and objects of legal analysis.42 Both serve as “symbols” to consumers of certain product or service characteristics – including quality, production factors, geographical and managerial origin and control, etc. – and generate varying degrees of “commercial magnetism” and what used to be called “custom,” or habits of buying.43 To that extent, scholars have described trademark law as regulating consumers’ own mental operations and personal lives to a significant extent.44 It may be relevant to social and economic inclusion whether trademark law can assure a business or individual of a certain level of income associated with customer perceptions, or in other words goodwill. Many small businesses may fail due to lack of name recognition. A study of millions of new businesses in the 1980s found that 60 percent of new firms went out of business and that small size was a risk factor.45 Branding creates a type of power to communicate with or attract first-time or repeat business; courts refer to this as a trademark’s “magnetism.”46 In business or financial terms, goodwill represents future income or revenue from consumer loyalty or attention, often generated through advertising or acquiring other companies and their brands.47 Courts believe that misappropriation of brand equity could discourage new entrants from making substantial risky investments in product quality or aftermarket services.48 On a level playing field, entrepreneurs may obtain access to a wider customer base and can empower their enterprises and the surrounding community to participate actively in the marketplace. While many trademarks may promote social justice in the manner described, a few of them can also be unjust – in the view of some judges and scholars – depending upon how they are used and regulated by the courts. As Margaret Chon and Robert S. Chang explain in another chapter in this volume,49 to the extent that trademarks themselves traffic in or commodify harmful representations or epithets, there may be an injustice to those persons offended or degraded as a result.50 Judge Jimmie Reyna, of the U.S. Court of Appeals for the Federal Circuit, concluded that incentivizing the registration of disparaging or offensive trademarks could interrupt beneficial business activity, by analogy to other forms of racial or ethnic discrimination in places of public accommodation such as restaurants.51 On this theory, a trademark that has an

42

43 44

45

46

47 48 49

50 51

See Br. for Respondents, at 13, Two Pesos, Inc. v. Taco Cabana Int’l, Inc., 1992 U.S. S. Ct. Briefs LEXIS 382, *13 (U.S. brief filed 1992). Trade dress is unlike a traditional trademark in making up part of the presentation or “dressing” of the product or service, rather than its name or affixed logo, so that trade dress may include product shape or color scheme, product packaging, retail, or restaurant facility design, etc. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 770–75 (1992) (non-nonlinguistic components of brand identity and brand value are often known as trade dress). Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942). See Jessica Litman, Breakfast with Batman: The Public Interest in the Advertising Age, 108 Yale L.J. 1717 (1999); Hannibal Travis, The Battle for Mindshare: The Emerging Consensus that the First Amendment Protects Corporate Criticism and Parody on the Internet, 10 Virginia. J. L. & Tech. 3 (2005); Rebecca Tushnet, More Than a Feeling: Emotion and the First Amendment, 127 Harv. L. Rev. 2392 (2013). See B.D. Phillips & B.A. Kirchoff, Formation, Growth and Survival; Small Firm Dynamics in the U.S. Economy, 1 Small Bus. Econ. 65 (1989). See Margaret Chon, Trademark Goodwill as a Public Good, 21 Lewis & Clark L.R. 285–86 (2017). See also The Munters Corp. v. Matsui Am., Inc., 730 F. Supp. 790, 802 (N.D. Ill. 1989) (referring to “commercial magnetism of [plaintiff’s] mark”), aff’d, 909 F.2d 250 (7th Cir. 1990). See Chon, Trademark Goodwill, supra 46, at 285–86. See, e.g., Truck Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d 1210, 1215 (8th Cir. 1976). Chon & Chang, supra note 10; see also Fandiño, supra note 10 (comparative law discussion on disparaging trademarks). See Chon & Chang, supra note 10. See In re Tam, 808 F.3d 1321, 1380 (Fed. Cir. 2015) (Reyna, J., dissenting).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

139

exclusionary message may represent an injustice comparable to a biased denial of employment or of access of business premises to purchase goods or services.52 Trademark law is a complex field and no one theory may fully explain or justify the many quirks in its U.S. variant. Yet accounts of corrective and distributive justice do help us understand some basic trademark doctrines. Moreover, an awareness of the potential injustice of unequal or insufficient access to the trademark system and its mechanisms could inform judges’ and lawmakers’ attempts to codify and amend the more technical rules of the field. Analysis of perceived or actual exclusion from the marketplace due to the intended or unintended impacts of trademark claims could also be pertinent to the promotion of social justice, or at least the appearance thereof.

iv. issues of justice in trademark acquisition Trademark law commends itself to the attention of more business people than many other areas of law because it governs fairness in the struggle for a living. It overturns older common-law expectations, such as “buyer beware” and those that treated commerce as a ruthless domain of competition or even as an economic war in which there are no rules.53 Federal provisions attempt to allocate and rein in trademark assertions in order to balance various social interests. Rights are roughly proportional to investment by and awareness of by the registrant, with neither overclaiming of vague or unneeded marks nor theft of others’ brands being allowed.54 An applicant may register a qualifying mark if it pays the fee and intends to use the mark commercially.55 Without an intent to use it within a reasonable period of time, not even an unclaimed mark can be registered to the potential exclusion of others. Brand builders anchor marketing claims and strategies with trademarks and aspects of product configuration or site décor (trade dress, described below). In order to ensure a level playing field for others making marketing claims for their goods or services, U.S. law and many non-U.S. regimes deny protection for generic, merely descriptive, functional, or weakly brand-related words, phrases, images, and devices.56 While, for example, “Safari,” “Safari-style,” or “Safariland” might be commonly used for clothes and hats suitable for travels in undeveloped lands and nature reserves, 52

53 54

55

56

See id. at 1380–81 (citing Harris v. Forklift Sys., Inc., 510 U.S. 17 (1993); Katzenbach v. McClung, 379 U.S. 294, 299 (1964)). Harry Nims, The Law of Unfair Competition and Trademarks iii (2d ed. 1917). Chapter 22 of Title 15 of the U.S. Code governs federal trademark rights. Importantly, Section 1052 of Title 15 states that to be registrable on the Principle Register of trademarks, a trademark “by which” the goods of one person or firm – the applicant – “may be distinguished” from the goods of others shall be denied registration on that register unless the trademark is merely descriptive of the goods ((e)(1)), deceptively misdescriptive of them ((e)(2)), likely to cause confusion or mistake as used on the goods of the applicant with another trademark registered or actually used by another and not abandoned by that prior user ((d)), consists of the name or portrait/signature of a particular living person without their consent ((b)), or is otherwise made up of deceptive or otherwise improper text or graphics ((a)). 15 U.S.C. § 1052. 15 U.S.C. § 1112. The U.S. Patent and Trademark Office establishes classifications of trademarks by industry, but these are not intended to limit or extend substantive rights. Recall from Lateef Mtima, What Is Intellectual Property (And Why Should You Care About It Anyway?) – A Layperson’s Guide to Intellectual Property Law, Prolusion in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) the spectrum of trademark distinctiveness: generic terms manifest the good or service (“laptop computer” simply states what the product is) and thus are not distinctive as to source and cannot function as trademarks (as “Dell” or “Apple” do), otherwise only one supplier could accurately inform the public that the products it has for sale are computers. Descriptive terms describe an aspect of the product of service but can acquire consumer loyalty and recognition via long sales or extensive advertising or other such means, while suggestive, arbitrary, and fanciful terms are inherently distinctive and thus are eligible for use as trademarks without evidence of acquired recognition. See, e.g., Elliott v. Google, Inc., 860 F.3d 1151, 1156 (9th

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

140

Hannibal Travis

a manufacturer or retailer might develop a reputation and custom for quality products bearing that name.57 This kind of “generic” or “merely descriptive” term could not be protected under the common law and generally suffered the same fate under the 1905 Act and the Lanham Act, with the exceptions of marks in exclusive use for 10 years under the 1905 Act and very descriptive terms which have become synonymous with a producer or brand under the Lanham Act and which are not in common use as a category of thing or material for making things.58 In 2020, the Supreme Court addressed the public domain status of common terms. Most courts had held prior to 2020 that a generic term such as “lawyers” or “blinds” followed by the top-level domain name “.com” results in a commonly used designator of a type of retailer or service, or a generic compound term.59 In U.S Patent and Trademark Office v. Booking.com BV, the Supreme Court determined that a common word plus the “.com” suffix could be a descriptive compound term that deserves trademark protection upon evidence of brand awareness, or “secondary meaning.”60 Continuing a long-standing trend in the Court’s IP jurisprudence over at least two decades, the Court adopted a flexible approach to whether evidence of public perceptions and common usage of such a compound term was enough to prove it is generic and unprotectable.61 It rejected a proposed “per se” rule that [generic].com terms are generic. Words designed only for trademark purposes are more likely to be usable as a brand exclusively by their first adopter, as are common words “applied in an unfamiliar way” to a product or service – the latter being known as “arbitrary” marks.62 Even prior to the Lanham Act, a “suggestive” term, which “requires imagination, thought and perception to reach a conclusion as to the nature of goods,” could be registered without evidence of an acquired reputation or significance as a source or brand of goods.63 Like descriptive terms that develop brand equity, arbitrary and suggestive terms may not be registered by a second adopter in a way that causes confusion with another brand, a real person, or a place name such as that of a country, U.S. state, city, or neighborhood.64 When product packaging, retail site decoration, or product configuration performs the same identifying function as a trademark, it may be entitled to protection under the same principles.65 These nonlinguistic components of brand identity and brand value are often known as trade dress.66 A more efficient, cheaper, or inherently more attractive product configuration or

57 58 59

60 61 62 63 64

65 66

Cir. 2017); Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006); Ty Inc. v. Softbelly’s, Inc., 353 F.3d 528, 532 (7th Cir. 2003); King-Seely Thermos v. Aladdin Indus., 321 F.2d 577 (2d Cir. 1963). Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 5–8 (2d Cir. 1976). See id. at 9. See, e.g., Advertise.com v. AOL, LLC, 616 F.3d 974, 978–82 (9th Cir. 2010) (ADVERTISING.COM); In re Hotels. com, 573 F.3d 1300, 1304 (Fed. Cir. 2009) (HOTELS.COM); In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361–62 (Fed. Cir. 2009) (MATTRESS.COM); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1378 (Fed. Cir. 2007) (LAWYERS.COM); In re Eddie Z’s Blinds and Drapery Inc., 74 U.S.P.Q.2d 1037 (T.T.A.B. 2005) (BLINDSANDDRAPERY.COM); In re Martin Container Inc., 65 U.S.P.Q.2d 1058 (T.T.A.B.2002) (CONTAINER.COM); In re Cyberfinancial.Net Inc., 65 U.S.P.Q.2d 1789 (T.T.A.B.2002) (BONDS.COM). But see Booking.com BV v. U.S. Patent & Trademark Office, 915 F.3d 171(4th Cir. 2019), aff’d, 140 S. Ct. 2298 (2020) (BOOKING.COM protectable as descriptive, not generic); Trademark Registration No. 3,601,346 (ART.COM registered by Patent and Trademark Office). U.S. Patent and Trademark Office v. Booking.com BV, 140 S. Ct. 2298, 2303, 2310 (2020) (citing 15 U.S.C. § 1091(a)). See id. at 2307 & n.6, 2309 (Sotomayor, J., concurring). See Abercrombie, 537 F.2d at 11 & n. 12. See id. at 11. 15 U.S.C. § 1052(d)–(e); see also Sky International AG v. Sky Cinemas LLC, Appeal No. 21-1575 (Fed. Cir. Dec. 17, 2021) [not precedential], https://tinyurl.com/4mmr86tz. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 770 (1992). See INTA, Trade Dress (2022), https://www.inta/topics/trade-dress.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

141

package design generally cannot be exclusively owned.67 A part of the trade dress – or total image of a product – may inform the purchaser (or service visitor or buyer) that the product is of a certain type or quality of material or is suitable for use. However, such a sourceor quality-identifying color, graphic, or other characteristic may be protected anyway if it has a reputational or secondary meaning, such that consumers do in fact associate that characteristic with a specific supplier.68 The rules limiting arbitrary and suggestive trademarks and trade dress (or “inherently distinctive” assets in U.S. trademark jargon) may reflect a principle of justice or at least of public policy that a word or other resource that is essential for fair competition or effective marketing should not be exclusively controlled by one person or entity or its licensees.69 By comparison, trade dress that is primarily reputational or completely made up does not impact competitors’ ability to describe themselves, their products or services, the characteristics of available offerings, or consumers’ desires.70 As of late 2022, there are nearly 2.8 million registered U.S. trademarks.71 In recent years, there were more than 300,000 new registrations in the United States annually.72 In light of the fact that most English words and many surnames in use in the United States having been claimed as trademarks, it is possible that the cost of adopting a new trademark will rise due to conflicts with established trademarks, even over and above the rate of inflation and rising legal costs.73 A recent study of more than a million trademark applications in the United States found evidence of gender and ethnic differences in terms of registration success rates.74 African Americans, Hispanics, and Asian Americans accounted for a combined share of trademark registrations that was several percentage points below their share of the U.S. population, while women accounted for fewer than 40 percent of registrations but 51 percent of the population.75 Insofar as women are successful with their applications more often than men and African Americans, and Hispanics are statistically no less successful, the difference may be explained by the fact that women, African Americans, and Hispanics are less likely even to apply for trademark registration, 67

68

69 70 71

72

73

74

75

See Two Pesos, 505 U.S. at 775; Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 850 n.10 (1982). A functional bit of trade dress or product configuration would affect the cost or quality of the product in a way unrelated to its reputation; an example would be a patentable design that is innovative and more useful. See Qualitex Co. v. Jacobson Products Co., 514 U. S. 159, 164–65 (1995). Two Pesos, 505 U.S. at 764 n. 1, 769; Truck Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d 1210, 1218 (8th Cir. 1976); Restatement (Third) of Unfair Competition § 16 (1995). A famous example of trade dress would be the shape of a Coca-Cola bottle as contrasted with the shape of a bottle of Fiji water, Voss water, or Absolut vodka. See Two Pesos, 505 U.S. at 770–75. White Tower Sys., Inc. v. White Castle Sys. of Eating Houses Corp., 90 F.2d 67 (6th Cir. 1937). Trademarks Data Q4 2022 at a Glance, USPTO (2022), https://www.uspto.gov/dashboards/trademarks/main.dashxml (accessed Nov. 9, 2022). World Intellectual Property Organization, World Intellectual Property Indicators 2017: Trademarks 106 (2018), http:// www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2017-chapter3.pdf. See Barton Beebe & Jeanne C. Fromer, Are We Running Out of Trademarks? An Empirical Study of Trademark Depletion and Congestion, 131 Harv. L. Rev. 945 (2018). See Miriam Marcowitz-Bitton, Deborah Gerhardt, & W. Michael Schuster, An Empirical Study of Gender and Race in Trademark Prosecution, 94 S. Cal. L. Rev. 1407 (2022). See id. at 49, 56–61 (about 23 percent of all trademark registrations in 2015 went to these three minority groups). While the study did not actually report on the percentage of registrations issued to women, women were found to be only a few percentage points more likely than men to be successful with their trademark application, and this higher success rate could not substantially close the 32- to 68-point gap in women’s versus men’s applications, so that women probably secured fewer than 40 percent of registrations. At least 35 percent of all Americans were members of the African American, Hispanic, and Asian American groups in 2015, although including “others” this number may be as large as 37.7 percent. See U.S. Census Bureau, ACS Demographic and Housing Estimates: 2011–2015 (2017), https:// archive.vn/20200213004951/https:/factfinder.census.gov/bkmk/table/1.0/en/ACS/15_5YR/DP05/0100000US. This last figure fell to 60.5 percent by 2018. See Marcowitz-Bitton, Gerhardt, & Schuster, supra note 74, at 52.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

142

Hannibal Travis

although Asian Americans are more likely to apply and are “overrepresented,” the study found.76 If registration or other protection requirements in trademark law are overly costly or complex, the result might be unequal protection of the business equity of those without as much capital.77 Tightening the doctrines governing trademark acquisition to make trademarks more difficult to obtain might be objectionable from an IP social justice perspective in that it limits the ability of those traditionally excluded from certain markets from gaining a foothold in them. On the side of high hurdles to trademark registration, strict trademark acquisition standards help reserve common terms and descriptive phrases for anyone to use in his or her business. Allowing trademarks to issue indiscriminately or to be expanded indefinitely in terms of product or service coverage would be a barrier to access and self-empowerment in some contexts.

v. ip social justice in trademark use, transfer, and loss A trademark might be more or less difficult, as a matter of law, to use around the world. Someone using a mark in a different city or state from the first user might be able to argue that consumers will not associate the two distant businesses, and this is sometimes a complete defense, as the law was prior to the Lanham Act.78 Today, that assumption or presumption is modified if not repealed. Using the fiction that federal registration places competitors and/or the public on notice of a nationwide claim, the Lanham Act made trademarks instantaneously mobile – at the time of registration – to other states, despite nonuse in those states.79 This may serve the purposes of the Lanham Act to build a national economy at a higher uniform level of manufacturing quality and reliability of marketing claims, but it seems less just in corrective terms than common-law liability, which required a degree of wrongdoing on the part of the unauthorized user of a word, name, symbol, or device.80 In distributive terms, exclusivity may leave some proposed users of descriptive terms in new regions worse off. The scope of a trademark or series of marks relates to the social impact of trademark rights. The product and service markets covered by a mark affect whether justice may be served by prohibiting a new use of a mark or marks. A new business may do no tangible wrong to an existing trademark holder, such as by putting an existing trademark to use on a related but quite distinct product, such as toys when the trademark is used on competitions or events, or restaurants when the trademark is used on an alcoholic beverage.81 The new entrant in fact may benefit society greatly. Consumers might not be defrauded, the trademark holder might lose no business it would have enjoyed, and overall sales and levels of consumer satisfaction generally might be increased. The post-Lanham Act decisions, however, tend to impose liability 76 77

78

79

80 81

See Marcowitz-Bitton, Gerhardt, & Schuster, supra note 74, at 46–47, 56–61. See, e.g., K.J. Greene, Copyright, Culture & Black Music: A Legacy of Unequal Protection. 21 Hastings Comms. & Ent. L.J. 339, 354–57 (1999). See Dawn Donut Company v. Hart’s Food Stores, Inc., 267 F.2d 358, 362 (2d Cir. 1959) (citing Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916)). But see Note: Territorial Limitations in Unfair Competition, 6 Colum. L. Rev. 349, 349–50 (1906) (equity will protect a trademark from infringement “without territorial limitation”) (citing Derringer v. Plate, 29 Cal. 293 (1865)). 15 U.S.C. § 1072. Prior users might be able to perpetuate their businesses in their zone of operations or any natural expansion to it, or even to block the subsequent registration because the applicant for federal registration is disqualified from registration on the Principal Register by invading a prior user’s zone. See, e.g., Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526 (Fed. Cir. 1987); In re Beatrice Foods Co., 429 F.2d 466 (C.C.P.A. 1970); Boi Na Braza, LLC v. Terra Sul Corp., 110 U.S.P.Q.2d. 1186 (TTAB 2014). See Dawn Donut, 267 F.2d at 362. Compare Two Pesos, 505 U.S. at 769–70. See, e.g., James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266 (7th Cir. 1976) (restaurants and drinks); International Kennel Club, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1085, 1089 (7th Cir. 1988) (toys and competitions).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

143

in situations in which consumers may be “mistakenly assuming that [the initial trademark user] is somehow associated with [the new one] or has consented to the mark’s use.”82 Even as to some unregistered trademarks, the Lanham Act sometimes protects a mark in new contexts without much additional labor. This may be quite costly to existing productive firms in differing contexts, but it may have the potential benefit of avoiding potential future confusion or harms to the brand, while increasing the potential exclusive monetary returns on investments in product quality, customer service, etc., which may have the effect of hiking investment. A third issue relating to justice in trademark transfers involves sales and licenses of rights. A strict rule in this regard might be that because trademarks are intended to reassure customers about quality and to incentivize investments in it, a transfer of the right to use a trademark without a transfer of the underlying assets used to produce and distribute (or even simply to service) the product is void as potentially creating more deception than it resolves.83 A less strict rule might state that some transfer of “goodwill,” meaning the right to and the loyalty or custom arising from the carrying on the business traditionally done using the mark, is sufficient to create a cognizable transfer of trademark rights. This has often been endorsed in post-Lanham Act cases.84 A very lax rule, not typically accepted in the United States, is that trademarks can be sold or licensed “in gross,” without any elements of the businesses with which they are linked. Each of these three rules might embody a certain form of justice; the first would focus trademark law on wrongs done to consumers and hardworking sellers, the second would do the same to a somewhat lesser extent, and the third would vindicate justice as between the trademark buyer and seller/licensor but at the arguable expense of the consuming public and social utility. Trademark abandonment also reflects a balancing of private and public interests in trademark assertions. Section 45 of the Lanham Act provides that acts or omissions of a trademark owner that result in a mark losing its trademark significance are an abandonment of the mark.85 An intention to resume use within the reasonably foreseeable future may salvage a mark from a lack of actual use, while “token use” may not be enough.86 Establishing rules as to buying, selling, or simply taking a trademark of another could alter the delicate balance between access and exclusivity that the law erects. Making it too easy to transfer trademarks might result in unnecessary barriers to market entry and economic inclusion, for purchasers of trademarks could block competitive use when there may be little or no public interest in doing so to prevent confusion or mistake. Tightening transfer rules could halt valuable transactions that could enable entrepreneurs to build financial wealth by selling their brand names, package or retail designs, or other protected designations of product quality and origin.

vi. trademark enforcement and corrective and social justice Whereas most of this chapter has analyzed the social justice implications arising from trademark protectability and ownership, most of the rest examines whether justice is served when 82 83

84

85 86

International Kennel Club, 846 F.2d at 1088. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F. 2d 947, 956 (7th Cir. 1992) (discussing but not adopting this rule) (citing Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 676 (7th Cir. 1982)). See id. (citing Visa, U.S.A., Inc. v. Birmingham Trust Nat’l Bank, 696 F.2d 1371, 1377 (Fed. Cir. 1982)); Visa, 696 F.2d at 1375 (citing 15 U.S.C. § 1060 (1976); United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918)). 60 Stat. 427 (1946). See Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 537 (4th Cir. 2000); Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010); Specht v. Google Inc, 758 F. Supp. 2d 570 (N.D. Ill. 2010), judgment entered, 2011 WL 4737179 (N.D. Ill. Oct. 6, 2011), aff’d, 747 F.3d 929 (7th Cir. 2014).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

144

Hannibal Travis

compulsory judicial process compels an attempted entrant into the marketplace to cease using a trademark or to pay a monetary sum for having used it. Contemporary trademark law tends to presume that unauthorized use of a valid trademark can inflict serious harm, which even a substantial award of money as damages may not fully repair.87 Still, overprotecting trademarks against use may violate the freedom of commerce and squash small businesses trying to compete with a company, repair its goods, or discuss it. The cause of action of trademark infringement, the allegation that the use of a mark is likely to cause confusion in the marketplace, is typically analyzed using a multi-factor test. The test calls upon courts and litigants to examine the record evidence concerning (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) any actual confusion, (4) the defendant’s good faith in adopting his mark, and (5) the sophistication of the buyers.88 Other decisions also analyze, among other evidence, facts relating to “proximity [and types] of the goods,” “marketing channels used,” and “likelihood of expansion of the product lines.”89 Trademark dilution is an even more capacious and ill-defined concept, assembled out of two or more multi-factor tests.90 The boundaries of permissible trademark or trade dress imitation, reuse, and the like are therefore established by loose standards rather than bright-line rules. This body of precedent, which fails to set clear guidelines for assessing what is infringing, provides courts with a chance to correct a wide variety of potential injustices. It may also result in the injustice of excessive liability. Trademark liability threatens social justice by potentially monopolizing parts of our language, color palette, packaging alternatives, and even product shapes.91 As mentioned, some trademarks remove from the competitive process certain descriptive words/phrases, acts of comparative advertising, or sorts of product or packaging innovation that should be open to everyone.92 The introduction of dilution and cybersquatting remedies into the Lanham Act (and into state codes) increases the uncertainty and risks to competing firms, particularly small ones. Trademark dilution laws prohibit the commercial use of a trademark even in some different

87

88

89 90

91

92

See generally American Society for Testing & Materials v. Public.Resource.Org, 896 F.3d 437, 455–58 (D.C. Cir. 2018); Adidas Am., Inc. v. Skechers USA, Inc., 890 F. 3d 747 (9th Cir. 2018); 2Die4Kourt v. Hillair Capital Mgmt., LLC, 692 Fed. App’x 366, 369 (9th Cir. 2017); Commodores Ent. Corp. v. McClary, 648 F. App’x 771 (11th Cir. 2016); Herd Reed Enterprises, LLC v. Florida Ent. Mgmt., 736 F.3d 1239 (9th Cir. 2013); Abraham v. Alpha Chi Omega, 708 F.3d 614, 627 (5th Cir. 2013); Boston Duck Tours, L.P. v. Super Duck Tours L.L.C., 531 F.3d 1, 12–14 (1st Cir. 2008); North American Med. Corp. v. Axiom Worldwide, 522 F.3d 1211, 1228 (11th Cir. 2008); Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377, 382 (6th Cir. 2006); Mark Lemley, Did eBay Irreparably Injure Trademark Law?, 92 Notre Dame L. Rev. 1795, 1803–1805 (2016); Hannibal Travis, Enjoining the Cloud: Equity, Irreparability, and Remedies, 64 Villanova L. Rev. 393, 393, 424–26 (2019); cf. Microsoft Corp. v. Motorola, Inc., 871 F. Supp. 2d 1089, 1102–03 (W.D. Wash. 2012) (“[L]oss of market share, customers, and access to potential customers [qualifies as] irreparable harm”). See Abercrombie & Fitch, 537 F.2d at 11 (citing Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961)). Multi Time Machine v. Amazon.com, Inc., 804 F.3d 930, 935 n.1 (9th Cir. 2015). See, e.g., 15 U.S.C. § 1125(c)(1)(A)–(H); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 105–106 (2d Cir. 2009) (citing Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999)); Avery Dennison Corp. v. Sumpton, 189 F. 3d 868, 875–76 (9th Cir. 1998); Knowles-Carter v. Feyonce, Inc., 347 F. Supp. 3d 217 (S.D.N.Y. 2018). See, e.g., Mark Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 108 (1998); Glynn Lunney Jr., Non-Traditional Trademarks: The Error Costs of Making an Exception the Rule, in The Protection of Non-Traditional Trademarks: Critical Perspectives 217–34 (Irene Calboli & Martin Senftleben eds., 2019); Glynn Lunney Jr., Trademark Monopolies, 48 Emory L.J. 367 (1999); David McClure, Trademarks and Competition: The Recent History, 59 L. and Contemp. Probs. 13 (1996); cf. Felix Cohen, Transcendental Nonsense and the Functional Approach, 35 Colum. L. Rev. (1935). Cf. Beebe & Fromer, supra note 73.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

145

markets, by removing (in 15 U.S.C. § 1125(c)(1)) the requirement of a likelihood that consumers will be confused, deceived, or mistaken as to source, sponsorship, etc. Trademark law’s failure consistently to assess violations by adopting the perspective of a reasonable person in actual marketplace conditions may impose excessive liability and reduce competition in the economy to the detriment of consumers and therefore to aggregate welfare. Finding infringement to be based on 15 percent, 10 percent, or even 0 percent actual confusion rates as determined by survey evidence – given that trademark infringement requires only a likelihood of confusion – permits the inattention or mistakes of a “small minority of consumers” to dictate the options that are available to the consumer of average or above-average comprehension.93 Like false endorsement claims in general, relaxing the requirement of confusion as to source in trademark infringement cases may help persons who earn less than the norm, due to membership in a disadvantaged group, to boost their incomes.94 Although many fans of Outkast might not believe that racial justice activist Rosa Parks authored or supported the song whose title bears her name, holding such a use of her name to be subject to the Lanham Act might allow her to share in the added “marketing power” that the title has.95 Allowing athletes to profit from traditional or digital art using their likenesses would achieve something similar, even though a reasonable patron of paintings or computer graphics might not believe that every depiction of a person occurs with his or her endorsement or sponsorship.96 Granting musicians or actors a right – even an inheritable one – to prevent the use of their portraits on T-shirts could also ensure their (or their heirs’) inclusion in economies of fandom, merchandise, and memorabilia that might otherwise be seized by others.97 Trademark enforcement could also provide a model for increasing the accountability of the tech giants, or “online platforms,” to their users and third parties. Individuals and small businesses have long sought an enforceable right of fair access to search engines, e-commerce sites, and other platforms, for example rights of access in order to reply to false accusations or privacy violations,98 rights of transparency in order to exploit their own advertising and 93

94

95 96

97 98

See Daniel Gervais, Who Cares About the 85 Percent? Reconsidering Survey Evidence of Online Confusion in Trademark Cases, 96 J. Pat. Trademark Off. Soc’y 965 (2014). Cf. Chon & Chang, supra note 10, at xx. A false endorsement claim may be based upon the unauthorized use of a statement of fact or misleading description in connection with a product or service, if it tends to create consumer confusion or mistake concerning the plaintiff’s affiliation or sponsorship of the product or service. See, e.g.., Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059 (9th Cir. 2015); Jennifer Insley-Pruitt, United States: Ninth Circuit Court of Appeals: Use of Deceased Celebrity’s Image on T-Shirts Constitutes False Endorsement Under Lanham Act, Mondaq, June 10, 2015, https://tinyurl.com/insleypruitt; Kimberly Rubin, The Key to Being a Good Referee: The Call the Ninth Circuit Missed When Evaluating False Endorsement Claims, 64 Emory L.J. 1389 (2014). Compare also In re Jackson, 972 F.3d 25 (2d Cir. 2020) (use of hip hop artist’s name, voice, and song title in connection with another artist’s mixtape containing unauthorized sample of first artist’s song was not a violation of artist’s Connecticut right of publicity which, like § 1125(a) of Lanham Act, protects against “false endorsements”). Parks v. LaFace Records, 329 F.2d 437, 453–54 (6th Cir. 2003). See Davis v. Elec. Arts, Inc., 775 F.3d 1172 (9th Cir. 2015) (involving effort by former professional football players to be compensated for – or perhaps to enjoin and control – uses of their images in historical mode of interactive digital football game); University of Ala. Bd. of Trustees v. New Life Art, 683 F.3d 1266, 1275–79 (11th Cir. 2012) (involving challenge by athletic program’s governing body to paintings of successful football team); ETW Corp. v. Jireh Publ., Inc., 332 F.3d 915, 925 (6th Cir. 2003) (involving company of professional golfer Tiger Woods seeking compensation for or control over use of his likeness in paintings offered for sale by defendant). See, e.g., Fifty-Six Hope Road Music, 778 F.3d 1059; Rubin, supra note 94. See, e.g., Getachew v. Google, Inc., No. 12-1237, 2012 WL 3217611 (10th Cir. Aug. 9, 2012); Wilson v. Twitter, Inc., No. 3:20-CV-0495, 2020 WL 5985191 (S.D. W.V. Sept. 17, 2020), report and recommendation adopted by 2020 WL 5983900 (S.D. W.V. Oct. 8, 2020); Domen v. Vimeo, Inc., 433 F. Supp. 3d 592 (S.D.N.Y. 2020); Ebeid v. Facebook, Inc., No. 18-CV-07030, 2019 WL 2059662, at *5 (N.D. Cal. May 9, 2019); Dreamstime.com, LLC v. Google, LLC,

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

146

Hannibal Travis

transactional data, and rights for an explanation or other remedy in the event of account termination or the downranking of their offerings or site. For example, should Amazon be subject to a court order enjoining trademark infringement or demanding the destruction of counterfeits, because by providing a marketplace storefront to the infringer, it acts “in concert” or “in collusion” with it?99 In a dissenting opinion, Judge Carlos Bea of the Ninth Circuit concluded that where counterfeiters or other infringers use a platform such as Amazon to generate misleading search results containing the plaintiff’s trademark— which are misleading because the trademarked product is not actually offered on the platform— the platform itself may be liable for “initial interest confusion” created by search results, and particularly for its own failure to notify Internet users that it does not have products lawfully sold using the mark.100 By analogy, it would seem that a platform could be liable to its own marketplace accounts or content providers (website authors, social media photo or message posters, video and music/ podcast uploaders, etc.) for confusing listings it knows about.101 However, the majority of the Ninth Circuit panel found that confusion was “very unlikely” because the Amazon listings themselves did not contain the plaintiff’s trademark, regardless of whether Amazon warned consumers of the plaintiff’s absence.102 Similarly, I have argued that great care must be taken in such cases, however, to ensure due process – not only for the platform but for its legitimate users – by making sure that the elements of a trademark claim are pleaded and proven with respect to each listing subject to injunctive or other relief. Punishing legitimate listings reduces the public’s access to truthful information while harming the flow of commerce and the

99

100 101

102

No. 5:18-cv-01910, 2019 WL 341579 (N.D. Cal. Jan. 28, 2019), further proceedings at 2019 WL 2372280 (N.D. Cal. June 5, 2019); Abid v. Google LLC, No. 3:2018-cv-0981, 2018 WL 3458546 (N.D. Cal. July 18, 2018); E-ventures Worldwide, LLC v. Google, Inc., No. 2:14-cv-646, 2016 WL 2758889 (M.D. Fla. May 12, 2016), subsequent proceedings at 2017 WL 2210029 (M.D. Fla. Feb. 8, 2017); Kinderstart.com LLC v. Google, Inc., No. 5:06-cv02057, 2006 U.S. Dist. LEXIS 82481 (N.D. Cal. 2006); Langdon v. Google, Inc., 474 F. Supp. 2d 622 (D. Del. 2007); Search King, Inc. v. Google Tech., Inc., No. Civ-02-1457-M, 2003 U.S. Dist. LEXIS 27193 (W.D. Okla., Jan. 13, 2003); Teatotaller, LLC v. Facebook, Inc., 242 A. 3d 814 (N.H. 2020); Frank Pasquale, Rankings, Reductionism, and Responsibility, 54 Cleveland St. L. Rev. 115 (2007); Frank Pasquale, Battling Black Boxes, Madisonian Theory, Sept. 21, 2006, http://madisonian.net/archives/2006/09/21/battling-black-boxes/. For an interesting twist, search engines began openly ignoring court orders to remove false or privacy-invasive search results, on the strength of a Seventh Circuit ruling and general principles of due process and civil procedure. See Eric Goldman, When Should Search Engines Ignore Court Orders to Remove Search Results? (Forbes Cross-Post), Technology and Marketing Blog, Sept. 4, 2013, https://blog.ericgoldman.org/archives/2013/09/when_should_sea.htm (maintaining that “a Google lawyer explained that Google looks for any reason to keep content in their search index” and that “some reputation management attorneys recently claimed that Bing has been categorically rejecting their court orders”). See True Manufacturing Co., Inc. v. Boys, No 6:16-cv-63, 2016 WL 11028258, at *7 (M.D. Fla. Dec. 2, 2016); Travis, supra note 87, at 416–21 (2019); cf. Cisco Sys., Inc. v. Shenzhen Usource Tech. Co., No. 5:20-cv-4773-EJD, slip op. at 44 (N.D. Cal. July 20, 2020), https://scholar.google.com/scholar_case?case=4746370506149506885 (seemingly assuming that search engines or web hosts become complicit somehow in trademark infringement, and therefore ordering them to de-list infringing website ads). Multi-Time Machine, 804 F.3d at 944 (Bea, J., dissenting). See Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 150–152 (4th Cir. 2012) (noting that an advertiser on Google might have a claim against the search engine for continuing to sell ad space to infringers of plaintiff advertiser’s trademark); Travis, supra note 87, at 398–99, 416–17 (collecting other cases); Courtney Brown, Caught in a Bind: Reassuring Judicial Authority to Bind Non-Party Search Engines Under Rule 65 in Counterfeit Goods Cases, 32 Cardozo Arts & Ent. L.J. 257 (2013); cf. Cisco, supra note 99; Chanel, Inc. v. 8creplicachanel.com, No. 19-61719CIV, slip op. at 4 (S.D. Fla. Aug. 28, 2019), https://scholar.google.com/scholar_case?case=590948470506539067 (accessed Nov. 9, 2022); Tapestry, Inc. v. 2012coachoutlets.com, No. 17-24561-Civ., 2018 WL 704864 (S.D. Fla. Jan. 31, 2018), https://scholar.google.com/scholar_case?case=13069977084079438950 (accessed Nov. 9, 2020); Am. Bridal & Prom Indus. Ass’n v. Affordablebridaldresses.com, No. 3:14-cv-2311, slip op. (D.N.J. June 3, 2015), https:// scholar.google.com/scholar_case?case=1182849356553472486. Multi-time Machine, 804 F.3d at 938–40.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

147

freedom of expression.103 At stake are procedural justice and the social justice ideal of fair access to the marketplace. In several recent cases, trademark or right-of-publicity principles have been asserted against online use or misuse of the name or likeness of a living individual. In Hepp v. Facebook, Karen Hepp successfully opposed Facebook’s argument that it is immune as an intermediary under federal law from a claim that Ms. Hepp’s image was unlawfully used in ads to promote dating services and other ventures that she did not voluntarily endorse.104 Although the right of publicity rather than trademark rights were at issue, the court held that the “trademark-like protections for likenesses” that Ms. Hepp invoked were outside the scope of intermediary liability under Section 230 of the Communications Decency Act.105 In another case, Elizabeth Ordonez utilized a trademark that she obtained in her stage name to remedy the defendants’ attempt to appropriate the name for their own benefit, their going so far as to take control of Ms. Ordonez’s Twitter account and to cause her press kit video on YouTube to be removed.106 Such cases illustrate how trademark and related rights under the right of publicity, contract, or tort law help preserve valuable reputational assets in the online environment.

vii. limiting trademarks for distributive justice purposes Trademarks may negatively impact small distributors and retailers who do not benefit from exclusive sales arrangements or distribution contracts. In cases where goods are sold under trademarks in different countries at different prices, small and medium-sized enterprises (SMEs) may enjoy an opportunity to conduct “parallel imports” into higher-priced jurisdictions. If the trademark owner has not agreed expressly or impliedly to permit the entry of goods into a certain jurisdiction, it may have a trademark action against said parallel importers.107 Even if the owner allows imports into a territory, but the importer violates conditions or restrictions on further distribution that it agreed to at the time of purchase, the trademark owner may still have a claim. Extensive trademark rights could inhibit SMEs from solving social problems relating to disparate access to medicines, medical devices, or sources of information.108 The brand names of pharmaceuticals could be so tied in consumers’ minds to the curative effect of the compound sold under those names that generic manufacturers find it difficult to gain market share with their lower-priced alternatives.109 Likewise, the Federal Trade Commission concluded that a settlement agreement protecting certain terms related to 800-CONTACTS trademarks from 103

104 105 106

107

108

109

Travis, supra note 87, at 395–99, 405, 407, 413, 418, 456–57. See also Pow! Entm’t., LLC v. Individuals, Corps., Limited Liability Cos., Partnerships, & Unincorporated Ass’ns Identified on Schedule A Hereto, No. 20 CV 1324, slip op. at 6 (N.D. Ill. Aug. 26, 2020), https://scholar.google.com/scholar_case?case=9561964972674083230; Hunter Killer Prods., Inc. v. Zarlish, No. 19-00168 LEK-KJM, slip op. at 8 (D. Haw. June 15, 2020), https://scholar.google.com/ scholar_case?case=11036781183155820235; BMW of N. Am, LLC v. Issa, No. 2:19-cv-220, 2020 WL 1325278, at *18–23 (D. Utah Mar. 20, 2020). But cf. Am. Chem. Soc’y v. John Does 1–99, No. 1:17-cv-00726 (E.D. Va. injunction granted Nov. 3, 2017), https://torrentfreak.com/images/sciinjunc.pdf; Elsevier, Inc. v. Sci-Hub, No. 15-cv-4282, 2017 WL 3868800 (S.D.N.Y. June 21, 2017). Hepp v. Facebook, 14 F.4th 204 (3d Cir. 2021). Id. at 212–15. See Ordonez v. Icon Sky Holdings LLC, No. 10-60156-CIV, slip op. (S.D. Fla. Aug. 30, 2011) https://scholar.google .com/scholar_case?case=354483543806. See Omega SA v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir. 2015); Zino Davidoff v. A&G Imports, 2002 E.T.M.R. 9 (E.C.J. 2001); Davidoff v. A&G Imports, Ltd., [1999] 2 C.M.L.R. 1056 (Ch. D. 1999) (Eng.). See, e.g., Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on Intellectual Property, Innovation, and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies: The Role of Law 78 (Megan Carpenter ed., 2012). See Geneva Pharms. Tech. Corp. v. Barr Labs., 386 F.3d 485, 497–98 (2d Cir. 2004).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

148

Hannibal Travis

competitive “keyword”-based Internet advertising campaigns (think Google’s AdWords) raised the price of contact lenses for consumers because competitors could not advertise their lowerpriced lenses in search engine results.110 Small repair shops are also threatened by copyright, patent, and trademark claims of equipment and telecommunications services providers.111 The right to repair is trampled upon as the “use” in commerce of lawfully purchased components by those other than their initial purchasers – simply to repair or upgrade devices – is characterized as a rights infringement.112 On the side of fewer limitations on trademark rights, SMEs may use strong patents and trademarks to compete more vigorously with larger businesses. In the patent context, this trend is supported by survey evidence that startups use patents to secure loans, thereby raising capital that might be unavailable with physical assets alone as a securitization mechanism.113 The National Science Foundation and National Center for Science and Engineering Statistics surveyed businesses in 2008 on the topic of reliance on IP rights. The businesses who conduct research and development activity – rather than merely selling others’ products or services – reported that trademarks were very important to them more than 30 percent of the time, while 60 percent reported that trademarks were very or somewhat important to them.114 Trade secret rights represented the only category of rights that was more important to these firms than trademarks, while copyrights and patents were reported to be less important. This does not necessarily mean that copyrights or patents are unimportant or less valuable than trademarks, however, because trademarks may simply be more vital to a broader swath of businesses outside of the content or high-tech industries. Any kind of business can benefit from trademark’s source recognition function in the commercial marketplace. Nonmanufacturing firms are the most likely to list trademarks as their most important form of IP, while information industry firms report that copyrights are slightly more important to them.115 Trademarks are surely vital for firms that are going public in the wake of large financial losses despite strong

110

111

112

113

114

115

See Harrison Frahn, Wyatt Honse, & Raul Duran, Search and You Will Find: FTC Strikes Down Settlement Agreements Prohibiting Use of Trademark Terms in Paid Online Search Algorithms, California Lawyers’ Association Antitrust Unfair Competition and Privacy Section (2019), https://calawyers.org/antitrust-ucl-and-privacy/search-andyou-will-find-ftc-strikes-down-settlement-agreements-prohibiting-use-of-trademark-terms-in-paid-online-search-algo rithms/ (accessed Aug. 1, 2000) (citing In the Matter of 1-800 Contacts, Inc., F.T.C. No. 9372, slip op. at 3–49 (Nov. 7, 2018)). See Karl Storz Endoscopy-America v. Surgical Tech., 285 F.3d 848, 855–57 (9th Cir. 2002) (while stating that sale of repaired equipment would not be a use in commerce under Lanham Act, court noted that depending on extent of alterations to equipment, and especially a “rebuild,” there may be an infringing use without a trademark license); Leah Chan Grinvald & Ofer Tur-Sinai, Intellectual Property Law and the Right to Repair, 88 Fordham L. Rev. 63, 67–68 (2019) (citing Jason Koebler, DHS Seizes iPhone Screens from Prominent Right to Repair Advocate, Motherboard (May 11, 2018), https://motherboard.vice.com/en_us/article/evk4wk/dhs-seizes-iphone-screens-jessa-jones (accessed Aug. 1, 2019)). The issue of whether loading copyrighted software or rebuilding patented devices for maintenance purposes constitutes infringement has generated a great deal of scholarly analysis and dozens of judicial decisions. See, e.g., 1 E-Commerce and Internet Law 4.03[2] (2020 update), https://1.next.westlaw.com/Document/ I5e0140a74d5a11dfbd01ac712b6c86da/View/FullText.html; Robert Matthews, Jr., 2 Annotated Patent Digest §§ 11:59–11:81 (Thomson Reuters Oct. 2020), https://1.next.westlaw.com/Document/I86e27e01a06d11d98ef4a4183f77fc8a/ View/FullText.html. See Grinvald & Tur-Sinai, supra note 111, at 78–127 (suggesting that acquisition – by legal mandate if necessary – and use of authentic parts to repair trademarked goods is part of “right to repair” them). Yael Hochberg, Carlos Serrano, & Rosemarie Ziedonis, Patent Collateral, Investor Commitment, and the Market for Venture Lending 130 J. of Fin. Econ. 74 (2018), Nat’l Bureau of Econ. Research, Working Paper No. W20587, http:// ssrn.com/abstractid=2510594. See John Jankowski, Business Use of Intellectual Property Protection Documented in NSF Survey, NSF Issue Brief No. 12-307 (2012), https://wayback.archive-it.org/5902/20181003230954/https://www.nsf.gov/statistics/infbrief/nsf12307/. See id.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

149

revenue growth, such as Pinterest, Snap, Lyft, or Tesla (or Amazon, Uber, or Spotify).116 Brand value may reassure investors in initial public offerings that subscribers or purchasers will remain loyal and that more will follow, transforming the company into a profitable giant in the future, whether near future or far.117 In the market for initial coin offerings, largely Ethereum-based cryptocurrencies with various technical white papers and use cases, brand value and code may be the bulk of the enterprise other than a small staff and promotional writings and videos.118 Limiting trademarks may also be one way of preserving the flexibility of meanings, perceptions, and values that is necessary in a democracy. Freedoms of speech and of the press guarantee individuals and companies rights to make truthful claims about pricing, quality, affiliation, or other product or service characteristics.119 The right to transform the meanings of established trademarks must exist if trademark law is to fulfill its initial aspirations of correcting injustices in the misleading marketing of goods while avoiding constitutional questions about controlling cultural speech.120 Scholars have extensively studied the social impact of trademarks, and these studies are not limited to the prominent controversy regarding the impact of derogatory trademarks and brands on members of groups that have historically been persecuted on the basis of their race, ethnicity, religion, gender, or sexual identity. At least one court was inclined to cancel a trademark based on a term for Native Americans that many of them find disparaging and offensive, and which the professional football team that had used the trademark for decades voluntarily agreed to drop,

116

117

118

119

120

See Arjun Reddy, Lyft Is Wildly Unprofitable and Lost $911 Million, Business Insider (Mar.30, 2019), http://www .businessinsider.com/initial-public-offering-how-unprofitable-companies-fared-2019-3; Matthew Vincent, LossMaking Tech Companies Are Floating Like It’s 1999, Financial Times, June 15, 2019, https://www.ft.com/content/ c5705ca2-605c-11e9-9300-0becfc937c37. Cf. Maureen Farrell, Snapchat Parent Files for $25 Billion IPO, Wall St. J., Nov 15, 2016, https://www.wsj.com/ articles/snap-begins-the-ipo-process-1479244471; Rebecca Ungarino, Lyft Went Public at a $24 Billion Valuation. Here’s How that Valuation Compares to Other Tech Names at IPO, Business Insider (Apr. 2019), https://www .businessinsider.com/lyft-stock-how-valuation-compares-to-other-tech-names-at-ipo-2019-4. Cf. David Florysiak & Alexander Schandlbauer, The Information Content of ICO White Papers, Paper presented to EFMA Annual Meeting in the Azores (2019), https://efmaefm.org/0EFMAMEETINGS/EFMA_ANNUAL_ MEETINGS/2019-Azores/papers/EFMA2019_0509_fullpaper.pdf; Evgeny Lyandres, Berardino Palazzo, & Daniel Rabetti, Do Tokens Behave Like Securities? An Anatomy of Initial Coin Offerings, Working Paper presented to IDC School of Business Annual Conference (2019), http://www.idc.ac.il/en/schools/business/annual-conference/ Documents/2019-annual-conference/do-tokens-behave-like-securities-lyandres.pdf; Oscar Williams-Grut, Only 48% of ICOs Were successful Last Year: — But Startups Still Managed to Raise $5.6 Billion, Business Insider (Jan. 31, 2018), https://www.businessinsider.com/how-much-raised-icos-2017-tokendata-2017-2018-1. See Matal v. Tam, 137 S. Ct. 1744, 1769 (2017) (Thomas, J., concurring in the judgment) (citing 44 Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 518 (1996)); cf. id. at 1763–64 (opinion of the Court) (even a regulation dealing solely with commercial speech may violate First Amendment if it is not written to be proportionate to government interest regulation serves, because trademarks may express ideas in slogans); San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 573 (1987) (Brennan, J., joined by Marshall, J., dissenting) (“Language, even in a commercial context, properly belongs to the public, unless the Government’s asserted interest is substantial, and unless the limitation imposed is no more extensive than necessary to serve that interest.”); University of Ala., 683 F.3d at 1276 (creative goods “entitled to fill protection under the First Amendment” if they “do more than ‘propos[e] a commercial transaction’”) (quoting Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n of N.Y., 447 U.S. 557, 562 (1980)); ETW Corp. v. Jireh, 332 F.3d at 937 n.18 (6th Cir. 2003) (purveyors of creative goods, such as video cassettes, picture books, or paintings are entitled to make use of trademarks that have “artistic relevance” in sales promotions); Rogers v. Grimaldi, 875 F. 2d 994, 1001 (2d Cir. 1989) (truthful claims about film content or quality entitled to First Amendment protection against trademark-related censorship attempts). See Rochelle Cooper Dreyfuss, Reconciling Trademark Rights and Expressive Values: How to Stop Worrying and Learn to Love Ambiguity, in Trademark Law and Theory: A Handbook of Contemporary Research 268–80, 282 (Graeme B. Dinwoodie & Mark D. Janis eds., 2007); Sonia Katyal, Semiotic Disobedience, 84 Wash. U. L. Rev. 489 (2006).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

150

Hannibal Travis

after pressure from sponsors.121 The Supreme Court intervened in this line of jurisprudence to tilt the scales towards the freedom to adopt a trademark and register it federally even though some may find it disparaging, at least where the trademark is not part of a discriminatory course of conduct and there are few or no clear standards in the statute for assessing disparagement.122

viii. corrective and distributive justice in trademark remedies Trademark rights are not absolute but rather protect only against certain actions in commerce. These include uses of the mark (or trade dress etc.) that are likely to confuse or deceive consumers as to source/sponsorship/affiliation, likely to blur or degrade the reputation of a trademark in a commercial context, or added to the domain name of a website with the bad faith intent to confuse consumers or divert their attention or harm a mark.123 The trademark tort might be conceived as a branch of negligence, involving the unreasonable adoption of marks or packaging or other trade dress already in use by competitors in the marketplace. The user would have violated a duty imposed upon all present in the market to take adequate precautions against confusing or misleading purchasers, the reasonableness of which precautions would be determined by the defendant’s state of knowledge and by custom and technology in the relevant industry. Thus, the Supreme Court has suggested that even when a descriptive term such as a surname of a marketplace actor has acquired a reputation for quality or source, competitors using that surname in commerce must use “‘reasonable precautions to prevent the mistake’” about source/sponsorship/affiliation resulting from the name.124 Contemporary trademark remedies are not so clearly limited to cases involving the secondary user’s failure to take adequate precautions or its practical ability to reduce confusion. As noted above, the multi-factor infringement analysis may demote the reasonableness of the infringer’s practices to one or two factors out of many.125 Thus, if there is a careless typical consumer or certain marketing channels conducive to confusion, it may not be sufficient to clearly label the goods so as to avoid causing likely confusion.126 This very flexible, qualitative analysis127 may provide more opportunities for courts to correct perceived wrongs and deter socially wasteful 121

122 123 124

125 126 127

See Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 486 (E.D. Va. 2015) (holding that Washington football team’s trademark should be canceled because dictionary definitions, book and periodical references, and declarations and proclamations from the Native American group that it alluded to all suggested that the term was offensive in general or to a substantial number or even a majority of Native Americans) vacated, 709 Fed. App’x 182 (Fed. Cir. 2018) (vacating in light of Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744 (2017)); Margaret Chon & Robert S. Chang, supra note 10; Barry Svrluga, Not a Revolution, But Maybe a Sign That One Is Upon Us, Wash. Post, July 14, 2020, at C12. Compare also Stephanie Fryberg, Unpacking the Mascot Debate: Native American Identification Predicts Opposition to Native Mascots, Soc. Psych. & Personality Sci. (Mar. 2020), https://journals.sagepub.com/ doi/pdf/10.1177/ 1948550619898556#articleCitationDownloadContainer (while Native Americans generally do not support mascots for teams that appropriate or are derogatory to Native identities, Native Americans with stronger identities as Native or engagement with Natives were less likely to support such mascots or names, with 57 percent who strongly identify as Native American feeling disparaged by Native American caricatures used by teams), with Ethan Sacks, Native Americans Say Washington’s Name Change “Signals the Beginning” of Further Reckoning, NBC News/Yahoo! News (2020), https://news.yahoo.com/native-americans-see-hope-20-183700907.html (noting that “supporters of the nickname have cited a 2016 Washington Post poll that found 9 out of 10 Native American respondents were ‘not bothered’ by the term” used by the Washington football team). See Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744 (2017); see also Iancu v. Brunetti, 139 S. Ct. 2294, 2301–2302 (2019). See 15 U.S.C. 1114–18, 1125. Abraham Zion Corp. v. Lebow, 761 F.2d 93, 104 (2d Cir. 1985) (quoting Taylor Wine Co. v. Bully Hill Vineyards, Inc., 569 F.2d 731, 734 (2d Cir. 1978) (quoting L.E. Waterman Co. v. Modern Pen Co., 235 U.S. 88, 94 (1914))). See id. (citing Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961)). See Boston Pro. Hockey Ass’n v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1013 (5th Cir. 1975). Polaroid, 287 F.2d at 495.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

151

misleading marketing efforts, but it will also increase the number of false negatives in which, despite perhaps little to no evidence of actual confusion or negligent policies causing confusion, a competitor is halted from using a term – perhaps even an initially descriptive one – to its detriment and that of society. The dilution and cybersquatting remedies introduced into the Lanham Act in the late 1990s (and analogous state laws) increase the uncertainty and risks to competing firms, by removing the requirement of a likelihood that consumers will be confused, deceived, or mistaken as to source, sponsorship, etc.128 Trademark owners frequently wish to force persons or companies who used their marks to give up all profits resulting from the illicit use, despite no intentionally deceptive or confusing acts and no actually confused persons.129 There is case law on both sides of the question of whether this is possible. On the side of an intent requirement for disgorgement (or forced surrender) of profits, trademark law resembles the tort of misrepresenting facts other than trademark; in most U.S. courts, recovery for that tort requires either proof of intent or of a special (e.g., fiduciary) relationship.130 It might seem just to many that innocent or merely negligent trademark infringement does not result in surrendering all profits earned under an improvidently chosen mark.131 On the other side, the Lanham Act was drafted like the copyright and patent laws, which as strict liability torts to a certain extent do not link damages or profits to intent except in defined areas of derivative (secondary) liability, statutory damages thresholds, and damage trebling.132 This might reflect a drafting decision in favor of distributive justice or 128

129

130

131

132

See, e.g., Michael Handler, Recoding Famous Brands in Advertising and in Entertainment Products: Case Studies on the So-Called Harms of Trade Mark Dilution, in Research Handbook on Intellectual Property in Media and Entertainment 290–316 (Megan Richardson & Sam Ricketson eds., 2017); David Lindsay, Domain Name Governance: “Scheherazade on Steroids,” in Research Handbook on Electronic Commerce Law 545–70 (John Rothchild ed., 2016); Jacqueline Lipton, Internet Domain Names, Trademarks and Free Speech (2010); Mark McKenna, Dilution and Free Speech in the US, Reprise, SSRN (March 13, 2019), https://papers.ssrn.com/sol3/papers .cfm?abstract_id=3352090; Lisa P. Ramsey, Free Speech Challenges to Trademark Law after Matal v. Tam, 56 Hous. L. Rev. 401 (2018). See, e.g., Romag Fasteners, Inc. v. Fossil, Inc., 817 F.3d 782, 790 (Fed. Cir. 2016) (citing 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30.75 (2015)). See, e.g., Herrick v. Grindr, LLC, 306 F. Supp. 3d 579, 592–97 (S.D.N.Y. 2018) (elements of fraud and negligent misrepresentation in New York); Basso v. New York University, No. 16-CV-7295 (VM), slip op. (S.D.N.Y. June 5, 2018) (similar, citing J.A.O. Acquisition Corp. v. Stavitsky, 8 N.Y.3d 144, 148, 831 N.Y.S.2d 364, 366 (2007)). California also requires intentional misrepresentation for a fraud claim, and requires proof of a special relationship on a negligent misrepresentation theory, but achieves a similar aim by barring negligent misrepresentation claims based on breaches of contractual promises without an antecedent fraud in the inducement or independent tort duty to exercise candor. See Dent v. Nat. Football League, 902 F.3d 1109, 1123–25 (9th Cir. 2018) (reciting fraud elements and requiring assumption of some kind of duty to plaintiff, perhaps by giving medical care or opining on dangerousness of paroled convict under one’s supervision); UMG Recordings v. Global Eagle Entertainment, 117 F. Supp. 3d 1092, 1105–106, 1111–13 (C.D. Cal. 2015) (no negligent misrepresentation claims based on breaches of contractual promises, without fraud in inducement). See, e.g., Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1409 (9th Cir. 1993) (requiring “malicious, deliberate, or willful infringement” for this remedy); Timothy Kroninger, Awarding Profits in Trademark Infringement Actions: Reconciling the Circuit Split on the Willfulness Requirement with Underlying Trademark Law Rationales, 2018 Mich. St. L. Rev. 793. See, e.g., Louis Vuitton Malletier SA v. Akanoc Solutions, 658 F.3d 936, 942–45 (9th Cir. 2011) (statutory damages involving the use of a counterfeit trademark may be enhanced up to $2,000,000 per counterfeit mark per type of goods or services involved, if use of counterfeit mark was willful; contributory liability for trademark infringement requires knowing or having reason to know one is facilitating infringement) (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982)); In re Seagate Tech., LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc) (“Because patent infringement is a strict liability offense, the nature of the offense is only relevant in determining whether enhanced damages are warranted.”); CoStar Grp., Inc. v. LoopNet, Inc., 373 F.3d 544, 549 (4th Cir. 2004) (direct copyright infringement as strict liability tort); Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 112 (2d Cir. 2001) (scienter of recklessness or willfulness may result in enhanced statutory damages for copyright infringement); Fitzgerald Publ’g Co. v. Baylor Publ’g Co., 807 F.2d 1110, 1113 (2d Cir. 1986) (trademark infringement as strict liability tort); Henri’s

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

152

Hannibal Travis

aggregate social welfare rather than corrective justice, which might require a knowing or at least negligent breach of social norms as a prerequisite to liability. Trademark remedies also present several examples of distributive injustice, defined as arbitrary distinctions among rightsholders or legal claimants, resulting in disproportionate holdings – assuming perfect enforcement of all rights and remedies.133 First, high levels of trademark protection may result in trademark owners misusing their brands to foist misleading or even false perceptions of product differentiation and source quality on consumers, harming both the consumers who overpay for products and competitors who cannot gain market share, while increasing economic inequality by reducing consumer surpluses and increasing economic rents.134 The Lanham Act abets this trend by treating disparaging messages about trademarks differently and worse than positive messages about them, encouraging both overconsumption (with attendant risks of pollution, climate change, obesity, cancer, etc.) and unwanted purchases, and by denying standing to consumers in false advertising cases (which frequently involve registered trademarks) so that they must run a costly gauntlet of state-level statutory differences.135 The recent ban in British Advertising Codes of harmful gender stereotypes in advertising raises questions about externalities imposed on both women and men from biased representations and derogatory imagery in advertising-supported media.136 Second, the statutory range of presumed damages for counterfeiting trademarks is considerably higher than the range for other federal statutory offenses like gender or racial discrimination, damages for which may be capped at $300,000 or even $50,000 rather than $2 million, or for underpaying wages or age discrimination, which are capped at double the employee’s actual damages, or for certain forms of securities fraud, which may be capped at the defendant’s monetary gain.137 Third, courts are

133

134

135

136

137

Food Products Co. v. Kraft, Inc., 717 F.2d 352, 359 (7th Cir. 1983); see also Akamai Technologies, Inc. v. Limelight Networks, 692 F.3d 1301 (Fed. Cir. 2012). Cf. Hurtado v. California, 110 U.S. 516, 527 (1884) (linking due process to arbitrariness and distributive justice in availability of private rights). See Mara Babin, Abuse of Trademarks: A Proposal for Compulsory Licensing, 7 U. Mich. J. L. Reform 644, 644–50 (1974). See Handler, supra note 128, at 290–316; Ramsey, supra note 128, at 452–61; Tushnet, supra note 44, at 7–19, 32. On overconsumption, see Emily Atkin, Climate Change Is the Symptom. Consumer Culture Is the Disease., The New Republic, June 11, 2019, https://newrepublic.com/article/154147/climate-change-symptom-consumer-culture-disease; Nala Rogets, Rising Methane May Thwart Efforts to Avoid Catastrophic Climate Change, Phys.org (June 18, 2019), https://phys.org/news/2019-06-methane-thwart-efforts-catastrophic-climate.html. On obesity and cancer, see Travis, supra note 87, at }} 124–27; Tushnet, supra note 44, at 7–19. On Lanham Act standing, see Greene v. Gerber Products Co., 262 F. Supp. 3d 38 (E.D.N.Y. 2017). For a brief summary of state-level false advertising laws and their manifold differences on such issues as plaintiff eligibility, reasonable reliance, amount of harm, class action availability, and enhanced damages, see James Cooper & Joanna Shepherd, State Unfair and Deceptive Trade Practices Laws: An Economic and Empirical Analysis, 81 Antitrust L.J. 947 (2016–2017); National Consumer Law Center, Consumer Protection in the States: A 50-State Evaluation of Unfair and Deceptive Practices Laws (2018), https://tinyurl.com/nclc2018. See Helen Scott-Lawler, Useless Dads and Passive Women: First Ads Banned Under the ASA’s Gender Stereotyping Rules, Burges Salmon LLP/Lexology (Aug. 16, 2019), https://www.lexology.com/library/detail.aspx?g=88142b549183-4b6c-8623-46bca2d14b9c (a review undertaken by Advertising Standards Agency indicated that harmful stereotypes in media could restrict choice and contribute to unequal outcomes across genders). See 29 U.S.C.A. § 626(b) (Age Discrimination in Employment Act [ADEA] provision); 42 U.S.C. § 1981a(b)(3) (Title VII compensatory and punitive damages cap scheme); Trans World Airlines, Inc. v. Thurston, 469 U.S. 111 (1985) (Section 16 of Fair Labor Standards Act, FLSA); 15 U.S.C. § 77t(d)(2) (securities civil penalty “shall not exceed the greater of” either defendant’s “gross amount of pecuniary gain” or $100,000, in cases involving willfulness but not “significant risk of substantial losses” to others); 15 U.S.C. § 78u(d)(3)(B) (similar). See also Smith v. Berry Co., 165 F.3d 390, 396 (5th Cir. 1999) (no “punitive damages and damages for mental pain and suffering . . . available” under the ADEA); Snapp v. Unlimited Concepts, Inc., 208 F.3d 928, 938 (11th Cir. 2000) (“We . . . exclude punitive damages from” FLSA actions).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

153

presuming irreparable injury and issuing injunctions in trademark cases in cases where they would tend to find damages adequate as a remedy in the patent or even the copyright context, even though patents (unlike trademarks) were codified as personal property.138 Trademark remedies can impact opportunities for social justice in the marketplace in several ways. First, some form of remedy is a necessity to make the benefits of trademark protection real individuals or firms that would like to pursue that route. Second, excessive remedies can deter efforts to be included in existing markets, and can sap resources from SMEs or entrepreneurs seeking access to those markets. Third, a trademark roulette via generous remedies could overincentivize investments in branding and marketing, which can be especially harmful when the underlying products or services are detrimental to the health or well-being of consumers. Finally, economic and social inequalities could be aggravated by trademark races and the attendant bullying.

ix. frontiers of trademark (in)justice: applying ip social justice theory With the social media explosion, the deployment of celebrity personas – even of infant and toddler celebrities – has exploded in reach and value. Influencers like Kim Kardashian trademark their own names for use in promoting the services and products of others, on social media but also by personal appearances etc.139 Social media influencers are posting millions of sponsored posts on Facebook and Instagram, perhaps tens of millions if the unlabeled posts are included.140 The system, however, can be somewhat misleading to advertisers, because some influencers just starting out juice their follows with commercial vendors of interactions, likes, and follow-backs. Transposed into trademark law, influencers’ “selfmarks” raise questions about whether the celebrity or other person needs to be able to influence the source or quality of the goods endorsed, rather than simply using it and liking it in a disembodied way.141 Expanding trademark law to cover every name, image, style, and the like could have egalitarian promise. According to federal statistics, minority-owned businesses seek trademark registration at rates much lower than their majority-owned counterparts.142 Relaxing the rule that the name of the author of a single written work, or performer of a single sound recording, may not register on the Principal Register a trademark used to identify the source of that work might close this gap, simply by making it easier to claim a “selfmark.”143 From the standpoint of individual dignity, autonomy, and fair compensation for labor, it seems fair to extend to the selfmark proprietor the exclusive right to be rewarded for agreements to promote other brands. As a matter of social welfare, whether we want to encourage all of these influencer posts may be another issue. Certainly, the right to influence others and post to social media is a civil and human right, but it is not obvious that mundane social interactions or revolutionary social

138

139 140 141 142

143

See Travis, supra note 87; Mark Lemley, Did eBay Irreparably Injure Trademark Law?, 92 Notre Dame L. Rev. 1795 (2016); David Bernstein & Andrew Gilden, No Trolls Barred: Trademark Injunctions After eBay, 99 Trademark Rep. 1037 (2009). See also 15 U.S.C. § 1116(a) (2020) (irreparable injury presumed). See William McGeveran, Selfmarks, 56 Hous. L. Rev. 333, 333–34 (2018). See Clive Thompson, Under the Influencer, Wired, June 2019, at 17–18. See McGeveran, supra note 139, at 343–48. See K.J. Greene, Trademark Law and Subordination: From Marketing of Stereotypes to Norms of Authorship, 58 Syracuse L. Rev. 431 (2006); Rita Heimes, Trademarks, Identity, and Justice, 11 John Marshall. Rev. of Intell. Prop. L. 133, 136 (2011). Trademark Manual of Examining Procedure § 1202.08 (2022 ed.)

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

154

Hannibal Travis

movements require or would benefit from commodification and trademark exclusivity.144 A transactions-cost approach would counsel against clearing with trademark counsel every interaction with a famous individual or social movement.145 From the other end of the timeline – sometimes pre-dating the modern national brands rather than taking them into a new social media age – emerge trademarks on traditional knowledge and traditional cultural expressions. Cultural appropriation claims – premised upon the oftenprofitable repurposing of elements of an individual’s or group’s heritage or creative output without the prior consultation or consent of that individual or group – present a potential challenge to some modern capitalistic conceptions of trademark justice.146 Under the law of many countries, and a document released by the World Intellectual Property Organization (WIPO) and resembling guidelines, a traditional cultural expression like a design or a name or character from a song or legend would not have trademark protection unless it was actively used, perhaps used “in commerce” as the Lanham Act requires. The WIPO document suggests a registration or notification process by which an indigenous people could warn others of an interest in an expression, triggering an obligation on the part of those notified to obtain free, prior and informed consent from the relevant population before using it.147 Trademark-like protections called geographic indications are also increasingly prominent and could confer upon traditional knowledge like crop strains and “genetic resources” some of the exclusive value reaped by producers of Feta cheese, Champagne, or Serrano ham.148 They reflect a certain form of justice, prevalent among European political leaders, which would create rights in proportion to the efforts of a region’s institutions over centuries to develop the social and economic foundations of a specific mode of cultivation, storage, processing, and marketing. However, geographic designations serve as a fetter on competition and an artificial support to high consumer prices, for persons excluded by chance or expense from the region entitled to use an appellation of origin that has become linked with a specific taste or quality.149

144

145

146

147

148

149

Cf. Roger Stronach, Trademarking Social Change: An Ironic Commodification, 96 J. Pat. & Trademark Off. Soc’y 567 (2014). Cf. Trademark Manual of Examining Procedure § 1202.18 (2022 ed.) (“Generally, the hash symbol and the wording HASHTAG do not provide any source-identifying function because they merely facilitate categorization and searching within online social media . . . [just as] the post-domain path of a URL does not typically signify source”) (citing, inter alia, In re i am symbolic, llc, 127 U.S.P.Q.2d 1627, 1633 (TTAB 2018)). Cf. Mtima, Fulfilling the Copyright Social Justice Promise, supra note 9, at 98. See Anjali Vats, Critical Race IP, 36 Cardozo Arts & Ent. L.J. 735, 774 (2018); Rosemary Coombe, The Properties of Culture and the Politics of Possessing Identity: Native Claims in the Cultural Appropriation Controversy, 6 Can. J. of L. & Juris. 249 (1993); Katyal, supra note 120, at 1632–33. See Tzen Wong & Claudia Fernandini, Traditional Cultural Expressions: Preservation and Innovation, in Intellectual Property and Human Development: Current Trends and Future Scenarios 204–205 (Tzen Wong & Graham Dutfield eds., 2010). See Susette Biber-Klemm, Flanking Policies in National and International Law, in Rights to Plant Genetic Resources and Traditional Knowledge: Basic Issues and Perspectives 249–51 (Susette Biber-Klemm & Thomas Cotter eds., 2006); Kundam Kishore, Geographic Indications in Horticulture: An Indian Perspective, 23 J. Intell. Prop. Rts. 159 (2018); WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Report on the Review of Existing Intellectual Property Protection of Traditional Knowledge, WIPO Doc. No. WIPO/GRTKF/IC/4/7 (2002). See Cerkia Bramley, Estelle Binabe, & Johanna Kirsten, The Economics of Geographical Indications: Towards a Conceptual Framework for Geographical Indication Research in Developing Countries, in The Economics of Intellectual Property: Suggestions for Further Research in Developing Countries and Countries with Economies in Transition 109, 117 (WIPO ed., 2009), http://www.wipo.int/edocs/pubdocs/en/wipo_pub_1012chapter4.pdf.

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

155

The European Trade Mark Implementing Regulation recognizes “non-conventional marks such as holograms and sounds,” which would potentially be effective in 27 countries of the European Union.150 Given that some civil law countries have trademark laws with few freedom of speech exceptions and ill-defined notions of use as a trademark, trademark law may collide with new technologies. Will the shift of technology from photographs and videos to holograms, virtual reality, and augmented reality impose onerous trademark clearance duties when ubiquitous logos, business layouts, and celebrities crop up in the metaverse?151 Is the use of the names and likenesses of celebrities in computer animations, video games, mashups, deepfakes, and virtual realities allowed due to the First Amendment, the statutory distinctions between criticism or discourse and advertising or false endorsements, or judicial doctrines like “descriptive fair use” or “nominative use”?152 3D printing is an area in which the patent–trademark boundary (and trademark law’s exclusion of many functional designs) will come to the fore. Computer-assisted design and other digital files enable three-dimensional designs to be printed on plastic in a way that creates confusion or blurring with 3D trade dress elements. Will the distribution or creation of such digital blueprints be treated like the manufacturing of glass bottles that resemble, for example the Coca-Cola trade dress?153 Will the mere existence of alternative designs permit 3D printing files to be trademarked?154 Or should aesthetic and other advantages of a design that are not absolutely essential to its function be open for anyone to use, in the name of a fair distribution of competitive opportunities?155 Improvements in brain–computer interfaces may give rise to “neuromarks” and advertisers’ exploitations of brainwaves. This trend will raise issues of permanence and line-drawing that are analogous to those that arise with olfactory (smell-related) marks.156 For example, if a brainwave transmission or bio-hacking invention could convey an inaudible, invisible, perhaps indescribable feeling (think of Freud’s oceanic feeling or athletes’ “the zone”) whenever a product or business location was near or was used or paid for in a certain way, could this feeling be trademarked?157 It is thought that “devices will eventually exist that allow ‘speechless’

150

151

152

153

154 155

156

157

Guido Noto La Diega, Non-Conventional Marks: The EU Reform of Trade Marks, Brexit, and the Internet of Things, 7, Diritto Mercato Tecnologia / Northumbria Research Link (2018), https://www.dimt.it/index.php/en/policy/ 104-news/16608-non-conventional-marks-the-eureform-of-trade-marks-brexit-and-the-internet-of-things & http://nrl .northumbria.ac.uk/id/eprint/33292/1/Non_conventional_marks_Dritto_Mercato_Technologia.pdf (citing Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (EUTM Regulation) [2017] OJ L 154). International Trademark Association, 3D Printing Task Force of the Designs Committee: Design Communications Subcommittee (Aug. 2017), https://www.inta.org/Advocacy/Documents/2017/3D%20Printing%20Report%2027.09.2017 .pdf. See Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003); E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012 (C.D. Cal. 2006). Cf. Erik W. Kahn & Pou-I “Bonnie” Lee, “Delebs” and Postmortem Right of Publicity, 8 Landslide, Vol. 8, No. 3, January/February (2016), https://www.americanbar.org/ groups/intellectual_property_law/publications/landslide/2015-16/january-february/delebs_and_postmortem_right_pub licity/. For a critique of this kind of clearance culture in movies and television based on trademarks, see Elizabeth Rosenblatt, Rethinking the Parameters of Trademark Use in Entertainment, 61 Fla. L. Rev. 1011 (2009). See Trademark Manual of Examining Procedure § 1202.02(a)(v)(C). See id. (“Functionality may be established by a single competitively significant applicant in the recited identification of goods . . .”). See La Diega, supra note 150, at 8 (citing EUIPO, Guidelines for examination of European Union Trade Marks (Part B Examination – § 2 Formalities), § 9.11.2). Cf. Mark Bartholomew, Neuromarks, 103 Minn. L. Rev. 521, 536–37 (2018) (exploring how regions of the brain are activated by brand consciousness and whether a brand or brands might activate specific neurons).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

156

Hannibal Travis

communication using the faculties of the mind alone.”158 The commodification of brainwaves and manipulated emotions may raise concerns similar to those arising from Facebook’s emotional contagion research and the Cambridge Analytica data misuse controversy.159 The integration into trademark of new forms of marks, blending names and personas, designs and digital codes, mental impressions and brand identities, and the like, will present a number of challenges. Dilution and cybersquatting have arguably not been fully digested and made coherent with infringement and false advertising doctrines and constitutional rights. Several rounds of legislation were needed to mitigate the impact of copyrights in sound recordings on digital and Internet radio, which traditional licensing practices would make too costly to be viable.160 Meanwhile, intermediaries like Facebook and the Internet Corporation for Assigned Names and Numbers are developing their own rules that rival national laws in impact. Emerging technologies and recent trends have significant implications for economic empowerment, a domain shaped decisively by branding and trademarks. A social justice perspective on trademarks could shed more light on how dignity, equality, and autonomy could be threatened by intrusions into individual personas. An access and empowerment approach could motivate policymakers and jurists to be attuned to ways in which gaps in access to capital and the technologies it leverages could be widened or narrowed depending on how trademark rights are doled out and what effects they have on society. Not only will new technologies and changing modes of communication and entertainment upend the existing balances struck between corrective and distributive justice in trademark law, but the resulting compromises will shape entire markets and polities.

conclusion Until recently, the capacity of IP law to promote forms of justice has been sidelined by the predominant perspective of IP protection as a purely economic mechanism through which to incentivize and measure the success of IP production. Nonetheless, the IP system has the potential to promote forms of justice, whether in traditional terms of corrective or distributive justice or in terms of the more contemporary critical or social planning varieties. In the case of trademarks, IP rights could be a barrier to access to the marketplace. Trademarks restrict the entry of SMEs into markets controlled by the big-name and big-money players. At the same time, trademarks can be a means for socio-economic empowerment, particularly in their dynamic function of calibrating rights in linguistic and other signs and symbols to investments in new brands. Companies large and small look to trademark rights to secure the fruits of their investments in advertising and quality control. Startups and SMEs seek 158

159

160

Micah Hanks, Thought Experiments: Could Brain Interfaces Lead to Animal “Communication,” Gralien Report, Aug. 22, 2012, https://www.gralienreport.com/artificial-intelligence-and-futurism../thought-experiments-could-braininterfaces-lead-to-animal-communication. See also Anthony Cuthbertson, Facebook Buys Mind-Reading Startup CTRL-Labs for $1bn, The Independent (U.K.), Sept. 23, 2019, https://www.independent.co.uk/tech/facebookmind-reading-ctrl-labs-wristband-neural-interface-a9117801. See Edmund Andrews, The Science Behind Cambridge Analytica: Does Psychological Profiling Work?, Stanford Graduate School of Business (Apr. 12, 2018), https://www,gsb.stanford.edu/insights/science-behind-cambridgeanalytica-does-psychological-profiling-work; Kashmir Hill, Facebook Manipulated 689,003 Users’ Emotions for Science, Forbes, June 28, 2014, https://www.forbes.com/sites/kashmirhill/2014/06/28/facebook-manipulated-689003users-emotions-for-science. See 17 U.S.C. §§ 106(6), 1114(d); Webcaster Settlement Act of 2008, Pub. L. No. 110-435, 110th Cong. (2008); Webcaster Settlement Act of 2009, Pub. L. No. 111-36, 111th Cong. (2009); American Bar Association, Annual Review of Intellectual Property Developments 2009 at 298–99 (2009); E. Jordan Teague, Saving the Spotify Revolution: Recalibrating the Power Imbalance in Digital Copyright, 4 J. of Law, Tech. & the Internet (2012).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

Trademarks, Legal Remedies, and Social Injustices

157

to be included in marketplaces on a level plane with the proprietors of major brands and families of brands. Small businesses and entrepreneurs may find it essential to their empowerment to register and enforce a number of trademarks or forms of protected trade dress, to broadcast their unique offerings, to highlight their quality standards and track records, and to expand. Open access to sociallyvalued positions and resources is a major rationale for reforming the IP ecosystem so that it promotes forms of justice – corrective, distributive, and otherwise. The availability of trademark rights can have significant implications for the IP social justice mandates of economic inclusion, fair availability of opportunities, and equitable benefit sharing when it comes to cultural, technological, and social development. Unwarranted exclusion from the trademark system may impair an individual or firm from enjoying the commercial benefits of a hard-won positive reputation. A loss of this often ineffable possession is regarded as a harm that is difficult to repair. Some scholars believe that using IP social justice principles can help realize corrective justice by allowing parties to reclaim their rightful place in a segment of the market. Occupying such a reputational zone, trademark owners may leverage brand equity into a greater share of the social and economic benefits associated with a name, branding scheme, or image. Furthermore, it is thought that legal rules promote economic and social progress, such as by diffusing the fruits of scientific and technical work more fully throughout society. Whereas the economic utility approach and some other prevailing rationales for IP protection are occasionally agnostic toward the IP system’s attention to interpersonal justice,161 a social utility approach can recenter the human interests at the core of legal principles. In an age of increasingly computerized marketplaces and public fora, mandates to rethink the affirmative social and public goals of IP protection may be welcome to many.

161

But see James Boyle, Shamans, Software, and Spleens: Law and the Construction of the Information Society (1996); Anupam Chander, Is Nozick Kicking Rawls’s Ass: Intellectual Property and Social Justice, 40 U.C. Davis L. Rev. 563 (2006); Wendy J. Gordon & Daniel Bahls, The Public’s Right to Fair Use: Amending Section 107 to Avoid the Fared Use Fallacy, 2007 Utah L. Rev. 619; Justin Hughes, The Philosophy of Intellectual Property, 287 Geo. L.J. 77 (1988); William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law (2003); Robert P. Merges, Justifying Intellectual Property (2011); Molly Shaffer Van Houweling, Distributive Values in Copyright, 83 Texas L.Rev. 1535 (2004).

https://doi.org/10.1017/9781108697613.010 Published online by Cambridge University Press

7 Trade Secrets from an Intellectual Property Social Justice Perspective Steven D. Jamar

I.

IP-SJ Considerations with Secrets Generally II. IP-SJ Considerations with III. IP-SJ Considerations with Trade Secrets IV. IP-SJ Considerations with Intelligence Software Conclusion

Respect to Protecting Trade Respect to Trade Secrets and Employees Respect to Non-Employee Misappropriation of

page 159 161 163

Respect to Trade Secret Protection for Artificial 164 166

A trade secret is any economically valuable information which provides an actual or potential competitive advantage to the owner of the information because the information is secret.1 Trade secret protection can be an important driver of innovation, inclusion, and empowerment. But legal protection for trade secrets can also undermine those interests if the protection granted is not properly balanced by other interests such as employee mobility and the ability to build on existing information. A distinguishing feature of trade secret IP is that the essential bargain which underlies utilitarian innovation as embodied in patent law – the grant of a monopoly to exploit the patent for a limited time in exchange for making the information public2 – is not present. By its very nature the information is kept secret and not shared with the public. In contrast, in exchange for sharing their information with the public, patentees are granted an expansive monopoly (the exclusive right to make, use, or sell the innovation) over the patented information for a limited time (20 years). While trade secrets are not given the protection of exclusivity that patents receive, they can be exploited indefinitely.

1

2

Uniform Trade Secrets Act § 1 (1985) https://www.uniformlaws.org/committees/community-home?CommunityKey= 3a2538fb-e030-4e2d-a9e2-90373dc05792; see also Tara Nealey, Ronald M. Daignault, & Yu Cai, Trade Secrets in Life Science and Pharmaceutical Companies, 5 Cold Spring Harb. Perspect. Med. a020982 (2015), https://www.ncbi .nlm.nih.gov/pmc/articles/PMC4382727/; Lateef Mtima, What Is Intellectual Property (And Why Should You Care About It Anyway?), Prolusion in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Trade secrets require the opposite, i.e., that the information must be kept secret to maintain protection. With respect to information protected as a trade secret, society gains only the benefits derived from commercial application of the information whereas under the patent bargain society gains by the increase in society’s store of useful knowledge. Accordingly, the scope of patent protection is broader, commensurate with the greater benefits to society.

158 https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

Trade Secrets from an IP Social Justice Perspective

159

This chapter sketches some of the more salient aspects of an intellectual property social justice evaluation of trade secret law.3 To achieve IP social justice with respect to trade secret protection, as with other forms of IP protection, a balance of encouraging the development and exploitation of commercially valuable information and limiting the extent to which such protection is provided is necessary in order to serve the broader interests of IP social justice including access, inclusion, and empowerment. The existing balance in general limits trade secrets to being protected only so long as they are secret. The secrets are not protected against independent discovery, reverse engineering, or disclosure through failure to take sufficient steps to keep them secret.4 These limitations support empowerment by allowing others to develop the information independently and then use it without limitations from others who may also receive some protection for the same information for themselves under trade secret law. While these limitations on the scope of trade secret rights support some social justice interests, trade secret protection may frustrate other important interests that may justify limiting or eliminating trade secret protection. Certain trade secrets can significantly affect public health. For example, methods of producing COVID-19 vaccines are protected as trade secrets and that limits the ability of less developed countries which do not have knowledge of those methods from producing the vaccines for their people.5 Similar concerns exist for other processes that have public health impacts such as fracking and for core civic activities such as voting, where the internal operations (software) of the voting machines are protected as proprietary information, even from regulators.6 IP social justice theory helps one find an appropriate, defensible balance among these sorts of competing interests. IP social justice theory supports trade secret protection, an important part of the IP ecosystem, albeit with some carefully calibrated limitations that recognize that not all trade secrets present the same considerations to be balanced. For example, a customer list does not present the same sorts of risks to others as a computer program driving a car. In this chapter, I sketch IP-SJ and trade secrets considerations with respect to (1) the requirements for protecting a trade secret, (2) trade secret protection in the employee–employer context, (3) misappropriation of trade secrets by outsiders, and (4) trade secret protection in the context of artificial intelligence implementations.

i. ip-sj considerations with respect to protecting trade secrets generally Trade secret protection can serve empowerment because the costs of creating and protecting a trade secret are often only marginally greater than the costs of developing and implementing the secret information; anyone with an economically valuable secret can exploit it simply by using it 3

4 5

6

The objective of this chapter is to highlight significant aspects of IP-SJ in the trade secret context and perhaps provide some direction for further work. It is not a complete examination or exposition on the topic, but rather merely seeks to initiate scholarly analysis and discourse as to the social justice obligations and effects of this form of IP protection. Uniform Trade Secret Act, § 1 Comment. See, e.g., David S. Levine, Covid-19 should spark a reexamination of trade secrets’ stranglehold on information, Stat, July 10, 2020, https://www.statnews.com/2020/07/10/covid-19-reexamine-trade-secrets-information-stranglehold/ (last visited Nov. 5, 2022). See Brenda Reddix-Smalls, Individual Liberties and Intellectual Property Protection–Proprietary Software in Digital Electronic Voting Machines: The Clash Between a Private Right and a Public Good in an Oligopolistic Market, 19 Fordham Intell. Prop. Media & Ent. L.J. 689 (2009), https://ir.lawnet.fordham.edu/iplj/vol19/iss3/2; Bob Christie, Firm Recounting Arizona Ballots Wants Methods Kept Secret, Apr. 26, 2021, https://apnews.com/article/electionselection-recounts-phoenix-election-2020-business-396ea4662f8c213da010c0014ca97c6c (last visited Nov. 5, 2022). See David S. Levine, Can We Trust Voting Machines? Trade-secret law makes it impossible to independently verify that the devices are working properly, Slate, Oct. 24, 2012, https://slate.com/technology/2012/10/trade-secret-law-makes-it-impos sible-to-independently-verify-that-voting-machines-work-properly.html (last visited Nov. 5, 2022).

https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

160

Steven D. Jamar

commercially and taking reasonable steps to keep it secret. The use of trade secrets and the provision of legal protection for them can thus be empowering at a low cost – at least compared to the cost of obtaining a patent.7 Furthermore, the breadth of subject matter eligible for trade secret protection renders this form of IP development and exploitation available to virtually everyone. In addition to typical commercial information such as manufacturing processes, secret chemical formulas, and marketing strategies, trade secrets can include secret cooking recipes, home remedies, and hair and nail care techniques. Any commercially usefully information not generally known to people in the discipline is eligible for protection.8 While providing IP protection to trade secrets can be empowering, the secret nature of trade secrets can also limit empowerment of others because a trade secret, by its very nature, reduces access to the information kept secret, thereby excluding others from using it unless they can develop it themselves independently. This limitation is particularly important in fields where significant technical expertise is required as in certain processes for producing specialized drugs or materials or in the burgeoning field of artificial intelligence.9 The impact on such marginalized groups through excluding them from benefiting from using the secret itself (as distinguished from being able to obtain the benefits of the fruits of it the same as others can) is greater than on those with the resources lawfully to discover the secret by reverse engineering or by independent research, or on those with the wherewithal to pay for a license to exploit the secret. As the frontier of many types of technological innovation increasingly depends on ever-greater sophistication and resources, the limitations concomitant to trade secret protection in the tech sector become increasingly significant and worthy of careful, detailed examination.10 Protecting trade secret IP rights requires owners of the trade secrets to take reasonable steps to keep the information secret. Generally, this is not an onerous requirement. Use of passwords for access, keys for locked files, limiting sharing of the information to those who need to know, nondisclosure agreements with employees and licensees,11 and, where permitted, covenants not to compete for employees, are typical steps taken. Limiting access physically or through electronic means implicates few IP-Social Justice concerns separate from concerns that arise with respect to trade secrets generally.12 Nonetheless, social justice concerns such as exclusion and bias against certain groups in employment could differentially limit those in the group discriminated against from learning to use the trade secret or even

7 8

9

10

11

12

Mtima, supra note 1, at 3. See generally, Sharon Sandeen, Out of Thin Air: Trade Secrets, Cybersecurity, and the Wrongful Acquisition Tort, 19 Minn. J.L. Sci. & Tech. 373 (2018). Steven D. Jamar, An Intellectual Property Social Justice Perspective on Intellectual Property Protection for Artificial Intelligence Programs, ch. 18 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Further scholarly examination of the IP-SJ implications of these and related issues is needed. One example of advocacy of an IP-SJ perspective is IIPSJ Statement of Interest, Amicus Brief of CDT in Google LLC v. Oracle America, Inc,. 593 U.S. ___ (2021) (the opportunity to use and build upon existing IP can be critical to the empowerment of marginalized innovators who typically lack the financial capital and other resources to compete in much less win the race toward initial innovation. Equitable opportunity to build upon to preexisting IP accomplishment empowers such second-generation innovators and otherwise benefits society through the resulting achievement and advances). For licensees, particular care in spelling out the obligations of the licensees with respect to protecting the trade secret is needed because the general shield of agency obligations of employees to their employers with respect to confidential information is not present. John Hull, Trade Secret Licensing: The Art of the Possible, 4 J. Intell. Prop. L. & Prac. 203–12 (2009), https://doi.org/10.1093/jiplp/jpn251. For example, the costs of protection, costs associated with reverse engineering, lack of experience with commerce and protecting trade secrets, etc., affect inclusion and empowerment.

https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

Trade Secrets from an IP Social Justice Perspective

161

about the value of trade secrets more generally.13 Being attentive to the potential for hidden bias or a structural arrangement that excludes members of traditionally marginalized groups is warranted whenever access to trade secret information is limited because that information can be empowering both for advancement in a business or as a way for a person to contribute to the value of the trade secret if known to that person. The growing practice of having all employees execute covenants not to compete in order to protect trade secrets is problematic from an IP social justice perspective insofar as they disempower employees, even those not directly concerned with knowing or using the trade secrets, from changing jobs and using the general, unprotectable knowledge and skills they developed on the job to advance themselves by changing jobs.14 The expanded and unjustified use of covenants not to compete to protect trade secrets is a collateral effect of the push to protect secrets to the maximum extent possible and to expand the reach of trade secret protection into unprotectable know-how.15 Fortunately covenants not to compete are often not enforced according to their express terms because of their restrictive effect.16 Nonetheless, employers are induced to use them even with unenforceable provisions because they still reduce employee mobility and can chill former employees’ use of unprotectable know-how in their new employment setting because of the threat of the employer against employees and former employees. The threat itself can be enough just because of the costs of contesting the contract provisions in court. The fuzziness of the line between protectable trade secret and general know-how exacerbates this particular problem. When a business either needs to or for business reasons wants to disclose its trade secrets to another, e.g., to a company that will manufacture the material object which depends on the trade secret or to a company that could develop an idea into an operational app for various platforms, additional IP-SJ concerns should be addressed. The typical means of protecting the trade secrets in such settings is through licensing and nondisclosure agreements. Licenses should be narrowly construed to not permit an overly expansive view of the trade secret and the steps needed to protect it.17 Attempts to protect information that is merely unprotectable know-how past the term of the license should be carefully limited.

ii. ip-sj considerations with respect to trade secrets and employees Although a few concerns relating specifically to employees and trade secrets were noted in section I above, including mention of covenants not to compete and nondisclosure agreements, the employment relationship presents sufficiently special aspects to warrant its own section. 13

14

15

16

17

Situations can become fairly involved; see, e.g., Can Accusing a Former Employee of Stealing Trade Secrets Be Unlawful Retaliation?, Foley blog, (Jan. 3, 2011), https://www.foley.com/en/insights/publications/2011/01/accusingformer-employee-of-stealing-trade-secrets. Ryan Nunn, The Growing Employer Abuse of the Non-Compete Clause, The Hamilton Project blog, Jun 13, 2017, https://www.hamiltonproject.org/blog/the_growing_employer_abuse_of_the_non_compete_clause. The line between unprotectable know how and protectable trade secrets is not easy to draw in practice and is not the focus of this chapter. A working definition to delimit the two types of information could be that information known by those skilled in the art but not generally known to others is just unprotectable know-how and not a protectable trade secret. Many things are not widely or generally known but are nonetheless available to be learned from a variety of sources. See SI Handling Systems, Inc., v. Heisley, 753 F. 2d 1244, 1267 (3d Cir. 1985); Dynamics Research Corp. v. Analytic Sciences Corp., 9 Mass App. Ct. 254, 267 (Mass. App. Ct. 1980). See Sharon K. Sandeen & Elizabeth A. Rowe, Debating Employee Non-Competes and Trade Secrets, 33 Santa Clara High Tech. L.J. 438 (2017). See Vault Corp. v. Quaid Software, Ltd., 655 F. Supp. 750 (E.D. La. 1987); Chicago Lock Co. v. Fanberg, 676 F. 2d 400, 405 (9th Cir. 1982).

https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

162

Steven D. Jamar

Trade secrets concern the protection of confidential, secret information and, under agency law, employees owe employers a duty of confidentiality. This duty of confidentiality extends to nondisclosure of trade secrets to third parties even after they are no longer employees. Although this duty stems in law from the agency relationship, employment contracts often expressly articulate this duty, and sometimes seek to expand it. Employers also seek to protect their trade secrets through two additional types of agreements: nondisclosure agreements and covenants not to compete (which may or may not be part of the general employment contracts). These types of agreements, as well as an overly aggressive interpretation of the employee duty of confidentiality, can both serve social justice or undermine it in various ways. IP social justice theory emphasizes that the proper scope of protection is a question of balancing competing interests. Often the balance can be achieved through limiting the reach of the claim of protection durationally, geographically, and in the scope of what is protected. Trade secrets are confidential information.18 The existence of the agency relationship between an employer and an employee places on the employee an obligation not to disclose the employer’s confidential information to third parties. While an employee is employed, the employee is to work for the benefit of the employer and should not disclose trade secrets or even other nontrade secret confidential information to others while an employee.19 Problems arise when an employee leaves the employment and works for another, especially a competitor. The employee is still bound not to disclose trade secrets learned while employed at the first employer, but is empowered to use nontrade secret skills and knowledge that were learned as part of the employment. But discovery and enforcement of a violation of the duty to not disclose or use the trade secret elsewhere is difficult. Thus, employers employ various strategies to protect themselves, including in particular imposing covenants not to compete and limiting the circle of employees who know the trade secret. As noted in the previous section, covenants not to compete can be very harmful to serving the empowerment interest of IP social justice by limiting the ability of former employees to compete or even to practice the nontrade secret knowledge they have learned on the job. Covenants not to compete are, for this reason, not legal in all states,20 and are typically disfavored and limited by the law both durationally and geographically. Some companies have started having all employees sign noncompete contracts; this practice is an abuse of the primary purposes of such contracts: protecting trade secrets and preventing particularly key employees from undermining their former employer. All former employees are prohibited from disclosing trade secrets and the use of such noncompete clauses for all employees should not be allowed because it abuses empowerment too much. To protect trade secrets, employers generally try not to disclose the trade secrets to more employees within the business than necessary for the business to function effectively; not everyone needs to know everything about the business, especially with respect to manufacturing or technological trade secrets. This empowers employers with valuable trade secrets, but limits the ability of others to exploit that information and may unduly limit further advancement of the value of the secret even within the company. Nonetheless, this practice really does not affect the social justice equation of IP social justice directly and seems not to be the sort of thing the law should address. 18

19

20

The duty to not disclose confidential information extends to matters far beyond what may be protectable trade secrets, but this chapter is not concerned with the implications of those broader obligations. See Mattel, Inc. v. MGA Entm’t, 782 F. Supp. 2d 911, 998 (C.D. Cal. 2011); Scanwell Freight Express STL, Inc., v. Chan, 162 S.W.3d 477, 481 (Mo. 2005). They are not legal in California. In 2020 and 2021, the federal government considered banning them nationwide. See Jim Tankersley & Neil Irwin, Biden Is Preparing an Executive Order Targeting Noncompete Clauses for Workers, NYT online (July 7, 2021), https://www.nytimes.com/2021/07/07/us/politics/biden-noncompete-clauses-workers.html.

https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

Trade Secrets from an IP Social Justice Perspective

163

iii. ip-sj considerations with respect to non-employee misappropriation of trade secrets Trade secrets are protected through contracts, including employment contracts, covenants not to compete, and nondisclosure agreements, as well as through the tort of misappropriation. Contractual protection is available primarily with respect to employees and licensees. The tort of misappropriation, however, covers any wrongful acquisition of a trade secret typically by someone who is neither an employee nor a licensee, such as an industrial spy or others downstream from the immediate wrongdoer, provided certain conditions are met.21 Thus, a third person who receives a trade secret, even if that person did not commit the wrong directly, can be liable for misappropriation. A person misappropriates a trade secret when they acquire it by improper means. Improper means arising through two primary pathways: (1) by improper acquisition of another’s trade secret such as by theft or industrial espionage; or (2) acquisition through breach of an obligation of confidentiality by a person authorized to know or use the trade secret (such as an employee or licensee) who then improperly discloses it to a third party or who improperly uses it for the benefit of that third person. Misappropriation of a trade secret by a nonemployee occurs when a person acquires another’s trade secret by improper means. Proper means include independent discovery or invention, reverse engineering, or learning of the technology simply because it is not actually secret, e.g., the erstwhile secret is disclosed in the product itself. These noninfringing, proper means of acquiring a trade secret promote social justice insofar as they function as balancing limitations on the trade secrets. While the advantages of financial and social capital for research and development will often position members of privileged groups to be the first to discover or develop certain kinds of commercially useful information, the option of independent discovery allows others who lack such advantages to benefit from any such subsequent discoveries or development they might achieve. In this respect, protection for trade secrets promotes the IP-SJ distributive justice aspirations by allowing for second-generation innovator empowerment that is impermissible under patent law. Improper means including theft or other forms of corporate espionage. Once again, IP social justice concerns temper the reach of misappropriation, and evaluation of particular circumstances is well served by explicit consideration of social justice ideas of access, inclusion, and empowerment, particularly of historically marginalized people and groups. Appropriate limits on the reach of what is considered a trade secret as well as appropriate limits on what is considered misappropriation of it by third parties are key. Like the function of nondisclosure agreements in a contracting context, the tort of misappropriation serves to limit exploitation and disclosure of the trade secret by others outside of the contracting context. The primary IP social justice concerns are not with respect to the existence of the tort itself, but rather with its application. The scienter aspect of the third party’s acquisition of the trade secret (knew or had reason to know that the secret was disclosed to or learned by them improperly) helps keep its reach within appropriate bounds such that it does not easily run afoul of IP social justice concerns of access, inclusion, and empowerment. Those interests are

21

E.I. DuPont de Nemours & Co. v. Christopher, 431 F. 2d 1012 (5th Cir. 1970); Advanced Fluid Sys., Inc. v. Huber, Nos. 19-1722, 19-1752 (3d Cir. Apr. 30, 2020); Daryl Leon, John Barry, & Meika Freeman, Third Circuit Recognizes Trade Secret Misappropriation Claim by Party Possessing (But Not Owning) the Trade Secret, Law and the Workplace (May 6, 2020), https://www.lawandtheworkplace.com/2020/05/third-circuit-recognizes-trade-secret-misap propriation-claim-by-party-possessing-but-not-owning-the-trade-secret/.

https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

164

Steven D. Jamar

themselves not absolute and in general the balance reached in the Uniform Trade Secrets Act has no obvious weaknesses in this regard. Nonetheless, as discussed in the next section, for some technologies and in some settings, preventing the disclosure or use of the trade secrets by others can give rise to significant social justice concerns.

iv. ip-sj considerations with respect to trade secret protection for artificial intelligence software A special field that is currently favoring use of trade secret protection and which has massive social justice concerns that extend far beyond the relatively narrow focus of IP-SJ is the use of artificial intelligence techniques in various applications that are used throughout society. A significant reason for this choice is the difficulty of obtaining patents or effective copyright protection for AI in part because of the inherent unknowability of how the AI mechanisms themselves actually work or how they predict outcomes.22 That very unknowability of just what the AI is doing or how it is doing it makes the AI program secret not just from outsiders, but often from the owner of it. This unknowability makes patenting AI-based inventions very difficult, but that same unknowability makes keeping the technology secret easy. In addition, given the fast pace of change and development of AI and AI implementations and, given that many AI programs change in response to new data, thus making them not static or fixed, copyright is problematic as a vehicle for protection and so that too contributes to favoring trade secret protection. Something that changes all the time would require serial patents and copyright registrations for protection, whereas trade secret protection just flows with the changes. The same inherent unknowability of what an AI model is actually doing that favors trade secret protection raises particular concerns in certain sensitive applications, which could literally have life-threatening effects (e.g., autonomous vehicles, air traffic control, health related technologies including public health matters like pandemic vaccination and fracking chemical toxicity, and lethal autonomous weapons (aka “killer drones”)23); significant effects on liberty (e.g., profiling, bail, and sentencing);24 and dramatic effects in social, cultural, and economic settings (e.g., bias in hiring, school admissions, obtaining financing, and other opportunities).25 Granting trade secret protection for such uses could contribute to the abuse of such technologies to the detriment of marginalized communities and individuals and society at large.26 AI technologies can yield great benefits as well and providing some protection for them to encourage their development is desirable. But the balance is not an easy one to make in each setting. These social justice concerns literally affecting life, liberty, and health support regulating trade secrets in sensitive areas differently than trade secrets are protected in general. Protecting health, life, and liberty should be seen as aspects of IP-SJ principles of inclusion and 22 23

24

25 26

See Jamar, supra note 9. See, e.g., Scott Simmie, Autonomous “Killer Drone” Hunted Down Human Targets, DroneDJ, May 30, 2021, https:// dronedj.com/2021/05/30/autonomous-killer-drone-hunted-down-human-targets/. Taylor R. Moore, Trade Secrets and Algorithms as Barriers to Social Justice, Center for Democracy and Technology, August 2017, https://cdt.org/insights/trade-secrets-and-algorithms-as-barriers-to-social-justice/; Coded Bias (documentary, 2020), https://www.ajl.org/spotlight-documentary-coded-bias; Algorithmic Justice League, https://www.ajl.org/ about. Coded Bias, supra note 24. Intellectual property protection is only one piece of the many challenges AI presents. For a more extended IP social justice discussion of AI issues, see Jamar, supra note 9.

https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

Trade Secrets from an IP Social Justice Perspective

165

empowerment; IP-SJ includes not only the economic aspects, but also more transcendent concerns of individual development and social and cultural development. What follows are a few suggestions for further evaluation and development with respect to the future of trade secret protection for AI implementations. It may be that for certain types of trade secret protection an administrative screening function may be warranted before the trade secret would be enforceable. That is, one may want to remove this decision from the courts in the first instance for public policy reasons. In addition, expanded remedial options for certain types of trade secrets may preserve an appropriate balance between the value of protecting the trade secret and limiting it for social justice reasons. Consideration should be given to administrative solutions to trade secrets that directly affect cardinal values like nondiscrimination in employment and education, voting security, medical treatment, public health, and general public safety. A special trade secret administrative agency at the federal level could be created with the function of deciding whether to grant trade secret protection at all, whether certain requirements are met, e.g., adequate accountability for critical areas. Such an agency could also be empowered to grant trade secret protection subject to certain important limitations such as compulsory licensing upon certain showings (such as the need for drugs to combat a pandemic). One limitation that might be imposed for any trade secret affecting critical areas would be that the AI implementation use XAI (explainable AI), such that others can evaluate it. An alternative solution could be to create sui generis protection for all AI implementation which would federally preempt all state level and all other forms of IP protection. Under such a scheme, the AI implementation would not be able to receive patent, copyright, or trade secret protection, but rather could get only the federal AI-IP protection. Crafting a specialized form of IP for AI implementations would allow for a proper balancing of the various concerns and interests within the statute itself. Granting trade secret protection for implementations of AI in critical areas can contribute to the severity of the problem of accountability because such protection is a barrier to independent researchers studying bias and other problems in AI-affected processes. Similarly, governmental regulation of and licensing of certain technologies or drugs or health equipment may often depend on understanding not just outcomes but also how the program or drug or whatever works. In addition to the bureaucratic suggestion above, one could imagine a system under which certain types of trade secrets are regulated for safety through required disclosures for governmental licensing and regulatory purposes even when the process itself may stay secret from competitors.27 Similarly, certain types of problems such as autonomous vehicles can be addressed through regimes of absolute liability without requiring further proof of specifically what went wrong but rather just causation or strict liability or products liability. General requirements for use of XAI could mitigate impacts as well. Compelled access to trade secrets for independent researchers could also serve these sorts of interests, while providing strong protection to the trade secret owners. The problem is real. It is here now. It should be addressed and the IP-SJ framework provides a useful way to approach building consensus and solutions.

27

E.g., product safety.

https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

166

Steven D. Jamar

conclusion In general, IP social justice theory supports much of the current contours of trade secret law. Some special concerns arise with respect to related matters of overuse of covenants not to compete or overly broad assertions of what constitutes a protectable secret (as distinguished from general know-how). Other difficult problems arise for certain fields where trade secrets can stymie access to life-saving drugs or where certain technologies such as AI can cause harm due to undiscovered and unexplained bias affecting important matters like employment or sentencing. For these and other matters that others will no doubt explore in the future, IP social justice provides a solid basis for assessing what the scope of trade secret protection should be.

https://doi.org/10.1017/9781108697613.011 Published online by Cambridge University Press

8 Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice? Yolanda M. King* and Lateef Mtima**

Introduction I. Tattoos, Publicity Rights, and Intellectual Property Social Justice II. The Origins and Social Function of the Right of Publicity III. Publicity Rights as Promoting IP Social Justice IV. Unauthorized Exploitation of Tattoos and Publicity Right Personas: Social Justice Implications V. Fulfilling Publicity Right Social Utility by Promoting Publicity Right Social Justice Conclusion

page 167 169 170 172 175 178 180

I am a canvas of my experiences, my story is etched in lines and shading, and you can read it on my arms, my legs, my shoulders, and my stomach. —Kat Von D, tattoo artist and television personality1

introduction As early as 1996, when bearing multiple tattoos was less common among celebrities and athletes, a famous tattoo bearer filed an intellectual property lawsuit to protect against the commercially exploitative use of his tattoos by a third party. Dennis Rodman, “a well-known, extremely successful and hugely popular professional basketball player” in the National Basketball Association (NBA), sought to prevent T-shirt manufacturer Fanatix Apparel, Inc. from making and selling the “Dennis Rodman Tattoo T-Shirt.”2 The long-sleeved T-shirt bore replicas of 10 of Rodman’s tattoos in the same locations as the tattoos on his body. Rodman’s primary assertion was that his tattoos had attained “distinctive trademark meaning among the general public,” and Fanatix’s T-shirt would cause a likelihood of confusion as to source and sponsorship.3 However, among various other causes of action, Rodman also alleged *

Associate Dean for Academic Affairs and Associate Professor of Law, Northern Illinois University College of Law. J.D., Harvard Law School, B.A., Indiana University-Purdue University at Indianapolis. ** Professor of Law, Howard University School of Law; Director, Institute for Intellectual Property and Social Justice. 1 Goodreads Inc., https://www.goodreads.com/quotes/tag/tattoos (last visited Feb. 6, 2015). 2 Rodman v. Fanatix Apparel, Inc., Case No. 96-2103 (D.N.J., May 28, 1996). 3 Id.

167 https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

168

Yolanda M. King and Lateef Mtima

that the T-shirt bearing replicas of his “extremely recognizable and identifiable” tattoos was a violation of his right of publicity.4 Rodman was successful in obtaining a preliminary injunction that barred Fanatix from making, selling, or marketing the T-shirt. Rodman’s lawsuit was historymaking at that time because it recognized the trademark significance and commercial endorsement potential of tattoos. Yet, many years passed before many others sought to protect their intellectual property interests in their tattoos. The Rodman lawsuit left open many questions concerning tattoo lawsuits, particularly concerning copyright and right of publicity laws. Many of these issues would eventually manifest in subsequent litigation involving the tattoo of another famous athlete, former heavyweight boxing champion Mike Tyson. Due in part to its notoriety and popularity, the facial tattoo of Michael Gerard “Mike” Tyson, one of the most famous heavyweight boxing champions who has transitioned from a career in sports to a career in entertainment in recent years, was the subject of the most publicized tattoo copyright lawsuit, Whitmill v. Warner Bros. Entertainment, Inc.5 In that lawsuit, S. Victor Whitmill, a tattoo artist, claimed that Warner Bros. infringed his copyright in his creation, the “original and distinctive tattoo” applied to Tyson’s face, based upon the production company’s unauthorized6 copying of the tattoo onto the face of the actor Ed Helms7 in its motion picture The Hangover Part II,8 as well as the reproduction, distribution, and display of the tattoo in connection with the advertising and promotion of the movie.9 Mike Tyson was not a party to the suit. Whitmill did not object to Tyson’s appearance in the film, and they apparently had an agreement which permitted Tyson to make such appearances. However, even Tyson did not have the right to reproduce the tattoo in other forms.10 Consequently, Whitmill objected to the reproduction of the tattoo onto Ed Helms’ face and the subsequent uses of the tattoo in connection with that unauthorized reproduction. In its defense, Warner Brothers argued that the use of the tattoo was a parody of the tattoo.11 However, the alleged parodic use of the tattoo was not commentary on the tattoo itself but rather

4 5

6

7

8 9 10

11

Id. (“[E]ach such tattoo is placed on the shirt in the same place as the actual tattoo is found on plaintiff’s body”.) Transcript of Trial, Whitmill v. Warner Bros. Entm’t Inc., No. 4:11-CV-752 CDP, 2011 WL 11819137 (E.D. Mo. May 23, 2011). Complaint }1, Whitmill v. Warner Bros. Entm’t Inc., No. 4:11-CV-752 CDP (E.D. Mo. Apr. 28, 2011), dismissed (E.D. Mo. June 22, 2011) (hereinafter Whitmill Complaint). The court concluded that the facts were largely uncontested and that “[n]either Tyson nor Warner Brothers sought approval from Whitmill [to reproduce the tattoo] before either movie.” Transcript of Preliminary Injunction Hearing at 2, Whitmill, No. 4:11-CV-752 CDP (filed June 21, 2011) [hereinafter Hearing Transcript]. Further, the court determined that Whitmill had not granted Warner Bros. a license, implied or otherwise, to “use the tattoo.” Id. at 4. Mike Tyson appeared in the The Hangover and The Hangover Part II. See Verified Answer to Complaint by Warner Bros. Entm’t Inc., Whitmill, No. 4:11-CV-752 at 5, }} 15–16 (filed May 20, 2011) [hereinafter Warner Bros. Answer] (“Warner Bros. states that Mr. Tyson appeared, with Mr. Tyson’s tattoo, in the first Hangover movie, as well as in an advertising poster for the first Hangover movie, and that thousands of images of Mr. Tyson, with Mr. Tyson’s tattoo, have appeared in magazines, television and on the internet since February 10, 2003”). Warner Bros. admitted that Tyson’s tattoo and the tattoo appearing on actor Ed Helms’ face in The Hangover Part II are similar but denied that there was any copyrightable expression in Tyson’s tattoo or that the tattoo on Helm’s face was pirated. Id. See Whitmill Complaint, supra note 6. Id. By placing the artwork on a person, the tattoo artist implicitly agrees that the wearer is authorized to display the work to others, at least under ordinary circumstances. However, although Mike Tyson had at least an implied license to display the Whitmill tattoo, only Whitmill as the copyright owner could authorize any independent reproduction and display of the work (e.g., on the face of Ed Helms in the film). Moreover, whether a tattoo artist can object to “extraordinary” displays of the work (e.g., Tyson’s appearance in the films) is a question that has not yet reached the courts, but one which would raise challenging questions of social justice. See Hearing Transcript, supra note 6, at 4 (Judge Perry noted, however, that “[the reproduction] did not comment on the artist’s work or have any critical bearing on the original composition”).

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice?

169

commentary on Mike Tyson.12 The effectiveness of the parody hinged upon the audience’s recognition of the meaning of Tyson’s tattoo as a part of Tyson’s personality – aggression, masculinity, and strength – and the juxtaposition of that meaning with the tattoo on the face of Ed Helms’ character in The Hangover Part II. Because Mike Tyson was not a party to the suit, Tyson’s publicity rights were not at issue in the Whitmill litigation; a third party generally cannot assert a person’s publicity rights because they are strictly tied to that person. Nonetheless, even though not asserted, Tyson had a publicity interest in the tattoo inked by Whitmill. Warner Brothers chose to use the tattoo because the tattoo conveyed qualities associated with Mike Tyson’s likeness. Mike Tyson’s tattoo had taken on the meaning of Tyson’s identity, and therefore, the tattoo had become a part of his likeness. Thus, the copyrighted work of S. Victor Whitmill had been transformed into a protectable part of Mike Tyson’s identity.

i. tattoos, publicity rights, and intellectual property social justice As tattoos and other “body art” have become prevalent in American society, their widespread use has raised several novel issues within intellectual property law. As expressive works, tattoos are generally eligible for copyright protection, provided they satisfy the threshold prerequisites of minimal creativity and originality. Because the medium through which tattoos are typically fixed and disseminated is the human body as opposed to paper or canvas or some inanimate, nonhuman object, a tattoo can, in addition to the copyright claim, also support a claim for publicity rights where the tattoo is so widely associated with a specific individual that its depiction invokes the identity of the wearer.13 In such cases, both the tattoo artist and the tattoo bearer enjoy independent intellectual property rights of copyright and right of publicity respectively. As demonstrated by the Rodman and Whitmill cases, commercial actors often attempt to exploit a celebrity’s fame through the unauthorized incorporation of her well-known attributes or characteristics, including unique tattoos, into commercial products and services. Inasmuch as the resulting avatar is not a literal depiction of the celebrity’s actual image or likeness, these actors typically argue that their activities fall outside the scope of the celebrity’s right of publicity or other IP rights. While these practices can sometimes obscure the contemporary boundaries of the right of publicity, they can also implicate important issues of IP social justice, particularly with respect to 12 13

See Yolanda M. King, The Enforcement Challenges for Tattoo Copyrights, 22 J. Intell. Prop. L. 29, 60 n.180 (2014). As evident from the Rodman case, where the tattoo bearer is a celebrity, the unauthorized replication of a tattoo can also give rise to a trademark false endorsement claim. False endorsement occurs where a person’s image or persona is used in association with a product in a way that is likely to mislead the consuming public as to that person’s sponsorship or approval of the product: “A false endorsement claim based on the unauthorized use of a celebrity’s identity is a type of false association claim, for it alleges the misuse of a trademark, i.e., a symbol or device such as a visual likeness, vocal imitation, or other uniquely distinguishing characteristic, which is likely to confuse consumers as to the plaintiff’s sponsorship or approval of the product.” Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992). “When . . . a celebrity brings a false endorsement suit under Section 43(a), his ‘celebrity persona’ functions as the ‘mark.’” Brown v. Elec. Arts, Inc., Case No. 2:09-cv-01598-FMC-RZx, 2009 U.S. LEXIS 131387, at *7 (C.D. Cal. Sept. 23, 2009). See also White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1400 (9th Cir. 1992). Likelihood of confusion is generally the controlling issue. See Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988) (enumerating an eight factor false endorsement likelihood of confusion test: (1) the level of recognition that the plaintiff has among the segment of the society for whom the defendant’s product is intended; (2) the relatedness of the fame or success of the plaintiff to the defendant’s product; (3) the similarity of the likeness used by the defendant to the actual plaintiff; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines (citing AMF, Inc., v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979)).

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

170

Yolanda M. King and Lateef Mtima

the rights of Black athletes and celebrities and other marginalized publicity right holders. In a variety of media formats, commercial actors have repeatedly resorted to the ploy of “attribute recognition,” including the replication of well-known tattoos, as a means by which to trade upon the celebrity of famous Black athletes, while denying the resulting claims for compensation for the commercial exploitation of the subject athletes’ publicity personas.14 This chapter explores the implications of the right of publicity from an IP social justice perspective, specifically in the context of the misappropriation of Black and other marginalized athletes and celebrities’ publicity rights through the unauthorized replication of their wellknown tattoos. While the right of publicity can provide important and socially beneficial opportunities for marginalized community access to, inclusion in, and empowerment through the IP ecosystem, misappropriation practices regularly deprive Black athletes and other marginalized rights holders of their IP rights and interests. By acknowledging the interdependent relationship between the right of publicity’s social utility function and its social justice obligations and effects, courts and legislators can curb the systemic enervation of publicity rights and re-energize them to serve the greater societal good.

ii. the origins and social function of the right of publicity The doctrinal roots of the right of publicity can be traced to the landmark law review article by Samuel D. Warren and Louis D. Brandeis, which argued in favor of judicial recognition of “a right to be let alone.”15 That article is generally considered the cornerstone in the development of the right of privacy, but it also laid the foundation for the right of publicity. Some of the same considerations are present – in particular the right to control your commercial self or persona. Critical of what seemed to them the inappropriate intrusion of the public press into private matters and the consequential public fascination with sensationalism, Warren’s and Brandeis’ observations still apply today: Of the desirability – indeed of the necessity – of some such protection, there can, it is believed, be no doubt. The press is overstepping in every direction the obvious bounds of propriety and of decency. Gossip is no longer the resource of the idle and of the vicious, but has become a trade, which is pursued with industry as well as effrontery. To satisfy a prurient taste the details of sexual relations are spread broadcast in the columns of the daily papers. To occupy the indolent, column upon column is filled with idle gossip, which can only be procured by intrusion upon the domestic circle. The intensity and complexity of life, attendant upon advancing civilization, have rendered necessary some retreat from the world, and man, under the refining influence of culture, has become more sensitive to publicity, so that solitude and privacy have become more essential to the individual; but modern enterprise and invention have, through invasions upon his privacy, subjected him to mental pain and distress, far greater than could be inflicted by mere bodily injury.16

14

15 16

See Lateef Mtima, What’s Mine Is Mine But What’s Yours Is Ours: IP Imperialism, the Right of Publicity, and Intellectual Property Social Justice in the Digital Information Age, 15 SMU Sci. & Tech. L. Rev. 323, 363–66 (2012); see, e.g., Abdul-Jabbar v. General Motors Corp., 85 F.3d 407, 416 (9th Cir. 1996); Brooks v. Topps Co., 86 U.S.P.Q.2d (BNA) 1361 (S.D.N.Y. 2007); Brown v. Elec. Arts, Inc., Case No. 2:09-cv-01598-FMC-RZx, 2009 U.S. Dist. LEXIS 131387 (C.D. Cal. Sept. 23, 2009); Hart v. Electronic Arts, Inc., 717 F 3d 141 (3d Cir. 2013); Keller v. Elec. Arts (In re NCAA Student-Athlete Name & Likeness Licensing Litig.), 724 F.3d 1268, 1276 (9th Cir. 2013); Jordan v Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir. 2014). Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193, 195 (1890). Id. at 196.

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice?

171

Although the “right of privacy” for which Warren and Brandeis advocated was not immediately embraced by the courts,17 the judiciary would gradually accept the idea that every individual should be entitled to some measure of legal protection from public intrusion upon her life and the facts and personal attributes which comprise her individual identity. In time, various courts would adopt and apply the theory to a variety of conflicts which involve the delineation of the boundary between private life and the information about a person that could reasonably be considered available to the public without infringing a protectable interest of the individual.18 In a pivotal decision by the Second Circuit Court of Appeals, the right of publicity was recognized as a distinct species of the right of privacy. In Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., the plaintiff Haelan Laboratories had entered into an exclusive contract with a professional baseball player to place his photograph on trading cards.19 Subsequently, however, the defendant Topps induced the baseball player, in breach of his prior, exclusive agreement, to allow Topps to also use his photograph on its competing trading cards. In defense against the plaintiff’s lawsuit, Topps argued that the baseball player had no legally recognized property interest in his image that he could have assigned to the plaintiff, inasmuch as any right of privacy possessed by the baseball player was essentially a right in tort to prevent unwanted attention. Although the baseball player could agree to refrain from suing the plaintiff for intruding on that right (as evidenced by the parties’ contract) his right to sue other, prospective intruders was personal in nature and therefore unassignable, and consequently the plaintiff could not acquire the legal interest that it claimed Topps had violated.20 The Court of Appeals disagreed: We think that in addition to and independent of [a] right of privacy . . . a man has a right in the publicity value of his photograph, i.e., the right to grant the exclusive privilege of publishing his picture . . . This right might be called a ‘right of publicity’. For it is common knowledge that many prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways. This right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures.21

Another major step in the renowned legal scholar Dean conceptions of privacy rights privacy interests,22 describing 17

18 19 20 21

22

development of the right of publicity occurred in 1960 when Prosser published a seminal article charting the various judicial in which he outlined four categories of judicially recognized the latter-most interest as the right to protect one’s image or

See generally J. Thomas McCarthy, 1 Rights of Publicity and Privacy § 6.3 (2d ed. 2006); see, e.g., Roberson v. Rochester Folding Box Co., 64 N.E. 442, 451 (N.Y. 1902). Id. 202 F.2d 866, 867 (2d Cir. 1953). Id. at 867. Id. at 868. See also Melville B. Nimmer, The Right of Publicity, 19 Law & Contemp. Probs. 203, 203–204 (1954), http://scholarship.law.duke.edu/cgi/viewcontent.cgi?article=2596&context=lcp (“Well known personalities . . . do not seek the ‘solitude and privacy’ which Brandeis and Warren sought to protect . . . However, although the well-known personality does not wish to hide his light under a bushel of privacy, neither does he wish to have his name, photograph, and likeness reproduced and publicized without his consent or without remuneration to him”). William L. Prosser, Privacy, 48 Cal. L. Rev. 383, 389 (1960), http://www.californialawreview.org/assets/pdfs/misc/ prosser_privacy.pdf. Dean Prosser enumerated the following four categories of invasion of privacy: “[i]ntrusion upon the plaintiff’s seclusion or solitude, or into his private affairs”; “[p]ublic disclosure of embarrassing private facts about

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

172

Yolanda M. King and Lateef Mtima

likeness from misappropriation, or a “right of publicity.”23 Thereafter, both the Restatement (Second) of Torts and the Restatement (Third) of Unfair Competition included the right of publicity, enumerating the elements of the cause of action.24 Today, as a creature of both state common and statutory law, the right of publicity generally provides individuals the legal right to determine when or if others may utilize or exploit their images or personas for commercial gain, and among other things, ensures them the right to participate in the commercial benefits that might be derived from such uses: The right of publicity is an intellectual property right of recent origin which has been defined as the inherent right of every human being to control the commercial use of his or her identity. [It] is a creature of state law and its violation gives rise to a cause of action for the commercial tort of unfair competition.25

Although the beneficial objectives of the right are typically articulated in economic terms, the right of privacy origins of the right of publicity suggest a social utility function that extends beyond the protection of remunerative interests. As a right to control the use of aspects of one’s own person in physical aspects as well as in other, often less tangible aspects, the social utility potential of publicity rights, including the potential for promoting IP social justice, transcends economic concerns. By exploring the social justice opportunities and effects of the right of publicity it is possible to gain greater appreciation for the social justice potential of the right.

iii. publicity rights as promoting ip social justice As with all other areas of intellectual property protection, a social justice analysis of the right of publicity begins with the identification of its primary social utility objectives and the relationship between these objectives and any pertinent social justice effects and concerns.26 The United States Supreme Court has articulated a number of important social utility objectives promoted by the right of publicity.27 Among other things, publicity rights help to protect individual privacy and personal dignity by providing individuals with some measure of control over how their personas can be used and what commercial products or services they can be associated with.28

23 24 25

26

27 28

the plaintiff”; “[p]ublicity which places the plaintiff in a false light in the public eye”; and “[a]ppropriation, for the defendant’s advantage, of the plaintiff’s name or likeness.” Id. Id. This is the interest the Haelan court denominated as the right of publicity. 202 F.2d at 868. Restatement (Third) of Unfair Competition § 46 (1995); Restatement (Second) of Torts § 652C (1977). ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 928 (6th Cir. 2003) (citing McCarthy, supra note 17, at § 1:3; see also Memphis Dev. Found. v. Factors Etc., Inc., 616 F.2d 956, 957 (6th Cir. 1980) (“The famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality”). As discussed above, particularly insofar as celebrities are concerned, the right to control use and exploitation of one’s image or persona can also be asserted under the Lanham Act through the cause of false endorsement. Because right of publicity and false endorsement claims are often raised simultaneously and substantively overlap, the disposition of the one is often difficult to segregate from the resolution of the other. See, e.g., Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (applying essentially the same legal test to balance both trademark endorsement and right of publicity claims against First Amendment interests). Nonetheless, the principal distinctions between false endorsement and right of publicity claims are (i) “trademark status” for the plaintiff’s persona, and (ii) the requirement of a likelihood of confusion of the public as to the plaintiff’s endorsement of the defendant’s product. See Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 573 (1977). Rita Heimes, Trademarks, Identity, and Justice, 11 J. Marshall Rev. Intell. Prop. L. 133, 157 (2011) (“The philosophical reasons for promoting individual ownership of identity complement the economic ones, at least from a social justice perspective. One is morally entitled to self-define and even to commercialize one’s own persona. At the same time, the opportunity to exploit identity for commercial gain . . . by taking advantage of accidental fame – is one

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice?

173

The social justice implications attendant to control over the identity aspects of one’s person are self-evident.29 While intrusion upon the human persona may not rise to a violation of human rights on par with that of intrusion upon the human person, dominion over one’s own identity is nonetheless an important aspect of human individuality, liberty, and dignity.30 Indeed, the misuse of individual personas is often an important tool of racial caricature and the perpetuation of demeaning racial and other socially pernicious characterizations and perceptions.31 While the right of publicity is typically invoked to protect pecuniary interests, the assertion of commercial rights to protect broader interests is a common and effective stratagem in a society which prioritizes free market values.32 In this regard, social activists as well as the courts have yet to mine the full social justice potential of the right of publicity. Subject to First Amendment imperatives, each person is free to enjoin any commercial use of her persona and to decline any and all license requests or selectively grant licenses for such uses and licensees she deems desirable.33 As perhaps the most personal of IP interests, individuals should be free to evaluate publicity right transactions on the basis of a wide range of considerations, and not solely upon the amount of a prospective license fee.34 Accordingly, it may be possible to curtail a variety of offensive or objectionable commercial activities through strategic use of the right of publicity.35

29 30

31 32

33

34

35

additional opportunity for empowerment through entrepreneurship . . . In the social justice context, supporting these individual interests and values is warranted provided the broader societal interests in cultural development and freedom of expression are taken into consideration”). G.A. Res. 217(III) A, Universal Declaration of Human Rights, art. 19, 22, Dec. 10, 1948. See, e.g., Parks v. LaFace Records, 329 F.3d 437, 443 (6th Cir. 2003), wherein the civil rights icon brought an action to prevent the use of her name in a rap record which used profanity and offensive language. Indeed, this was arguably one of Warren and Brandeis’ specific objectives in arguing for recognition of the right of privacy in which the right of publicity is rooted. Pro-Football, Inc. v. Harjo, 415 F.3d 44, 46 (D.C. Cir. 2005); see also Matal v. Tam, 137 S. Ct. 1744 (2017). See Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law and Hannibal Travis, Trademarks, Legal Remedies, and Social Injustices, respectively chs. 2 and 6 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Parks v. LaFace Records, 329 F.3d 437, 443 (6th Cir. 2003); Roberta Rosenthal Kwall, The Right of Publicity vs. the First Amendment: A Property and Liability Rule Analysis, 70 Ind. L.J. 47, 55–56 (1994) (“[T]he right of publicity has the potential for safeguarding from unauthorized use any marketable and publicly recognizable attribute of any individual, regardless of whether that person is a celebrity. Moreover, whatever the means through which an individual’s persona comes to have value, that value should be attributable to the persona of the publicity plaintiff who has a right to participate in decisions about how her persona is utilized by others. This is the overall objective which the right of publicity tries to fulfill”). See Peter S. Menell, Mapping the Intellectual Property/Social Justice Frontier; Lateef Mtima, What Is Intellectual Property (And Why Should You Care About It Anyway?); Mason Marks, People Are the Lifeblood of Innovation; Krista Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law; and Debora Halbert & Billy Meinke, IP and Social Justice Futures, respectively chs. 1, Prolusion, 4, 15, and 24 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Concededly, such “offensive” use of publicity rights can implicate important First Amendment interests, inasmuch as the right of publicity is not intended as a right of censorship. See, e.g., Roberta Rosenthal Kwall, The Right of Publicity vs. the First Amendment: A Property and Liability Rule Analysis, 70 Ind. L.J. 47, 48 (1995); Gloria Franke, The Right of Publicity vs. the First Amendment: Will One Test Ever Capture the Starring Role?, 79 S. Cal. L. Rev. 945, 946 (2006); David S. Welkowitz & Tyler T. Ochoa, The Terminator as Eraser: How Arnold Schwarzenegger Used the Right of Publicity to Terminate Non-Defamatory Political Speech, 45 Santa Clara L. Rev. 651 (2005) At the same time, however, the First Amendment should not be misused to dissemble the rank commercial appropriation of another’s intellectual property. To balance these sometimes competing interests, the courts have developed various judicial tests for analyzing conflicting claims of publicity rights and First Amendment interests, to ensure that society’s interest in preserving both rights is properly served. See, e.g., Comedy III Prods., Inc. v. Saderup, 21 P.3d 797 (Cal. 2001) (formulation of the “transformation test,” which analyzes the unauthorized use of a publicity persona in an expressive work, to determine whether the primary purpose of the use is to trade upon the subject’s fame or public appeal). See

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

174

Yolanda M. King and Lateef Mtima

In addition to protecting self-autonomy, the right of publicity provides secular inducement to pursue personal achievement. Whereas other IP rights are intended to incentivize select kinds of intellectual endeavor, such as the production of expressive works or useful innovations, publicity rights can provide secular incentive to invest effort and resources in the development of any kind of individual skill or talent, the stylization of personal attributes and innovations, or to otherwise pursue activities and accomplishments of public and popular interest. While many individuals are naturally inclined to discover and develop their innate capabilities, the possibility of celebrity, public renown, and prospective commercial reward can provide concrete justification for dedicating years of training and practice of the sort often necessary to reaching one’s personal apogee.36 In this respect, the right of publicity may be the most egalitarian of IP rights insofar as it is not dependent upon achievement in any elite or specialized fields of creative or inventive endeavor. Instead, any kind of intellectual, athletic, or socio-political accomplishment can provide the kind of public notoriety that will imbue one’s right of publicity with commercial value and public appeal.37 Publicity rights thus provide universal access to an important part of the IP ecosystem: special talents are welcome but virtually any kind of personal achievement can swing wide the door to IP ownership. Publicity rights thus embody the IP social justice precept of socially equitable access, inclusion, and empowerment as well as the IP-SJ precept concerning the interdependent relationship between IP social utility and IP social justice. In preserving human dignity and incentivizing human-actualization for all persons, the right of publicity promotes societal advance through the widest variety of human endeavors. Indeed, even wholly “ordinary” persons can find themselves in extraordinary circumstances that lead to widespread recognition and the personal and communal socio-economic uplift that can accompany public distinction.38 The right to control the use and exploitation of one’s persona can be wielded to achieve a social change as well as to obtain monetary benefit. By exploring the analytical interdependence between right of publicity social utility and its corollary social justice obligations and effects, the law can be shaped to advance a variety of socially propitious goals. In this way, socially

36

37

38

generally Lateef Mtima, So Many Waters Under This Troubled Bridge: Navigating Right of Publicity Jurisprudence, 59 IDEA 213, 214 (2018) (theorizing that the leading right of publicity/First Amendment balancing tests collectively provide a “‘spectrum of adjudication’ for resolving conflicts between these important interests”). See, e.g., Jennifer L. Carpenter, Internet Publication: The Case for an Expanded Right of Publicity for Non-Celebrities, 6 Va. J.L. & Tech. 3, 11, 14 (2001) (“Scholars and courts have isolated four primary policy justifications for the right of publicity: providing incentives for creativity, allowing those who achieve notoriety to enjoy the fruits of their own labor, guarding against consumer deception, and preventing unjust enrichment . . . The fourth . . . rationale . . . for recognizing the right of publicity is that it prevents publishers from unfairly profiting from a celebrity’s public reputation without sharing some of that profit with the celebrity who worked for that reputation. This moral argument reflects a basic societal belief that it is wrong for ‘free-riders’ or ‘parasites’ to appropriate (and profit from) another person’s hard work”); Zacchini v. Scripps-Howard Broad. Co., 433 U.S. at 573 (“[T]he State’s interest in permitting a ‘right of publicity’ is in protecting the proprietary interest of the individual in his act in part to encourage such entertainment . . . [T]he State’s interest is closely analogous to the goals of patent and copyright law, focusing on the right of the individual to reap the reward of his endeavors”). See, e.g., Werner Geyser, 23 Black Social Media Influencers You Should Follow Right Now, https:// influencermarketinghub.com/black-social-media-influencers/. From Rosa Parks to George Floyd, “everyday” people are often thrust into circumstances that spark global movements. See, e.g., Andrew Gilden, IP, R.I.P., 95 Wash. U. L. Rev. 639 (2017) (exploring the dignity and other perspectives of the publicity figure’s heirs); Kirsten West Savali, Jordan Edwards’ Family: “We Are Not Ready to Make a Martyr of Our Son,”’ The Root, May 5, 2017, https://www.theroot.com/jordan-edwards-family-we-are-not-ready-to-make-a-marty1794961566 (discussing family’s plea against use of late son’s name as a hashtag); Randy Kennedy, White Artist’s Painting of Emmett Till at Whitney Biennial Draws Protests, N.Y. Times, Mar. 21, 2017, https://www.nytimes.com/ 2017/03/21/arts/design/painting-of-emmett-till-at-whitney-biennial-draws-protests.html?_r=0 (discussing the controversy regarding white artist’s gallery presentation of her depiction of Black lynching victim).

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice?

175

progressive and equitable policies can be pursued and achieved through strategic invocation and application of right of publicity law and doctrine.

iv. unauthorized exploitation of tattoos and publicity right personas: social justice implications What if a video game manufacturer or distributor released a sports-related video game featuring avatars of professional athletes bearing reproductions of the tattoos that the athletes bear in real life?39 What if a music artist released an album featuring someone’s likeness, including the person’s distinctive tattoo?40 Arguably, in the actual cases that involve these tattoos, the uses in the video game and cover art feature tattoos that have become part of the tattoo bearers’ identities. These uses give rise to copyright and right of publicity claims in atypical contexts, and whether the users should be liable for featuring the tattoos in their creative works can implicate questions more complex than the issues that typically arise in connection with the unauthorized use of more traditional indicia of one’s identity, such as name, photograph, or even voice. Nonetheless, these instances of tattoo use, whether the use of an image of one’s entire body that displays one or more tattoos, or the use of a part of one’s body, which only identifies the tattoo bearer by the distinctive tattoo(s) alone, can infringe upon the bearer’s right of publicity interests. Tattoo artists, who historically have created their works on the fringes of society, have begun resorting to the legal system to stop the commercialization of their works in advertising and various entertainment media. However, tension has arisen among the rights of tattoo artists (who are often the copyright owners of the tattoos), the rights of the tattoo bearers, and the rights of third parties. As tattooing has become increasingly prevalent among celebrities and athletes, tattoos have been depicted on celebrity and athlete avatars in video games, arguably for the purpose of greater realism. This prevalence has also resulted in tattoos becoming one with the identities of the tattoo bearers. A tattoo that serves as an indicia of the bearer’s identity, rather than solely retaining the meaning of the tattoo itself, acquires protections under right of publicity laws. On March 26, 2020, the Southern District of New York issued the first court decision on tattoo copyrights.41 In 2016, Solid Oak Sketches filed a lawsuit against the makers of the NBA 2K series of video games.42 Solid Oak alleged it was the exclusive licensor of the rights in five copyrighted tattoos created by tattoo artists Tommy Ray Cornett, Shawn Rome, and Justin Wright, and inked on the bodies of three players in the NBA, Eric Bledsoe, LeBron James, and Kenyon Martin, and, because the tattoos had been reproduced and displayed on the avatars of Bledsoe, James, and Martin in the NBA 2K video game without authorization, the defendants had infringed the copyrights in the tattoos.43 The defendants, 2K Games, Inc. and Take-Two Interactive Software, Inc., moved for summary judgment seeking dismissal of Solid Oak’s copyright infringement claim on the alternative grounds that their uses of the tattoos were de minimis, permitted under the copyright fair use doctrine, and authorized by implied license.44

39 40 41 42 43

44

Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-cv-724-LTS, 449 F. Supp. 3d 333 (S.D.N.Y. Mar. 26, 2020). Brophy v. Almanzar, No. SACV 17-01885-CJC(JPRx), 2020 U.S. Dist. LEXIS 247903 (C.D. Cal. Dec. 4, 2020). Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-cv-724-LTS, 449 F. Supp. 3d 333 (S.D.N.Y. Mar. 26, 2020). Complaint, Solid Oak Sketches, LLC v. Visual Concepts, LLC et al., No. 1:16-CV-00724 (S.D.N.Y. Feb. 1, 2016). Second Amended Complaint, Solid Oak Sketches, LLC v. 2k Games, Inc. et al., No. 1:16-CV-00724 (S.D.N.Y. Feb. 1, 2016); Defendant’s Response to Judgment on the Pleadings, Second Amended Complaint, Solid Oak Sketches, LLC v. 2k Games, Inc. et al., No. 1:16-CV-00724 (S.D.N.Y. Feb. 1, 2016). Id.

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

176

Yolanda M. King and Lateef Mtima

The court granted defendants’ motion and dismissed Solid Oak’s copyright infringement claim, finding that defendants’ use was de minimis as “no reasonable trier of fact could find the tattoos as they appear in NBA 2K to be substantially similar to the tattoo designs licensed to Solid Oak.”45 The court was persuaded by the evidence that the players bearing the tattoos were unlikely to be included in “average gameplay,” and that even when they did, the tattoos were small and distorted, and indiscernible to the average game user.46 Regarding the implied license, the court found the tattoo artists necessarily granted the basketball players nonexclusive licenses to use the tattoos as part of their likenesses, and the artists did so prior to granting any licenses to Solid Oak.47 Because the players indirectly (through the NBA) or directly licensed their likenesses to defendants to use in NBA 2K, defendants had permission to include the tattoos on the players’ avatars as part of their likenesses in the games.48 Finally, the court also concluded that all four statutory copyright fair use factors49 weighed in favor of defendant’s use because (1) defendants’ use of the tattoos was transformative,50 (2) the tattoos were previously published and more factual than expressive, (3) the tattoos were copied in their entirety but reduced in size and used for a transformative purpose, and (4) the tattoos featured in the video game could not substitute for use of the tattoos in any other medium and a market for licensing tattoos for use in video games and other media was unlikely to develop. When analyzing fair use and whether defendants’ use of the tattoos in the video game had an effect on any existing or potential market for, or value of, the copyrighted tattoos, the court concluded that even if a market for licensing tattoos in video games and other media was likely to develop, Solid Oak could not capitalize on that market because the tattoos “are imprinted on the bodies of the Players and Plaintiff is not licensed to use the Players’ publicity rights.”51 However, in the context of its analysis of the implied license defense, the court found that defendants were licensed by the players to use their images, and accordingly, the players’ publicity rights. In short, the players had licensed the use of their images and their images included the tattoos on their bodies. In Solid Oak Sketches, the court accurately and appropriately recognizes the distinction between the copyrights in the tattoo designs and the players’ independent rights to their names, likenesses, and other parts of their identities. Generally, the author of an expressive work is the owner of the copyright in that work.52 Therefore, if a tattoo bearer is an author, or co-author, of a 45 46 47 48 49

50

51 52

Solid Oak Sketches, 449 F. Supp. 3d at 345. Id. Id. at 346. Id. 17 U.S.C. § 107 (“In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include – (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work”). The fair use provision of the Copyright Act also sets forth illustrative categories of noninfringement, such as use for the purposes of “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” Id. Id. at 347 (The court concluded, among other reasons, that defendants’ use was transformative because defendants’ purpose was different from the purpose for which the tattoos were originally created. The tattoos “were originally created as a means for the Players to express themselves through body art.” However, “Defendants reproduced the tattoos in the video game in order to most accurately depict the Players”). Id. at 350. 17 U.S.C. § 201(a) (2012) (“Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owners of the copyright in the work”). An exception to the general rule is the work made for hire doctrine. Under the work made for hire doctrine, the author of the work is “the employer or other person for whom the work was prepared.” Id. at § 201(b).

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice?

177

tattoo, then the tattoo bearer owns, or co-owns, the copyright in the tattoo.53 However, this copyright is distinct from the publicity rights that the tattoo bearer has in the tattoo as part of the bearer’s identity. As expressed by NBA player LeBron James: My understanding is that the tattoos are a part of my body and my likeness, and I have the right to have my tattoos visible when people or companies depict what I look like. I always thought that I had the right to license what I look like to other people for various merchandise, television appearances, and other types of creative works, like video games.54

James’ understanding of his rights comports with the decision of the Solid Oak Sketches court, particularly concerning defendants’ fair use counterclaim and implied license defense. The court found the tattoo artists necessarily granted the basketball players nonexclusive licenses to use the tattoos as part of their likenesses, and the basketball players then licensed their likenesses to defendants, because the players had rights to the tattoos as part of their likenesses. A contrary holding would have given the tattoo artist dominion over the bodies of the tattoo bearers – the athletes could only display their images (or grant others the right to display their images) with the permission of the tattoo artist. The right of publicity, which “prevents the unauthorized commercial use of an individual’s name, likeness or other recognizable aspects of one’s persona,”55 has been extended to cover a voice, name, photograph, likeness, business building, picture of a unique article, signature phrase, and fictional character.56 Intellectual property law scholars have long contemplated the possibility of a person’s identity to encompass images incorporated into a work of art on a person’s body.57 Solid Oak Sketches is the first decision to recognize this principle, which is a step in the right direction of protecting a tattoo bearer’s ability to control the exploitation of their identity. The Central District of California is considering a similar issue in Brophy v. Almanzar.58 This lawsuit concerns plaintiff Kevin Brophy, Jr., a “surfing and lifestyle company” employee with a “unique tattoo across his back depicting a tiger battling a snake.”59 Brophy claims his back tattoo has become an identifiable feature by his friends, his business, and the surfing community and people instantly recognize him by his tiger snake tattoo.60 Brophy alleges that defendants misappropriated his likeness (in violation of his California common law and statutory publicity rights) in a “misleading, offensive, humiliating and provocatively sexual way to launch [Cardi B’s] career in music and entertainment” when defendants used, without his authorization, an image of his back tattoo on the cover of rap artist Cardi B’s mixtape in March 2016.61 According to Brophy, the cover depicts Cardi B forcing a man with his unique back tattoo, whose back is 53 54 55

56 57

58 59

60 61

Id. at § 201(a). Lebron James Declaration, }10. Restatement (Third) of Unfair Competition § 46 (2008) (“[O]ne who appropriates the commercial value of a person’s identity by using without consent the person’s name, likeness, or other indicia of identity for purposes of trade is subject to liability”). 4 Callman on Unfair Comp., Tr. & Mono. § 22.32 (4th ed. 2016–2022). Yolanda M. King, The Right of Publicity Challenges for Tattoo Copyrights, 16 Nev. L.J. 441, 446 (2016) (“[I]t is plausible that a celebrity could bring a right-of-publicity claim based on appropriation of his or her identity, even if the exploited part of the identity is the celebrity’s tattoo”); Thomas F. Cotter & Angela M. Mirabole, Written on the Body: Intellectual Property Rights in Tattoos, Makeup, and Other Body Art, 10 UCLA Ent. L. Rev. 97, 137 (2003). Brophy v. Almanzar, 359 F. Supp. 3d. 917 (C.D. Cal. 2018). Id. Order Denying Motion to Dismiss (Brophy “claims that because his work requires him to ‘wear’ board shorts but no shirt regularly, his back and tattoos are frequently exposed”). Id. Brophy v. Almanzar, 359 F. Supp. 3d. at 921.

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

178

Yolanda M. King and Lateef Mtima

the only prominently visible part of his body, to perform oral sex on her, holding him face-down between her legs, while she drinks a beer and stares into the camera.62 Defendants argue, among other things, that (1) Brophy failed to state a common law publicity claim because he does not allege that his face was visible or his name was used and (2) Brophy failed to state a statutory publicity claim because defendants did not knowingly use his likeness due to the creation of the mixtape cover artwork by a third party, and defendants’ use was transformative.63 In denying defendants’ motion to dismiss for failure to state a claim, the court concludes that Brophy sufficiently alleges a common law claim because he “alleges that his tattoo is part of his likeness because it is unique and distinctive.”64 Regarding the statutory claim, the court concluded that Brophy adequately alleged a claim because he alleged the elements of the common law cause of action and defendants’ challenges to the two additional elements of the statutory cause of action, knowing use of the plaintiff’s likeness and a direct connection between the use and the commercial purpose, were not amenable for resolution on a motion to dismiss.65 If the Brophy court ultimately finds in favor of Brophy on one or both of his publicity claims, it will be the second decision to recognize publicity interests in a tattoo bearer’s tattoo, and it will expand the scope of this recognition to a third party’s use of the bearer’s tattoo in absence of the visibility of other parts of the bearer’s body. In order to avoid the exploitation of a tattoo bearer’s likeness, whether the bearer is a celebrity/athlete who happens to have one or more prominent tattoos or a noncelebrity whose tattoo gains distinctiveness and prominence, an expansive recognition of a tattoo bearer’s publicity rights in their tattoo is necessary. A contrary outcome would undermine a tattoo bearer’s ability to protect against the exploitation of the very subject matter that the right of publicity was created to preserve, the natural rights an individual possesses in one’s identity, which are distinguishable from any pertinent trademark interests such as at the heart of the court’s decision in Rodman,66 or any copyright interests which belong to the tattoo artist.

v. fulfilling publicity right social utility by promoting publicity right social justice Consistent with the social utility and social justice objectives of the right of publicity, courts should continue to recognize tattoos as among the personal attributes that can provide the basis for publicity rights. Where a tattoo has become widely associated with an individual wearer, its replication can invoke that wearer’s publicity persona, particularly where the tattoo is unique or distinctive, or replicated with the wearer’s other personal attributes and features. In such cases, the person or entity replicating the tattoo is effectively trading upon the public’s recognition of the tattoo wearer, a personal asset attendant to the wearer’s identity, which the law protects from unreasonable intrusion and unauthorized commercial exploitation. 62 63

64 65 66

Id. at 922. Answer at 14, Brophy Jr. v. Almanzar et al., No. SACV 17-01885-CJC(JPRx), 2018 U.S. Dist. LEXIS 54874 (C.D. Cal. Mar. 30, 2018). Brophy v. Almazar, No. SACV 17-01885-CJC(JPRx), 2019 U.S. Dist. LEXIS 233894, *24 (C.D. Cal. Aug. 22, 2019). Id. at *24–26. Daniel Gervais & Martin L. Holmes, Fame, Property, and Identity: The Purpose and Scope of the Right of Publicity, 25 Fordham Intell. Prop. Media & Ent. L.J. 181, 199–200 (2015) (“Rationales that are used to justify trademark law should not be offered to justify the right of publicity simply because the two rights seem similar . . . ‘[S]ome courts have failed to see the important distinctions and have unthinkingly imported certain inapplicable pieces of trademark doctrine into right of publicity cases’” (quoting Hart v. Elec. Arts, Inc., 717 F.3d 141, 155 (3d Cir. 2013)); Restatement (Third) of Unfair Competition § 46 (Am. Law Inst. 1995) (“Proof of deception or consumer confusion is not required for the imposition of liability under this Section”).

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

Tattoo Use: What Does the Right of Publicity Have to Do With Social Justice?

179

As evident from the foregoing cases, judicial acknowledgement of tattoo and other “attribute recognition” is supported by the interdependent relationship between the social utility function of the right of publicity and the social justice obligations and effects of publicity rights. For many individuals, including those from marginalized communities, public recognition may come as a result of achievements that do not in and of themselves constitute intellectual property output, such as expressive works or useful inventions, and consequently such achievements do not give rise to the kind of royalty revenues that IP products can provide. Moreover, the type of financial remuneration usually derived directly from athletic prowess or physical artistic talent is typically limited in duration; statistically speaking, success in high school and collegiate sports rarely leads to lucrative professional careers.67 But whereas the opportunities to wealth through professional athletics are limited, the public recognition which can accompany athletic accomplishments can generate significant ancillary financial rewards through commercial endorsements and similar opportunities.68 The right of publicity can thus provide important incentives to those who lack the resources to pursue expressive or utilitarian intellectual property endeavors to develop instead personal talents or skills in fields which garner the public’s attention or are otherwise pertinent to the societal good. Allowing others to misappropriate the commercial value attendant to, and thereby diminish the incentives for such individual initiative, is not only socially unjust but socially counterproductive. Perhaps even more important than its potential for financial reward, as demonstrated by both the Brophy and Parks cases, the right of publicity can also protect the dignity interest in one’s public persona. For these publicity plaintiffs, obtaining a share of the commercial revenues generated by the unauthorized enterprise is hardly their objective. Moreover, right of publicity protection of dignity interests can have special significance to racial minorities and other marginalized communities, who have historically endured negative stereotypes and demeaning caricatures. These pernicious depictions can be perpetrated through the use of a specific person’s literal image or some other cognizable aspects of her persona. The law has long recognized a person’s right to be protected from false association with unsavory matters, and individuals should be free to exercise the “commercial veto” provided by the right of publicity to protect their personal dignity, including in those situations wherein their motivation transcends personal offense and extends to concern for the dignity of their communities as a whole.69 The right of publicity manifests the core precepts of IP social justice – it is an intellectual property interest that enables widespread and equitable access to the IP ecosystem, and when 67

68

69

See, e.g., In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d at 1273 n. 5 (discussing the social equities involved in the commercial exploitation of student athlete personas; while very few of these students, many hailing from inner city neighborhoods and rural towns, could expect collegiate sports to lead to professional athletic careers, for decades they were precluded by NCAA rules from exploiting their valuable publicity personas for their own benefit. “The NCAA received revenues of $871.6 million in fiscal year 2011–12, with 81% of the money coming from television and marketing fees. However, few college athletes will ever receive any professional compensation. The NCAA reports that in 2011, there were 67,887 college football players. Of those . . . only 255 athletes were drafted for a professional team. Thus, only 1.7% of seniors received any subsequent professional economic compensation for their athletic endeavors”). Nasha Smith, 13 Athletes Who Make More Money Endorsing Products Than Playing Sports, Business Insider, Jun. 17, 2019, 1:17 p.m., https://www.businessinsider.com/athletes-endorsements-nba-golf-tennis-2019-6 (noting that Tiger Woods makes 97 percent of his earnings from endorsements, LeBron James 61 percent, Stephen Curry 55 percent, and so on). As noted above in connection with the various right of publicity/First Amendment balancing tests, judicial recognition and enforcement of publicity rights in these situations need not come at the expense of other social interests. Moreover, just as the author of hate speech is entitled to deploy not only the First Amendment but also copyright to protect her interest in expressing her views, the holder of publicity rights should also be free to use her legal rights to oppose racist, sexist, and similar attitudes where the law provides an avenue for pursuing such strategies. The freedom to decline a commercial opportunity is as revered as the freedom to contract.

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

180

Yolanda M. King and Lateef Mtima

properly assessed and enforced, it promotes equitable inclusion in and socio-economic empowerment through the intellectual property regime. Judicial recognition and enforcement of publicity rights in tattoo attribute cases promotes these principles and can be particularly important to furthering these social objectives on behalf of marginalized communities, and thereby broadens their stake in and respect for the IP ecosystem as a whole.70 As an intellectual property right within everyone’s reach, judicial evolution of the right of publicity to keep pace with the means by which personal attributes can comprise individual publicity personas is essential to fulfilling the social promise of this form of intellectual property protection.

conclusion Publicity rights embody the salient goals of IP social utility and the fundamental aspirations of IP social justice: publicity rights facilitate broad access to and participation in the IP ecosystem and otherwise promote human actualization, and when these rights are properly assessed and equitably enforced, they can engender socio-economic empowerment through intellectual property production and other socially beneficial endeavors. Judicial recognition and enforcement of publicity rights in tattoo attribute cases supports these social objectives, and while these rights can be especially important to the socio-economic advancement of marginalized rightsholders, the ultimate beneficiary of a social justice perspective toward publicity rights is society as a whole.

70

A review of the leading court decisions involving the publicity rights of marginalized rights holders demonstrates the importance of a social justice perspective in the construction and enforcement of publicity rights. Cf. Hart v. Electronic Arts, Inc., 717 F 3d 141 (3d Cir. 2013) and Keller v. Elec. Arts (In re NCAA Student-Athlete Name & Likeness Licensing Litig.), 724 F.3d 1268, 1276 (9th Cir. 2013) (both courts holding that unauthorized video game use of student athlete avatars infringed upon their publicity rights) with Brown v. Elec. Arts, Inc., Case No. 2:09-cv-01598FMC-RZx, 2009 U.S. Dist. LEXIS 131387 (C.D. Cal. Sept. 23, 2009) (court holding that unauthorized video game use of Hall of Famer Jim Brown permissible under the First Amendment as a use “reasonably related” to defendant’s expressive purpose in creating the video game). Where marginalized rights holders perceive the IP regime as providing protection for the IP rights of corporate rights holders but denying protection to marginalized rights holders, they lack incentive to participate in or maintain respect for the IP ecosystem.

https://doi.org/10.1017/9781108697613.012 Published online by Cambridge University Press

par t ii i

IP Social Justice: Historical Perspectives

https://doi.org/10.1017/9781108697613.013 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.013 Published online by Cambridge University Press

9 Copyright, Music, and Race: The Case of Mirror Cover Recordings Robert F. Brauneis*

I.

The Historical Context: Sheet Music, Recordings, the Mechanical Compulsory License and the Racial Segregation of Music Markets page 185 II. “Mirror Covers” and Race 188 III. Sorting through the Supreme Records Decision: Facts, Law, and Impact 190 A. The Facts 190 B. The Law 192 C. The Impact 196 IV. Mirror Covers Under Current Law 198 V. Policy Implications 203 Conclusion 207

Has copyright law in the United States ever aided discrimination on the basis of race, or exploitation of or prejudice against racial minorities? Copyright legislation in the United States has never explicitly incorporated racial categories. No federal or state copyright statute has ever withheld copyright protection from authors of a particular race, or imposed different fees on authors or owners of different races, or otherwise explicitly used racial categories. Neither, as far as I know, has any judicial decision concerning copyright law ever explicitly discriminated against a racial minority. However, that does not exhaust the possibilities of copyright law aiding discrimination against or exploitation of minorities. Particular features or doctrines of copyright law may arguably facilitate racial discrimination or exploitation in a more focused manner. K.J. Greene and Candace Hines have argued that copyright law’s requirement of fixation, and particularly its former requirement of written notation for music, has denied protection to African American

*

Michael J. McKeon Professor of Intellectual Property Law and Co-Director of the Intellectual Property Law Program, The George Washington University Law School. I would like to thank the participants in the Second Annual Mosaic Conference, co-sponsored by the Intellectual Property Program, Marquette University Law School and the Institute for Intellectual Property and Social Justice, and particularly my co-panelists, Jasmine Abdel-Khalik, Cheryl Slay Carr, and Betsy Rosenblatt; Peter Menell, Jennifer Urban, and all of the students in the Berkeley Law and Technology Scholarship Seminar; and all of my colleagues at GW Law who participated in a faculty workshop presentation of this chapter. For their helpful comments, I would like to thank Charles Cronin, Jennifer Mbagwu, Kip Lornell, and Bhamati Viswanathan. I would like to dedicate this essay to my mother, Geraldine Ann Brauneis, 1930–2016, who believed deeply in and worked tirelessly to further social justice.

183 https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

184

Robert F. Brauneis

oral culture.1 They have also each argued that copyright law’s requirement of locating an individual author clashes with African American traditions of communal creation.2 In addition, Greene has argued that previously required copyright formalities such as notice and registration particularly disadvantaged African American authors, who were less likely to have access to legal information,3 and that the idea/expression doctrine has denied musicians protection for their signature styles.4 This chapter follows in those footsteps, and investigates another set of copyright doctrines that operated to the disadvantage of minority creators. Those doctrines concern copyright protection of musical works and sound recordings, and operated to deny composers and musicians rights in what they added to songs during the process of recording versions of them. One goal of this essay is historical recovery. I will show that copyright doctrines that are facially race-neutral were formulated in a racially charged context in which it was clear the doctrines were going to disparately impact African American composers, musicians, and vocalists. And disparately impacted they were. Many record companies made dozens of commercially successful “mirror cover recordings” that featured white vocalists and musicians who copied without permission, compensation, or attribution music created by African American musicians and vocalists. This recovery of this history also confronts us with the question of what we should do when adoption of a rule in copyright law facilitates discrimination against or exploitation of racial minorities, or by extension, discrimination against or exploitation of other minorities or vulnerable groups. Should we leave matters of discrimination to general antidiscrimination law, or is there a place for considering disparate impacts when formulating facially neutral doctrines in copyright law? I will argue that there are good reasons for taking disparate impacts into consideration when formulating copyright policy, or in other words, for applying what Lateef Mtima has elsewhere in this volume called “the IP social justice rationale” in addressing the issue. When considered in the context of intellectual property social justice, these social inequities require affirmative redress in accordance with the fundamental tenets of equitable access, inclusion, and empowerment. Among other things, the racially disparate impacts of the doctrines explored below undermine author incentives and empowerment opportunities for minority creators. Where facially neutral copyright doctrines engender disparate racial impacts that impede copyright social utility, reconsideration and revision of such doctrines would seem essential to formulating sound copyright policy. Put differently, as articulated elsewhere in this volume, there is often an interdependent relationship between IP social utility and IP social justice, and where copyright social inequity impedes copyright social utility, the overarching

1

2

3 4

See K.J. Greene, Copyright, Culture & Black Music: A Legacy of Unequal Protection, 21 Hastings Comm. & Ent. L.J. 339, 360, 378–79 (1999) (hereinafter Copyright, Culture & Black Music); K.J. Greene, “Copynorms,” Black Cultural Production, and the Debate over African-American Reparations, 25 Cardozo Arts & Ent. L.J. 1179, 1201 (2008) (hereinafter Copynorms); Candace G. Hines, Black Musical Traditions and Copyright Law: Historical Tensions, 10 Mich. J. Race & L. 463, 469–70 (2005). See Greene, Copynorms, supra note 1, at 1201; Hines, supra note 1, at 469–70. For a contrasting perspective, see Olufunmilayo B. Arewa, Blues Lives: Promise and Perils of Musical Copyright, 27 Cardozo Arts & Ent. L.J. 573, 582 (2010) (“[T]he tendency to see blues music as a primitive form of collective folk production reflected widespread stereotypes about African Americans and was part of a conceptual framework of later borrowers that facilitated the free borrowing of such music, often without attribution, let alone compensation”). See Greene, Copyright, Culture & Black Music, supra note 1, at 353–54; Greene, Copynorms, supra note 1, at 1201–202. Greene, Copyright, Culture & Black Music, supra note 1, at 383; Greene, Copynorms, supra note 1, at 1201; cf. Seán M. O’Connor, The Lead Sheet Problem in Music Copyright, ch. 14 in The Cambridge Handbook of Intellectual Property and Social Justice 309–10 (Steven D. Jamar & Lateef Mtima eds., 2023) (discussing the failure of courts to protect rhythm and beats under copyright law).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

185

objectives of copyright mandate that such social deficiencies be addressed to enhance the efficacy of the copyright regime. Part I provides an introduction to the historical and doctrinal context necessary to understand copyright, music, and race in much of the twentieth century. Those details include the construction of the racial categories that were used in the marketing of sound recordings, and the operation of the mechanical compulsory license. Part II introduces the phenomenon of white “mirror covers” of songs originally recorded by African Americans – covers that were not just recordings of the same song, but also copied some or all of the musical arrangement and stylistic elements introduced in the original recording. Part III focuses directly on the litigation of and the decision in Supreme Records, Inc. v. Decca Records, Inc.,5 a landmark case concerning the protection of initial recorded versions of songs against “mirror covers” of those songs. It also describes the impact of the Supreme Records decision, both as judicial precedent and as a model for legislation adopted as part of the Sound Recordings Act of 1971 and the Copyright Act of 1976. Part IV describes the treatment of covers under current law. Part V discusses whether there are policy lessons to be drawn from this history. Part VI concludes. I . THE HISTORICAL CONTEXT : SHEET MUSIC , RECORDINGS , THE MECHANICAL COMPULSORY LICENSE AND THE RACIAL SEGREGATION OF MUSIC MARKETS

In the nineteenth century, music publishers made money from songs by selling sheet music. Recordings of songs were not widely commercially distributed until the early years of the twentieth century. Following decisions in several lower courts, the Supreme Court held in 1908 that the Copyright Act only regulated the making of copies of a song, and that a record was not a copy of a song, since it was just part of a machine that could render an audible performance of the song.6 Under that decision, the owner of copyright in a song had no control over the making of records of that song, and received no compensation from the sale of those records. Within a little over a year, Congress legislatively overruled that decision in part, and extended the exclusive rights of copyright owners in musical works to “mechanical” renderings of musical works. That category encompassed phonographs, player pianos, music boxes, and their exchangeable parts – including phonograph records. The rules regarding those mechanical renderings, which we would today call sound recordings, turned out to have several complexities, and those complexities have only multiplied over time. First, even though a mechanical rendering or sound recording could infringe copyright in a musical work, it was not itself protected by federal copyright law. Congress did not grant federal copyright protection to sound recordings until 1971.7 Second, the owner of copyright in a musical work had complete control over the making of the first sound recording of that work. It could refuse to license any sound recording; it could demand any royalty it wanted; and it could place any conditions it wanted on permission to record. Once the copyright owner licensed the first recording, however, the musical work became subject to a “statutory license,”8 which persists in modified form to this day.9 Anyone else who wanted to

5 6

7 8 9

90 F. Supp. 904 (S.D. Cal. 1950). See White-Smith Music Pub. Co. v. Apollo Co., 209 U.S. 1 (1908); O’Connor, supra note 4, at 304–05 (discussing the White-Smith case). See Sound Recording Act of 1971, Pub. L. No. 92-140, 85 Stat. 391 (1971). See Act of Mar. 4, 1909, ch. 320, § 1(e), 35 Stat. 1080. See 17 U.S.C. § 115.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

186

Robert F. Brauneis

could make another recording of that musical work, upon payment of a fee that was determined by the statute itself. That fee, 2 cents for every record sold, astoundingly remained unchanged from July 1, 1909 to January 1, 1978.10 Because the value of the dollar in 1978 was roughly only 15 percent of what it was in 1909, the compulsory license rate had by 1978 dwindled to about one-third of one cent in 1909 dollars.11 The standard explanation of why Congress created the mechanical compulsory license is that it was concerned about the lack of competition in the player piano roll market after one manufacturer, the Aeolian Company, had tried to corner that market by entering into exclusive licenses with most major music publishers.12 When it came to phonograph records, however, music publishers were already used to licensing many recording companies to create different recordings of a song. Consumers, who were purchasing a tinny, scratchy, “low-fi” novelty, were usually not that concerned about which recorded version of a song they purchased: [I]n the early decades of the twentieth century records still played a relatively minor role in popular music, and people thought of them very differently than we do today . . . Some bands and artists had devoted fans, but most customers were apparently still shopping for songs rather than specific performances: they would hear [a performance of a song], go to a music store, and ask for a record of it. [Bandleader Paul] Whiteman’s name was regarded as a guarantee of quality, but if the Victors were out of stock, most people were happy to go home with an alternate version on Brunswick, Okeh, or Columbia.13

When record companies began to sell records to the public in the early 1900s, they “courted the total, undifferentiated American public.”14 Their catalogs arranged records by genre – “Dance Hits,” “Marches,” “Novelty,” “Classical,” and so on – but they assumed that any consumer might be interested in any or all of these genres. By the 1920s, however, record companies began to segment markets along racial and social lines.15 In particular, “race” records, 10

11

12

13

14

15

See Act of Mar. 4, 1909, supra note 8, § 1(e); Neela Kartha, Digital Sampling and Copyright Law in a Social Context: No More Colorblindness!, 14 U. Miami Ent. and Sports L. Rev. 218, 234 (1997) (noting that the compulsory mechanical license rate remained the same for decades, and arguing that that eroded copyright protection, particularly for African American composers). The Copyright Act now provides that the statutory license fee is to be set by an administrative tribunal, the Copyright Royalty Board (CRB). See 17 U.S.C. §§ 115(c)(3), 801(b)(1). As of this writing in early 2020, the CRB has set rates for physical copies and permanent digital downloads at the greater of 9.1 cents per copy/download or 1.75 cents per minute of playing time. See Library of Congress, Copyright Royalty Board, Determination of Royalty Rates and Terms for Making and Distributing Phonorecords (Phonorecords III), 84 F.R. 1918, 2035 (Feb. 5, 2019). By now, however, a much larger percentage of recording industry revenue is derived from streaming, and streaming rates are set as more complicated percentages of streaming service net revenues. See id. at 2035–36. See Bureau of Labor Statistics, CPI Inflation Calculator, http://data.bls.gov/cgi-bin/cpicalc.pl (that calculator goes back only to 1913, so I used 1913 as a rough proxy for 1909). See, e.g., Geoffrey P. Hull, Thomas William Hutchinson, & Richard Strasser, The Music Business and Recording Industry: Delivering Music in the 21st Century 78 (3d ed. 2011). Elijah Wald, How the Beatles Destroyed Rock ‘n’ Roll: An Alternative History of American Popular Music 85 (2011). Karl Hagstrom Miller, Segregating Sound 188 (2010); see Arewa, supra note 2, at 592–96 (discussing the categorization of music along racial lines and the development of the genre of “race music”). The lack of overt racial categories in record company catalogs before 1920 cannot necessarily be taken as a sign that there was less racial prejudice in the early years of recorded music. Rather, record players and records were expensive enough, and most African Americans poor enough, that record companies simply did not consider the African American market at all. See William G. Roy, “Race Records” and “Hillbilly Music”: Institutional Origins of Racial Categories in the American Commercial Recording Industry, 32 Poetics 265, 270 (2004). The use of the term “race” to denote a category of records originated with the label Okeh Records in 1923. See Jonathan Karp, Blacks, Jews, and the Business of Race Music, in Chosen Capital: The Jewish Encounter with American Capitalism 141, 144 (Rebecca Korbin ed., 2012).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

187

contemplated as being made by and for African Americans, and “hillbilly” or “old-time” records, contemplated as being made by and for white, rural, southern Americans, were marketed separately from “popular” records, the main, residual category made by and for whites generally. Frank Walker, an executive with Columbia Records in the 1920s (and later with RCA Victor and MGM Records) may have put it most tellingly. The category of “race records,” he said, was created “in order to have a differentiation between that and normal phonograph records.”16 As Karl Hagstrom Miller writes, Separate catalogues suggested a correspondence between consumer identity and musical taste, one that was both holistic and exclusive. They implied that unique segments of the population were satisfied by particular kinds of records and yet uninterested in others . . . The significant variety of musical sounds and styles that stuffed race record catalogues were held together and advertised as a cohesive whole by the fact that they were created by African American musicians. Companies, however, often refused to allow African American artists to record selections the musicians held dear – from pop songs and arias to hillbilly breakdowns – but did not fit within corporate conceptions of black music.17

William Howland Kenney adds: “From the time of Mamie Smith’s 1920 blues recording, white record entrepreneurs wanted African Americans to sing the blues. They insisted on that genre to the nearly total exclusion of the popular songs that appealed to large numbers of whites and at least some Blacks.”18 When Billboard magazine started publishing charts of best-selling records in the 1940s, it used the same categories, charting sales of “popular” records separately from “race” records and “hillbilly” records. Many “race” records were produced by smaller, independent labels, particularly during and after World War II, when shellac shortages caused major labels to concentrate on their core white audiences.19 When major recording companies marketed records by and for African Americans, they usually did so through separate subsidiaries or labels, or using separately marketed series. Columbia used its subsidiary “Okeh”; Mercury used its subsidiary “Wing”; RCA used its subsidiaries “Groove” and “Bluebird”;20 MGM had its “Ebony Series”;21 Decca and Capitol released “Sepia” records.22 On June 17, 1949, Billboard decided to change the name of the “race” category to “rhythm and blues” – “R&B” for short.23 (It again changed the name of the category to “soul” on August 23, 1969.24) However, everyone understood that the new term was still “a code word for black music,”25 music by and marketed to African Americans. As Brian Ward has put it,

16

17 18 19

20

21 22 23

24

25

Quoted in William Howland Kenney, Recorded Music in American Life: The Phonograph and Popular Memory, 1890–1945 130 (1999). Miller, supra note 14, at 188–89. Kenney, supra note 16, at 132. See Reebee Garofalo, Crossing Over: From Black Rhythm & Blues to White Rock ‘n’ Roll, in Rhythm and Business: The Political Economy of Black Music 112, 116–17 (2002). See Brian Ward, Just My Soul Responding: Rhythm and Blues, Black Consciousness, and Race Relations 27 (1998). See, e.g., Billboard 26 (Oct. 23, 1948) (advertisement for MGM Records). See id. at 29 (advertisement for Capitol Records); id. at 23 (advertisement for Decca Records). Ward, supra note 20, at 28. In the same issue, June 17, 1949, Billboard changed the name of the “folk” category to “country and western.” See Joel Whitburn, Top Country & Western Records 1949–1971 3 (1972). See Portia K. Maultsby, Soul Music: Its Sociological and Political Significance in American Popular Culture, in From Soul to Hip-Hop 277, 284 (Tom Perchard ed., 2016). Garofalo, note 19, at 121.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Robert F. Brauneis

188

The marginalization and oppression of peoples of African descent in America has always been more than a purely legal, political, economic, and social phenomenon. It has involved an integrated system of thought, categorization and action which constitutes the fundamental grammar of American racism. As part of that system, the recording and broadcasting industries did not merely reflect the prevailing racial assumptions of the 1950s, they internalized them, functioned according to their dictates, and, in so doing, helped to perpetuate them. Racial conventions permeated the organization and structure of the music industry at every level. The very existence of separate “Race,” and from 17 June 1949, “Rhythm and Blues” charts for Black popular music, symbolized the routine segregation of Blacks in American society as much as the segregated schools and separate drinking fountains of the south, or the restrictive housing covenants and discriminatory hiring practices of the North.26

II .

“ MIRROR

COVERS ” AND RACE

As noted above, from very early in the history of sound recordings, it was common for many record companies to record and release different versions of the same song, a phenomenon that was subsequently supported by Congress’s provision of a compulsory license in the 1909 Act. In racially divided markets, however, a very particular form of the phenomenon of multiple recordings developed. James M. Salem provides one description of this phenomenon: An original performance by a black R&B artist was released by a small, independent (sometimes black-owned) record company. Then it was covered by a white performer’s version of the song, released by a large, white-owned major record company with the capability for national distribution and promotion. The white version was not so much a cover as a copy, an attempted duplication of not only the melody of the song but the musical voicings and rhythmic quality of the arrangement, plus the singer’s distinctive vocal style as well in many cases.27

In some cases, the white version did make some changes to the original R&B release. It often aimed for a somewhat “smoother,” “less raw” musical sound, or it substituted somewhat more innocuous lyrics for language that was considered too racy.28 Even when a cover version made changes, however, it still copied many features that were not present in the original notated song but had been introduced by African American composers, arrangers, and recording artists while preparing to record and recording the song. In discussion of what would eventually become the Sound Recording Act of 1971 and the Copyright Act of 1976, these recordings were referred to as “imitation” or “mirror records,”29 and so I will call them “mirror cover recordings” or “mirror covers” here. Why were white recording artists copying performances by African American recording artists? Because it paid, for reasons that can be traced more or less directly back to race.

26

27

28

29

Ward, supra note 20, at 27–28. For further explorations of dividing musical genres by race, see Jo Haynes, Music, Difference and the Residue of Race (2013); Jack Hamilton, Just Around Midnight: Rock and Roll and the Racial Imagination (2016). James M. Salem, The Late Great Johnny Ace and the Transition from R&B to Rock n’ Roll 168 (1999). For previous discussions in legal academic literature of white cover recordings, see Hines, supra note 1, at 484–86; Neela Kartha, supra note 10, at 232–34. For example, Pat Boone, a white singer who achieved great success recording cover versions of earlier R&B releases, stated that when covering Tutti Frutti, earlier recorded by Little Richard, he changed “Boys you don’t know what she do to me” to “Pretty little Susie is the girl for me” in order to “make it more vanilla.” David O. Szatmary, Rockin’ in Time: A Social History of Rock-and-Roll 26 (8th ed. 2014). See infra nn. 100–101 and accompanying text.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

189

As James M. Salem noted above, one reason it paid was that many of the record companies that released records by African American recording artists were small, local companies that did not have developed national distribution channels. Major companies could rerecord a song, copying features of the small company’s recording, and distribute their versions nationwide. Yet that is an incomplete account, because it does not explain why the major companies decided that they needed to produce recordings featuring white artists. That was likely due to a confluence of many factors, all of which manifested racial prejudice in one way or another. Most directly, many members of the record-buying public would not buy recordings by African Americans. In fact, the prejudices ran so deep that record companies who marketed to whites would often decide not to produce any records featuring African Americans, or at least, as noted above, to brand those records differently. As Perry Bradford, an African American composer, musician, and producer active beginning in the 1910s, put it, “‘Victor [Talking Machine Company] just couldn’t afford to lower their prestige by issuing records by Black artists.”30 Those prejudices might be further heightened when the recording artists were visible, as they might be on the covers of sheet music, or later, on television. In addition, the sale of records was promoted chiefly through play on radio stations, and many radio stations did not play recordings by African American artists. In part, that was due to the racial prejudices of their managers or employees, or due to their deference to audiences that they believed harbored those prejudices. In part, it was because the American Society of Composers, Authors, and Publishers (ASCAP), the first U.S. performing rights organization, put pressure on radio stations to play only songs that it licensed.31 Since ASCAP had excluded all but a few African American composers from membership, those songs were more likely to have been composed, and performed, by whites.32 Could white recording artists make cover versions of R&B recordings, copying features created for the first recordings of the songs, without the permission of the composers, arrangers, and musicians who created the first recordings, or the companies that produced them? That question was not settled when, in November of 1948, a company called Supreme Records sued Decca Records and Capitol Records over their cover versions of a song titled A Little Bird Told Me, previously recorded by Supreme. The litigation, brought in the Southern District of California, was quickly recognized as a test case. Decca, reported Billboard, “put its big legal guns” to work on the case “because of its importance as a precedent-setting suit.”33 And indeed, the District Court’s decision in the case, in favor of defendant Decca (Capitol having settled), has had lasting effect, both as judicial precedent and as a model for a provision in the Sound Recording Act of 1971 and the Copyright Act of 1976. Thus, the facts and legal analysis in the case, and its impact, are worth a close look, and that is the task to which the next Part turns.

30 31 32

33

Kenney, supra note 6, at 113 (quoting Perry Bradford). See, e.g., Charlie Gillett, The Sound of the City: The Rise of Rock and Roll 21 (1996). See Garofalo, supra note 19, at 112, 113 (“Of [ASCAP’s] 170 charter members, six were black . . . [T]he vast majority of ‘untutored’ black artists were routinely excluded from the society and thereby systematically denied the full benefits of copyright protection”). Billboard 12 (May 13, 1950).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

190

Robert F. Brauneis III . SORTING THROUGH THE SUPREME RECORDS DECISION : FACTS , LAW , AND IMPACT

A. The Facts The dispute in Supreme Records begins with a song called A Little Bird Told Me, written by successful African American composer and pianist Harvey Oliver Brooks. Brooks was born in 1899, and toured and recorded with blues singer Mamie Smith in the 1920s.34 He then settled in Los Angeles, and became the first African American to write a complete score for a major motion picture, namely, I’m No Angel, the most popular movie of 1933, starring Mae West and Cary Grant.35 On October 27, 1947, Brooks registered a claim of copyright in A Little Bird Told Me as an unpublished work.36 The version of the song that was protected by federal copyright was therefore the version that Brooks had deposited with his registration application. We don’t have the deposit copy, but apparently it was the same as the manuscript that the court accepted as representing the song during the litigation.37 In 1947, Albert Patrick, an African American entrepreneur who was also a dentist, founded Supreme Records, a small, independent record label based in Los Angeles.38 He and Leroy Whyte, a bandleader, arranger, and trumpeter,39 recruited Paula Watson, a singer and pianist, to record for Supreme, and they began to search for suitable songs for her. In the early summer of 1948, Patrick, Whyte, and Watson went to visit Harvey Brooks at his house.40 Brooks played A Little Bird Told Me for them, and Watson tried playing and singing it. The group decided that it would be a good song for Watson to record. Whyte, Patrick, and Watson spent some time at Patrick’s house working out how to arrange the song for the recording. The arrangement that Whyte ended up writing included new lyrics and melody for a male chorus to sing in response to the Brooks-composed lyrics that Watson would sing.41 The Whyte arrangement also added an introduction hummed by the male chorus; a distinctive repeating two-bar bass line on the first and third beats that alternated with hand claps on the second and fourth beats; and four added bars of music.42 Whyte wrote those elements on individual notated parts that he distributed to the musicians who recorded the song for Supreme.43

34 35

36 37 38

39 40 41

42 43

See Leonard Feather & Ira Gitler, The Biographical Encyclopedia of Jazz 69 (2007). See Wikipedia, Harvey Oliver Brooks, https://en.wikipedia.org/wiki/Harvey_Oliver_Brooks (last visited December 11, 2019). See U.S. Copyright Registration No. EU101224 (Oct. 27, 1947), http://www.robertbrauneis.net/brooksregistration.pdf. That manuscript is available at http://www.robertbrauneis.net/covers/brooksscore.pdf. Deposition of Albert Patrick,(Feb. 3, 1950 and Feb. 14, 1950) in Supreme Records, Inc. v. Decca Records, Inc., No. 8929-Y, United States District Court, Southern District of California, Central Division, at 10, http://www .robertbrauneis.net/covers/patrickdeposition.pdf. See Peter Vacher, Swingin’ on Central Avenue: African American Jazz in Los Angeles 175 (2015). Deposition of Albert Patrick, supra note 38, at 7–9. Reporter’s Partial Transcript of Proceedings (May 3, 1950), Supreme Records, Inc. v. Decca Records, Inc. No. 8929-Y, United States District Court, Southern District of California, Central Division, at 11–14 (cross-examination testimony of Leroy Whyte) (hereinafter “Whyte Cross-Examination”), http://robertbrauneis.net/covers/whytecross.pdf. Whyte’s score, as it appears in the District Court record, is available at http://www.robertbrauneis.net/covers/whytescore.pdf. For Table 1, see http://www.robertbrauneis.net/covers/lyricstable.htm, which shows on the left side the words that are in the Brooks manuscript, and on the right side the additional words added by Whyte that are sung in both the Supreme (Watson) recording and the Decca (Knight) recording. Id. at 16. Id. at 11–14. It is not clear whether everything that Whyte notated in the individual parts distributed to the musicians is contained in the score that is in the District Court record.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

191

On the Supreme recording, which was made sometime in July of 1948, Paula Watson sang and played the piano. Her backing band included Tiny Webb on guitar, Jesse Sailes on drums, Chuck Hamilton on bass, and Maxwell Davis and Pete Peterson on saxophones.44 The instrumentalists also sang as the male chorus.45 Supreme Records obtained a license to record the song directly from Harvey O. Brooks46 and released its recording in August 1948, as the B-side of a 78-rpm record that included Pretty Papa Blues on the A-side.47 The brief Billboard review of the release provides further evidence of the pervasiveness of racial stereotypes. It deems Watson’s A Little Bird Told Me to be “too pop-flavored for the race lists,” but comments in connection with “Pretty Papa Blues” that “Miss Watson has the race manner . . . and may be heard from.”48 Decca unsuccessfully tried to buy the rights to the Supreme recording.49 It then proceeded to make and release its own recording.50 That recording featured Evelyn Knight, a white singer who had previously recorded two top ten hits for Decca, as the principal vocalist. A vocal group called the Stardusters performed the backup vocals.51 Decca released its recording in October 1948, less than two months after the Supreme release. On November 19, 1948, Bourne Inc. published the first sheet music for the song, and registered a claim of copyright in that version, which, typical for its time, was ‘[f]or voice and piano, with chord symbols.”52 The cover of that sheet music featured, not Paula Watson, but Evelyn Knight, a move that was standard for marketing to white audiences.53 Also in November 1948, Capitol Records recorded a version of A Little Bird Told Me, featuring Blue Lu Barker, an African American singer from New Orleans.54 By December 1948, at least three other recordings of the song had been released.55 The Watson and Knight recordings reached the Billboard retail sales charts,56 and those

44 45 46

47

48 49 50

51

52

53 54 55

56

Whyte Cross-Examination, supra note41, at 21. Id. I have not been able to locate the license. However, when Harvey O. Brooks assigned copyright in A Little Bird Told Me to music publisher Bourne Inc. on Sept. 15, 1948, Brooks represented that there had been no previous publication or mechanical license granted, “with the exception of one license to Supreme Records Company.” Assignment of Copyright from Harvey O. Brooks to Bourne, Inc. of September 15, 1948, as recorded in the U.S. Copyright Office, Vol. 683, at 4 (Sept. 22, 1948), http://www.robertbrauneis.net/covers/brooksbourneassignment.pdf. As of this writing, the Supreme recording is available on YouTube, https://www.youtube.com/watch?v= KKLIxpUNHp0. See Billboard 112 (Oct. 16, 1948) http://www.robertbrauneis.net/covers/supremereview.htm. See Supreme Records, 90 F. Supp. at 913, n. 4. Harvey O. Brooks had assigned copyright in A Little Bird Told Me to music publisher Bourne Inc. on Sept. 15. Bourne Inc. then filed the required “Notice of Use on Mechanical Instruments” that announced the availability of the song for statutory licensing. See http://www.robertbrauneis.net/covers/bournenoticeofuse.htm. The Decca recording session was held on Oct. 12, 1948. See Michael Ruppli, The Decca Labels: The Eastern Sessions 1943–1958 218 (1996). It was released very quickly; Billboard’s review appeared less than two weeks later, on Oct. 23, 1948. See Billboard, Oct. 23, 1948, page 37, http://www.robertbrauneis.net/covers/deccareview.htm. As of this writing, the Decca/Evelyn Knight recording is available at https://www.youtube.com/watch?v=Oe9RwAFVn9U. U.S. Copyright Registration No. EP31690 (Nov. 19, 1948), http://www.robertrbrauneis.net/covers/bourneregistration .pdf. An image of the sheet music cover is available at http://www.robertbrauneis.net/covers/littlebirdsheetmusiccover.htm. As of this writing, the Blue Lu Barker recording is available at https://www.youtube.com/watch?v=-JfEiT8SFMc. See Billboard 18 (Jan. 8, 1949). The three additional recordings noted in Billboard were by Smokey Rogers on Capitol and Varsity Records, https://archive.org/details/78_a-little-bird-told-me_smokey-rogers-harvey-o.-brooks_ gbia0007232a; by Jerry Wayne and Janette Davis on Columbia Records, https://www.youtube.com/watch?v= bFiD00WsHQM; and by Rose Murphy on Victor Records, https://www.youtube.com/watch?v=b_oHgWYvjlM. Those recordings vary in their similarity to the Supreme recording. The Rose Murphy recording, a jazz cover, is the least similar, with a different introduction, no backup singers, no handclapping, and different additional lyrics. See the Billboard “Retail Record Sales” and “Race Records” charts (Feb. 12, 1949), on which the Knight and Watson recordings appear, respectively, are available online at http://www.robertbrauneis.net/covers/charts.htm.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

192

Robert F. Brauneis

recordings and the Barker recording reached the Billboard radio play charts.57 The Supreme/ Watson recording ended up selling well, about 250,000 copies,58 but the Decca/Knight recording sold much better, about two million copies.59 Supreme’s founder Albert Patrick believed, correctly, that Decca and Capitol had copied just about every feature that the Supreme recording had added to the Brooks composition – “an introduction, overlaps and handclapping, choral responses, a certain verbal deviation from the wording of the song, and the introduction of [several] bars of music at about the middle of the song.”60 By the end of November 1948, Supreme sued Decca and Capitol. Capitol eventually settled the suit, paying Supreme $1,000, but with a provision requiring Supreme to refund that amount if Decca eventually prevailed.61 Decca did not settle, and the case went to trial. B. The Law Judge Leon Yankwich presided over the trial, and wrote the opinion deciding the case. Yankwich had already gained prominence in copyright law through his invention of the doctrine of scènes á faire in a 1942 opinion,62 and he would go on to write many articles in copyright and other legal fields.63 Well before trial, Supreme Records had agreed to a stipulation that its claim for relief was based solely on a theory of unfair competition, and not on either statutory (federal) copyright or the common law of literary property.64 Supreme most likely made that concession because its counsel viewed its claim as arising solely out of the performance of Paula Watson and her backup band as fixed in Supreme’s sound recording. As previously mentioned, before the passage of the Sound Recording Act of 1971, sound recordings did not enjoy federal copyright protection.65 As for common-law protection, there was a split of authority on whether public distribution of a sound recording ended that protection.66 Supreme’s recording had of course been publicly distributed, and Supreme may have believed that the Southern District of California would rule that that public distribution had terminated any common-law protection. As already mentioned, Supreme did not merely create a sound recording of A Little Bird Told Me. Leroy Whyte, presumably while in Supreme’s employment, created a notated arrangement 57

58

59

60 61

62 63

64 65 66

See Billboard 25 (Jan. 29, 1949) (The “Records Most Played by Disk Jockeys” chart lists the Knight recording in first place, the Barker recording in seventh place, and the Watson recording in eighth place). The estimate of 250,000 was produced by adding the month-by-month sales figures that the President of Supreme Records, Albert Patrick, provided in his deposition. See Deposition of Albert Patrick, supra note 38, at 18–23. Other estimates have varied widely. The court in Supreme Records provides the figure of 100,000; see Supreme Records v. Decca Records, 90 F. Supp. 904, 905 (S.D. Cal. 1950); Albin Zak states that the record eventually sold over a million copies. See Albin J. Zak III, I Don’t Sound Like Nobody: Remaking Music in 1950s America 143 (2010). See “Evelyn Knight, 89; versatile singer had two no. 1 hits in 1949,” Los Angeles Times (Oct. 31, 2007), http://articles .latimes.com/2007/oct/31/local/me-passings31.s1. Supreme Records, 90 F. Supp. at 911. See Affidavit [of Albert Patrick] in Support of Motion for Substitution of Attorneys 2–3 (Jan. 24, 1950), Supreme Records v. Decca Records, No 8929-Y (S.D. Cal.), http:/www.robertbrauneis.net/covers/patrickaffidavit.pdf. See Cain v. Universal Pictures Co., 47 F. Supp. 1013 (1942). See, e.g., Leon R. Yankwich, What Is Fair Use?, 22 U. Chi. L Rev. 203 (1954); Leon R. Yankwich, Parody and Burlesque in the Law of Copyright, 33 Can. Bar Rev. 1130 (1955); Leon R. Yankwich, Originality in the Law of Intellectual Property (Its Meaning From a Legal and Literary Standpoint), 11 F.R.D. 457 (1952). See Supreme Records, 90 F. Supp. at 906. See supra note 7 and accompanying text. Compare Waring v. WDAS Broadcasting Station, Inc., 184 A. 631, 635–36 (Sup. Ct. Pa. 1937) (common-law rights in a performance fixed in a sound recording were not destroyed by public distribution of that sound recording) with RCA Mfg. Co. v. Whiteman, 114 F. 2d 86, 89 (2d Cir. 1940) (common-law rights in a performance were destroyed by public distribution of the sound recording in which it was fixed), cert. denied, 311 U.S. 712 (1940).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

193

of the song, and Decca’s recording used many elements added by that notated arrangement. Why didn’t Supreme sue for infringement of that arrangement? The notated arrangement did not enjoy federal copyright protection, because it had neither been registered as an unpublished work,67 nor published in notated form.68 What about common-law protection? As noted in the previous paragraph, there was a split of authority on whether public distribution of sound recordings that embodied a musical work, including a musical arrangement, was considered to be “publication” of that musical work that would destroy common-law protection. In addition, although we don’t have the exact language of the license that Harvey O. Brooks granted to Supreme, it is quite possible that it referred to rights of mechanical reproduction, and would have been construed not to include the right to create a notated arrangement. At this point you may be asking yourself, if the Supreme Records case was not about copyright, why am I discussing it as if it were? The answer to that is at least twofold. First, although Judge Yankwich acknowledges that Supreme was making only an unfair competition claim, he discusses unfair competition not just as a matter of likelihood of confusion, but as a matter of protecting creative efforts assessed using copyright concepts like standards of originality. Thus, the opinion veers into quasi-copyright. Second, subsequent discussion of the case viewed it as having articulated a rule that should be adopted as federal copyright legislation, and it was eventually so adopted. Thus, the opinion was seen both by its author and by subsequent observers as determining the proper bounds of copyright-like protection. Pursuing first the likelihood of confusion inquiry, the opinion asks whether the Decca recording is so similar to the Supreme recording that “the average person who would listen to the two recordings . . . would confound [one] with the other.”69 There are some faults to find with Judge Yankwich’s analysis of this issue. Part of Yankwich’s discussion seems simply to ignore important similarities between the two recordings. He states that “even the most untrained ear would conclude that the only similarity discernible is that which comes from the identity of the melody.”70 Surely, however, if the “untrained ear” in question understood that the Supreme recording had added the backup singers who repeatedly respond to the lead singer’s lines, it would not fail to recognize that the Decca recording also had backup singers, and that they sang identical lines. Judge Yankwich is also unafraid to present his musical tastes as objective judgments, and to use them as a basis for declaring that the two recordings could not be confused. Those tastes decidedly weigh against the Supreme recording and in favor of the Decca recording. The Paula Watson recording, Yankwich declares, is “thick, mechanical, lacking inspiration, containing just the usual accompaniments and the usual intonations which one would find in any common recording.”71 By contrast, he asserts, the Decca recording “is rich, against a musically colorful background. It sounds full, meaty, polished. The difference derives from the different quality of the voices of the artists, the more precise, complex and better organized orchestral background,

67

68

69 70 71

See Act of Mar. 4, 1909, ch. 320, § 11, 35 Stat. 1075, 1078 (providing for federal copyright protection for certain unpublished works, including musical compositions). If the distribution of Supreme’s records had been ruled to publish Whyte’s arrangement, Supreme would have forfeited federal copyright in that arrangement, because the records did not display proper copyright notice. For images of the labels on the Supreme and Decca releases of A Little Bird Told Me, see http://www.robertbrauneis.net/ covers/alittlebirdtoldmelables.htm; for the requirement of publication with notice, see Act of Mar. 4, 1909, ch. 320, § 9, 35 Stat. 1075, 1077. Supreme Records, 90 F. Supp. at 912. Id. Id.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

194

Robert F. Brauneis

the fuller harmonization of the responses, [and] the clearer intonation and expression.”72 In light of the subsequent history of popular music these aesthetic judgments seem antiquated, and they also seem affected by what Brian Ward calls the “system of thought [and] categorization . . . which constitutes the fundamental grammar of American racism.”73 Yankwich seems to be preoccupied with denying any value or originality to the creations of those involved with the Supreme recording in particular, and African American composers and musicians more generally. In two remarkable footnotes in in his opinion, for example, Yankwich traces call-and-response patterns back to the thirteenth century in England and then to Greek antiquity, likely in an attempt to show that they appeared in Europe before any documented appearance in Africa.74 Moreover, the segregated nature of music marketing, and the assumption that white audiences would only listen to white recording artists and African American audiences only to African American artists, found its way into the center of the Supreme Records trial. At one point during that trial, counsel for Supreme objected to Decca’s attorney’s questions about the identities of and instruments played by each musician on the Supreme recording. Decca’s attorney replied: If your Honor please, one of our defenses is going to be, to show that one of these records was a record aimed for what is known in the record business as the race market, and the other record, our record, was aimed for popular consumption, and the instrumentation on these records was different because they were aimed for different markets.75

Judge Yankwich overruled the objection and let the questioning proceed. In his mind, apparently, there was a sufficient relationship between the identities of the musicians and racially divided markets in which one race was content to listen to arrangements that were “thick, mechanical, lacking inspiration” while the other was attracted by “rich . . . full, meaty, polished” music. While Yankwich’s aesthetic judgments and categorical pronouncements are deeply questionable, it is not clear that his conclusion as to likelihood of confusion is wrong. Even a listener who was more appreciative of the Supreme recording, and less appreciative of the Decca recording, might well not confuse them. Thus, if the unfair competition analysis was limited to confusion, Supreme could well have lost no matter who the finder of fact was. However, Yankwich’s opinion reaches out to consider the question of whether the elements that the Decca recording copied from the Supreme recording should be accorded some other form of protection. And although Supreme had given up any claims to common-law or statutory copyright, Yankwich’s analysis uses concepts and precedents derived from copyright, and appears to declare Supreme’s creative additions as unqualified for copyright protection. As we will see, that is how the opinion is received in the recording industry – as granting license to freely copy anything added to a song in a recording – and that is how it is eventually enshrined in legislation. In one passage, Yankwich appears categorically to reject any further protection, concluding that “a mere recording of an arrangement of a musical composition by one who is not the author of the composition is [not] a property right which should be given recognition in equity.”76 That

72 73

74 75 76

Id. Ward, supra note 20, at 27–28. On racial categories as stemming from the colonization of power, see Deidré A. Keller & Anjali S. Vats, A Primer on Critical Race Intellectual Property, ch. 26 in The Cambridge Handbook of Intellectual Property and Social Justice 553–55 (Steven D. Jamar & Lateef Mtima eds., 2023). Id. at 911 n. 2, 912 n. 3. Whyte Cross-Examination, supra note 41, at 10–11. Id. at 908.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

195

rejection is based largely on analogizing the creative elements added in the Supreme recording to acting performances. Yankwich is correct that under leading precedent, then as now, “mere portrayal of a character by an actor in a play, which is the creation of another, is not, of itself, an independent creation.”77 Elements such as “gestures or motions of actors,”78 their facial expressions, the timbre of their voices, their pronunciation and rhythm when delivering lines, are not considered to create an independently copyrightable work.79 It is also true that some of what Watson and the other musicians added to the Brooks composition could similarly be considered to be “performance elements.” Those would include elements such as the timbre of Watson’s voice, and her timing and pronunciation when singing. However, those “performance elements” hardly exhaust what the Supreme recording added to the Brooks composition. As noted above, Leroy Whyte produced a notated version of A Little Bird Told Me that included a new male choral part with new melodies and lyrics; new music for the instruments in the band, including a new bass line; and four new bars of music in the middle of the song. None of those are mere uncopyrightable “performance elements,” but are instead components of a potentially copyrightable musical work – a derivative work with respect to Brooks’ original composition. Perhaps in tacit recognition that Supreme Records’ contributions to its recorded version of A Little Bird Told Me were not limited to performance elements, Judge Yankwich also articulates a standard of creativity that must be met for protection, and explains why the Supreme Records arrangement does not meet that standard. The standard of creativity is an extremely high one that most readers will be familiar with from patent law. Yankwich begins by declaring that the elements added to A Little Bird Told Me on the Supreme recording “are well known in the art,”80 patent language for expressing a lack of novelty. That is certainly true at the high level of abstraction that Yankwich describes them – “handclapping” and “choral responses” as such. However, he then suggests that, since each element separately lacks novelty, the arrangement can be protected only if the “combination of old elements . . . achieve[s] a better or different result.”81 Without much further analysis, he declares that the combination “did not produce any distinct result in this case.”82 He also states that the elements introduced on the Supreme recording are of “a type which would occur to any arranger, a kind of musique à faire”83 – a formulation that invokes the patent standard of nonobviousness, and that interestingly extends Yankwich’s own scènes à faire doctrine to music. Given the low “modicum of creativity” standard that we now generally associate with copyright84 and supporting precedent for that standard that dates back to well before Supreme Records,85 Judge Yankwich’s application of a patent standard may seem abnormal. In the context of musical arrangements and performances, it is not quite as aberrational as it appears. As Joseph

77 78 79

80 81 82 83 84 85

Id. Id. See, e.g., Garcia v. Google, Inc., 786 F.3d 733, 741–43 (9th Cir. 2015). For a proposal to recognize copyright in a vocalist’s performance separate from both the copyright in the musical work performed and the sound recording of the performance, see Tuneen E. Chisolm, Whose Song Is That? Searching for Equity and Inspiration for Music Vocalists Under the Copyright Act, 19 Yale J. Law & Tech. 274, 330–31 (2017). Supreme Records v. Decca Records, 90 F. Supp. 904, 911 (S.D. Cal. 1950); Id. at 913 n. 4. Id. Id. Feist Publications v. Rural Telephone Co., 499 U.S. 340 (1991). See, e.g., Bleistein v. Donaldson Lithographic Co., 188 U.S. 239, 250 (1903) (“[A] very modest grade of art has in it something irreducible, which is one man’s alone”).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

196

Robert F. Brauneis

Fishman has detailed,86 there is a small line of cases running from 1851 up through the twentieth century that applies a heightened standard of originality to musical arrangements.87 There was precedent for applying such a standard to performances as well.88 Although Judge Yankwich does not cite any of these cases, he may have known of them. Even those cases, however, are limited to music – to the addition or variation of notes and chords to be played or sung – or to various “performance elements.” By contrast, Yankwich seems to apply the high standard even to the new text that Whyte wrote, noting that it consists in part of words that were supposedly commonplace at the time, namely, “certain expressions which have been referred to as jive expressions, such as yeah, dog, solid and the like.”89 Thus, Yankwich ends up applying a uniquely high standard of originality to deny protection to all of the new creation embodied in the Supreme recording. C. The Impact Leon Yankwich’s opinion in Supreme Records is not a model of either factual or legal clarity, and it could conceivably have remained an obscure, one-off decision. In fact, however, the decision had an impact that was both immediate and lasting. The immediate impact on Supreme Records was to render it insolvent, and cause it to cease operations. Supreme had already sold Paula Watson’s recording contract to Decca in late 1949.90 Watson, who had recorded a total of eight songs for Supreme in 1948, went on to record six songs for Decca in late 1949 and early 1950, and four more songs for MGM in 1953.91 She then moved to Europe, where she remained the rest of her life. Evelyn Knight, who was 10 years older than Watson, had her last recorded hit in 1951, and retired from performing by 1954.92 The impact of the Supreme Records decision on the greater record industry was, as Larry Starr and Christopher Waterman put it, to “ope[n] the floodgates for cover versions during the 50s.”93 86 87

88

89 90 91 92

93

See Joseph Fishman, Originality’s Other Path, 109 Cal. L. Rev. 861 (2021) See Jollie v. Jaques, 13 F. Cas. 910 (C.C.S.D.N.Y. 1850) (No. 7,437) (piano arrangement of piece originally composed for clarinet); Cooper v. James, 213 F. 871, 872 (N.D. Ga. 1914) (fourth vocal line added to pieces originally written or arranged for three voices); Norden v. Oliver Ditson, 13 F. Supp. 415 (D. Mass. 1936) (changes in music to accommodate English translation of original Russian lyrics); Woods v. Bourne Co., 841 F. Supp. 118 (S.D.N.Y. 1994), rev’d in part on other grounds, 60 F.3d 978 (2d Cir. 1995) (piano arrangement of original melody). In Waring v. WDAS Broadcasting Station, Inc., 184 A. 631 (Sup. Ct. Pa. 1937), the Pennsylvania Supreme Court applies a similarly heightened standard to performances captured in sound recordings. The Waring court comments that “the ordinary musician” would not necessarily gain a property right in his or her performance of a musical work, since such a musician “does nothing more than render articulate the silent composition of the author.” Id. at 634–35. However, the court finds that the plaintiff in the case, Fred Waring, had gained such a right, because he had “contribute[d] by his interpretation something of novel intellectual or artistic value.” Id. at 635. Id. at 912. See Chip Deffaa, Blue Rhythms: Six Lives in Rhythm and Blues 152 (1999). See Blues & Rhythm Series Classics: Paula Watson 1948–1953, Classics No. 5104 (booklet essay by Dave Penny) (2004). See Matt Schludel, Evelyn Knight; Torch Songstress Began Career in D.C. Clubs, Washington Post (Oct. 28, 2007), https://www.washingtonpost.com/wp-dyn/content/article/2007/10/27/AR2007102701264.html. Larry Starr & Christopher Waterman, American Popular Music from Minstrelsy to MTV 196–97 (2003). For other acknowledgment of the impact of the Supreme Records decision, see Russell Sanjek, American Popular Music and Its Business: The First Four Hundred Years, Volume III From 1900 to 1984 325 (1988) (“Any legal barrier to the practice [of producing covers that were “almost exact musical duplications”] was removed by the courts . . . with a decision in the ‘Little Bird Told Me’ case. . . [The] verdict . . . declared that musical arrangements were not copyrighted property and therefore not subject to the law’s protection”); Brian Lukasavitz, Blues Law: A Little Bird Told Me about Cover Versions, Am. Blues Scene Mag. (2012), http://www.americanbluesscene.com/2013/01/ blues-law-a-little-bird-told-me-cover-versions/ (“Finding for Decca records, the [Supreme Records] Court paves the way for what would become an endless number of cover version recordings of blues and R&B tunes for the pop music consumers”).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

197

The case was commonly understood in the music industry to hold that anything added to a song by arrangers, musicians and vocalists while making a recording was not protected against copying. A Billboard magazine article published days after the release of the Yankwich opinion summarized its principal holding in these two sentences: “Judge [Yankwich] ruled that only a copyright owner holds [property] rights for original music, but that other arrangements are not considered as property. Moreover, after hearing both platters in court, Judge Yankwich ruled that there was nothing original in Supreme’s arrangement which could be made the subject of property ownership.”94 From the current perspective of well into the twenty-first century, it may be difficult to imagine a musical culture like that of the 1950s and early 1960s, when white “mirror covers” of African American recordings became ubiquitous. Some readers may recall that Elvis Presley, Bill Haley, the Beatles, the Rolling Stones, and Eric Clapton all made hits by covering R&B recordings. However, other recording artists who are less known now but were extremely popular in their heyday, including Pat Boone, Georgia Gibbs, the McGuire Sisters, and the Crew Cuts,95 built their careers on such covers. At least one entire record company, Dot Records, focused much of its energies on making and selling white covers of R&B hits.96 In 1955, African American singer LaVern Baker became particularly angry when Georgia Gibbs made a recording of a song called Tweedle Dee that copied the arrangement in Baker’s earlier recording “note for note,” and that became much more successful than Baker’s recording.97 When Baker wrote a letter to Representative Charles Diggs of Michigan calling for an amendment to the Copyright Act to protect singers from “modern-day pirates,” she cited the Supreme Records case as evidence that current law would not protect them: To illustrate the practice [of duplication of successful disks], the letter mentioned the case of Paula A. Watson, who recorded “A Little Bird Told Me” on Supreme in 1948 – a disk which was “copied in its entirety by Evelyn Knight on Decca.” In the ensuing test case, the court held that the Copyright Act protected a song – but not an arrangement . . . “Since there is no court to uphold my right [,” Miss Baker writes, “] maybe my plea for protection will merit some attention from you.”98

Thus, the Supreme Records case, along with several other features of copyright law, left African American composers and musicians vulnerable. Well into the 1960s, there was a major market for covers by white recording artists that copied many features of the original recordings by African Americans.99 If the original African American recording artists were not also the composers of the songs, they would get nothing. If they were the composers, they would get only 94 95

96

97

98 99

Billboard 12 (May 13, 1950). For one chart of original Black R&B recordings and white covers, see Steve Chapple & Reebee Garofalo, Rock’n’Roll is Here to Pay: The History and Politics of the Music Industry 239 (1977). For a book-length account of the phenomenon, see Bob Leszczak, Who Did it First?: Great Rhythm and Blues Cover Songs and Their Original Artists (2013). See Deena Weinstein, Rock’n America: A Social and Cultural History 59 (2015) (“Dot Records became a major label by releasing so many covers”). Gibbs made covers of a number of LaVern Baker’s recordings, as well as recordings by African American singer Etta James. In a bit of critical humor, Baker once took out a life insurance policy on herself with Gibbs as beneficiary and sent it to Gibbs with a note stating “Georgia, you need this more than I do because if anything happens to me, you’re out of business.” The Penguin Encyclopedia of Popular Music 62 (Donald Clarke ed., 2d ed. 1998). Billboard 13 (Mar. 5, 1955). There are some examples that stretch into the 1970s, like James Taylor’s 1975 cover of Marvin Gaye’s “How Sweet It Is (To Be Loved By You),” and there are undoubtedly other examples of which I am unaware.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

198

Robert F. Brauneis

the statutory license rate, the real value of which had been diminished greatly by inflation. Although the rules were facially neutral – in theory, they allowed African Americans to similarly record mirror covers of white recording artist originals – there was little or no market in that direction, and so the predictable effect was decidedly one-sided. IV . MIRROR COVERS UNDER CURRENT LAW

Copyright law has changed a great deal since the Supreme Records case was decided in 1950. How would the case be decided under current law and practice? In 1971, Congress passed a law granting federal copyright protection to sound recordings fixed on or after February 15, 1972.100 Federal law preempts state-law claims like common-law copyright and misappropriation,101 and subsequent developments have greatly limited the possibility of suing for likelihood of confusion as to the authorship of two works under copyright.102 Hence, a modern-day Supreme Records case would more likely be decided under federal copyright law. However, that does not mean that it would be more likely decided in favor of Supreme Records. The 1971 Act provided sound recordings with narrower protection that other works of authorship, and a principal limitation was derived directly from a common understanding of the holding in Supreme Records. In 1957, the Copyright Office cited Supreme Records in “The Unauthorized Duplication of Sound Recordings,” one of the studies it prepared in preparation for a comprehensive recodification copyright law, as principal support for the position that imitation of “the style of performance and manner of interpretation” captured in a sound recording is not actionable.103 Discussants in a succeeding series of roundtables referred to Supreme Records as the “mirror record” case or the case on “mirror copying,” and likewise saw it as precedent for the position that performances captured on a sound recording could be freely imitated.104 Drafts of what would become the 1971 Sound Recording Act and the 1976 Copyright Act included language implementing that position, and it survives in the current version of §114(b) of the Copyright Act: The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.105

Thus, under current law, as long as Decca “independently fixed” its sound recording, which it did, it could imitate any feature in the Supreme recording without violating the copyright in that recording. That is only part of the story, however, because it does not consider copyright in musical works, which is not subject to the same limitation as copyright in sound recordings. If, during the course of making an “independent fixation” of sounds, someone is deemed to have imitated a musical work and not just a sound recording, that could be copyright infringement. Thus, if a 100 101 102 103

104

105

See Sound Recording Act of 1971, Pub. L. No. 92-140, 85 Stat. 391 (1971). See 17 U.S.C. § 301. See, e.g., Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). Barbara A. Ringer, The Unauthorized Duplication of Sound Recordings 10 (Copyright Law Revision Study No. 26, 1957). See Copyright Law Revision Part III, at 196 (comments of Sydney A. Diamond, London Records) (referring to “the way in which Judge Yankwich did decide in the so-called ‘mirror record’ case”); see also id. at 75 (comments of Leon Kellman, American Guild of Authors and Composers) (referring to “mirror copying”). 17 U.S.C. § 114(b).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

199

sound recording contains a copyright-protected musical work, the latitude to imitate it through independent fixation is limited by what features of it count as parts of the musical work. If the musical work contained in the sound recording is thin or nonexistent, the latitude to imitate is broad; if it is thick, the latitude is narrower. For our purposes, then, the relevant question is, under current law, how much of what is added to a previously notated song while making a sound recording of it counts as a copyrightprotected musical work? It turns out that there are three parts to the answer to that question. The first two parts of the answer, which concern standards of fixation and originality, give grounds for optimism. Those standards have moved in the right direction, and could if necessary be given a further nudge. The last part, however, which concerns copyright owner control over derivative works, is more complicated and less tractable. First, how do musical works need to be fixed, and what kinds of features can be components of a musical work? Until the passage of the Copyright Act of 1976, musical works had to be fixed in visible notation.106 That means that any musical features that appeared on a sound recording but were not notated were not protected as part of a musical work – even if they were “notes” – series of pitches with defined durations – that could have been notated. Thus, for example, on the Paula Watson recording of A Little Bird Told Me, the male chorus hums an introduction in harmony, and later also sings the line “She believes that it’s true” in harmony. In the Leroy Whyte notated score that we have available, only a single melody is notated for both of those male chorus parts. Under the requirement of fixation in visible notation, only that melodic line, which is sung by one of the male chorus members. would count as part of a musical work. The pitches that the other chorus members sung would only count as part of the sound recording, and could therefore be copied by means of independent fixation. Only if they had been notated would they count as part of the musical work. That all changed when the 1976 Act become effective. Under that Act, musical works need not be fixed in visible notation, but can be fixed in “phonorecords,” that is, copies of sound recordings.107 That means that much more of the “arrangement” made while recording a song would be subject to copyright protection as a musical work. It is still unclear exactly how much would. It seems certain that the pitches played and sung without ever having been notated would be protected. Whether other elements, such as a singer’s timing that anticipates or lags the beat, or the timbre of the singer’s voice, or the choice of instrumentation, would also count as part of the musical work, is still open to question.108 Some courts have held that the language now in § 114 of the Copyright Act, and its legislative history, preserve a domain of “style of performance and manner of interpretation”109 that can be freely imitated through independent fixation.110 Second, what standard of originality should be applied to derivative musical works, also known as musical arrangements?111 Recall that Judge Yankwich articulated a very high standard 106

See White-Smith Music Pub. Co. v. Apollo Co., 209 U.S. 1 (1908). Although the Copyright Act of 1909 added rights of mechanical rendering, it did not overrule this part of the White-Smith ruling. But see O’Connor, supra note 4, at 318–19 (arguing that the 1909 Act should be read to extend copyright to musical works not fixed in notation). 107 See 17 U.S.C. §§ 102(a), 101 (“fixed”). 108 See Robert Brauneis, Musical Work Copyright for the Era of Digital Sound Technology, 17 Tulane J. Tech. & Intell. Prop. 1, 35–43 (2014) (reviewing four different tests for separating musical works from sound recordings in phonorecords, and concluding that none of them work well). 109 Ringer, supra note103, at 10. 110 See, e.g., Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2003), 111 “Musical arrangement” is a term that appears three times in the Copyright Act. See 17 U.S.C. § 101 (“derivative work”) (defining “derivative work” as including “musical arrangements”); 17 U.S.C. § 101 (“work made for hire”) (providing

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

200

Robert F. Brauneis

of originality, patent-like in formulation, which resulted in the denial of protection to everything added to A Little Bird Told Me in the Supreme recording.112 As noted above, there are isolated subsequent decisions that have applied a similar standard.113 Yet that patent-like formulation is wildly out of step with the “modicum of creativity” standard applied to works of authorship in general,114 and even with the slightly higher standard of “substantial as opposed to a trivial variation” often applied to derivative works.115 Under a lower standard, most musical arrangements, and certainly the arrangement in the Supreme Records case, should be copyrightable. A weakness in the Supreme Records opinion provides a principal reason that a lower standard is desirable: to avoid the subjective and perhaps prejudiced musical assessments of a judge. To Leon Yankwich’s ears, which may have been trained on “popular records” rather than “race records,” Paula Watson’s recording was “thick, mechanical, lacking inspiration, containing just the usual accompaniments and the usual intonations which one would find in any common recording.”116 Others might well hear more nuance and inventiveness. To paraphrase Justice Holmes, “It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [musical arrangements], outside of the narrowest and most obvious limits.”117 So far, so good. However, the third issue is the most enduringly difficult: the matter of protection of derivative works generally. Both the Copyright Act of 1909118 and the Copyright Act of 1976119 have provisions denying copyright to a derivative work that uses an underlying copyrighted work without permission of the owner. The 1976 Act provision states that “protection for a work employing pre-existing material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.”120 Under that rule, as long as the song A Little Bird Told Me is under copyright, an arrangement of the song would be denied copyright protection if the authors of the arrangement did not get permission to use the song. Moreover, permission to use the song can be conditioned on conveyance of copyright in the arrangement to the owner of copyright in the song. Under current law, that conveyance could even take the form of a work-made-for-hire agreement, leaving no power to terminate the transfer in the future, because “musical arrangements” are mentioned in the Copyright Act as an

112 113

114 115 116 117 118

119 120

that a “musical arrangement” is a “supplementary work” that can qualify as a specially commissioned work made for hire); 17 U.S.C. § 115(a)(2) (providing that a statutory mechanical license “includes the privilege of making a musical arrangement,” within specified limitations). I would like to suggest that the term has some connotations of modesty and lower status of the task – that an “arrangement” is just figuring out how to adapt music to different instruments, or a different rhythm or style, and might not cover all musical derivative works. It is not clear, for example, that we would naturally refer to Sergei Rachmaninov’s Rhapsody on a Theme by Paganini as an “arrangement” of Niccolo Paganini’s Caprices for Solo Violin, although it would count as a derivative musical work, as it incorporates a significant portion of Paganini’s 24th Caprice. That also means that to call something a “musical arrangement” is subtly to suggest that it is of a lesser degree of creativity, of lower status, deserving less respect, just as some might use the term “interior decorator” to denote a task and a role of lesser status than “architect.” See supra text accompanying notes 77–80. See Woods v. Bourne Co., 841 F. Supp. 118 (S.D.N.Y. 1994), rev’d in part on other grounds, 60 F.3d 978 (2d Cir. 1995) (piano arrangement of original melody). See Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340. 345 (1991). L. Batlin & Son Inc. v. Snyder, 586 F.2d 486, 490 (2d Cir. 1976) (en banc). Id. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“pictorial illustrations” in the original). Act of Mar. 4, 1909, § 6 (“[C]ompilations or abridgements, dramatizations, translations, or other versions of . . . copyrighted works when produced with the consent of the proprietor of the copyright in such work . . . shall be regarded as new works subject to copyright under the provisions of this Act”) (emphasis added). 17 U.S.C. § 103(a). Id.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

201

allowable category of specially commissioned works made for hire.121 Thus, if Supreme Records were making the first recording of A Little Bird Told Me today, Harvey O. Brooks could demand that Supreme and all of the people that were involved with recording the song sign agreements that would result in Brooks being considered the author and initial owner of any arrangement created during the process of recording the song. Brooks could also condition permission to use the song on dedication of the arrangement to the public domain, which under the 1976 Act is the default status of arrangements made when recording a cover version of a song under the § 115 mechanical license.122 There are two reasons why that makes protection for what is added during recording difficult. The first is that protection and ownership all depend on the relative bargaining power and sophistication of the parties. Musicians and recording companies have to have leverage with composers and music publishers, and have to understand that they have that leverage. As for the latter, diminished access to resources and knowledge is another result of general racial subordination and isolation. As Reebee Garofalo has noted, because African American musicians “seldom had access to good advice about record contracts, royalty payments, marketing, promotion, or career development . . . they were routinely swindled out of their publishing rights and underpaid for record sales.”123 There are countless examples of such uncompensated or undercompensated appropriation.124 Second, splitting ownership of a song and an arrangement is a special case of the more general issue of dispersed ownership of layers of copyright, which raises transaction costs for using works, and which Congress and courts have often tried to avoid. (To be fair to Judge Yankwich, he also raises this concern in his opinion in Supreme Records.125) If a song and an arrangement of that song are separately owned, anyone who wants to make a recording or performance that would count as use of both the song and the arrangement would have to obtain permission from two different parties. Those parties then need to price their permission knowing that another permission fee will need to be paid, a very difficult task. And it is not clear that the existing statutory mechanical license or performing rights organization distribution schemes have any provision for dividing payments to owners of multiple layered works. If the owner of copyright in a song gave permission to a recording company to protect a recorded arrangement as a separate derivative work, then presumably that recorded arrangement would also become subject to the statutory mechanical license, and anyone who wanted to cover that arrangement would have to pay two mechanical license fees. As a result, what happens somewhat more often is that the recording artist (or record producer) who makes the first recording of a song negotiates for co-writing credit for the song itself. In the 1920s, Al Jolson, the most famous singer of that era, reportedly regularly bargained

121

122

123 124

125

See 17 U.S.C. § 101 (“works made for hire”) (listing “musical arrangement” as a type of “supplementary work” eligible for a to be a specially commissioned work made for hire). See 17 U.S.C. § 115(a)(2) (providing that a musical arrangement made while making a recording under the § 115 mechanical license “shall not be subject to protection as a derivative work under this title, except with the express consent of the copyright owner”). Garofalo, supra note 19, at 123. See, e.g., Greene, Copyright, Culture & Black Music, supra note 1, at 372–73, 376–77 (discussing the phenomenon generally and the cases of Frankie Lymon, Little Richard, and Chuck Berry in particular); K.J. Greene, Intellectual Property at the Intersection of Race and Gender: Lady Sings the Blues, 16 Am. U. J. Gender Soc. Pol’y & Law 365, 370 n. 29 (citing sources discussing cases from Scott Joplin to Huddie Ledbetter to Jelly Roll Morton). See 90 F. Supp. at 909 (noting the problems created when copyright in a work is “segmentized”).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

202

Robert F. Brauneis

for songwriter credit while he was negotiating to record a song.126 He was often successful: the ASCAP repertory database lists him as co-writer on 43 songs.127 At that time, when most revenue from songs still came from the sale of sheet music, we can view Jolson’s authorship claim as fictional. He likely did not write any of the notated songs sold as sheet music, but only promoted them by singing them on records and in live performances. By the 1950s, however, songs were generating most of their revenue from recording royalties (including both mechanical license income and public performance income) rather than sheet music sales, and the initial recorded versions often became the canonical ones. Under those circumstances, it was far less fictional to claim that the recording artist was a co-author of “the song,” even if he or she became involved after the melody and words were notated. Thus, for example, Elvis Presley’s co-writing credit for “Heartbreak Hotel,” shared with composers Tommy Durden and Mae Boren Axten,128 might best be understood that way. Presley may well have contributed compositional as well as performance elements to its canonical recorded version (although he of course also contributed his audience goodwill, which is not authorship). Similarly, many bands from the late 1960s onwards, including the Doors, Black Sabbath, Genesis, the Sex Pistols, U2, REM, and Coldplay, have shared songwriting credit equally across all band members.129 That can also be seen in part as recognition that whoever came up with the melody and lyrics, each member of the group contributed musical elements that are fixed in the sound recording. More recently, in some genres of music, the creation of a song does not start with notating a melody or words, or even with recording a performance of a melody and words. Rather, it starts with creating a rhythm track or a “beat,” which may be programmed as much as performed, and then layering melody, words and other instrumentation on top of that track.130 When that “trackand-hook” method of creation is used, songwriting credit may indeed be allocated among everyone who had a hand in creating the recorded song, including those we would have previously thought of as producers (a title that now has gained an alternative meaning, as the person who creates the rhythm track), arrangers, and performers. That is a large part of the reason why hit songs have had an increasing number of average songwriting credits over the past 40 years. In the 1960s, 1970s, and 1980s, the average number of songwriters credited for each top 10 song was just under two. In the 1990s, that figure rose to 3.13; in the 2000s, to 3.50, and in the 2010s, to 4.07.131 To the extent that songs continue to be written in notated form and then arranged in preparation for recording, it could be also possible to come to some industry-wide agreement about default rules for dividing licensing revenue between composer and arranger. Rules for dividing revenue are no strangers to the Copyright Act. For example, § 114(g) of the Act provides that 50 percent of the revenues from digital streaming of sound recordings will be paid to the owner of copyright in the sound recording; 45 percent will be paid to the featured artist or artists; 2½ percent will be paid to the nonfeatured musicians; and 2½ percent will be paid to the nonfeatured vocalists.132 More recently, Title III of the Music Modernization Act, known separately as the Allocation for Music Producers Act, sets up some complicated rules for 126 127 128 129

130 131

132

See Geoffrey P. Hull, Termination Rights and the Real Songwriters, 7 J. Ent. L. & Prac. 301, 301 (2005). See id. See id. See Richard Osborne, Doing the Splits: The Creative Accounting of Songwriting Shares, https://www.academia.edu/ 28445319/Doing_the_Splits_The_Creative_Accounting_of_Songwriting_Shares. See generally John Seabrook, The Song Machine: Inside the Hit Factory (2015). See Daniel Sanchez, The Average Hit Song Has 4+ Writers and Six Different Publishers, Digital Music News (Aug. 2, 2017), https://www.digitalmusicnews.com/2017/08/02/songwriters-hit-song/. See 17 U.S.C. § 114(g)(2).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

203

providing some portion of those streaming revenues to sound recording producers, suggesting a realization of the need to broaden recognition of creative contributions to sound recordings.133 Analogously, one can imagine default rules about an allocation of some percentage of mechanical and public performance revenues to arrangers and performers associated with the initial recording of a song. V . POLICY IMPLICATIONS

At a relatively modest level, the policy implications of the history of white mirror covers recordings could be spelled out reasonably simply. The inability of those who made the first recording of A Little Bird Told Me to receive any compensation or attribution for the use of their creative work in subsequent mirror cover recordings resulted from the interplay of three copyright doctrines, and from their unsympathetic application in the Supreme Records case. For those who think that the African American creators of musical elements used in white mirror covers should have received some compensation and attribution, two of those doctrines have moved in the right direction, and the third has been subject to increased circumvention through bargaining. The policy recommendations, particularly the mandates of IP social justice, could be just to ensure that doctrine and bargaining practices continue to move in that direction. Musical works can now be fixed in sound alone. The recommendation would be that what counts as a musical work within a sound recording should not be defined too narrowly, to ensure that it does not exclude important elements contributed in the recording process. The general threshold standard of creativity for works of authorship is now very low. The recommendation would be that it should be kept low when assessing copyright protection for musical arrangements. It is still the case that derivative works will only gain copyright protection with the permission of the underlying work owner. While that doctrine is unlikely to be changed, there has been increased bargaining about songwriting credit as the sound recording, rather than the notated song, has become the paradigmatic unit of music creation. The recommendation would be that that bargaining be acknowledged and facilitated, and that all participants in the process of creating a sound recording be educated about the possibility of bargaining for songwriting credit or for a share of musical work revenues. Those modest policy recommendations aside, there should be a broader conversation about whether and how copyright law should address social justice concerns, and how the history of white mirror cover recordings could help us understand what the best approach is. I have no more than tentative thoughts about that conversation, which may be best presented as responses to a series of reservations to having copyright policy involved at all. So here are the reservations, followed by my responses. 1. The entire phenomenon of white mirror cover recordings is in the end traceable to unregulated private consumption decisions – the preferences of prejudiced audiences for recordings by whites – and those should be addressed by attempts at changing attitudes, not law. That suggestion runs counter to a basic premise of American antidiscrimination law. Although that law does not regulate private consumption decisions directly, it also generally does not let businesses justify discrimination on the ground that they are merely responding to consumer preference. If the law

133

See Allocation for Music Producers Act, Title III of the Music Modernization Act, Pub. L. 115-264, 132 Stat. 3676, 3737 (2018).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

204

Robert F. Brauneis

can intervene when an airline hires only female flight attendants because their passengers prefer them,134 it should be able to intervene when a recording company produces a white mirror cover version because there is an audience that prefers to see white faces on recording artists. It is important to note that copyright law itself has historically followed the same pattern. It does not impose liability for receiving or possessing unauthorized copies of works, or for viewing unauthorized public performances. Thus, at least before the development of home copying and peer-to-peer distribution technologies, copyright law also left private consumption decisions unregulated, and operated only as a constraint on business operations. 2. Discrimination should be addressed by antidiscrimination law, not by intellectual property law. A principal problem here is that antidiscrimination law is unlikely to work. In the case of white mirror cover recordings, the decision that antidiscrimination law would regulate is the employment or contracting decision of the record company that produces the cover recordings. In the Supreme Records case, that would be Decca Records’ decision to employ or contract with Evelyn Knight, rather than with an African American singer, to make its recording of A Little Bird Told Me. Yet every vocalist has a distinctive voice, and it would usually be difficult to rebut a record company’s assertions that it chose the white vocalist because of his or her voice, and not because of his or her race. Moreover, in the era of music streaming platforms as the dominant source of recorded music revenue, a white mirror cover recording could be made and distributed without any employment or contracting decision ever having been made. A white recording artist self-produces a mirror cover and makes it available on a streaming platform. It becomes vastly more popular than the African American-produced original. That difference is reflected in the royalties paid to the owners of the two recordings. There is no employment or contracting decision left to regulate. More generally, the institution of property, including intellectual property, can provide and has provided important protection for minorities beyond that afforded by antidiscrimination law. As N.D.B. Connolly put it, “at the end of the nineteenth century . . . black people’s civil rights and voting rights stood on shifting sand . . . By contrast, when it came to black people’s legal claims on property, courts and other adjudicating bodies generally proved more responsive, for there it was the integrity of capitalism, not white power, that was at issue.”135 While civil rights have come a long way, it is not at all clear that civil rights are now so perfectly protected that there is no work left for property to do. Finally, there is the direct impact upon the social utility function of copyright. White mirror cover recordings disincentivize creative protection by Black performing artists, while incentivizing uncreative imitation by white performing artists. Viewed through the lens of intellectual property social justice, adjusting copyright law and policy to correct such deficiencies is not merely an effort to redress disparate impacts of copyright doctrines, but is also an effort to preserve the social function of copyright protection. 3. Any sympathy for Paula Watson, Albert Patrick, and the others who worked on the first recorded version of A Little Bird Told Me is ultimately grounded on a theory of desert, and desert theories have no place in discussions of copyright or intellectual property. It is true that some of my own sympathy for Paula Watson and her collaborators seems to be connected to an implicit judgment that they created something for which they should have received some compensation 134

135

See Diaz v. Pan Am. World Airways, Inc. 442 F.2d 385 (5th Cir. 1971), cert. denied, 404 U.S. 950 (1971) (holding that the preferences of airline passengers for female flight attendants did not make sex a bona fide occupational qualification for flight attendants). N.D.B. Connolly, A World More Concrete: Real Estate and the Remaking of Jim Crow South Florida 29 (2014).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

205

when it was successfully exploited by others. I could test the emotional power of at least one kind of desert by asking myself whether my sympathies would be any different if it were another African American recording artist who had made the mirror cover that had eclipsed the popularity of the original recording. And I think the answer is that they would be somewhat different – some of my sympathies are triggered by the practice of using white recording artists to make the covers – but they would not be gone. It is also true that the dominant theory of copyright in academic circles is based on incentives to create, and rejects any appeal to desert. There are some carefully argued reasons why, but incentivist academics probably also need to come to grips with the fact that rejection of desert sets them apart from the intuitions of the vast majority of nonacademics, and likely from their own intuitions when their vigilance lapses. Another aspect of the response to this reservation, however, is that it is not clear that we need desert to support policies that promote protection for minority follow-on authors. It is interesting to explore how the white mirror cover recording phenomenon might appear when viewed through the lenses of various incentive-based theories. Even from an unreconstructed efficiency perspective, under which we would have to take patterns of consumer demand completely for granted, there are empirical conditions that would support protection. Perhaps somewhat shockingly, the problem might have to be that too few good white mirror covers were being produced, because African American musicians didn’t have sufficient incentives to produce the original recordings. As with many incentivist narratives, one problem is that there were many African American original recordings made even under the shadow of potentially uncompensated copying. Some would argue that that means that the prospective revenue from freely imitable recordings provides sufficient incentive to make them, and no further protection is needed. The counterargument is that Paula Watson, Albert Patrick, and other African Americans of the era may have made even more recordings had they been compensated for the white mirror covers. That is very difficult to know, which is a characteristic vulnerability of incentivist arguments. Not all incentivist theories have to be quite so blind to distributional consequences. If we thought that there should be incentives for a diverse range of creators to create, across racial, ethnic, gender, and other lines, we might be concerned if we saw that the decision not to protect a particular kind of creativity was having a disparate impact on a particular group of creators. 4. The injuries of white mirror cover recordings stemmed from lack of attribution as well as lack of compensation and permission, but U.S. copyright law has always been weak on attribution. Both of those are true. Part of the injury of allowing Decca and Evelyn Knight to freely appropriate all of the elements added to A Little Bird Told Me is that the contributions of African Americans like Paula Watson, Albert Patrick, Leroy Whyte, Tiny Webb, Jesse Sailes, Chuck Hamilton, Maxwell Davis, and Pete Peterson were rendered invisible. U.S. copyright law does not incorporate a right of attribution extending to musical works or sound recordings. There is an industry practice of crediting that to some extent follows recognition of authorship by copyright law. For example, Harvey O. Brooks is credited on the Decca recording even though U.S. copyright law does not directly require that credit. Thus, if separate authorship and ownership of an arrangement were recognized, or if the arranger bargained for co-authorship of a song, credit might follow. Nonetheless, attribution does remain a weakness of both law and practice. But for the Supreme Records litigation, the participation of Leroy Whyte and the musicians in creating A Little Bird Told Me might be completely lost to history, because they were not credited on the original Supreme release. And even with a fully implemented right of attribution, the race of the authors could be rendered invisible. A very high percentage of

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

206

Robert F. Brauneis

purchasers of the sheet music for “A Little Bird Told Me,” featuring a photo of Evelyn Knight on the front cover, probably did not know that composer Harvey O. Brooks was African American, even though his name appears prominently on that cover. In the interest of copyright social utility, the importance of race in the history of copyright attribution, and the possible impact on the production of creative works by Black and other marginalized artists, cannot be ignored. 5. In general, the prejudiced taste of audiences is too transitory a matter to trigger a copyright policy response. In particular, the phenomenon of white mirror cover recordings waned decades ago, and so it seems odd to consider possible policy reactions to it. A lot of copyright policy is based on patterns of consumption that may change over time. For example, the ban on rentals of musical sound recordings and software,136 but not on rental of movies, books, or spoken word recordings,137 is based on experiences of consumer behavior patterns that might well change over time. It is true that the particular phenomenon of white mirror cover recordings waned decades ago, and that the position of African American recording artists on Billboard charts has improved greatly (although women are still at a disadvantage).138 However, an advantage of considering a policy decision that was made some time ago is that we can see how the decision played out over the years after it was made. It seems unrealistic to deny that many consumers of works of authorship still make consumption decisions based on race, and to deny that some in the copyright industries act to feed those preferences. More recent discussions of acting suggest that the effects of the preferences of some consumers for white actors are still very much present in the theater and motion picture industries.139 And white audiences’ acceptance of African American performers at live concerts may lag behind their acceptance of those performers on sound recordings.140 6. Every copyright doctrine that could possibly be adjusted to protect African American musicians from uncompensated exploitation is very broad, and those adjustments would have consequences far beyond that particular problem. That is likely true, but it is true for many copyright doctrines and many policy concerns. All the policy concerns have to be expressed, and in some cases there has to be some difficult balancing in formulating doctrines. However, in this circumstance, it is not clear that there are strong policy concerns weighing against recognizing that some range of features fixed only on phonorecords count as part of a musical work and not just a sound recording. Nor do there seem to be strong policy concerns against treating musical arrangements like other derivative works, rather than subjecting them to uniquely high creativity standards. The doctrine that copyright in derivative works hinges on permission from underlying 136 137

138

139

140

See 17 U.S.C. § 109(b). See Brilliance Audio v. Haights Cross Communications, Inc., 474 F.3d 365 (6th Cir. 2007) (holding that the rental exception in § 109(b) extends only to sound recordings of music). See Marc Lafrance et al., Race, Gender, and the Billboard Top 40 Charts Between 1997 and 2007, 41 Popular Music & Soc. 522 (2018); Alan Wells, Nationality, Race, and Gender on the American Pop Charts: What Happened in the 90’s?, 25 Popular Music & Soc. 221 (2001); Alan Wells, Black Artists in American Popular Music, 1955–1985, 48 Phylon 309 (1987). See, e.g., Christina Shu Jien Chong, Where Are the Asians in Hollywood: Can Sec. 1981, Title VII, Colorblind Pitches, and Understanding Biases Break the Bamboo Ceiling, 21 UCLA Asian Pac. Am. L.J. 29 (2016); Unmasking Tonto: Can Title VII “Make It” in Hollywood, 37 Am. Indian L. Rev. 549 (2016); Angela Onwuachi-Willig, There’s Just One Hitch, Will Smith: Examining Title VII, Race, and Casting Discrimination on the Fortieth Anniversary of Loving v. Virginia, 2007 Wis. L. Rev. 319 (2007). See, e.g., DeAnna Taylor, Black at Coachella: The Good, The Bad, and the Ugly, Travel Noire, Apr. 17, 2019, https://travelnoire.com/black-at-coachella (noting that the Coachella Music Festival, founded in 1999, did not have its first Black headliner until 2008 (Prince) and its first Black female headliner until 2018 (Beyoncé). I thank Jessica Steinberg for this observation.

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

Copyright, Music, and Race: The Case of Mirror Cover Recordings

207

work owners is probably supported by enough policy concerns to resist modification for purposes of supporting minority creators, but one can imagine other policies that could be subject to adjustment, such as enforcement of oral agreements to share songwriting credit when there is evidence that both parties contributed creative content to a sound recording that embodies the song, and hence that the agreement does not involve any transfer of copyright interest. 7. Expanding copyright protection will sometimes burden minority creators rather than support them. That is undoubtedly also true. For example, expansion of copyright protection of sound recordings in a way that requires licensing for even the tiniest of samples141 may burden creation of music in genres like rap and hip hop that are disproportionately created by minorities. That just means that copyright policy is complicated. CONCLUSION

Although U.S. copyright law has always been facially race- and gender-neutral, copyright policy has been made in contexts in which the disparate impact of particular rules has been apparent. This chapter has attempted to recover the history of one of those instances, in which rules about the scope of protection for sound recordings and the standard of creativity applicable to musical arrangements were formulated in a context in which it was clear that African American musical creators had a particular stake in the outcome. The disregard for and injury suffered by those creators can never be fully remedied. However, by considering the issue in the context of intellectual property social justice, and the attendant mandates of socially equitable access, inclusion, and empowerment, we can commit ourselves to acquiring sensitivity to such injuries, and to serious discussion of the ways copyright law can and cannot address them.

141

Compare Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) (holding that there is no de minimis exception to copyright infringement for copying of sound recordings) with VMG SALSOUL, LLC v. Ciccone, 824 F. 3d 871 (9th Cir. 2016) (holding that there is such an exception).

https://doi.org/10.1017/9781108697613.014 Published online by Cambridge University Press

10 They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights Kara W. Swanson

I. II. III. IV. V.

Forging the Links Patents and Antislavery Activism Patents and Votes for Women Patents and Post-Emancipation Black Civil Rights Movements Patents and Social Justice in the Twenty-First Century

page 210 213 215 217 220

Inventors have always approached the United States Patent Office hoping for financial reward.1 As Abraham Lincoln, himself a patentee, explained, the United States patent system is designed to add the “fuel of interest to the fire of genius.”2 Starting with the Patent Act of 1790, Congress offered “fuel” in the form of an opportunity to put dollars in one’s pocket by commercializing exclusive rights to an invention.3 While many inventor-patentees, including Lincoln, failed to earn anything from their patents, the legislative intention was to keep the fires of genius burning in the American population in order to generate what the United States Supreme Court has called “a positive effect on society.”4 In fulfilling its constitutional power to promote “the progress of the useful Arts,” Congress intended also to stimulate economic expansion.5 By the centennial of the first Patent Act, Americans credited patents with “accelerating the prosperous growth of the Nation,” allowing it to expand its territory to the Pacific Ocean, and placing it “in the vanguard of progress.”6 Patents have been celebrated for over 200 years as successful 1

2

3 4

5 6

B. Zorina Khan & Kenneth L. Sokoloff, “Schemes of Practical Utility”: Entrepreneurship and Innovation Among “Great Inventors” in the United States, 1790–1865, 53 J. Econ. Hist. 289, 290 (1993). This desire does not preclude other motivations for patenting, including self-expression and credentialing. See, e.g., Jeanne Fromer, Expressive Incentives in Intellectual Property, 98 Va. L. Rev. 1771–73, 1779 (2012) (describing relation of invention to selfhood and arguing that individuals need both pecuniary and expressive incentives to create); Jessica Silbey, Patent Variation: Discerning Diversity Among Patent Functions, 45 Loy. U. Chi. L.J. 441, 471–72 (2013) (identifying and analyzing “personal and moral dimensions” of patents); Jason Rantanen & Sarah E. Jack, Patents as Credentials, 76 Wash. & Lee L. Rev. 311, 319–20 (2019) (patents as social capital that contributes to jobs, salary and promotion, and reputation). Abraham Lincoln, Lecture on Discoveries and Inventions, in Selected Speeches and Writings by Abraham Lincoln 200, 208 (1992) (emphasis omitted). USPN 6,469, May 22, 1849. Patent Act of 1790, ch. 7, 1 Stat. 109–112 (Apr. 10, 1790). Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974). For Lincoln’s failure to commercialize his invention, see Charles J. Robertson, Temple of Invention: History of a National Landmark 36 (2006). U.S. Const., art. I, § 8, cl. 8. To the Inventors of America and the Manufacturers of Inventions, 4 and Charles Eliot Mitchell, Commissioner of Patents, Birth and Growth of the American Patent System, 47, 55, both in Proceedings and Addresses, Celebration

208 https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights

209

technoeconomic tools, granted to individuals and cumulatively creating “increased employment and better lives for our citizens.”7 Such “positive effects” can serve social justice ends, insofar as more Americans participate in the resulting “better lives.”8 As Lateef Mtima forcefully argues, this perspective that has underpinned the patent system from its beginnings has created an “innate and interdependent relationship between the social utility function of IP protection, and its social justice . . . effects.”9 Yet as the United States developed and expanded its patent system and celebrated its social utility, the system was “operationally agnostic” about social justice.10 Congress and the courts were silent about equality of access to, inclusion within, and empowerment by the patent system with its possibility of individual gain and perceived benefits in the form of the new lands and additional jobs.11 Legislators and judges wrote and interpreted the patent laws without any reference to the myriad legal and social restrictions that kept many United States residents from full inclusion both in the patent system and the category of “our citizens.”12 Americans designed a patent system that intentionally created societal benefits, but by this silence, allowed those technoeconomic benefits to perpetuate existing social injustices. This chapter argues that despite this silence and agnosticism, Americans seeking social justice have turned to the patent system to aid their cause. They were able to do so during the first century of the patent system and into the second because in the first decades of the patent system, those in power in the United States created an additional sociopolitical meaning for patents alongside their celebrated technoeconomic role. Patents came to demonstrate the ability to think independently and, thereby, the suitability of those able to obtain patents to meet the demands of self-government required of citizens in a democratic republic. In a form of intellectual property social justice theory in action, those excluded from full citizenship rights used this meaning, wielding patents granted to their group members as political tools to push for civil rights. Beginning before the Civil War, black Americans and white women mobilized patents as a collective resource to aid their fights for full citizenship rights and social, legal, and economic equality.13 Their actions demonstrate the deep historical links between patents and

7 8

9

10 11

12

13

at the Beginning of the Second Century of the American Patent System at Washington City, D.C., April 8, 9, 10, 1891 (1892). Kewanee Oil Co. v. Bicron Corp., 416 U.S. at 480. See, Peter S. Menell, Mapping the Intellectual Property/Social Justice Frontier, ch. 1 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice 2 (Steven D. Jamar & Lateef Mtima eds., 2023) (emphasis removed). See also Mason Marks, People Are the Lifeblood of Innovation, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (arguing that James Madison, in drafting the IP clause, envisioned a patent system that aligned the interests of inventors and society). See Mtima, supra note 9, at 78. Social justice can be defined in various ways. Here, I borrow the emphasis of the editors of this volume on access, inclusion, and empowerment. Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See also Mtima, supra note 9, at 78, note 10 (detailing other formulations of social justice). Kara W. Swanson, Centering Black Women Inventors: Passing and the Patent Archive, 25 Stan. Tech. L. Rev. 305, 337–38 (2022) (arguing that while patent laws were formally race and gender neutral, the processes of invention, patenting, and commercialization of inventions were raced and gendered). Elsewhere in this volume, Zvi S. Rosen discusses possible links between copyright registration by black authors and antislavery activism. See Zvi S. Rosen, Unequal Copyright in the Nineteenth Century, ch. 11 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

210

Kara W. Swanson

an expansive sense of belonging that undergirds the potential of intellectual property social justice theory in the United States.14 These activists knew all along that patents and the patent system could be harnessed for social justice effects and that patent-based claims for equity, access, and inclusion were not limited to the IP ecosystem but rather reached to the social and legal boundaries of the nation. Their campaigns thus remind us of the breadth of social justice concerns that are related to intellectual property rights. Their efforts also speak directly to the need to consider social justice as an obligation of intellectual property systems.15 For these activists also knew that, like other aspects of U.S. law written by and for white men in a world shaped by racialized and gendered hierarchies of power, the neglect of patent system participants to consider social justice was not benign or neutral, but rather perpetuated social injustices by perpetuating existing inequalities.16 This chapter briefly traces the development of a sociopolitical meaning of patents as a marker of worthiness for citizenship and then explores the tactics of activists who enacted intellectual property social justice theory as they collected patents granted to group members and publicized marginalized inventors, all in support of civil rights movements.17

i. forging the links When Lincoln offered his pithy description of the U.S. patent system in 1858, he did so to listeners primed to think of themselves as inventive denizens of a unique country.18 From the Founding, the American political elite considered their experiment in democratic republicanism to require certain qualities in those authorized to participate in self-government. One key trait was the ability to think independently, to develop one’s own opinions rather than simply mimicking those of others. For this reason, state legislatures had initially limited the franchise to propertied men, using economic independence to ensure independence of thought.19 In the first decades of the new republic, however, in response to pressures from unpropertied white men, most states dropped property requirements for voting and instead turned to markers believed to correlate with natural mental abilities, using sex, race, age, and able-bodiedness to limit the franchise to white able-bodied adult men.20 14

15 16

17

18

19

20

This chapter focuses on the United States. For a consideration of the sociopolitical meaning of patents in the British context, see Christine MacLeod, Heroes of Invention: Technology, Liberalism and British Identity, 1750–1914 (2007). See Mtima & Jamar, supra note 11, at 2–4. See also Mtima, supra note 9, at 78–9. For other examples of laws perpetuating inequality, see Dorothy Roberts, Shattered Bonds: The Color of Child Welfare (2001); Dorothy Roberts, Killing the Black Body: Race, Reproduction and the Meaning of Liberty (1997); Michele Bratcher Goodwin, Policing the Womb: Invisible Women and the Criminalization of Motherhood (2020); Michelle Alexander, The New Jim Crow: Mass Incarceration in the Age of Colorblindness (2010); Richard Rothstein, The Color of Law: A Forgotten History of How Our Government Segregated America (2017); Mehrsa Baradan, The Color of Money: Black Banks and the Racial Wealth Gap (2017). I explore aspects of the sociopolitical meaning of patents in more detail in Kara W. Swanson, Beyond the Progress of the Useful Arts: The Inventor as Useful Citizen, 60 Hous. L. Rev. 363 (2022); Kara W. Swanson, Inventing the Woman Voter: Suffrage, Ability, and Patents, 19 J. Gilded Age and Prog. Era 559, 567 (2020); Kara W. Swanson, Race and Selective Legal Memory: Reflections on Invention of a Slave, 120 Colum. L. Rev. 1077, 1092–93 (2020); and Inventing Citizens: Race, Gender, and Patents (book in progress). Neal Longley York, Mechanical Metamorphosis: Technological Change in Revolutionary America 222–23 (1985). Alexander Keyssar, The Right to Vote: The Contested History of Democracy in the United States 9–12 (2000). Id. at 52; Laura E. Free, Suffrage Reconstructed: Gender, Race, and Voting Rights in the Civil War Era 11–17 (2015); Corinne Field, The Struggle for Equal Adulthood: Gender, Race, Age, and the Fight for

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights

211

Over the same period, the U.S. developed a patent system that was more accessible than previous European systems of protecting inventions. What U.S. administrators proudly called the “American patent system” was much cheaper and less cumbersome, making it easier for a wider range of potential patentees to participate.21 It also limited patents to “true” inventors who had originated a new technology.22 Unlike in earlier European and colonial systems, those who were the first to import new technologies could not obtain patents, which were restricted to originators.23 Each patent grant was a legal right to exclude others from making, using, or selling the invention and thus to control its commercialization, serving its technoeconomic purpose. Because of the true inventor doctrine, it was also a federal certification that the named inventor(s) could originate, not just imitate, that is, that they could think independently. Here was the basis of a link between patents, as proof of the capacity for original thinking, and citizenship. The broad accessibility of patents in the United States, which economic historian B. Zorina Khan has called the “democratization of invention,” further supported this link between patents and a growing sense of Americanness, that is, the “borders of belonging” established in law and society to define who qualified as American and thus was eligible for full legal personhood.24 The social role of an American and the political status of a person with full legal personhood each both encompassed and also reached beyond the legal definition of citizen – white women, for example, were U.S. citizens, even as they were prevented from voting and holding political office, that is, denied full legal personhood. Patents, as certification of inventive ability, acquired a sociopolitical meaning related to this capacious sense of the ideal American in ways that would allow them to serve as political tools for those seeking specific civil rights (like the vote) as well as making broad claims for citizenship and full legal equality. The federal government promoted this sociopolitical meaning of patents. Beginning in 1837, it printed reports listing patents received by United States citizens in every state, constructed the large Patent Office Building (built between 1840 and 1867), and mandated that the new building contain an expansive exhibit hall where the public could view American inventiveness in the form of patent models.25 At this successful tourist attraction and via the circulating lists, the United States both celebrated the inventiveness of Americans and sought to foster more inventiveness.26 As Maine Senator John Ruggles, an inventor and leading Congressional supporter of the patent system, explained, seeing such proof of American inventiveness would stimulate the latent abilities that were part of the national “character.”27 This same “character”

21

22 23

24 25

26 27

Citizenship in Antebellum America 6–7 passim (2014); Barbara Young Welke, Law and the Borders of Belonging in the Long Nineteenth Century United States 6–13 (2010). See Mitchell, supra note 6, at 44, 50–51 (comparing “American system” favorably to English system); B. Zorina Khan, The Democratization of Invention: Patents and Copyrights in American Economic Development, 1790– 1920 50–54 (2005) (explaining ease of access compared to European systems). Patent Act of 1790, §§ 5–6; Patent Act of 1793, ch. 11, 1 Stat. 318–23, §3 (Feb. 21, 1793) (“true”). Doron Ben-Atar, Alexander Hamilton’s Alternative: Technology, Piracy, and the Report on Manufactures, 52 William & Mary Q. 389, 399, 403–404 (1995); Edward C. Walterscheid, To Promote the Progress of the Useful Arts: American Patent Law and Administration, 1787–1836 14–15, 95–97, 110–11, 121–41 (1998) (both describing failed efforts to include patents of importation in U.S. patent system following English model). For the evolution and persistence of the true inventor requirement, see Swanson, supra note 12, at 321–32. Khan, supra note 21, at 2, 8–9; Welke, supra note 20, at 4–6. Patent Law of 1836, § 20 (requiring public display of models). For examples of patent lists, see United States Patent Office, A Digest of Patents Issued by the United States from 1790 to Jan. 1, 1839 (1840); Annual Report of the Commissioner of Patents for 1838, 25th Cong., 3d Sess., H.R. Doc. No. 80, 32–43. For the Patent Office Building exhibit hall, see Robertson, supra note 4, at 30. Robertson, supra note 4, at 33, 36. Senate Report accompanying Senate Bill No. 239, 24th Cong., 1st Sess. (Apr. 28, 1836), at 4, reprinted at 1836 Senate Committee Report, 18 J. Pat. Off. Soc’y 853, 861 (1936). Robertson, supra note 4, at 17–18 (Ruggles and his patent).

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

212

Kara W. Swanson

enabled Americans to vote, sit on juries, and serve in office, in sum, to participate fully in civic and economic life and, in so doing, to contribute to the success of the fledging nation that depended on the abilities of its citizens. Only white men possessed all the rights needed for civic and economic participation, however, and only they were generally believed to possess inventive ability. While the patent system did not formally exclude women and intermittently had allowed free black to participate, even during the age of slavery, the patented inventions of these marginalized groups, whose claims to citizenship were tenuous and incomplete, were invisible. The patent office did not collect information on the racial or gender identification of patentees and while female first names might signal a woman inventor, such clues were not sufficient to overcome women’s presumed absence.28 Modern researchers have found only 77 patents granted to women from 1790 to 1860, while 4,773 patents were issued to men in 1860 alone.29 Noticing a patent granted to a woman in the official lists and displays was akin to finding a needle in a haystack. The idea of black inventors was so startling that in its listing of all patents granted in the first 50 years of the patent system, the patent office designated two patents – and only two – as issued to a “colored man,” Henry Blair, in 1834 and 1836.30 Without that designation, readers would have presumed Blair to be white. The patent office remained silent about other black patentees, before and after Blair, such as Thomas Jennings (patent granted 1821) and Martha Jones (patent granted 1868).31 Those who visited the patent office displays or read its publications would find confirmation of their conviction that invention and originality were traits linked to white racial identification and masculinity. While the model room displayed American inventiveness, the exhibits in the patent office building also showcased the technological contributions of women and people of color as unpatented so-called “primitive” artifacts collected from Indigenous peoples around the globe, handicrafts like straw baskets and woven textiles, interpreted as the result of imitation of age-old techniques rather than origination.32 To those with legal, social, and economic power, the seeming absence of patents granted to white women and persons of color, proof that they lacked inventiveness, justified the exclusion of these groups from full legal personhood and the national narrative of belonging. The patent record was further proof that they were unworthy to be full social and political actors, justifying the hierarchies of race and gender upon which the United States was founded, including the exclusion of white women and black, indigenous and people of color from the vote, office holding, property ownership and other legal and social indicia of citizenship and the broader

28

29

30 31

32

U.S. Patent & Trademark Office, Study of Underrepresented Classes Chasing Engineering and Science Success: SUCCESS Act of 2018, at 6, 8 (2019). B. Zorina Khan, “Not for Ornament”: Patenting Activity by Nineteenth-Century Women Inventors, 31 J. Interdiscip. Hist. 159, 165 (2000). A Digest of Patents, supra note 25, at 468. USPN 3,306X (Mar. 3, 1821); USPN 77,494 (May 5, 1868). Because the patent records themselves do not reveal racial identification, identifying black patentees is both difficult and uncertain. Jennings’ obituary confirms his identity as a free black businessman in New York City. See Thomas L. Jennings, 1 Anglo-African 126–28 (Apr. 1859) (reprinted from Frederick Douglass’ Paper). Jones’ identity remains a matter of speculation. Dennis Forbes, Uncovering History’s Black Woman Inventors, Inventor’s Eye (Feb. 2014), https://www.uspto.gov/learning-and-resources/newslet ter/inventors-eye/uncovering-history-s-black-women-inventors. See William Q. Force, Picture of Washington and Its Vicinity for 1850 85–87 (1850); National Institute for the Promotion of Science, A Popular Catalogue of the Extraordinary Curiosities in the National Institute Arranged in the Building Belonging to the Patent Office 12–23 (1855); Mary Smith Lockwood, Yesterdays in Washington 2:103–104 (1915). These artifacts were moved to the Smithsonian Institute when it was completed in 1858, and later used to create the exhibit “Woman’s Work in Savagery” displayed at the Chicago World’s Fair. Robertson, supra note 4, at 36; Swanson, Inventing the Woman Voter, supra note 17, at 567.

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights

213

“borders of belonging.”33 In 1886, black leader Reverend Richard W. Wright estimated that “six out of every seven men” believed that “Negros have no faculty for invention,” a falsehood he warned it was imprudent for the black community to ignore.34 The success and significance of this falsehood allowed a turn-of-the-century white Maryland politician to use it in support of intensifying black voter suppression. He asserted “that the colored race should be denied the right to vote because . . . ‘no one of the race had ever yet reached the dignity of an inventor.’”35 Patents, mobilized by the mid-nineteenth century to define the ideal of the American citizen and to justify the laws distinguishing full citizens from those considered lesser citizens or noncitizens, thus supported inequality and exclusion, that is, social injustice.36

ii. patents and antislavery activism Yet even during the era of slavery, some of those excluded from full legal personhood and their most radical allies saw the potential to use patents to undermine the seemingly natural hierarchies of inequality and to promote social justice. Patents were one of many tools used by antislavery activists, both white and black. Since the eighteenth century, antislavery activists had publicized individual achievements of black people in order to rebut pro-slavery claims of black inability, often relying on creative productions that could be circulated in material form. Thus, antislavery activists facilitated publication of Phillis Wheatley’s poetry and Benjamin Banneker’s ephemeris, the predicted daily time of sunrise and sunset, full moons, and eclipses for a local area that formed the core content of almanacs.37 Those committed to slavery, however, like the enslaver Thomas Jefferson, dismissed such achievements as secretly created by white allies (Banneker’s calculations) or so inferior as to be “not worthy the dignity of criticism” (Wheatley’s poetry).38 Patents, however, were different. They were issued by the U.S. government and thus had heightened power as credentials.39 Black inventors received patents from the same white bureaucrats who rewarded white inventiveness with patents, leaving less scope for anti-black disparagement of inventor-patentees.40 While researchers have identified very few patents granted to black inventors in this period, some black patentees received national attention.41 For example, when Blair, a free black from 33

34 35

36

37

38

39 40

41

Elizabeth D. Katz, “A Woman Stumps Her State”: Nellie G. Robinson and Women’s Right to Hold Public Office in Ohio, 53 Akron L. Rev. 313 (2019) (noting links between office holding and the vote). R.R. Wright, The Negro as an Inventor, 2 Afr. Meth. Episc. Ch. Rev. 397, 398 (1886). Henry E. Baker, The Colored Inventor: A Record of Fifty Years 3 (1913) (quoting one of the unnamed candidate’s speeches). The antebellum legal exclusion of Americans of African descent from citizenship was clarified by the Supreme Court in Dred Scott v. Sandford, 60 U.S. (19 How.) 393, 413 (1857). Silvia A. Bedini, The Life of Benjamin Banneker: The First African-American Man of Science 152–55 (rev. and exp. ed., 1999). Id. at 297 (quoting letter from Thomas Jefferson to Joel Barlow, Oct. 8, 1809); Henry Louis Gates, Jr., The Trials of Phillis Wheatley: America’s First Black Poet and Her Encounters with the Founding Fathers 42 (2003) (quoting Thomas Jefferson, Query XIV, Notes on the State of Virginia (1785)). See also “Thomas Jefferson to Joel Barlow, 8 October 1809,” Founders Online, National Archives, https://founders.archives.gov/documents/ Jefferson/03-01-02-0461; 1 Original source, The Papers of Thomas Jefferson, 4 March 1809 to 15 November 1809 588–90 (J. Jefferson Looney ed., 2004). See Rantanen & Jack, supra note 1, at 318. Note that before 1793 and after July 1836, the U.S. patent system required substantive review of patent applications. See Mitchell, supra note 6, at 50. Patricia Carter Sluby, The Inventive Spirit of African Americans: Patented Ingenuity 9–36 (2004) (discussing identified black antebellum patentees); Lisa D. Cook, Inventing Social Capital: Evidence from African American Inventors, 1843–1930, 48 Explorations Econ. Hist. 507, 508 (2011) (difficulties identifying African American inventors). See also Brian L. Frye, Invention of a Slave, 68 Syracuse L. Rev. 181, 185–87 (2018).

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

214

Kara W. Swanson

Maryland, received his second patent in 1836 for a corn planter, white radical abolitionist William Lloyd Garrison highlighted Blair’s achievement as an “invention by a Negro” in his newspaper, The Liberator.42 Twenty years later, Garrison, still fighting slavery, was actively seeking information on “colored inventors” as part of an ongoing project to “collect proof of colored talent and ingenuity” and to “aid colored inventors in obtaining patents.”43 Black activists, too, noted and publicized the rare black patentee. Abolitionist Martin Delany, in his book published in 1852 describing the status and destiny of black Americans, sought to show that while black Americans were “wholly discarded from the recognition of citizens’ rights,” “their utility . . . in their private capacity as citizens” showed “their fitness . . . for positions in the body politic.”44 Delany, himself an inventor who tried unsuccessfully to obtain a patent, used Henry Boyd, “the proprietor of an extensive Bedstead manufactory” in Cincinnati, Ohio, as one example of a man of “practical utility.”45 Delany described Boyd as “the patentee or hold[er of] the right of the Patent Bedstead.”46 Boyd, a skilled carpenter who bought himself out of enslavement in Kentucky, was reportedly the inventor of the bedstead he manufactured but he was only the “holder” of the patent rights, having used a white man as the named inventor to obtain the patent in 1833.47 Frederick Douglass, the formerly enslaved national abolitionist leader, edited his own newspaper, in which he publicized black patentees. In 1853, it was Freeman Murrow, who had patented a new whitewashing tool.48 In 1859, Douglass provided a lengthy biographical obituary of Thomas Jennings, whose patent obtained in 1821 described a dry-cleaning process.49 Jennings, a freeborn successful businessman in New York City, who used his skills in tailoring and drycleaning as a “clothier,” probably pursued a patent for financial gain.50 In addition to being a businessman, however, Jennings was a civil rights activist who fought against slavery in New York state and the discrimination he experienced as a free black man.51 His lawsuit against a New York City streetcar company for ejecting his daughter reportedly led to the abolition of racially segregated railcars in “four out of five city railroads.”52 According to Douglass, Jennings cherished his patent grant for its sociopolitical meaning, keeping it not in his business, but

42

43

44

45

46 47

48 49 50 51 52

Invention by a Negro, The Liberator (May 14, 1836) (reprint from National Intelligencer (Washington, D.C.) It might have been this publicity that led the patent office in 1840 to designate Blair in its published patent list as a “colored man.” See A Digest of Patents, supra note 25, at 468. For the abolitionist purpose and national influence of The Liberator, see David W. Blight, William Lloyd Garrison at Two Hundred: His Radicalism and His Legacy for Our Time, in William Lloyd Garrison at Two Hundred 6 (James Brewer Stewart ed., 2008). Notice, The Liberator (Sept. 6, 1854), as cited in Portia James, The Real McCoy: African-American Invention and Innovation, 1619–1930 43 (1989). Martin Robison Delany, The Condition, Elevation, Emigration, and Destiny of the Colored People of the United States 85 (reprint ed., 1968 [1852]). For Delany’s life and activism, see Martin R. Delany: A Documentary Reader 1–20 (Robert S. Levine ed., 2003). Delany, supra note 44, at 92, 98. For Delany’s invention and attempt to get a patent, see Victor Ullman, Martin R. Delany: The Beginnings of Black Nationalism 138 (1971); Frank A. Rollin, Life and Public Services of Martin R. Delany 78 (1868). Delany, supra note 44, at 98. Abigail Mott, Biographical Sketches and Interesting Anecdotes of Persons of Color 362–63 (1839); Charles Cist, Sketches and Statistics of Cincinnati in 1851 204 (1851); James, supra note 41, at 39–41. See George Porter, U.S. Patent No. 7911X (Dec. 30, 1833). For the tactic of using a white named inventor to patent inventions by marginalized inventors, see Sluby, supra note 41, at 11–12; Swanson, supra note 12, at 337–44, 349–59. A Colored Inventor, Frederick Douglass’ Paper, (July 29, 1853). Thomas L. Jennings, supra note 31, at 126–28. See also Sluby, supra note 41, at 15 (patent granted in 1821). Thomas L. Jennings, supra note 31, at 127. Id. at 127. Id.

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights

215

rather framed on the wall above his bed, displaying its “broad seal of the United States of America” in a “gilded frame.”53 During a time when free black in the United States struggled to claim citizenship, the patent certified Jennings not just as an inventor, but as a U.S. citizen.54 As a younger man, Jennings had participated in the Colored Convention movement, a means of coordinating black activism.55 In 1858, free black met again in convention in Massachusetts to decry the recent Dred Scott decision denying citizenship – and any other legal rights – to African Americans, free or enslaved. At the convention, they also passed resolutions noting the recent inventions of two “colored American Inventors” in firefighting and steam railways, describing these achievements as “facts” to “silence the assertions of the proslavery traducers.”56 Like the men attending the convention, antislavery activists, both inventors like Delany and Jennings and noninventors like Douglass, knew that patents granted to black inventors were political “facts” that could be wielded to claim civil rights for African Americans.

iii. patents and votes for women White women, too, saw potential political power in the patent office. At the first national convention for woman’s rights, held in Worcester, Massachusetts in 1850, Ernestine Rose, who had once supported herself by selling her air-freshener invention, gave a speech attacking the common wisdom that women lacked the ability to invent.57 For the next 70 years, as suffragists pushed to expand the franchise to include women, they battled the notion that “[w]omen cannot invent and should not vote.”58 With each patent granted to a woman, activists gained more ammunition to mobilize the links between inventiveness and worthiness for full citizenship in the United States. While female inventors hoped to support themselves and often their families by obtaining patents, suffragist leaders used their patents in their campaign for equality and inclusion, hoping to change public opinion about women voting by showcasing female inventiveness.59 For these feminist activists as well, patents were political facts relevant to social justice. In the decades after the Civil War, women’s rights newspapers publicized patents granted to women just as the abolitionist press had noted black patentees during the era of slavery.60 Activists also used displays to make female inventiveness visible, seizing the opportunities offered as the United States hosted a series of successful world’s fairs. Beginning with the Centennial

53 54 55

56

57

58

59

60

Id. Martha Jones, Birthright Citizens: A History of Race and Rights in Antebellum America 12, 43 (2015). Thomas L. Jennings, supra note 31, at 127. About the Colored Conventions, The Colored Convention Project, https:// coloredconventions.org/about-conventions/; The Colored Conventions Movement: Black Organizing in the Nineteenth Century (P. Gabrielle Foreman, Jim Casey, & Sarah Lynn Patterson eds., 2021). Minutes of 1858 Convention of the Colored Citizens of Massachusetts (Aug. 1, 1858) in 2 The Proceedings of the Black State Conventions, 1840–1865 7 (Philip S. Foner & George E. Walker eds., 1979). Grand Demonstration of Petticoatdom at Worcester, Boston Daily Mail (Oct. 25, 1850). For Rose’s life, see Yuri Suhl, Ernestine L. Rose and the Battle for Human Rights 37, 48, 59 (1959); Carol A. Kolmerten, The American Life of Ernestine L. Rose (1999). Woman as Inventor, The Woman’s J. (Feb. 19, 1870) (this suffragist newspaper was describing the argument suffragists were fighting against). Deborah J. Warner, Women Inventors at the Centennial, in Dynamos and Virgins Revisited 103 (Martha Trescott ed., 1979) (discussing focus of women inventors exhibiting at Centennial Exposition on earning money); Mary Francis Cordato, Representing the Expansion of Women’s Sphere: Women’s Work and Culture at the World’s Fairs of 1876, 1893 and 1904 463 (Ph.D. diss., 1989); Zorina Khan, supra note 29, at 168–69 (each discussing prevalence of unmarried and widowed women among female patentees). See, e.g., Woman as Inventor, supra note 58. See also Swanson, Inventing the Woman Voter, supra note 17, at 562–63.

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

216

Kara W. Swanson

Exposition held in Philadelphia, Pennsylvania in 1876, the fairs included female-curated exhibit spaces intended to showcase women’s abilities.61 Female inventors responded enthusiastically to this opportunity, filling one-quarter of the Woman’s Pavilion in Philadelphia with inventions, about three-quarters of which were patented.62 For exhibitors, the Exposition was fundamentally a trade fair, allowing them to connect with investors or buyers, and their patents were economic tools.63 Mary Nolan of St. Louis, Missouri, for example, brought her patented brick, “Nolanum,” to display, hoping (apparently vainly) that after several failed business ventures in the wake of her father’s death, she could earn enough from her invention to support herself and her sisters.64 Yet the display of female technological creations offered other lessons as well. Martha Coston, left a widow with young children, had worked for 10 years to turn her deceased husband’s unfinished notes into a working signal flare. She had patented the invention in 1859, sold flares to the U.S. Navy for use during the Civil War, and established a successful international business. Coston exhibited her invention in 1876 not to launch a business, but rather as an example of what women could achieve.65 Female inventors had a choice of exhibit spaces, as other parts of the fair also welcomed inventions. Historian Deborah Warner has argued that in choosing to exhibit in the Woman’s Pavilion under the slogan “let her own works praise her,” at least some of the female inventors were choosing to emphasize women’s abilities and to demonstrate support for women’s equality even as they sought profits.66 Women’s rights activists worked to make the display of female inventions in Philadelphia into a sociopolitical statement that linked inventive ability, equality, and civil rights. Largely sidelined from fair organization, white suffragists traveled to Philadelphia to protest, campaign, and view the exhibits.67 They hoped that those who visited the Woman’s Pavilion would learn that women could invent and they took advantage of national interest in each successive U.S. fair to write about female inventiveness, seeking to overturn common wisdom and build support for their feminist political agenda.68 When the United States published the first official list of patents granted to women in 1888, making the formerly invisible visible, the suffragists could point to what one newspaper called “Nineteen Hundred Witnesses to Their Ingenuity.”69 At the Columbian Exposition held in Chicago, Illinois in 1893, the Women’s Building included over 100 inventions by women in addition to a copy of the list itself.70 In his opening day address in Chicago, President Grover Cleveland articulated the link between invention and a democratic republic that the women were relying upon: “We have

61 62 63 64 65

66 67 68

69

70

Warner, supra note 59, at 102. Id. at 103, 105. Id. at 103. Id. at 106–107. Id. at 105–106. See also Denise E. Pilato, The Retrieval of a Legacy: Nineteenth-Century American Women Inventors 82–86 (2000) (note that Coston patented the flares in the name of her husband). Warner, supra note 59, at 107. Deborah J. Warner, The Women’s Pavilion, in A Centennial Exhibition 173 (Robert Post ed., 1976). See, e.g., M.J. Gage, Letter to editor, Weekly Recorder (Nov. 9, 1876). See also Phoebe A. Hanaford, Daughters of America, or, Women of the Century 641 (1882) (quoting Gage’s published letters); Matilda Joslyn Gage, Woman as an Inventor, 136 The N. Am. Rev. 478–89 (May 1883). Women as Inventors, Bangor (ME) Daily Whig & Courier (Apr. 20, 1887); United States Patent Office, Women Inventors to Whom Patents Have Been Granted by the United States Government, 1790 to July 1, 1888 (1888). Virginia Grant Darney, Women and World’s Fairs: American International Expositions, 1876–1904 89 (Ph.D. diss., 1982) (list on display); Pilato, supra note 65, at 171, n. 75; Denise E. Pilato, Illumination or Illusion: Women Inventors at the 1893 World’s Columbian Fair, 109 JISHS 374, 389 (Winter 2016).

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights

217

made and here gathered together objects of use and beauty, the products of American skill and invention. We have also made men who rule themselves.”71 Patents granted to women, assembled en masse in lists and in exhibits, proved that women too possessed “American skill and invention,” thereby supporting their claim to participate in self-rule. Patents were political tools to claim social justice in the form of full legal personhood for women, including, but not limited to, the right to vote.

iv. patents and post-emancipation black civil rights movements The exhibit of women’s inventions at the Chicago world’s fair was a white women’s exhibit. As had occurred with previous U.S. world’s fairs, organizers almost completely excluded black women and men from planning roles and the Chicago fair, via numerous displays, promoted white supremacy.72 Black women obtained permission to squeeze a small exhibit into the Women’s Building, which included the only identifiable evidence of a black woman’s inventiveness.73 Anna Mangin’s easily overlooked patented pastry fork was no competition for 80 display cases containing evidence of “Woman’s Work in Savagery” which the white chairwoman of the patent committee had arranged to be shipped from the Smithsonian collection in Washington, D.C.74 This display reiterated the message told earlier in the patent office galleries that women of color merely practiced technologies that originated in the dim past, replicating known arts such as weaving and pottery making. It was left to black activists to identify and publicize black female inventors. After Emancipation, black activists continued to press for political, social, and economic equality for black Americans.75 Despite the formal end of enslavement and recognition of black Americans as citizens, many white Americans in both Northern and Southern states sought to perpetuate racial inequality both through new laws and through extra-legal means, including violence.76 These measures succeeded in stripping the vote from most black men in the former Confederacy. As black Americans fought their loss of political power and Jim Crow segregation, the patent office remained formally accessible to black inventors, and patents remained political tools in this changing fight for social justice.77 Even as anti-black bias impeded black access to education, training in the skilled trades, and capital, creating barriers to invention and patenting, each year there were more black 71 72

73 74

75

76 77

In the Grand Stand: People of All Nations Fraternize with Each Other, Chi. Daily Trib. (May 2, 1893). The Reason Why the Colored American Is Not in the World’s Columbian Exposition (Ida B. Wells ed., 1893); Margaret Garb, Freedom’s Ballot: African American Political Struggles in Chicago from Abolition to the Great Migration 82–116 (2014); Ann Massa, Black Women in the “White City,” 8 J. Am. Stud. 319–37 (Dec. 1974); Darney, supra note 70, at 95–99; Robert W. Rydell, All the World’s a Fair: Visions of Empire at American International Expositions, 1876–1916 38–71 (1984). Sluby, supra note 41, at 129; Massa, supra note 72, at 335. USPN 470,005 (Mar. 1, 1892). Jeanne Madeline Weimann, The Fair Women: The Story of the Woman’s Building, World’s Columbian Exposition, Chicago 1893 394–402 (1981). Note that emancipation of enslaved African Americans was not a single event but a process. See Chandra Manning, Troubled Refuge: Struggling for Freedom in the Civil War 10–13 (2016). In the years after the Civil War, however, Black Americans often used the date of signing the Emancipation Proclamation, Jan. 1, 1863, as the date of Emancipation. See, e.g., Baker, supra note 35 (published to commemorate the 50th anniversary of the Emancipation Proclamation) and Pennsylvania Emancipation Exposition of 1913 (also commemorating 50th anniversary), as discussed in Charlene Mires, Race, Place, and the Pennsylvania Emancipation Exposition of 1913, 128 Penn. Mag of Hist. & Biog 257 (2004). Rayford W. Logan, The Negro in American Life and Thought: The Nadir, 1877–1901 11, 52 (1954). Juliet E.K. Walker, The History of Black Business in America: Capitalism, Race, Entrepreneurship 151–54, 182–96 (1998).

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

218

Kara W. Swanson

patentees.78 Each patent granted to a black inventor was a fact contradicting the belief that black Americans possessed “little or no originality” and could not be the sort of citizens needed for a successful polity.79 One of the first black patent examiners, Henry Baker, made it his mission to identify as many black patentees as possible, men and women.80 Black activists circulated Baker’s unofficial list to demonstrate black inventiveness and support claims for full legal and social equality. One of the first to do so was the activist Reverend Wright.81 To refute the falsehood that black could not invent, Wright offered a list of 50 recent black patentees and a description of black inventions he had seen displayed at the World’s Industrial and Cotton Centennial Exposition held in New Orleans, Louisiana in 1884–85.82 At the New Orleans fair, black Americans curated an exhibit and, like white women, they included inventions in order to show white male America their capabilities and, thus, their worthiness for full legal and social inclusion.83 George Washington Murray, Representative from South Carolina and a former slave, spoke to his fellow legislators in 1894 in support of federal funding for another southern world’s fair.84 Murray, who patented eight inventions, noted that “there are still traducers and slanderers of our race who claim that we are not equal to others because we have failed to produce inventors” and saw the planned Atlanta Cotton States Exposition as a chance to prove black inventiveness and equality and thus to force white Americans to “appreciate the fact that the colored man is entitled to a share in the government of the country.”85 Murray also inserted Baker’s list of black patentees, then containing 94 entries, into the Congressional record.86 By 1900, the list had grown to over 350 patents, copies of which were displayed at the Exposition Universelle in Paris as part of the Afro-American exhibit and then became part of a touring exhibit in the United States.87 Like the white suffragists, black activists sought to use patents as high quality evidence of the necessary capacity for full legal personhood and thus to bolster social justice claims.

78

79

80

81 82 83

84

85 86 87

Rayvon Fouche´, Black Inventors in the Age of Segregation: Granville T. Woods, Lewis H. Latimer & Shelby J. Davidson 12–14 (2003). For the increasing number of patents from 1834 to 1930, and the impact of segregation laws, see Cook, supra note 40, at 512. For the effect on black patenting of anti-black violence, see Lisa D. Cook, Violence and Economic Activity: Evidence from African American Patents, 1870–1940, 19 J. Econ. Growth 221, 248 (2014). For evidence of racial bias impacting patent examination in the twenty-first century, see Mike Schuster, Evan Davis, Kourtney Schley, & Julie Ravenscraft, An Empirical Study of Patent Grant Rates as a Function of Race and Gender, 57 Am. Bus. L.J. 281 (2020). Wright, supra note 34, at 398 (quoting former enslaver Josiah Ralls, who made this argument in 1877). See also The Future of the Negro, 33 Pop. Sci. Monthly 543 (Aug. 1, 1888) (reprinted from The Spectator) (Blacks lack “originating power”). Sluby, supra note 41, at xxxii–xxxiii; Fouche´, supra note 78, at 9 (2003); see also Kenneth W. Dobyns, The Patent Office Pony: A History of the Early Patent Office 177 (2007 [1997]). For Baker’s work, see Swanson, Race and Selective Legal Memory, supra note 17, at 1092–93. Wright, supra note 34, at 399. Id., at 407–10. Id. See also Mabel O. Wilson, Negro Building: Black Americans in the World of Fairs and Museums 31, 45 (2012). John F. Marszalek, A Black Congressman in the Age of Jim Crow: South Carolina’s George Washington Murray 51, 75 (2006). Congressional Record, at 8382–83 (Aug. 10, 1894). Id. Wilson, supra note 83, at 85–86, 103; W.E.B. DuBois, The American Negro at Paris, Am. Monthly Rev. Revs. 575 (Nov. 1900); Baker, The Negro as Inventor, in Twentieth Century Negro Literature 401 (D.W. Culp ed., 1902).

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights

219

Also like white feminists, black activists did not limit themselves to a single issue, nor did they speak with a single voice. Yet activists using different approaches deployed inventors and patents in their quests for racial justice. For example, Booker T. Washington and W.E.B. Du Bois, who famously clashed on tactics and goals, each used the black inventor to promote their aims, while the founder of the formal institutions of black history, Carter T. Woodson, made the black inventor an integral part of the black history movement. Washington promoted invention and patenting as one path to black-owned business. In his Negro in Business, published in 1907, Washington referenced the patents displayed in Paris to emphasize that “the number of Negro inventors has not been small” and profiled several inventor-manufacturers who rose from poverty to business success with the aid of patents.88 To Washington, invention and patents were a means by which men who worked with their hands could rise into the middle class, achieving the economic equality that continued to elude the black community while also showing that they were “true citizen[s].”89 To Du Bois, who referred to Baker’s patent list in The Negro Artisan, published in 1902, each black inventor was evidence that the lack of black economic progress in the United States did not stem from inability, but rather from white prejudice and structural inequality in access to education, jobs, and resources.90 Patents could help individuals succeed, but also, Du Bois suggested, they could support collective claims for social justice. Du Bois further mobilized patents as political tools by using the publishing arm of the National Association for the Advancement of Colored Persons (NAACP) to print a pamphlet by Baker about black inventors in 1913, celebrating the 50th anniversary of Emancipation with a public discussion of the black inventiveness.91 Carter Woodson incorporated black inventors into his black history educational activism. In the second volume of his scholarly journal, launched in 1916 to provide an otherwise unavailable forum for Black history, Woodson published an article by Baker entitled “The Negro in the Field of Invention,” referencing “more than a thousand” identified Black U.S. patentees.92 Through the first half of the twentieth century, Washington’s Tuskegee Institute (now Tuskegee University) continued this effort, soliciting information about black patentees for inclusion in a series of Negro Year Books, designed as a reference for homes and schools.93 The project of

88 89 90

91

92

93

Booker T. Washington, The Negro in Business 138–58 (1907). Id. at 158. The Negro Artisan: Report of a Social Study Made Under the Direction of Atlanta University 187–88 (W.E.B. Du Bois ed., 1902). Baker, supra note 35 (published by The Crisis, the publishing arm of the NAACP, then controlled by Du Bois); Swanson, Race and Selective Legal Memory, supra note 16, at 1094 (Du Bois’ role in NAACP). Henry E. Baker, The Negro in the Field of Invention, 2 J. Negro Hist. 21, 27–28 (Jan. 1917). For Woodson and the journal, see Jacqueline Goggin, Countering White Racist Scholarship: Carter G. Woodson and The Journal of Negro History, 68 J. Negro Hist. 355, 358–60 (1983); August Meier & Elliott Rudwick, Black History and the Historical Profession, 1915–1980 1–71 (1986); Jacqueline Goggin, Carter G. Woodson: A Life in Black History 33 (1993). Negro Year Book 1914–1915 (Monroe N. Work ed., 1914) (unpaginated publisher’s introduction soliciting information on Black inventors); Negro Year Book 1937–1938 12–14 (Monroe N. Work ed., 1937) (listing inventions from 1932–35); Negro Year Book 1941–1946 26–31 (Jessie Parkhurst Guzman ed., 1947) (listing inventions from 1936–46). For background on the Year Books, see Robert J. Norrell, Up from History: The Life of Booker T. Washington 371 (2009); and Mark Tucker, “You Can’t Argue with Facts”: Monroe Nathan Work as Information Officer, Editor, and Bibliographer, 26 Libr. & Culture 151, 162–63 (1991).

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

220

Kara W. Swanson

finding and publicizing stories of black inventors continues to the present via black History month events and curricula.94

v. patents and social justice in the twenty-first century Activists for women’s rights also returned to inventors, as they continued to push for equal justice. In the 1970s and 1980s, as women organized for equal rights and returned to the suffragist project of writing women’s history, they included tales of female invention in their political publications.95 As these generations of activists have known all along, intellectual property can be used to promote social justice. Despite their years of effort, however, patents as political tools have not proven sufficient to upend the injustices that were “stamped from the beginning” into United States law and society.96 Individual success stories like Martha Coston and Thomas Jennings are the exception. The same patent office records that prove the inventive abilities of white women and black women and men also disclose a persistent and severe racial and gender gap in patenting rates, with women and black Americans receiving patents at rates far below their proportions in the U.S. population.97 Accumulating research demonstrates the many current structural barriers to invention and patenting among marginalized groups, including, but not limited to, implicit bias in patent examination.98 The persistent raced and gendered gaps in patent rates continue to limit the social benefits possible from the patent system, as the inventiveness of historically marginalized groups thus remains less commercialized, failing to “bolster the prosperous growth of the Nation.”99 This failure of the acknowledged purpose of the patent system also is a failure to equitably distribute the technoeconomic benefits to individuals and their communities. The formal agnosticism toward social justice has thus left unmet the social justice possibilities of the patent system in this narrowest sense.100 If we consider what civil rights activists have known all along about the sociopolitical power of patents, the historic and continuing failure of most patent system participants to acknowledge its connections to social justice has also allowed patents to reinforce, rather than undermine, the existing racial and gender biases and inequalities that shape both the IP ecosystem and our collective assessment of belonging. In order to promote equitable access to, inclusion within, and empowerment by the patent system, in ways that cascade outward to 94

95 96 97

98 99 100

See, e.g., Freedom Seekers: The Underground Railroad, Great Lakes, and Science Literacy Activities: Middle School and High School Curriculum 70–78 (ca 2020); Fouché, supra note 78, at 20–22. For research identifying black inventors, see Sluby, supra note 41; Patricia Carter Ives, Patent and Trademark Innovations of Black Americans and Women, 62 J. Pat. Off. Soc’y 108, 117 (1980). For Sluby’s efforts, see Swanson, Race and Selective Legal Memory, supra note 17, at 1101–102. See also the work of Dr. Lisa A. Cook, supra note 41, who has created a historical database of African American inventors using painstaking research, and also worked to identify female patentees. Lisa D. Cook & Chaleampong Kongcharoen, The Idea Gap in Pink and Black 39 (Nat’l Bureau of Econ. Research, Working Paper No. 16331, 2010). See, e.g., fran pollner, caty of the revolution & the cotton gin, off our backs 3, 25 (Feb./Mar. 1973). Ibram X. Kendi, Stamped from the Beginning: The Definitive History of Racist Ideas in America (2016). Andrei Iancu & Laura A. Peter, Study of Underrepresented Classes Chasing Engineering and Science Success (SUCCESS) Act of 2018, USPTO 1–2, 11 (2019); USPTO Office of Chief Economist, Progress and Potential: A Profile of Women Inventors on U.S. Patents 3, 4 (2019) (underrepresentation of women in patentees despite increased participation of women in STEM); Sarada, Michael J. Andrews, & Nicolas L. Ziebarth, Changes in the Demographics of American Inventors, 1870–1940, 74 Explorations Econ. Hist. 101275, at 2–3 (2019); Cook & Kongcharoen, supra note 94, at 7, 9 (both estimating historical underrepresentation of black inventors in patenting). See also Swanson, supra note 12, at 374–75 (arguing that some of the gap is due to race and gender passing). Schuster et al., supra note 78, at 2. See, e.g., Menell, supra note 8. Id.

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

They Knew It All Along: Patents, Social Justice, and Fights for Civil Rights

221

encompass, for example, employment settings, voting and office-holding, and simply existing with safety and respect, the patent system needs to end its organizational agnosticism toward social justice.101 Instead, it needs to acknowledge and work to close these gaps.102 As Americans remain technological enthusiasts who look to innovation to promote national economic growth and continue to value inventiveness as a sign of worthiness for citizenship through a prized contribution to society, history shows that the patent system offers an opportunity to achieve social justice in ways that are both deeply practical and profoundly symbolic.

101

102

See Rantanen & Jack, supra note 1, at 319–20, 366–69. The link to voting and office-holding is today discussed in terms of immigration policy, which controls who has the opportunity to become a formal citizen with such rights. For recent scholarship linking patenting to nationalism and immigration policy, see Sapna Kumar, Innovation Nationalism, 51 Conn. L. Rev. 205, 229 (2019); Ufuk Akcigit, John Grigsby, & Tom Nicholas, Immigration and the Rise of American Ingenuity, 107 Am. Econ. Rev. 327, 327–28 (2017); Shai Bernstein et al., The Contribution of HighSkilled Immigrants to Innovation in the United States 1, 28 (Stanford Bus. Sch., Working Paper No. 3748, 2018) (both using patents to measure immigrants’ contributions to innovation). For the lack of safety and respect afforded to white women and black men and women that signals the extent to which they are not fully encompassed within the borders of belonging in the United States, see Sarah J. Jackson, Moya Bailey, & Brooke Foucault Welles, #HashtagActivism: Networks of Race and Gender Justice (2020) (discussing origins of #MeToo and #BlackLivesMatter). This process is already beginning, starting with Study of Underrepresented Classes Chasing Engineering and Science (SUCCESS) Act of 2018, Pub. L. 115-273, (Oct. 31, 2018), 132 Stat. 4158. See also Iancu & Peter, supra note 96, at 1 (“critically important” to address underrepresentation in the patent system). For examples, see Inst. for Women’s Pol’y Rsch, Tackling the Gender and Racial Patenting Gap to Drive Innovation: Lessons From Women’s Experiences (2021); Laura Norris et al., Diversity in Innovation Best Practices Guide (2021); Lisa D. Cook, Policies to Broaden Participation in the Innovation Process (2020); Colleen V. Chien, Increasing Diversity in Innovation by Tracking Women, Minority, and Startups Innovators that Patent and Supporting Experimentation in Inclusive Innovation, Santa Clara Univ. Legal Stud. Rsch. Paper Series 01-19 (2019).

https://doi.org/10.1017/9781108697613.015 Published online by Cambridge University Press

11 Copyright’s Promise of Dignity in the 19th Century Zvi S. Rosen*

Introduction I. Copyright Registration in the Nineteenth Century A. Legislation B. Copyright in Massachusetts II. Harriet Wilson A. The Book B. The Copyright C. The Perils of Race III. Louisa May Alcott A. The Book B. The Copyright C. The Perils of Spinsterhood IV. Marion Harland A. The Book B. The Copyright C. The Perils of Marriage Conclusion

page 222 224 225 226 228 228 229 231 234 234 234 235 237 237 238 238 241

introduction In 1790, the same year that Congress passed the first federal copyright law, Mercy Otis Warren registered her book Poems, Dramatic & Miscellaneous for copyright protection, becoming likely the first woman to do so in the United States.1 She bequeathed the copyright in the book to her son Winslow, making clear its value to her and noting it was “the only thing I can properly call

*

1

Assistant Professor, Southern Illinois University School of Law. Special thanks to Lateef Mtima for his advice, guidance, and editorship for this chapter. Thanks are due to many others as well, including Henry Louis Gates Jr. and R.J. Ellis, who provided invaluable guidance on Harriet Wilson and her work. Please note that this piece discusses a book whose title includes a racial slur. The author of that book chose a shocking title intentionally to make immediately clear to readers that racism was not simply a problem in the southern states, and I suspect because it was what she had been called repeatedly growing up in an “abolitionist” household. Elizabeth Carter Wills, Federal Copyright Records, 1790–1800 74 (James Gilreath ed., 1987).

222 https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

223

my own.”2 For Mercy Otis Warren, the copyright was not simply an economic incentive; it was her own small piece of independence – property that was her own in an era where a married woman would otherwise own nothing. When African American church leaders published a pamphlet in 1794 refuting claims that a yellow fever epidemic had been their community’s responsibility, they took the step of registering it for copyright not just to ensure they received payment for reprints.3 For them, registering the pamphlet for copyright was likely a way of showing the seriousness of their response and its legitimacy in the public discourse. In recent years, especially as the Internet has reduced transaction costs of copying and creativity has become information, there has been increased focus on the idea that the raison d’être of copyright law is simply to incentivize the creation of new works economically – that this is the meaning of “promote the progress of science” in the Constitution.4 Mark Lemley has famously dubbed attempts to go beyond this rationale as “faith-based intellectual property,” asserting that going beyond economic incentives leaves us with an arbitrary system of privileging speech.5 Implicitly, the rationale of economic incentive is race and gender-blind. And yet, these and other examples show that the benefits of copyright have always extended beyond economic incentives and rewards, and particularly for women, African Americans, and other marginalized members of our society, the self-actualization element of owning and controlling one’s creative works has also been immensely important, but as discussed below, often threatened by society’s race and gender imbalances. In this and other respects, the social justice (and injustice) effects and possibilities of copyright have always been a part of copyright’s social function and indeed evident at least to some; reducing the lens to a narrow economic perspective needlessly limits the social efficacy and potential of copyright. Moreover, as discussed below, awareness of copyright’s empowerment potential has not been enough; copyright is not immune to external conditions of social injustice. For some, copyrighting their expressive output was almost as significant as the expressive undertaking itself – the acquisition of a copyright embodied the societal affirmation of their inherent and inalienable equality and dignity as human beings, notwithstanding what the external, de jure law might decree to the contrary. This was especially true for women and African Americans, for whom owning their expressive achievements could be especially significant in a world that would frequently deny them property rights and even personhood.6 2

3

4

5 6

Kate Davies, Catharine Macaulay, & Mercy Otis Warren, The Revolutionary Atlantic and the Politics of Gender 271 (2005). Absalom Jones and Richard Allen received a copyright in 1794 for A Narrative of the Proceedings of the Black People, During the Late Awful Calamity in Philadelphia, in the Year 1793: And a Refutation of Some Censures, Thrown Upon Them in Some Late Publications, becoming the first African Americans to receive a copyright registration in the United States. Molly O’Hagan Hardy, Imperial Authorship and Eighteenth-Century Transatlantic Literary Production 217–18 (unpublished Ph.D. dissertation), https://repositories.lib.utexas.edu/bitstream/handle/2152/ETD-UT-2011-08-3808/ HARDY-DISSERTATION.pdf?sequence=1 (2011) (“Jones and Allen may in fact have been in need of the legitimation that federal copyright offered”). See, e.g., Mark A. Lemley, The Economics of Improvement in Intellectual Property Law, 75 Tex. L. Rev. 989, 1074–76 (1997); Yochai Benkler, Siren Songs and Amish Children: Autonomy, Information, and Law, 76 N.Y.U. L. Rev. 23, 59–60 (2001); Yochai Benkler, Through the Looking Glass: Alice and the Constitutional Foundations of the Public Domain, 66 Law & Contemp. Probs. 173, 176 (2003); Stanley M. Besen & Leo J. Raskind, An Introduction to the Law and Economics of Intellectual Property, 5 J. Econ. Persp. 3–27 (1991). Mark Lemley, Faith-Based Intellectual Property, 62 UCLA L. Rev. 1328 (2015). For instance, Thomas Jennings, the first African American patentee, “hung [the patent] in a gilded frame over his bed.” See https://www.smithsonianmag.com/innovation/first-african-american-hold-patent-invented-dry-scouring-180971394/. Elsewhere in this volume, Kara Swanson explores the personhood and citizenship implications for African Americans and women which arise in connection with patents. See Kara W. Swanson, They Knew It All Along: Patents, Social

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

224

Zvi S. Rosen

As Richard Schwinn and I have demonstrated empirically, authors assign value to copyright beyond simply the expected financial return.7 This is evident looking at three female authors who utilized copyright protection in the midnineteenth century. The copyright was in all cases commercially important to them, but there was a dignitary element to the copyright as well that was subtly shown in their actions. In each case, the importance of the copyright to them was balanced by what was shown to be the fragility of the right. In each case, the author was faced with a challenge that underlined how power dynamics of the time interacted with copyright law, in ways that are unexpected from a modern perspective. In seeing how copyright could not be disentangled from race and gender in practice, we see how copyright only becomes dearer to those who hold it. By exploring this history, we can better perceive the social justice resonance and obligations of copyright in contemporary society, particularly significant today as we wrestle with major IP-related social challenges, from racial equity to climate change. Through telling the copyright narratives of these women authors, this chapter demonstrates how the social justice dimension of copyright, particularly its importance as a mechanism for socio-political as well as economic empowerment, has been an innate attribute of American copyright law since its inception. As discussed herein, however, copyright’s social efficacy has often been constrained by conditions of social injustice which warp its internal structure,8 and moreover, impede its overarching function of promoting the widest and most diverse participation in the creative ecosystem. Furthermore, the undue narrowing of the assessment metrics of the copyright regime to solely its economic effects only exacerbates the problem, as some of the most pernicious threats to copyright’s social function, such as the absence of commercial bargaining power typically suffered by women and marginalized creators, are in fact imposed by the mainstream socio-economic legal infrastructure.9 Thus, coming to terms with this history of copyright’s legal and social inequality sharpens our perception of the social justice obligations and effects of copyright, and the need to embrace the precepts of socially equitable access, inclusion, and empowerment toward the achievement of copyright’s social function in the contemporary political economy.

i. copyright registration in the nineteenth century Copyright registration and acquisition was very different in the nineteenth century than it is today, and in order to understand the unique challenges facing African American and women authors, it is first worth reviewing what copyright registration would more generally entail.

7

8

9

Justice and Fights for Civil Rights, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Zvi S. Rosen & Richard Schwinn, An Empirical Study of 225 Years of U.S. Copyright Registrations, 94 Tulane L. Rev. 1003 (2020). Looking at registrations for copyright from 1790 to 2015, we discovered that authors were positively incentivized for copyright registration for far longer terms than the average economically viable period for copyrighted works would suggest. See herein Robert Braunies, Copyright, Race and Music: The Case of Mirror Cover Recordings, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Sean O’Connor, The Lead Sheet Problem in Music Copyright, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See herein Lateef Mtima, Copyright and the Interdependent Relationship Between Social Utility and Social Justice, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

225

A. Legislation With the inclusion of an explicit power of Congress to pass laws protecting the writings of authors for limited times, the first Congress passed a copyright law in its first session in 1790.10 As amended over the next 80 years, the 1790 Copyright Act prescribed a complex and mostly decentralized registration process. Originally, copyright registrations were recorded by the clerk of the local U.S. District Court where the author or proprietor resided.11 The “proprietor” was the owner of the copyright by assignment from the author.12 The technical details are somewhat complex here, but it was generally understood that the author had a right of first publication under the doctrine of common law copyright, and that was what the proprietor was receiving, along with the right to make the copyright registration in his own name (or hers, in theory, but that is not how any of the situations studied here looked). Interestingly, the requirement to add a copyright notice to the actual work as we would recognize it today (using the © symbol) was not added until 1802. The procedure was that the person registering the copyright would go to the clerk and pay a fee (set at 60 cents in 1790, reduced to 50 cents in 1831) and provide the clerk with the necessary information to make out the required statutory language for the copyright registration, beginning with “Be it remembered.” In addition, the person making the registration deposited a printed title page at the time of registration. This process needed to be complete prior to publication. After publication, the author still needed to deposit a copy of her work, a procedure that continues through today.13 Until 1831, deposit was made directly from the registrant to the State Department in Washington, D.C., a cumbersome process mostly honored in the breach.14 To increase the percentage of works being deposited after registration, the 1831 Copyright Act provided that works would be deposited with the clerk of the local U.S. District Court, the same clerk who had handled the registration, and the clerk would then forward deposits periodically in bulk to Washington, D.C. Following intensive lobbying from the Librarian of Congress, all copyright business was centralized at the Library of Congress on July 8, 1870, where it has remained ever since. Copyright records were to be transmitted to the Library at that time. The actual procedure for registration did not change all that much – registration was still accomplished by completing a registration and depositing a printed title page before publication, with deposit of the complete work made after publication. A change to the modern system, where the work is published with copyright notice and optionally registered thereafter, along with deposit, was not put into effect until 1909. One further thing to note about copyright in the United States in this period is that, under the 1790 Act, copyright was only available to citizens and residents of the United States.15 This

10

11 12

13 14

15

Act of May 21, 1790, 1st Cong., 2d Sess., 1 Stat. 124. There had been a number of state laws for copyright prior to 1790 as well. Id. Bouvier’s Law Dictionary, “Proprietor” (1856). The details of the assignment were often unclear, and in some cases there was no evidence entered of any actual assignment. Jessica Litman, What Notice Did, 96 Boston Univ. L. Rev. 717, 733 (2016). This will be discussed further in relation to the Belford case. This became two copies in 1870, when copyright was moved in toto to the Library of Congress. A list published in 1823 shows only about 1,000 works had been deposited with the State Department since 1796, even though there had been nearly 5,000 registrations during those years. Supra Note 10.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Zvi S. Rosen

226

table 11.1: Copyright in Massachusetts 1790–186921 Year

Population

Registrations

Registrations per 100,000

1790 1800 1810 1820 1830 1840 1850 1860 1869

378,787 422,845 472,040 523,287 610,408 737,699 994,514 1,231,066 1,457,351

6 13 45 63 289 335 1,184 1,093 1,764

1.57 3.03 9.58 11.95 47.37 45.41 119.03 88.78 121.04

remained the law in the United States until 1891, although the requirement that works by foreign authors be printed in the United States remained to some degree until 1986.16 This policy was naturally opposed by British authors like Charles Dickens, who saw their work being pirated on a large scale by American publishers.17 And while this policy made a wide variety of literature available to the American public at extremely low prices, it also made it very difficult for domestic American authors to compete.18 B. Copyright in Massachusetts To understand how copyright prior to 1870 would work, it is helpful to talk a little about how it would look in Massachusetts, where two of the three authors registered their works. Boston, Philadelphia, and New York City were the three major publishing hubs in early America,19 and thus the federal court in Boston saw a high volume of copyright registrations. From 1790 to 1870, there were 31,156 copyright registrations in the Massachusetts District Court, the second most, behind only the Southern District of New York (located in Manhattan).20 Although the judges of the court were of course the most visible parts of the court, they were largely separate from the copyright registration process, which was instead handled by the clerk of the court. These clerks were rarely well known, and indeed there is no obvious record of who they were without some research, let alone the identities of the assistant clerks in their office.22 The judges of the District Court had essentially complete latitude to hire and fire whoever they 16

17

18

19

20 21

22

John A. Rothchild, How the United States Stopped Being a Pirate Nation and Learned to Love International Copyright, 39 Pace L. Rev. 361 (2018). Edward G. Hudon, Literary Piracy, Charles Dickens and the American Copyright Law, 505 ABA J. 1157 (1964). It is interesting to compare the stance of the U.S. toward IP when it was a developing nation engaged in massive piracy, and its contemporary stature as a leader in IP enforcement. See generally Special 301 Report 2020, https://ustr.gov/sites/ default/files/2020_Special_301_Report.pdf (naming essentially all of South America and other developing economies as being problem areas for IP enforcement). Steven Wilf, Copyright and Social Movements in Late Nineteenth-Century America, 12 Theoretical Inquiries in Law 123 (2011). Sheila McVey, Nineteenth Century America: Publishing in a Developing Country, 421 Annals Am. Acad. Political & Social Sci. 67 (1975). Unlike many other states, Massachusetts has only had a single U.S. District Court since 1789. I use 1869 rather than 1870, since 1870 was a stub year with a little over half registered at the Library of Congress instead. Data estimated in Rosen & Schwinn, supra note 7, from page totals of record books. The clerks of the federal courts were not listed in the “Official Register” published by the federal government in 1869 or before; only the judge, U.S. attorney, and marshal were. As such, the below took some work to figure out, but it is helpful for understanding who a registrant would be talking to.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

227

liked, and it is clear that there was a fair amount of nepotism involved.23 Using Google Books, it is possible roughly to triangulate who was the clerk – aided by looking at who was signing the copyright registrations. Around 1817, Judge John Davis appointed his son John W. Davis to be clerk of the court, and he seems to have served until 1828. He was succeeded by Francis Bassett, who notably for our purposes appointed Elisha Bassett, presumably a relative, as assistant clerk in 1840. On August 15, 1845, Judge (and former Senator) Peleg Sprague appointed his son Seth E. Sprague to be clerk of the court, a position he held until the 1870s, at which point he was succeeded by Edward Dexter and then Clement Hugh Hill.24 In 1887, after 47 years in the Clerk’s Office of the District Court, Elisha Bassett spent the final three years of his career as clerk himself.25 By the time Elisha Bassett retired in 1890, he had not handled a copyright registration in 20 years due to the transfer to the Library of Congress. The clerks of the courts handled the copyright records through a system of recordkeeping. The registrations themselves were done on pre-printed sheets, which printed the required statutory language, with blank spaces for the clerk to fill in the details. These forms were common in most of the courts which handled a substantial amount of copyright business. For instance, where a copyright could be registered by a man, woman, or multiple/corporate authors, the form defaulted to “he claim,” with room to transform “he” into “she” or “they,” and to pluralize “claim.” These forms were then bound into volumes at the end of the year, with all the registrations for the year in one volume. By the 1860s, these volumes had become very large. The organization of the forms, from a modern lens, is a form of obvious subtle discrimination – it was certainly simple enough to modify the form for female authorship, but it indicated a clear expectation of male authorship. Along with the registration, the clerk would receive a printed title page, and typically would write some identifying information on it to connect to the registration. As the registrations were paginated into the annual volume, the page number of the registration would typically be written onto the back (verso) of the title page. The title pages were not organized beyond being kept together, and remain unbound. Along with the registrations they were transmitted to the Library of Congress, and remain so to this day.26 Section 4 of the 1831 Copyright Act required the clerks of the courts to send deposits to Washington “at least once in every year.” The cover letters from the clerk of the Massachusetts District Court indicate that deposits were sent twice a year.27 The final set of records kept by the clerk of the court was of fees received for copyrights. Until 1831, these were 60 cents for the registration and the same for an official certificate; in 1831, the 23

24

25

26

27

Ex Parte Duncan N. Hennen, 38 U.S. (13 Pet.) 225 (1839). As only one example, at the same time Seth Sprague was clerk of the District Court, Nathaniel James Clifford, son of Circuit Justice Nathan Clifford, was clerk of the circuit court. See also Fees and Expenses of the Courts of the United States, Letter from the Secretary of the Interior, 32nd Cong., 1st Sess., H. Exec. Doc. 32, at 9 (1852). Hill served from Feb. 1879 to Dec. 1887, according to his Memoir, although he had at one point hoped to be District Judge himself, with the clerk position being a consolation prize. “Elisha Bassett, son of Thomas and Fannie (Sears) Bassett, was born in Ashfield, Mass., June 8, 1818, and was educated in the schools and academies of that town. He studied law with Charles L. Woodbury, and was admitted to the bar in Boston, April 12, 1847. In 1840 he entered the Office of Francis Bassett, clerk of the United States District Court, as an assistant . . . On the resignation of Mr. Hill was appointed clerk. He resigned March 19, 1890, and died October 4, 1891. He married, first, in 1842, Mary Ann Joy, of Plainfield, and second, in 1860, in Boston, Mary Elizabeth Cox.” William Thomas Davis, 1 Professional and Industrial History of Suffolk County, Massachusetts 132 (1894). In 2020, the Library of Congress released the scans of all the title pages collected before 1870 which it now holds. https://blogs.loc.gov/loc/2020/08/old-copyright-submissions-hawthorne-twain-douglass-and-thousands-more/, Copyright Letter Book 1849–1856, US State Department, https://archive.org/details/CopyrightLetterBook18491856/

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

228

Zvi S. Rosen

amount was reduced to 50 cents for each, likely to account for deflation. Most of these records do not seem to have survived, but the copyright fee books for Massachusetts for 1856–1864 have.28 In addition to these records kept by the clerk of the court, records of deposits in Washington, D.C., exist as well. In addition to the deposit requirement with the Secretary of State/the Interior, the 1846 Act establishing the Smithsonian Institution required deposit of copies there and at the Library of Congress. This requirement was repealed in 1859, but the additional requirement of deposit at the Library of Congress was re-established in 1865, five years before the Library took over copyright business entirely. These deposit records are now held at the Library of Congress to the extent they survive, and some contemporaneous transcriptions exist as well.29

ii. harriet wilson Harriet Wilson is frequently identified as the first African American author of a novel in the United States, and was certainly the first to register the copyright in one. In fact, her copyright registration itself was the main way she was identified as the author of the book. However, additional documents from the District Court have become available which tell a more complex story. A. The Book Harriet Wilson was born as Harriet Adams in 1825 and grew up in Milford, New Hampshire, the daughter of a white mother and a black father.30 At around the age of seven, she was left with a well-to-do white family, the Haywards, who were ardent abolitionists. The details of her life at the time are unknown, but it is easy to imagine that the frequent physical and verbal abuse suffered by the protagonist in her novel was inspired by her own experiences, including being referred to with a racial epithet which she would repurpose years later as the title of her book.31 Like the Haywards, the family her protagonist lived with in her novel were ardent abolitionists, and one suspects there was an obvious hypocrisy of how she was treated that would inform the story she needed to tell.32 In 1851, Harriet Adams married a Thomas Wilson, gave birth to a son named George Mason Wilson, and was abandoned by Thomas in the same year.33 She then spent the next few years in poverty raising her child in southern New Hampshire, while presumably working on the manuscript for her book.34 As she put it in the preface, she was “forced to some experiment which shall aid me in maintaining myself and child.” The book she would produce was Our Nig: Sketches from the Life of a Free Black, In a Two-Story White House, North. The book was subtitled “Showing that Slavery’s Shadows Fall Even There.” The book was not a commercial success and, beyond its small initial print run by Rand & Avery, it was not reprinted again until the 1980s. Harriet Wilson did not publish another work and died in 1900, following a long career as a spiritualist and medium in Boston.

28 29 30 31 32 33 34

https://archive.org/details/MAAccountBook18561859; https://archive.org/details/MAAccountBook18601864. https://mostlyiphistory.com/2017/01/18/transcriptions-of-pre-1870-us-copyright-records/. Harriet E. Wilson, Our Nig xli (Henry Louis Gates Jr. & Richard J. Ellis eds., 2011). Id. at xlii. Id. at xliii. Id. at xlv. Id. at xlvi. Little information survives about the process of writing the book.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

229

Since it was rediscovered in 1983 by Henry Louis Gates, Jr., the book has been hailed as a vital document in African American literature. And yet little is known about the book’s publication process, and what is known is based mostly on the copyright registration itself. Looking to the other copyright records kept by the clerk fills in some of the gaps, but also raises troubling new questions. B. The Copyright From the printed book, it is not clear who the author is – the title page relies on the book’s title for a pseudonym. However, the copyright notice in the book reads “Entered according to the Act of Congress, in the year 1859, by Mrs. H.E. Wilson, In the Clerk’s office in the District Court of the District of Massachusetts.”35 This format complied with the standard format for a copyright notice after the 1831 Act, which had removed the 1802 Act’s requirement of reprinting the entire lengthy registration text in favor of this shorter form. However, that does not give us very much in the way of information. In preparing the first modern edition, Professor Gates located the copyright registration itself, which informs us that, on August 18, 1859, H.E. Wilson deposited a title page of her book, which she claimed (he is modified to she on the form, as noted above) as author of the book. The registration was signed by Elisha Basset as clerk of the court pro tem, as he was only an assistant clerk at the time, and he noted that a copy of the book was deposited on September 5, 1859. The registration is clean, with no strikethroughs or corrections. However, there was clearly more to the story. The introduction to the 2011 expanded version notes that Wilson likely had “assistance from unknown patrons.”36 The Library of Congress recently completed a project to digitize the pre-1870 title pages held in its collection, making them readily available outside of its Rare Book Room for the first time.37 The title page of Harriet Wilson’s book is there, and it reveals a much more convoluted process than the registration itself.38 The title page is printed to look the same as the final version which was published, but handwritten on the title page – twice – and struck out, is “John Bent, Proprietor.” Bent’s involvement with the book has not previously been known, but it makes sense, as will be discussed below. In his place is written “Mrs. H.E. Wilson, Author,” and there are also handwritten references to the page of the registration itself on the title page and the date. The two times John Bent is written out (it looks to be once in pencil and once in ink) and the one time Harriet Wilson is written out in ink all look to be by different hands, or at least different writing implements. There is also a stray mark that looks like “IS” or “15,” next to which the clerk (presumably) put a question mark and then transformed to “17” for the date of deposit. The final copyright record to survive, also previously undocumented, is the copyright fee record book, which the author put online as part of a project to digitize copyright records from before 1870 held outside the Library of Congress.39 The entry for August 18 – interestingly, a day later – shows another strikethrough.40 Once again, Mrs. H.E. Wilson is substituted for John Bent, P for proprietor was changed to A for author, and the amount paid has been changed from 50 cents to one dollar, meaning Harriet Wilson paid for the certificate as well. A perusal of the fee record book, which covers thousands of registrations over the period from 1856 to 1859, reveals that although these kinds of substitutions were rare, they nonetheless 35 36 37 38 39 40

Id. at unpaginated inside title page in facsimile reprint. Wilson, supra note 30, at xv. https://www.loc.gov/collections/early-copyright-materials-of-the-united-states/about-this-collection/. See cite to Figure 1 on the next page. https://www.loc.gov/resource/rbccpmat.copy0034/?sp=3431. https://mostlyiphistory.com/2017/04/06/announcing-the-release-of-over-2000-pages-of-lost-pre-1870-copyright-records/. Supra Note 28.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

230

Zvi S. Rosen

figu re 1 1.1 – Title Page from the Library of Congress

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

231

did occur. For instance, in 1857 Joseph Bragdon initially paid the fee as author for his book “The Stranger’s Guide from Boston to Portland,”41 but in the copyright fee book that part is crossed out and A is replaced with P for proprietor. The final printed version of the retitled book carries a copyright notice for the publisher.42 However, these two are the only clear-cut cases over the four-year period (with over 1,500 registrations), and Harriet Wilson was the only author to wrest her copyright away from her publisher at the last minute in such a manner.43 As the 1859 Copyright Act had been passed earlier in the year, no further deposits were required by Wilson; her copyright was perfected when she deposited her copy with the clerk in September.44 The Interior Department’s record book records receiving a copy of the book on January 21, 1860, part of the biannual shipment of copyright deposits for the second half of 1859, and assigned it accession number 15147. That copy is the one in the Library of Congress today. Looking at all the copyright registration documents kept by the court, it is clear this was anything but a typical registration. This leads to inevitable questions – what happened, and is this why the book was not promoted or more widely disseminated? C. The Perils of Race The first question raised here is who was John Bent? There is some more information about him than about Harriet Wilson, enough to construct a brief chronology at least. We know he was a printer in Boston, who shared a business address (3 Cornhill) with the printers Rand & Avery who printed the book – including the printed title page.45 John Bent was born in 1809, and in the 1840s he had moved to Chelsea, MA, and began a printing business. In 1849, Bent became the business partner of a major historical figure, future U.S. Senator and Vice President Henry Wilson. The previous year, Wilson had helped found the Free Soil Party, whose Buffalo Declaration famously concluded with the banner of “Free Soil, Free Speech, Free Labor, and Free Men.”46 Following this, Wilson owned and edited a trio of related papers – the Boston Daily Republican, which was the main newspaper of the Free Soil Party, the Boston Semi-Weekly Republican, and the Emancipator and Republican, which was the official newspaper of the American Anti-Slavery Society. On August 15, 1849, a classified advertisement announced that John Bent was being brought on as Wilson’s partner, and allowed Bent a rare opportunity to put his own views to print: Having had some experience in conducting the affairs of a newspaper press, he trusts he shall be able to make himself serviceable to the interests of the paper, as well as the cause to which it is devoted. It may, perhaps, be proper for him to say that no change will take place in the political character of the paper in consequence of his connection with it. Having ever belonged to the old Jeffersonian school of Democracy, he finds no difficulty in adopting the Buffalo Platform, as part of his political faith. He pledges himself to use his best endeavors to place the paper upon a 41

42 43

44 45

46

The only other example in the fee records was a case where a white author’s name was replaced by an African American proprietor, in this case William G. Hawkins is crossed out as author and replaced by Lunsford Lane as proprietor on Sep. 30, 1863, for the book Lunsford Lane; Or, Another Helper from North Carolina (1863). In the registration Lane’s name is crossed out and then written back in with a different hand. Massachusetts Copyright Registrations for 1863, Pg. 505. The book tells Lane’s story. https://hdl.handle.net/2027/loc.ark:/13960/t5v69sn7t. Looking at the copyright fee account book for 1860–1864, there seems to be one more example in September of 1863. However, it was very uncommon: https://archive.org/details/MAAccountBook18601864/page/n69/mode/2up. Act of Feb. 5, 1859, 35th Cong., 2d Sess., 11 Stat. 380. The exact nature of the relationship was unclear, but Rand & Avery was a major printer and John Bent was not, suggesting Bent was a tenant or in a referral relationship with Rand & Avery for the actual printing. https://en.wikipedia.org/wiki/Henry_Wilson.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

232

Zvi S. Rosen

fi gu r e 11 .2 : 1849 advertisement showing 3 Cornhill where John Bent had his office

and where the book was printed

permanent footing, and to make it worthy the noble cause in which it is engaged; and he respectfully solicits for it, that assistance and patronage from the friends of Freedom, which it may be found to deserve.47

John Bent remained active in the Free Soil Party at a local level in addition to editing the paper.48 However, as his note above indicated, the papers were struggling, and in late 1850 they folded.49 He then largely disappears from the historical record for a few years, until in 1857 he was elected to the Chelsea City Council.50 In 1859, he was elected to the Massachusetts legislature to represent Chelsea, along with Mellen Chamberlain in its lower house.51 So, to simplify, in 1859 John Bent was a respectable but not necessarily prominent printer with powerful connections in the antislavery movement, and his own political career seemingly ascendant. Harriet Wilson, however, was by her own account in desperate financial straits, and her book would be her lifeline. We know that the clerk originally put John Bent down as the proprietor of the work, but then changed it to Harriet Wilson as the author and owner of the 47

48 49 50 51

Bent, John. “Notice.” Emancipator and Republican, 16 Aug. 1849. Nineteenth Century U.S. Newspapers, link.gale. com/apps/doc/GT3008975957/NCNP?u=dclib_main&sid=NCNP&xid=b155d306. Emancipator and Republican, Thursday, Oct. 3, 1850. https://en.wikipedia.org/wiki/The_Emancipator. Local Matters, Boston Daily Advertiser, Tuesday, Apr. 7, 1857. James F. Cobb, “Massachusetts State Government for 1859” Boston Daily Advertiser, Jan. 5, 1859. See Nineteenth Century U.S. Newspapers, link.gale.com/apps/doc/GT3011036574/NCNP?u=dclib_main&sid=NCNP&xid=02d17f7b (accessed Dec. 24, 2020). Chamberlain was later Chief Judge of the Boston Municipal Court and then the librarian of the Boston Public Library. See https://en.wikipedia.org/wiki/Mellen_Chamberlain.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

233

copyright. And we know that the book was never printed in significant numbers, let alone marketed or sold at any kind of scale, likely only being sold door-to-door. Beyond that we can only conjecture, but two possibilities come to mind. The first is that there was some possible legal impediment that necessitated John Bent’s involvement in the registration. For instance, suppose that Harriet Wilson had wanted to remain fully pseudonymous, but was concerned about having her name in the copyright notice, but changed her mind. This does not seem likely, but given how the title page is fully pseudonymous, it seems possible. A more likely – and darker – possibility is concern that as an African American, she might not have been able to register a copyright following the Dred Scott decision in 1857.52 However, even with that decision’s wrongheaded approach to citizenship, the copyright law specifically allows “residents” of the United States to register as well. So, it is possible that at first Bent put his name down, and then asked if Wilson could register herself, which led to the change. This is somewhat more plausible, but it still does not explain the failure to print or market the book at any kind of volume. Also possible is that John Bent was not actually able to pay for the copyright, but this seems somewhat unlikely as well.53 The more likely version of events is that John Bent offered to be Harriet Wilson’s publisher, but had not made fully clear that he would be taking the copyright as part of the bargain. Usually, the author and publisher would not go to the clerk together, but one suspects that they did here, and Harriet Wilson was either told or figured out what was going on. One suspects a disagreement where they parted terms, with John Bent no longer acting as her publisher, and his printing partner Rand & Avery instead printed a few copies for her as a private print lot. It is impossible to guess what his motivations were but perhaps Bent wanted to hitch his political flag to Wilson’s book, but in his mind, it was not worth it without the copyright. Meanwhile, Harriet Wilson had seen this sort of person before – the abolitionist who did not view her as an equal but rather someone to take advantage of. She once again saw slavery’s shadows hanging over the interaction. Assuming this version of events is accurate, Harriet Wilson probably knew or was informed that she would struggle to sell many copies of her book without a connected publisher like John Bent. The version that was printed “did not cost a great deal of money” to produce, on cheap paper and with modest binding.54 A study of known copies strongly suggests that Harriet Wilson had to vend her book herself, mostly to people she knew in southern New Hampshire.55 And the book came too late to save her son, who died less than a year later. The copyright records from before 1870 can be a powerful tool for understanding the negotiation between authors and publishers, and the unusual interactions between Harriet Wilson and John Bent suggest an already complicated dynamic – between author and publisher – made even more complex by racial dynamics Bent may have been blind to but Harriet Wilson would not have been. It seems obvious that Harriet Wilson was intent on having the copyright registered in her name and reasonable to extrapolate that that decision had some effect upon John Bent’s interests in the commercial and other success of the work. There would have been the choice of giving away her work for a chance at commercial and public success or 52 53

54

55

Dred Scott v. Sandford, 60 U.S. 393, 15 L. Ed. 691 (1857). It is worth noting that John Bent’s political career would falter after his only term in the Massachusetts legislature. Copyright registrations show he was still in the printing business in the early 1870s, and he spent his last years growing oranges in Florida. Eric Gardner, “This Attempt of Their Sister”: Harriet Wilson’s Our Nig from Printer to Readers, 66 The New England Quarterly 226, 231 (Jun. 1993). Id. at 240.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

234

Zvi S. Rosen

keeping her copyright and striking out on her own, with dismal chances at a financial recovery. This is conjecture, but the only thing we really know for certain is that Harriet Wilson chose to own her work. Moreover, given her financial situation, it would seem that the societal affirmation attendant on registration in her own name was at least as important to Harriet Wilson as the prospect of economic reward.

iii. louisa may alcott Little Women was a massive success, and continues to be known by all. And the story of its copyright is even relatively well known, being a key plot point in Greta Gerwig’s 2019 film adaptation. But even if Alcott initially fared better than Harriet Wilson, the issues copyright law placed before women would face her as well. A. The Book Louisa May Alcott was raised in New England by parents active in the transcendentalist movement, and grew up surrounded by the leading philosophical figures of the day. Although the family was not wealthy, they had substantial social capital from their involvement in the intellectual scene. As a woman in her early 30s, she was a moderately successful author of novels and shorter fiction, publishing in the Atlantic Monthly and elsewhere. Following a trip to Europe by Alcott, Thomas Niles, the editor for Roberts Brothers, suggested that she write something for younger readers, and she composed a book based on her experiences growing up with three sisters. Like Harriet Wilson’s book, it was not meant to be entirely autobiographical, but the broad outlines of the story follow the reality of her life. Although today normally thought of as one book, a first volume was published in 1868, and a second volume came out the following year. The book was an immediate success, and Alcott wrote a number of subsequent books as sequels, including Good Wives, Little Men, and Jo’s Boys. B. The Copyright Louisa May Alcott’s initial copyright interactions were much easier than Harriet Wilson’s.56 This makes sense in part because Alcott was of the same social status – if not higher – than the editor Thomas Niles who effectively ran Roberts Brothers, while, in dramatic contrast, Harriet Wilson was not of the same social status as the person with whom she interacted, John Bent. In the 2019 film, the fictional Alcott negotiated with a recalcitrant Niles for the copyright, but in reality Niles encouraged her to keep the copyright.57 In 1868, Louisa May Alcott filed her copyright registration with the clerk of the U.S. District Court for Massachusetts and paid the fee. She was filing the claim on her own behalf as author, with “he” once again manually becoming “she,” and filed a copy with the clerk simultaneously. This itself was somewhat unusual – copyright registration was usually done prior to publication,

56

57

Parts of this section were originally published as a blog post, which also contains additional illustrations: https:// mostlyiphistory.com/2019/12/30/copyright-in-little-women/. As Alcott would recall years later: “An honest publisher and a lucky author, for the copyright made her fortune, and the ‘dull book’ was the first golden egg of the ugly duckling.”

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

235

and usually the title page was a rough mock-up, not the finished work. No title page appears in the Library of Congress’s title page collection, and one suspects that because she deposited the whole book at the time of registration, the clerk decided a printed title page was unnecessary.58 Pursuant to the amendments to the U.S. copyright law in 1865 and 1867, Alcott would have also needed to deposit copies with the Library of Congress. The same process repeated itself with the second book in the series, which now forms the second half of Little Women, and generally speaking the process seems to have been harmonious. The clerk S.E. Sprague, who had been indisposed for Wilson, leaving the registration to a subordinate, signed both of Alcott’s registrations personally. In 1880, as Roberts Brothers prepared a deluxe edition featuring illustrations, and both books in a single volume, Louisa May Alcott registered the copyright for that edition as well, although Roberts Brothers was given as the mail contact. She continued to exercise significant control over her work, with Roberts Brothers being in the weaker bargaining position relative to her. This was particularly impressive since her own contribution to the volume was minimal – the volume featured new illustrations by Frank T. Merrill and new typesetting, but it was the same books. Usually, such a volume would be copyrighted by the publisher with a disclaimer of the original work by Alcott, but her bargaining position was sufficiently strong that she took the copyright in this deluxe edition herself. By 1880, copyright was at the Library of Congress, and the Library’s blank copyright registrations no longer assumed male authorship.59 However, Louisa May Alcott’s health had not been good ever since she had served as a nurse during the Civil War, and her mind turned to how to bequeath to the family which had inspired her most popular creations her copyrights, the income from which her family had come to rely on.60 It would not prove as easy for an unmarried woman as one might expect. C. The Perils of Spinsterhood From 1831 to 1909, the maximum term of copyright was 42 years – a 28-year initial term and a 14-year renewal.61 The operative copyright law in the 1880s was the revision passed in 1870, part of an omnibus bill that updated patent law and established a federal trademark system for the first time.62 Section 88 of that law established the rules for renewal registrations of copyrights, providing: That the author, inventor, or designer, if he be still living and a citizen of the United States or resident therein, or his widow or children, if he be dead, shall have the same exclusive right continued for the further term of fourteen years, upon recording the title of the work or description of the article so secured a second time, and complying with all other regulations in regard to original copyrights, within six months before the expiration of the first term.63

At first blush, the wording of this statute seems to encompass only men and their offspring, and pose a problem for the widower of a female author. However, the issue does not seem to 58

59

60 61 62

63

It is also possible that the title page was taken as a souvenir upon the book’s success, especially prior to the transfer of the records to the Library of Congress a few years later. Interestingly, they did assume that the proprietor and not the author was filing the registration. For this volume, “proprietor” is crossed out and replaced by “author” in handwriting. John Matteson, Eden’s Outcasts 329 (2007). Until 1831, it was 28 years – 14 years and a 14-year renewal term. In 1909, it became 56 years, with two 28-year terms. Zvi S. Rosen, In Search of the Trade-Mark Cases: The Nascent Treaty Power and the Turbulent Origins of Federal Trademark Law, 83 St. John’s L. Rev. 827 (2010). Emphasis added.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

236

Zvi S. Rosen

have been litigated, and the canon was that masculine pronouns would be made to apply to both sexes where reasonable, even in the absence of a statutory directive.64 Regardless, reading those words put in that way cannot have been inspiring to a female author, even if it may have not been surprising. However, Louisa May Alcott had no husband, no children, and only an extended family that relied on her. In 1909, Congress would not only make the statute (slightly more) gender neutral by adding “widower” alongside “widow,” and allow “the author’s executors, or in the absence of a will, his next of kin” to file the renewal at 28 years. This would have solved the problem, but of course this was decades too late. Meanwhile, it also seemed unlikely that Alcott could assign her renewal interest. Decades earlier, the federal court in Massachusetts had made clear that “it is the author and not the assignee, to whom the extension of the right is eo nomine given.”65 There were some conflicting cases, but it would have been a dangerous path to assume they superseded this basic doctrine.66 The only option for an unmarried childless woman who wished to allow her family to benefit from her creations was to adopt. Late in her life, Louisa adopted her nephew John Sewall Pratt, by then in his early 20s, and gave him charge of her copyrights in her will. In 1895, he duly filed the renewal with the Library of Congress, securing the term of the copyright in the first book until 1910. In 1909, the expiration of the copyright renewal term was looming, but in that year the renewal term was extended from 14 to 28 years. Section 24 of the 1909 Act required that works within a year of expiration under the previous term have an extension filed, and John S.P. Alcott filed the requisite extension a few months after that law passed, on October 4, 1909, the very last possible day it could be filed – the original registration having been filed 41 years and a day earlier with the clerk of the District Court in Massachusetts. The copyright in the first book sustained the family until it expired in 1924, some 36 years after the death of its author. While Louisa May Alcott did not have to struggle with her publisher to have her work registered in her name, she obviously understood the value of her copyright. And while her efforts to ensure that her family would be able to inherit her copyright may have been economically motivated, the fact that it was her status as an unmarried woman that precluded bequeathal of her copyright surely was not lost upon her. Although Alcott ended up marrying off her alter ego Jo in the novel Little Women, she later expressed the wish that she had made her a “literary spinster” instead, the same path she chose for herself.67 This would have not been a wholly unusual choice, and indeed many well-known women authors of the nineteenth century chose to abjure marriage. And yet if they wanted their copyright renewal right to survive them, they needed to marry and have children.68 Alcott instead chose the only other option of adoption – simply devising the right by will would not suffice. In theory, this would affect both genders equally, but there was not the same trend of men not marrying to pursue a literary career, as marriage would not be an impediment to that

64

65 66

67

68

2A Sutherland Statutory Construction § 47:32: Gender (7th ed.), citing Silver v. Ladd, 74 U.S. 219 (1868), allowing women to take land by settlement under a statute limited to “white male American citizens.” Pierpont v. Fowle, 19 F. Cas. 652, 659 (C.C.D. Mass. 1846). Paige v. Banks, 80 U.S. 608 (1871) (author had been alive at 28 years, held that in that case assignment in 1828 controlled renewal). Letter from Louisa May Alcott to Elizabeth Powell, Mar. 20, 1869, https://ugapress.org/book/9780820317403/theselected-letters-of-louisa-may-alcott/ In 1957, the Supreme Court held that illegitimate children were entitled to a part of their father’s renewal right, but it is unclear if the courts would have ruled the same way in the 1880s. De Sylva v. Ballentine, 351 U.S. 570 (1957).

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

237

path for a man.69 Thus, the impact of society’s gender imbalance upon the copyright system was real and Alcott was not only pointedly aware of it but deliberately undertook to maneuver around it. In the end, this gender inequity, supposedly “extrinsic” to copyright, did not destroy the rights of the Alcott family, but it illuminated the precarious nature of female authorship to sustain a family once the author was gone.

iv. marion harland One of the best-selling authors in the United States in her century, Mary Virginia Terhune, writing under the pen name of Marion Harland, wrote the cookbook Common Sense in the Household: A Manual of Practical Housewifery. At first, her story seems like a happy case of reaping her rewards from her authorship, until a case went to the Supreme Court showing how tenuous her position was.70 A. The Book Marion Harland first came to prominence as the author of fiction, achieving “moderate success” with novels being published in the 1850s when she was in her 20s.71 However, for much of this decade and the next, she would regularly ask friends for recipes, and in the late 1860s collected them together into a book. The publisher of her fiction laughed when she suggested the idea, and refused to publish a cookbook.72 Finally, in 1871 Charles Scribner & Co. agreed to publish the book, thinking that “if they indulged Mrs. Terhune in this little feminine whim of a cookery book, she might give them her next novel to publish.”73 The “intensely practical” book, mixing advice and recipes to allow a young woman to avoid pitfalls of running a home in the later decades of the nineteenth century, was a huge success, unsurprising in retrospect.74 Common Sense in the Household “sold, in eight editions, over a million copies, and it was in print for well over half a century.”75 By 1884, Mrs. Terhune had made the equivalent of over $750,000 from the book.76

69

70

71 72

73

74 75 76

Obviously, sexual orientation is a factor here as well, almost whispered in the background at the time. The same disability as to marriage and children would apply to that as well. This section is a shorter version – albeit from a somewhat different perspective – of the epilogue of Melissa J. Homestead, American Women Authors and Literary Property, 1822–1869 (2005). Prof. Homestead’s volume is focused on the problem of coverture for American woman authors through the nineteenth century, with this case – happening when coverture was supposedly in decline and modern marital property rules were on the rise – is an ironic conclusion. The book also explores themes of coverture in Terhune’s own work, specifically in Phemie’s Temptation and the short story The Article of Separation, the latter written after this case was concluded. Marion Harland’s Autobiography; The Story of a Long Life 344 (1910). Karen Manners Smith, Marion Harland: The Making of a Household Word 327 (unpublished Ph.D. dissertation, ProQuest Dissertations and Theses (1990)). Id. at 328. There were a number of corporate reorganizations and name changes as Charles Scribner himself died and then others in the firm did as well, but it remained the same fundamental company and always with Charles Scribner in the name. For purposes of simplicity, as these changes are not germane to this chapter, the company will simply be called “Scribner.” Id. at 329. Id. at 328. Id. at 336 (the number given is $30,000 in 1884 dollars). According to her testimony in 1885, she received 30 cents for each copy sold, suggesting the true amount was likely closer to ten times that amount through the book’s print run. Cross-Examination, Transcript of Record at 79.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

238

Zvi S. Rosen

B. The Copyright Unlike the authors mentioned previously, Mrs. Terhune likely assigned her copyright to Scribner, which registered the book for copyright in 1871.77 Copyright had been moved from the District Courts to the Library of Congress the previous year, and 1871 was thus the first full year of registration and deposit being centralized at the Library. Subsequent editions were registered for copyright, once again by Scribner, in 1880 and 1892.78 Despite the book’s popularity, a renewal record is not apparent and, strangely, it does not seem to have been reprinted after 1899.79 In 1926, the author’s daughter, Christine Herrick Terhune, published a revised version of her mother’s cookbook, “revised for gas and electricity.”80 Once again, the publisher – this time Frederick A. Stokes & Co. – registered the copyright as proprietor.81 The registration does not seem to have been renewed, and the copyright in the revised version expired in 1954.82 In point of fact, the copyright registration in Common Sense in the Household is not particularly notable, compared to the previous examples cited above. However, one fact which seems unremarkable in the examples above – that Mrs. Terhune’s husband had not been a party to the assignment of the copyright to Scribner – would be seized upon by a literary pirate looking to exploit the corners of the law to his own advantage. And in so doing, that pirate would show how precarious a married woman’s property rights in her writings were. C. The Perils of Marriage The Belford brothers had long been notorious pirates of literary property, “miserable thieves” in the words of Mark Twain.83 Originally based in Toronto, they took advantage of the complicated interplay of American, British, and Canadian colonial copyright law effectively to undercut American publishers and authors.84 In 1879, they set up offices in Chicago, and Alexander Belford partnered with James Clark to form Belford, Clark and Co. there.85 Following the publication of the revised edition in 1880, Belford, Clark and Co. collected many of the recipes from Common Sense in the Household and published them under different

77

78 79

80

81 82 83

84 85

Registrations B3097 and B4933 (1871). It was actually questioned whether Mrs. Terhune had assigned her copyright in litigation, and Mrs. Terhune herself did not know whose name the copyright had been taken out in when she testified in 1885. The issue was important in the litigation, somewhat related but not dependent on the issue discussed below, but is beyond the scope of this chapter, like many of the other claims in that case. See Litman, supra note 12 (citing this case as an example of the “lax presumptions of copyright transfer” in that era). Registrations L14239 and X39761 (1880, 1892). The renewal records prior to 1909 are somewhat chaotic, and it is possible that the book was renewed but no record was made in the Copyright Card Catalog or Catalog of Copyright Entries. The Copyright Card Catalog contains no listing of a renewal. This would have been a year before the end of the 56-year term of copyright for the original, assuming a renewal was filed. If a renewal was filed, such an updated version would be a smart way of effectively reviving the copyright in the work, but it might also just be a coincidence. Registration No. A890475 (1926). Had the registration been renewed, the copyright in the revised edition would have expired on January 1, 2022. Letter from Samuel L. Clemens to William Dean Howells, Hartford, December 5, 1876, quoted in Herbert C.V. Feinstein, Mark Twain’s Lawsuits 95 (unpublished Ph.D. dissertation, 1941). Clemens sued them for publishing Sketches by Mark Twain, but sued on the basis that using his pen name was a form of trademark infringement, not on the basis of copyright law, and the suit was unsuccessful. Clemens v. Belford, Clark & Co. (The “Mark Twain” Case), 14 F. 728 (C.C.N.D.IL. 1883). Sara Bannerman, The Struggle for Canadian Copyright: Imperialism to Internationalism, 1842–1971 (2013). Feinstein, supra note 83, at 96.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

239

names with different prefatory material.86 Conceptually, the case was really about copyright protection in recipes (and other technical copyright issues beyond the scope of this chapter), but at the examination of Frederick Mead, bookkeeper for Scribner, he was asked some strange questions: Q. Do you know the husband of Mrs. Terhune? A. I know him by sight; I am not acquainted with him. Q. Did he receive any of this money? A. Not from me. Q. Did he make the collections personally? A. No, sir; not as a general thing. There may have been a case where he received a check, but it was not customary. Q. Do you know about that, whether he ever did receive a check or not? A. Not positively.87 As the line of questioning suggested, Belford and Clark planned to argue that the failure to include Mr. Terhune was fatal to Scribner’s suit under the doctrine of coverture. The nowarchaic doctrine of coverture states that a married woman is “unable to contract with any to the damage of herself or husband, without his consent and privity, or his allowance and confirmation thereof.”88 In other words, because Mr. Terhune was not a party to the publication agreement between Scribner and Mrs. Terhune, and he did not receive any proceeds of the agreement (so it was to his damage) the publication agreement was invalid and Scribner had no standing to bring the lawsuit. And, sure enough, they made that argument to the Circuit Court but nonetheless lost, and the Court awarded damages to Scribner in the amount of $1,092.53.89 However, the trial judge did not dismiss the suggestion that coverture prevented a married woman from owning and selling her creative work out of hand. Instead, he noted that many years had passed and multiple editions had been printed, and that there had been “acquiescence” to such ownership of rights.90 The Court further noted that if Mr. Terhune was entitled to anything under coverture, that was up to him to bring suit for, but a third party could not argue coverture as a defense to copyright infringement.91 It took four years for the case to make it to the U.S. Supreme Court. That roughly matches what a litigant would have expected at the time. The Court’s inability to control its docket and the requirement of riding circuit for the Justices led to a four-year backlog by mid 1888. The case was still pending in 1891 when the Evarts Act dramatically reduced the Court’s workload, and

86

87 88

89 90 91

Complaint, in Transcript of Record, Belford v. Scribner, No. 13,287 at 6 (U.S. Oct. Term 1891). Mrs. Terhune testified that the pirate edition from Belford, Clark was “How to Cook” by “Marion Holmes.” Testimony of Mary Virginia Terhune, id. at 43. According to testimony from James Clark, How to Cook sold for 50–80 cents retail, compared to $1.75 for her book. Testimony of Frederick Mead, id. at 63. The Pocket Lawyer and Family Conveyancer 96 (3d ed. 1833), quoted in Coverture, Black’s Law Dictionary (11th ed. 2019) (“When a woman is married she is called a femme couvert, and whatever is done concerning her during marriage is said to be done during coverture”). Scribner v. Clark, 50 F. 473 (C.C.N.D. Ill. 1888). Id. at 474. “If the law of the domicile of Mrs. Terhune entitles her husband to any part of her earnings, that is a matter to be settled between her husband and the complainant, and which the defendants cannot interpose as a defense to a trespass upon the complainant’s property rights in this copyrighted book.” Id.

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

240

Zvi S. Rosen

was finally heard in March of 1892. By that time, Belford was out of business, its business model outmoded by the 1891 International Copyright Act, and its lawyers represented “a ghostly corporate shell of a bankrupt company.”92 Nonetheless, the litigation proceeded and, in their briefs, counsel for Belford, Clark, & Co. made their argument plain: At common law a married woman has no interest in personal property acquired by or through her during marriage, but it belongs absolutely to her husband . . . It does not appear that Mrs. Terhune had any right to sell her husband’s property or to make contracts in regard to it, and it would seem that the suit in question ought to have been in his name as complainant therein.93

Scribner’s brief does not address the question of coverture, presumably relying on the District Court opinion. One suspects that the Court knew the argument regarding coverture was technically correct, but courts would be loath to disrupt contractual relations between respectable parties over it, especially to favor a pirate. The oral arguments to the Supreme Court have not been located (if they ever existed in transcribed form), and the Court took less than three weeks to decide the case. Justice Blatchford’s opinion for the unanimous Supreme Court simply embraced the conclusion of the Circuit Court, adding nothing new.94 His opinion on this point simply quotes or paraphrases the above section of Belford’s brief, and then does the same for the Circuit Court opinion, stating that Mr. Terhune had acquiesced to the arrangement, and a third party of the marriage lacked standing to raise coverture as a defense. Subsequent courts would read the doctrine from this case, in settings going beyond copyright, as holding that a “husband’s acquiescence, tends to support an implied relinquishment of his marital right.”95 To put this doctrine and case in another perspective, a married woman could own her copyrights – or sell them for royalties – only if her husband did not want them. In the particular case here it was not a problem, and the Court implied that if a husband did not assert his rights after 15 years, he would be barred from asserting them. However, this same opinion also strongly suggested that, to the extent the doctrine of coverture was still viable, as it was for much of the nineteenth century, a married woman could only own her copyrights if her husband effectively assented to it. It is impossible to know the full extent to which these and similar laws that relegated women to second class citizenship diminished their incentives to engage in intellectual property and other civic undertakings. However, to accept the economic utility presumption that such legal and social inequities had no impact on the participation of women in the copyright ecosystem is to reject the very idea of secular incentives as providing motivation for engaging in intellectual labors. But, despite these limitations, many women nonetheless found the inspiration not only to produce express works, but to seek out copyright protection for their achievements and to exploit and defend these rights, even in situations where the prospect of economic reward was not guaranteed. 92

93 94 95

Homestead, supra note 70, at 249. By this time, Belford was trying to sell books in Mexico instead, and at a lawsuit brought by one of his creditors, heard a month before the Supreme Court’s argument, it was noted that the debt was taken out by “‘San Juan Company,’ ‘Belford, Clark & Co.,’ and ‘Alexander Belford,’” seemingly interchangeably. Belford v. Beatty, 46 Ill. App. 539, 540 (Ill. App. Ct. 1892), aff’d, 145 Ill. 414, 34 N.E. 254 (1893) (affirming a trial finding that Belford was liable for $3,212.41 plus interest on two promissory notes); see also Karst v. Gane, 16 N.Y.S. 385, 385 (Gen. Term 1891), aff’d, 136 N.Y. 316, 32 N.E. 1073 (1893) (mentioning three mortgages taken out by Belford being the subject of judgments). Belford v. Scribner, No. 13,287, Appellant’s Brief at 17–18 (U.S. Oct. Term 1891). Belford, Clarke & Co. v. Scribner, 144 U.S. 488, 503–504 (1892). Lovewell v. Schoolfield, 217 F. 689, 704 (6th Cir. 1914).

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

Copyright’s Promise of Dignity in the 19th Century

241

conclusion Although in theory copyright was available to all free Americans in the nineteenth century, in practice it was saddled with numerous obstacles of race and gender.96 And yet, socially disadvantaged people continued to seek it out and register, exploit, and defend their copyrights, understanding that despite the practical limitations it was encumbered by, it remained a property right that they could seize with only the use of their minds and industry.97 Even in the shadow of racial inequality, unequal statutes for postmortem rights, and even coverture, copyright remained a way for people to own their ideas and assert their inalienable rights of human equality and self-actualization through their expressive talents and endeavors. Today, copyright’s potential as a tool for the social, political, and economic empowerment of women and marginalized creators is as important as ever. The realization of this potential, however, is dependent upon the recognition of copyright’s inherent social justice mandates, and the application of the precepts of socially equitable access, inclusion, and empowerment in the administration and implementation of the copyright ecosystem. ***

96

97

Thus, the prevailing narrow focus on economic interests in the IP ecosystem not only ignores the social justice potential of copyright protection but also presumes an objectivity in the structure and implementation of the law that is unsupported by the history of its application. See, e.g., Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries, in The Cambridge Handbook of Intellectual Property and Social Justice, Steven D. Jamar & Lateef Mtima eds., 2023) (discussing the “lived experiences” of women creatives in the music industry, including the role of copyright in their careers). Illustrating copyright’s importance to authors in socially disadvantaged groups, Susan B. Anthony signed a petition brought by another female author advocating perpetual copyright protection. See A Petition for Perpetual Copyright to be Submitted to Congress – 1899–1900 – By Margaret Lee of the City of New York, Borough of Brooklyn, and Others, May 23. 1899 (copy on file with author).

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.016 Published online by Cambridge University Press

part iv

IP Social Justice in the Political Economy: Engaging Activism; Achieving Change

https://doi.org/10.1017/9781108697613.017 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.017 Published online by Cambridge University Press

12 Intellectual Property Empowerment and Protection for Prisoners John R. Whitman*

Introduction I. Background A. The Constitution and Intellectual Property B. Target Population Characteristics C. Prison Literature and Art in History II. Educational Programs and Resources III. Catalyzing Transformation IV. The Intellectual Property for Innovation Project Conclusion

page 246 247 247 249 251 253 254 258 263

In the summer of 2006, Curtis Dawkins, a felon who is serving a life sentence in Michigan for murdering a man during a botched robbery, got some unexpected good news. Scribner, one of the top literary publishing houses in the United States, wanted to publish his debut collection of short stories, and offered him $150,000. – Alexandra Alter, “A prisoner got a book deal. Now the state wants him to pay for his imprisonment,” The New York Times1 When I came in, I was a criminal and prison was the next chapter. Over the years, I learned to write, went to college, and built a career as a prison journalist publishing stories in national magazines and websites, including Esquire, The Atlantic and New York. – John J. Lennon, “What I Think About When I Think About Freedom,” Sing Sing Correctional Facility2

*

1

2

I wish to thank the following individuals who assisted me in this research and/or commented on earlier drafts of the chapter: Rob Bird, Erin Boyington, Julie Elizabeth Fieldsteel, Todd Hollfelder, David Holt, Steven Jamar, Wendy Jason, Doran Larson, John J. Lennon, Charlie Marlin, Caits Meissner, Quentin Miller, Lateef Mtima, Ethan Senack, Cori Thomas, and Fury Young. Alexandra Alter, A Prisoner Got a Book Deal. Now the State Wants Him to Pay for His Imprisonment, N.Y. Times, Feb. 17, 2018, https://www.nytimes.com/2018/02/17/books/curtis-dawkins-graybar-hotel-prisoner-book-deal .html?searchResultPosition=1. John L. Lennon, What I Think About When I Think About Freedom, Life Inside, retrieved from https://www .themarshallproject.org/2019/11/13/what-i-think-about-when-i-think-about-freedom.

245 https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

246

John R. Whitman

introduction This chapter addresses the benefits both to society and to prison inmates3 of equitable access, inclusion, and empowerment afforded by intellectual property (IP) protection extended to people in detention who constitute one of the most marginalized populations in the modern history of the United States. According to the U.S. Bureau of Justice, over six-and-a-half million people were supervised in the adult correctional system in 2016, which includes those on probation, parole, in local jail, or in state and federal prison.4 Well over two million are incarcerated, a number roughly equivalent to the fifth largest city in the United States, exceeded only by Houston, Chicago, Los Angeles, and New York.5 Moreover, the prison population in the United States is greater than the entire population of 83 out of 227 countries in the world.6 This means that the prison population of the United States is larger than the civilian populations of nearly 37 percent of the world’s nations. Despite their incarceration, this population is very, and in some ways, uniquely capable of producing creative expressions that can contribute to the nation’s stock of IP. For a society that prides itself on its creative culture and its innovation-driven competitiveness in the global economy, it would seem counterproductive, indeed folly, not to encourage, or even incentivize, the creative potential of a population equivalent in size to the fifth largest city in the nation or the 84th largest country on Earth. Historically, prison has been a source of introspective, inspirational, and sometimes transformative expression, which in notable cases endowed humanity with valuable and illuminating narratives such as Oscar Wilde’s De Profundis (1897), noteworthy for its reflection of how societies can abuse those who, however brilliant, are seen as being at odds with prevailing prejudices, and Martin Luther King, Jr.’s “Letter from Birmingham City Jail” (1963), in which he formulates the moral law defining the gravity of justice that encompasses us all. Even young children held in a U.S. Customs and Border Protection detention facility in 2019 created artistic reflections of their bewildering and painful experience that proved worthy of acquisition for posterity by the Smithsonian Institution.7 Every prisoner has a potential story to tell society through literature, art, music, drama, or other expressive form. Indeed, many such works have emerged from prisons and from those who have been imprisoned. Some of these works have proven socially meaningful and valuable; some have given heart to others in prison; some have been confiscated and destroyed by prison guards; uncounted numbers may be lost in obscurity. Three modest steps can lead to liberating this vast creative potential. First, simply inform inmates of their right to protect their IP. In other words, incentivize their engagement by 3

4 5

6

7

There is a much-needed discussion underway about how best to refer to people in detention. The discussion includes formerly incarcerated people. The humanity of those in detention should be paramount. I use terms such as “inmate,” “prisoner,” “people in detention,” and “ incarcerated persons” in conventional ways, but I am aware that there is deep concern over the implications of some of these terms. See, e.g., https://www.themarshallproject.org/2015/04/03/inmateprisoner-other-discussed and http://www.osborneny.org/resources/resources-for-humanizing-language/#.XmJtmmGnCa4 .facebook, (both last visited Dec. 13, 2022). See https://www.bjs.gov/index.cfm?ty=pbdetail&iid=6226 (last visited Dec. 13, 2022). Of the 2.3 million incarcerated, about 27 percent are in local jails, 57 percent in state prison, 10 percent in federal prisons and jails, and 3 percent in immigration detention centers. See https://www.prisonpolicy.org/reports/pie2020 .html and https://www.bjs.gov/index.cfm?tid=11&ty=tp (last visited Dec. 13, 2022). See https://www.census.gov/data-tools/demo/idb/#/table?COUNTRY_YEAR=2022&COUNTRY_YR_ANIM=2022 (last visited Nov, 16, 2022). Jacey Fortin, Drawings by Migrant Children in Texas Catch the Smithsonian’s Eye, N.Y. Times, July 9, 2019.

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

247

educating them about what IP is, the fact that they own their original creations, and that the Constitution encourages everyone, including them, to produce creative works that can benefit society. Second, offer them classes in the expressive arts that would empower them to produce creative works. Classes that teach writing, art, drama, film, photography, and music have been shown to build skills that can transform the individual’s sense of identity and self-worth and will likely be useful after re-entry into the community. Third, assist them in the process of protecting their IP and making it available to potential publishers and markets to distribute their works to the public. Public demand for their works can return great psychic reward and, where possible, a financial return as well. These three steps operationalize the very purpose of copyright protection as secured in the Constitution and achieve the social justice mandate inherent to that protection. This purpose, focusing on the public interest, is clarified by Abraham Kaminstein, then Register of Copyrights, in Senate testimony: The basic purpose of copyright protection is the public interest, to make sure that the wellsprings of creation do not dry up through lack of incentive, and to provide an alternative to the evils of an authorship dependent upon private or public patronage. As the founders of this country were wise enough to see, the most important elements of any civilization include its independent creators – its authors, composers, and artists – who create as a matter of personal initiative and spontaneous expression rather than as a result of patronage or subsidy. A strong, practical copyright law is the only assurance we have that this creative activity will continue.8

In this chapter, we first present the background to our project, noting the constitutional foundation for protecting IP underlying Kaminstein’s testimony and that many people are unaware of it; the characteristics of our target prison population; a brief review of prison literature and art in history; existing prison educational programs and resources; and the catalyzing effect such programs can have on inmates. We then describe our Intellectual Property for Innovation (IPFI) Project, which aims to take the three steps to liberating creative talent outlined above. Finally, we conclude with a call for engagement.

i. background A. The Constitution and Intellectual Property [T]he Constitution expressly authorizes Congress to provide for intellectual property protection as a means by which to “promote the progress of the arts and sciences.” . . . [This] constitutional scheme is dependent upon the broadest possible participation: the nation’s cultural and technological advancement requires the creative and inventive contributions of all of her citizens. – Lateef Mtima9

8

9

Copyright Law Revision, Committee on the Judiciary, Eighty-ninth Congress, First session pursuant to S Res. 48 on S. 1006 Sess. 65, 1965, at 65. See herein Lateef Mtima, Copyright and the Interdependent Relationship Between Social Utility and Social Justice, ch. 5 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Intellectual Property, Entrepreneurship and Social Justice: From Swords to Ploughshares 15 (Lateef Mtima ed., 2015).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

248

John R. Whitman

The framers of the Constitution knew the importance of protecting IP to encourage the nation to apply its creative energies in ways that would be useful to commerce and society. Thus, they wrote the IP protection clause in Section 8 of the very first article of the Constitution: That Congress shall have Power . . . to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

The importance of this protection even to prison populations cannot be overstated. Although courts defer to prison administrators to decide what rights are afforded to incarcerated people, there is no reason or evidence to believe that authors and inventors held in detention should be exempt from this Constitutionally derived right to protect patents and copyrights (subject to due process exceptions). Indeed, the IP clause should be applied as widely as possible, inclusive of all groups, an argument that combines the social utility and social justice aims of the clause.10 But based on anecdotal evidence, it seems that remarkably few people are aware of this Constitutionally based right, unlike popular awareness of the protections of the Bill of Rights to free speech and gun ownership. Few people may even be aware of the term, “intellectual property” and that it includes patents and copyrights, which are constitutionally protected; trademarks, which are governed by the federal Lanham Act and protected under common law;11 and trade secrets such as the formula for Coca-Cola, which are protected under both state and federal law.12 Perhaps more people are aware of the federal government agencies that implement this Constitutional mandate than of the mandate itself: • The United States Patent and Trademark Office (USPTO) is charged with the responsibility to review and file protections for inventions and trademarks (see https://www.uspto .gov); • The United States Copyright Office (USCO), based in the Library of Congress, registers ownership of written, artistic, and other works (see https://www.copyright.gov), and its mission is to “promote creativity and free expression by administering the nation’s copyright laws and by providing impartial expert advice on copyright law and policy for the benefit of all.”13 Great creativity has emerged from underserved, particularly minority populations. It is hard to imagine our nation’s culture without the contributions of, for example, gospel, ragtime, jazz, rock and roll, hip hop, the Harlem Renaissance and Civil Rights bodies of literature. Yet such creators may be least likely to know about their right to IP protection.14 Indeed, there is a sad and long history of appropriation and exploitation of their work.15 And taking advantage of creative 10

11 12

13 14 15

Lateef Mtima, Copyright Social Utility and Social Justice Interdependence: A Paradigm for Intellectual Property Empowerment and Digital Entrepreneurship, 112 West Va. L. Rev. 97–151 (2009). Rita Heimes, Trademarks, Identity, and Justice, 11 John Marshall Rev. Intell. Prop. L. 137–38 (2011). See the Defend Trade Secrets Act of 2016, https://www.americanbar.org/groups/business_law/publications/blt/2016/09/ 03_cohen/. States also have intellectual property laws, but our focus here is on constitutional and federal law. See https://www.copyright.gov/about/ (last visited Dec. 14, 2022). Heimes, supra note 11. Jeff Carter, Strictly Business: A Historian Narrative and Commentary on Rock and Roll Business Practices, 78 Tennessee L. Rev. 213–57 (2010); K.J. Greene, Intellectual Property at the Intersection of Race and Gender: Lady Sings the Blues, 16 J. Gender, Soc. Pol’y & L. 365–85 (2008); Heimes, supra note 11; Intellectual Property, Entrepreneurship and Social Justice: From Swords to Ploughshares, supra note 9. See herein Robert F. Brauneis, Copyright, Music, and Race: The Case of Mirror Cover Recordings, ch. 9 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Seán

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

249

artists was by no means limited to people of color. Writing about The Beatles in his history of rock and roll, Jeff Carter notes:16 McCartney has asserted that he and Lennon had no idea that a song had ownership rights and that the two writers simply signed the contract that was put in front of them with no understanding of the underlying issues related to copyrights or music publishing, much like the blues artists before them.

We argue that professionals engaged in the management of and access to literature, art, music, and other creative arts, including educators and librarians engaged with underserved populations, would do well to promote public awareness of the meaning of IP and of the role of the government in securing its protection on behalf of creators. This role is especially vital in cases where such creativity may have market value and could thus be a potential source of income for the creators, as well as a possible target of misappropriation or theft. To be sure, copyright law ensures that the creator owns the copyright to his or her creative work upon its fixation in a medium (e.g., film, paper, score, etc.) without requiring registration with the U.S. Copyright Office. And if a reputable publisher contracts with an author to publish his or her work, the publisher should attend to copyright protection. However, if the creator finds it necessary to protect ownership in a court of law, the work must have been registered with the Copyright Office in advance of seeking a remedy. In any case, it behooves the author/artist to affix the copyright symbol to the work, even on the back of a piece of visual art, so that any potential infringer could not claim ignorance should a dispute arise.17 Let us now turn to the characteristics of our target population. B. Target Population Characteristics “Prisoner” means any individual involuntarily confined or detained in a penal institution. The term is intended to encompass individuals sentenced to such an institution under a criminal or civil statute, individuals detained in other facilities by virtue of statutes or commitment procedures which provide alternatives to criminal prosecution or incarceration in a penal institution, and individuals detained pending arraignment, trial, or sentencing.

The argument in this chapter for IP empowerment and protection for prisoners applies to anyone in detention. However, the Code of Federal Regulations provides the definition quoted above, useful for research purposes.18 Institutional review boards, mandated by human subject research legislation, often include prisoners in their definition of vulnerable populations. The demographics of the prison population today indicate that many are from historically marginalized communities and may themselves have been victims of violence, particularly in their youth. Many have not been in the workforce. Many have endured racism, discrimination, and social abuse. In his study of

16 17 18

M. O’Connor, The Lead Sheet Problem in Music Copyright, ch. 14 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Carter, supra note 15, at 239. Judith B. Prowda, Visual Arts and the Law: A Handbook for Professionals (2017). See 45 C.F.R. § 46.303(c), https://www.govinfo.gov/content/pkg/CFR-2017-title45-vol1/xml/CFR-2017-title45-vol1part46.xml#seqnum46.303 (last visited Dec. 14, 2022).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

250

John R. Whitman

inequality in prisons, Bruce Western noted that the likelihood of black incarceration exceeded that of whites by a factor of eight.19 Some inmates are from privileged backgrounds, yet were engaged in crime, a minority having engaged in white collar crime. Demographically, whites represent 64 percent of the total population in the United States, and 40 percent of the incarcerated population (in jails, prisons, and other detention facilities), while black constitute 13 percent of the total population but 39 percent of the incarcerated population, clearly disproportionally higher than whites. Latinx represent 16 percent of the total population and 19 percent of the incarcerated population. Native Americans are 0.9 percent of the total population and 1 percent of the incarcerated population. These data are based on the 2010 Census as reported by the Prison Policy Initiative.20 The same Prison Policy Initiative report indicates that the population of women in local, state, and federal detention (not including youth and immigration detention) was about 204,000 in 2018 and that the rate of growth of the population of women in prison has been double that of men, using a baseline of the 1978 prison population.21 The report also documents that “most people in prison are poor, and the poorest are women and people of color.”22 It is also worth noting that turnover in jails is far higher than that in prisons due to the shorter length of sentencing in jails. As to the distribution of the population of those in detention, it is important to distinguish terms used for detention facilities. Many people use the terms jail and prison interchangeably to refer to places of detention, but there is an important technical difference to note. According to the Federal Bureau of Justice Statistics:23 Jails are locally operated short-term facilities that hold inmates awaiting trial or sentencing or both, and inmates sentenced to a term of less than one year, typically misdemeanants. Prisons are longer-term facilities run by the state or the federal government that typically holds [sic] felons and persons with sentences of more than one year. Definitions may vary by state.

There are 50 State Departments of Corrections,24 and the Federal Bureau of Prisons, headquartered in the District of Columbia with facilities around the country.25 As to the number of facilities of detention, our data are neither current nor complete, but for a sense of magnitude, there were some 3,163 city, county, or privately operated jails and 12 Bureau of Prison jails in the 2013 Census of Jails,26 and 1,821 state and federal prisons, plus 415 private correctional facilities included in the 2005 Census of State and Federal Correctional Facilities (not including jails).27 The combined number of potential educational sites is, therefore, about 5,400 facilities. Evidence of the pool of potential creativity within this captive population is reflected in notable examples of prison literature.

19 20 21 22 23

24 25 26 27

Bruce Western, Punishment and Inequality in America 3 (2006). See the Prison Policy Initiative, https://www.prisonpolicy.org/reports/pie2019.html (last visited Dec. 14, 2022). See https://www.prisonpolicy.org/reports/women_overtime.html (last visited Dec. 13, 2022). See slideshow 6, https://www.prisonpolicy.org/reports/pie2019.html (last visited Dec. 14, 2022). See https://www.bjs.gov/index.cfm?ty=qa&iid=322 (last visited Dec. 14, 2022). See also Terms and Definitions, “What is the difference between jails and prisons?” https://www.bjs.gov/index.cfm?ty=tdtp&tid=13 (last visited Dec. 14, 2022). A helpful differentiation is also provided at https://www.expertlaw.com/library/criminal-law/what-difference-betweenjail-and-prison (last visited Dec. 14, 2022). See https://www.correctionalofficer.org/us-correctional-system (last visited Dec. 14, 2022). See https://www.bop.gov (cited Feb. 13, 2020). See https://www.bjs.gov/index.cfm?ty=tp&tid=12 (last visited Dec. 14, 2022). See https://www.bjs.gov/content/pub/pdf/csfcf05.pdf (last visited Dec. 14, 2022).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

251

C. Prison Literature and Art in History There is a vast literature born in detention and from the experiences of the formerly incarcerated. Many know of Machiavelli’s The Prince, but less well known is that he also penned a couple of “Prison Sonnets” while in prison, where he was tortured while awaiting execution in 1513. He wrote: “These walls exude lice, sick with the heaves no less, that [are as big as] butterflies, nor was there ever such a stench in [the massacre of] Roncesvalles.”28 Hitler’s Mein Kampf, composed while he was imprisoned in 1924, is an appallingly poorly written screed, “slovenly, illogical, pretentious” according to the translator of one edition,29 of historical interest and only relatively recently permitted to be published in Germany. Bertrand Russell wrote his Introduction to Mathematical Philosophy while in prison for publicly arguing against U.S. intervention in the World War I on behalf of England (1919). A better-known, contemporary example of prison literature would be Piper Kerman’s book, Orange Is the New Black (2011). The extraordinary work of Bryan Stevenson and his Equal Justice Initiative in Alabama exonerated wrongly imprisoned Anthony Ray Hinton following nearly 30 years on death row, freeing him to write about his experience in The Sun Does Shine (2018).30 Other notable examples of the prison experience include The Autobiography of Malcolm X as told to Alex Haley (1964);31 Jack Abbott’s In the Belly of the Beast (1981);32 R. Dwayne Betts’ A Question of Freedom (2009);33 Shaka Senghor’s Writing My Wrongs (2013),34 an account of his 19 years in prison serving a sentence of 40 years for murder committed when he was 19 and deeply involved in dealing drugs in his neighborhood; Solitary (2019),35 by Albert Woodfox, in which he recounts his horrific solitary confinement in a six by nine foot cell for 23 hours a day and brutal treatment by guards, judges, and attorneys general for 40 years due to systemic racism and personal vindictiveness in a justice system that should bring utter shame to the entire nation; and Stanley Tookie Williams’ Blue Rage, Black Redemption (2014),36 which also accounts for the deplorable social conditions that inspired him to co-found and lead the Crips gang, conditions that continue to breed miscreants: I grew up in South Central Los Angeles amidst poverty, street gangs, pimps, prostitutes, police tyranny, illegal drugs, criminality, and other social injustices. Here was a social vacuum without paternal guidance, without career-oriented programs, and without a nurturing village or community to support the male rite of passage toward becoming a responsible adult. Violence, gangs, and street-level socioeconomic crimes (selling drugs, robbery, prostitution, and theft) were – and continue to be – direct results of living in these conditions.

Nico Walker, who wrote Cherry (2018) in federal prison, does not share a childhood traumatized by poverty in an urban neighborhood. Rather, coming from an affluent background, he was affected by post-traumatic stress disorder acquired from his experience on the battlefield of Iraq and after returning to the United States in 2006 took to drugs and robbing banks.37

28 29 30 31 32 33

34 35 36 37

Sebastian De Grazia, Machiavelli in Hell 34 (1994). Adolph Hitler, Mein Kampf (R. Mannheim trans. (1971)). Anthony Ray Hinton, The Sun Does Shine (2018). Malcolm X & Alex Haley, The Autobiography of Malcolm X (2015). Jack Abbott, In the Belly of the Beast (1981). Dwayne Betts, A Question of Freedom: A Memoir of Learning, Survival, and Coming of Age in Prison (2019). Shaka Senghor, Writing my Wrongs: Life, Death, and Redemption in an American Prison (2016). Albert Woodfox, Solitary (2019). Stanley Tookie Williams, Blue Rage, Black Redemption: A Memoir 361 (2004). See https://www.nytimes.com/2018/08/10/books/cherry-nico-walker.html (last visited Dec. 14, 2022).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

252

John R. Whitman

Political dissidents have been writing prison memoirs over the years, including Italian Silvio Pellico, who opens his 367-page account, My Prisons38 with, “On Friday the 13th of October, 1820, I was arrested in Milan, and carried to the prison of Santa Margherita. It was three o’clock in the afternoon.” Consider, too, Henry David Thoreau’s Civil Disobedience (1849),39 Antonio Gramsci’s Prison Notebooks (1929–1935),40 which continue to inform our understanding of socio-economic and political concepts like class differences and hegemony, and Vaclav Havel’s Letters to Olga June 1979–September 1982. Jerome De Groot41 offers a fascinating account of how prison writing can be a source of power analysis, revealing the thoughts of those imprisoned for political opposition in the 1640s and 1650s. John J. Lennon, serving 28 years to life in Sing Sing for murder, has proven a prolific prison journalist42 and writes for the Marshall Project, which covers topics of criminal justice, as well as for other publishers.43 These works are but a small sampling of perhaps better-known prison literature. H. Bruce Franklin provides an annotated bibliography of prison literature from 1798 to 198844 and he edited a subsequent anthology covering the twentieth century.45 In his 1998 anthology of prison writing, he notes that: “One of the most extraordinary achievements of twentieth-century American culture is the literature that has come out of the nation’s prisons.”46 W. B. Carnochan offers a review of prison literature47 in The Oxford History of the Prison,48 which includes Boethius’ The Consolation of Philosophy (524); John Bunyan’s Grace Abounding to the Chief of Sinners (1666), and The Pilgrim’s Progress (1678). D. Quentin Miller offers a collection of essays about prison writing, punningly titled Prose and Cons.49 Artists have also had a long and respectable prison pedigree. As Gardner, Hager, and Hillman report:50 In the 1840s, Charles Dickens . . . was invited to the United States to analyze new models of prisons being created on the East Coast . . . [H]e discovered when he visited inmates in the “silent system,” which provided no contact with other human beings, that what inmates did was create art.

A recent study funded by the National Endowment for the Arts, the Prison Arts Resource Project, provides a bibliography of 48 evidence-based studies that document the benefits of arts programs in categories including music, dance, visual arts, creative writing, and theater, in addition to bibliotherapy for adults and juveniles in prisons.51 38 39 40 41 42

43 44

45 46 47

48 49 50

51

Silvio Pellico, My Prisons, Memoirs of Silvio Pellico of Saluzzo 1 (1836). Henry David Thoreau, Civil Disobedience and Other Essays (1993). Antonio Gramsci, Selections from the Prison Notebooks (2003). Jerome de Groot, Prison Writing: Writing Prison During the 1640s and 1650s, Huntington Lib. Q. 193–215 (2009). Daniel Gross, How John J. Lennon Became a Prison Journalist: From the Inside, Literary Hub, https://lithub.com/ how-john-j-lennon-became-a-prison-journalist-from-the-inside/ (last visited Dec. 14, 2022). See https://www.themarshallproject.org/staff/john-j.-lennon (last visited Dec. 14, 2022). H. Bruce Franklin, Prison Literature in America: The Victim as Criminal and Artist (expanded ed., 1978/ 1979). Prison Writing in 20th Century America (H. Bruce Franklin ed., 1998). Id. at 1. W. B. Carnochan, The Literature of Confinement, in The Oxford History of the Prison: The Practice of Punishment in Western Society 381–406 (N. Morris & D. J. Rothman eds., 1995). Id. Prose and Cons (D. Quentin Miller ed., 2005). Amanda Gardner, Lori L. Hager, & Grady Hillman, Prison Art Resource Project: An Annotated Bibliography 5 (2014) https://www.animatingdemocracy.org/resource/prison-arts-resource-project-annotated-bibliography. Id.

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

253

As noted by the curatorial authors of The Pencil Is a Key: Drawings by Incarcerated Artists, the catalog of an eponymous exhibit of pieces from around the world at the Drawing Center in New York and the Museum of Contemporary Art, Cleveland, “Drawings are containers of memories, testimonials to terrible circumstances, tools for survival, weapons in the fight for justice, and portals to a better future.”52

ii. educational programs and resources The idea of promoting writing, the arts, and other creative engagement among those in detention is hardly new. Such programs have been underway in the United States for some time. While we cannot describe or even reference each program here, we focus on writing programs and note sources through which details of such programs may be found. The venerable PEN America organization53 founded the PEN Prison Writing Program in 1971, which provides writers in detention with free resources, mentors, and readers of their works. The organization posts a national list of creative writing programs in prisons, jails, and for reentry, which, as of this writing, includes 79 programs in 44 states and the District of Columbia.54 Of these, one-third (26) offer opportunities for inmates to publish their works in anthologies, blogs, or other formats. PEN America also conducts an annual Prison Writing Awards program that results in an anthology.55 The American Library Association offers a “libguide” page of resources for those interested in prison populations.56 Also, the ALA has a subgroup, Association of Specialized, Government and Cooperative Library Agencies (ASGCLA), which in turn has a subgroup, Library Services to Prisoners, interested in prisons. They post a “Prisoners’ Right to Read” resolution on their website57 (to which we suggest adding a “Prisoners’ Right to Write and Publish” manifesto) and operate a listserv (Prison-L), which was launched in 1999 for anyone interested in matters relating to prison libraries.58 Professor Doran Larson of Hamilton College, supported by the National Endowment for the Humanities, launched and maintains the online American Prison Writing Archive, which accepts without modification all submissions from people in incarceration, original works posted by inmates, which can be retrieved and read by the public.59 Larson argues that this source of material, unprecedented in volume and variety, provides a necessary window into the dark world of incarceration in the United States, told by those on the receiving end of what we call justice.60 The Justice Arts Coalition (JAC), with which we are collaborating, documents over 300 programs that promote literary and artistic works, and is well positioned to serve as an apex organization for such programs (see https://thejusticeartscoalition.org). For example, since 1977, the Williams James Association has been engaging professional artists to provide transformative experiences in prisons (see https://williamjamesassociation.org). 52 53

54 55 56 57 58 59 60

Claire Gilman et al., The Pencil Is a Key: Drawings by Incarcerated Artists 9 (2019). PEN originally stood for Poets, Essayists, Novelists; but today PEN is not an acronym. See https://pen.org (last visited Dec. 14, 2022). See https://pen.org/prison-writing/ (last visited Dec. 14, 2022). See https://pen.org/publications/prison-writing-awards-anthology/ (last visited Dec. 14, 2022). See https://libguides.ala.org/PrisonLibraries (last visited Dec. 14, 2022). See http://www.ala.org/asgcla/resources/prisonrights (last visited Dec. 14, 2022). See https://cvl-lists.org/mailman3/postorius/lists/[email protected]/ (last visited Dec. 14, 2022). See http://apw.dhinitiative.org (last visited Dec. 14, 2022). Doran Larson, Writing Resistance, Writing the Self: Literary Reconstruction in the United States Prison Wetness, 120 Revista Critica de Cieˆncias Sociais 161–82 (2019).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

254

John R. Whitman

Additional work is underway to promote other creative works conceived in prisons, notably the nonprofit Die Jim Crow enterprise to record and market musical compositions. According to executive director Fury Young, “Death to Jim Crow means a death to stereotypes, to misconceptions of the ‘Other.’ There is no Other. The term Jim Crow comes from a song which satirizes a slave. I see much parallel to the way our society views those incarcerated: that they are lesser than, merely criminals. DJC Records aims to change this narrative through music.”61 Many programs underway can be identified through the above sources, and perhaps others. The key finding here is that there has been a significant interest in and response to the needs among those in detention for formal and informal programs to promote writing and the arts, including music.62 These examples should inspire many more needed programs, for the magnitude of the prison population (and its creative potential) is staggering.

iii. catalyzing transformation Literature, art, music, drama, photography, and film are all creative disciplines that have been taught in correctional facilities. An authoritative and comprehensive literature review of rigorous studies that document the effects of such educational programs on the participants, their families and loved ones, the communities to which many return, and to society at large is needed to add a foundational justification for ensuring IP protection of creation in prisons. Some studies describe potentially transformative effects on inmates. For example, Lisa Krolak, writing about the transformative power of prison libraries, notes:63 Increased self-knowledge and self-understanding can help inmates to question and even change values, beliefs, and behaviours. Reading and writing initiatives can benefit individuals of any age by increasing their self-esteem, their self-awareness and their ability to discuss thoughts and feelings, to tolerate different points of view and to see alternative solutions. This, in turn, improves coping and problem-solving abilities and thus represents a powerful transformative tool for personal development in the prison environment.

While libraries are centers of reading, educational programs can engage inmates in doing, whether writing or art, and such engagement can also have the transformative outcomes that Krolak describes. Two other studies noted here indicate promising research results. First, Larry Brewster of the University of San Francisco conducted a pre- and post-intervention quantitative evaluation of the Marin Shakespeare theater program at San Quentin; a visual arts class at Soledad; a poetry class at San Quentin; a writing program at New Folsom; and the Actors’ Gang Prison Project at California Rehabilitation Center, all state prisons in California, measuring time management, social competence, achievement motivation, intellectual flexibility, emotional control, active initiative, and self-confidence, finding positive correlations between arts participation and all seven of these traits, although there was variation in the results.64

61 62

63

64

From https://diejimcrow.com/about/ (last visited Dec. 14, 2022). As to music, many popular artists have written and performed on prison themes (Mose Allison, Johnny Cash, and Elvis Presley come immediately to mind), but compositions written in detention are particularly noteworthy, including Olivier Messiaen’s “Quartet for the End of Time,” composed while a Nazi prisoner of war and the works recorded by Fury Young and his Die Jim Crow nonprofit record label, https://diejimcrow.com/about/ (last visited Dec. 14, 2022). Lisa Krolak, Books Beyond Bars: The Transformative Potential of Prison Libraries 39 (2019), http://uil .unesco.org/adult-education/books-beyond-bars-transformative-potential-prison-libraries (last visited Dec. 14, 2022). Larry Brewster, The Impact of Prison Arts Programs on Inmate Attitudes and Behavior: A Quantitative Evaluation, Justice Pol’y J. (2014).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

255

Second, Chlup and Baird65 conducted a review of literature on adult education, corrections, and criminal justice, and developed four case studies on the most promising examples that helped participants “critically reflect on their knowledge and creating new opportunities and new visions for their lives,” as opposed to many literacy programs that teach basic, mechanical literacy aimed to prepare participants for the GED degree or jobs that might await re-entry.66 The following examples drawn from my reading and research offer further concrete, selfreported evidence that engagement in literature and the arts can facilitate a rebirth of sorts. We will let these examples in the words of their creators speak for themselves. Stanley Tookie Williams recounts his discovery of writing:67 I started off with a style of writing intended to impress people with my flair for words. But in time I toned it down, breaking the stereotype of a prisoner being grandiose in his use of language and vocabulary for the sake of appearing intelligent. Studying was becoming a noble reality for me. The prison cage was transformed into a study laboratory; a secluded place of challenge to mold an educated mind; a quasi-university where I could increase my familiarity with my culture as well as politics, religion, criminal law, and the world – and get in touch with myself. Seeking to reeducate myself was the first step toward reasoning. Without a conscience I’d remain an educated fool doomed to repeat his mistakes. I didn’t know why I was driven to study. It was beyond anything I could fathom. Was I destined for something outside of Crippen?

Williams also took up drawing, “calming the beast within . . . It amazed me that a person like me could pick up drawing and actually succeed.”68 Based on his writings and work to advance peace among gangs, he would be nominated for the Nobel Prize in Literature four times and the Nobel Peace Prize five times.69 Another example of transformation is indicated in an excerpt from The Apology Letter by prison journalist John J. Lennon:70 Writing this essay, ruminating about murder and remorse, being pushed and pulled, has been emotional, dangerous writing. But it is this writing – although it sometimes torments me and, at other times, prompts a bit of false pride and arrogance – that has helped me to better understand myself in a place where there are, frankly, few outlets that push us toward introspection. Am I the writer or the murderer? I’ve come to realize, regretfully, that I will always be both.

Another instance of transformation is through art. In her book, Marking Time, Nicole R. Fleetwood provides an indispensable treatment of art in carceral institutions, “made possible by the transformative vision of freedom, justice, and belonging of an amazing group of currently and formerly incarcerated artists.”71 The following two examples are drawn from a private

65

66

67 68 69 70

71

Dominique T. Chlup & Irene C. Baird, A Bridge from Behind Bars: A Look at Prison Literacy Programs, paper presented at the Adult Education Research Conference, Sacramento, CA (2010). Id. at 101. Elsewhere in this volume, Elizabeth Rosenblatt further explores the transformational empowerment that marginalized groups and communities can experience through engagement with expressive works. See Elizabeth L. Rosenblatt, User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks, ch. 16 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Williams, supra note 36, at 256. Id. at 245. Id. at 384. John J. Lennon, The Apology Letter, Wash. Post, Oct. 28, 2019, https://www.washingtonpost.com/magazine/2019/10/ 28/ive-built-career-prolific-prison-journalist-so-why-did-it-take-me-so-long-write-letter-family-man-i-killed/?arc404= true. Nicole R. Fleetwood, Marking Time: Art in the Age of Mass Incarceration xix (2020).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

256

John R. Whitman

figure 1 2.1 : “Bohemia,” self-portrait by R. Zumar, Virginia Department of Corrections. Used with

permission from the artist.

collection. Figure 1, titled, “Bohemia,” is a self-portrait by R. Zumar, who describes his work as follows (personal communication, February 3, 2020): Bohemia, that is my first and of date only self-portrait. I made it because I feel a change in me from who I was into who I really am. Who I used to be was unhealthy in mind and spirit and Bohemia is a semblance [of] me trying to work on myself . . . me actively working to be better, the best version of myself. And not only for myself but for all I encounter in this life.

Chad W. Merrill, in the Colorado State Penitentiary, a self-taught artist while in prison, provides yet another testimony, describing Figure 2 (personal communication, February 6, 2020): I was in and out of juvenile at 9 yrs old, easily 30+ foster homes, group homes, boot camps and treatment centers by the time I was 17 . . . I was full of rage, hate and shame and used that to justify my ugliness . . . It was after that when I was in ad seg [solitary confinement] did I hit rock bottom and thought about killing myself daily but didn’t have the balls to do it. I’m not gonna lie to you and some of this may be hard to hear but the truth is the truth even if it’s ugly. I went thru a real transformation during my year in the hole and art and my new wife are the reasons why I’m still here to write you this letter. While I was back there a friend introduced me to art, real art, Turner, Jacques-Louis David, Fuseli, Monet, Casper David Friedrich, Fragonard, F. E. Church etc., and it’s like this entire world I never knew existed was right there at my fingertips. At first I was so lost and out of place just looking at their work let alone discussing them in depth

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

257

figure 12 .2: “Alfred Hitchcock,” by Chad Merrill, Colorado State Penitentiary. Used with

permission from the artist. but I was hooked. How could I have lived so long w/out knowing this I have no clue. I felt so inspired by them that I felt the need deep inside me [to] paint. In October of 2018 I made my first homemade paint brush out of toothbrush bristles and took a shitty flex pen (3½ inches long and rubber) and blew out the ink into a toothpaste cap and sat down to paint portraits. I spent almost every waking minute painting and trying to find my rhythm. I had never painted or drawn anything before that.

Imagine an iconic mystery film producer with a blackbird emerging from his head through a bloody sort of birthing event. The fact that this image was created by a man who has had a very painful life, and has also caused pain and worse for others, and is self-taught in art under extremely difficult conditions, gives the image much greater epistemic value than at first meets the eye – greater knowledge and meaning – because the image itself was born from a painful birthing process of creation, the emergence through self-imposed hard work of a latent artistic talent that might never have been born under other circumstances. And who would know of this man’s transformative experience, perhaps his rebirth, without access to this artistic creation, enhanced by the artist’s backstory told in his own voice? In this respect, prison art, as well as literature, embodies and affirms the inherently interdependent relationship between copyright social utility and copyright social justice. Indeed, the capacity of our nation’s storehouse of artistic work is wholly dependent on a copyright system that embraces the precepts of equitable access, inclusion, and empowerment. Everyone has a

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

258

John R. Whitman

story to tell, a lesson to teach, an experience that can inspire, an artistic interpretation that can uplift, and a copyright regime that invites everyone to participate, particularly those pushed to the margins of society, enriches the human condition and advances our collective understanding and empathy. This, in human terms, is the ultimate goal of the Constitution’s IP mandate “to promote the progress of the arts and sciences.” The work of incarcerated artists can indeed be transformative, but it also presents certain copyright challenges, only briefly noted here. First, because the artists may not be aware of copyright constraints, they may unknowingly create innovative copies of copyrighted material without permission from the original artist (although the artist would own rights to the derivative work). Second, they may be seduced into transferring their copyright to original material to an unscrupulous purveyor who can then more fully exploit its monetary value, and courts may not consider their claim to ownership without having first registered a copyright. Third, they may not be aware that if they sell the original of their work, they can still profit from producing and selling copies of it, unless they transferred such rights to another. In fact, when one buys a piece of art, one is buying the physical expression, not the underlying copyright, and while the same piece of art can be resold, one cannot sell copies of it without permission from the artist.72 These are a few examples that call for raising awareness of the importance of IP protection and what copyright means among those in detention. Overall, however, there seems to be scant research literature on documented effects of engaging those in detention in creative endeavors. Next, we present our initiative to undertake the three steps toward liberating the creative potential within prison populations as outlined in the introduction.

iv. the intellectual property for innovation project The Intellectual Property for Innovation (IPFI) Project aims to recruit educators and librarians who work with incarcerated populations: • to raise awareness among those in detention of their right to protect their IP; • to encourage writing and other creative work through teaching; and • to facilitate copyright registration where appropriate and assist in disseminating their works. IPFI is an outgrowth of collaboration between the Museum for Black Innovation and Entrepreneurship (MBIE: https://mbiedc.org) and the Institute for Intellectual Property and Social Justice (IIPSJ: https://iipsj.org), both nonprofit organizations based in Washington, D.C. Both organizations share a working commitment to innovation, IP protection for underserved populations, and social justice. Collaboration includes the publication of a law text on IP and social justice73 and a series of ethnographic films documenting how artists, writers, and thought leaders in Alabama perceive the role of IP protection in their creative lives (https://mbiedc.org/ styled-7-videos/videos.html).

72 73

Prowda, supra note 17. Lateef Mtima & John R. Whitman, An Entrepreneurship Approach to Achieving IP Social Justice, in Intellectual Property, Entrepreneurship and Social Justice: From Swords to Ploughshares 33–63 (Lateef Mtima ed., 2015).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

259

The IPFI project is unfunded. Initial efforts to raise funds for the project, including training funds for librarians, were time-consuming and unproductive, thus we decided to undertake the project as a volunteer effort. We offer a free IPFI Handbook, which describes the project and how educators and librarians can get engaged, and post it as a downloadable pdf file at: https:// mbiedc.org/styled-9-ipfi/ (select the tab IP for Innovation to get access to the link). In short, the steps to get engaged are as follows: 1. Learn what copyright is and how to file one at the U.S. Copyright Office website: https:// copyright.gov. Although the process to register copyright may seem intimidating at first, the procedure is straightforward. Details must be followed closely. Note: You may file a copyright for anyone as long as you have their permission. 2. Learn how to prepare and publish works electronically on platforms such as Amazon Kindle (see https://kdp.amazon.com/en_US/) and Apple Books (see https://support.apple .com/en-us/HT201183). The Copyright Office charges fees for registering works. As of this writing, the lowest fee for a single work (not made for hire, meaning the author was not paid to write for someone else), single author, and online application is $35. Although a nominal amount for many, the fee may not be affordable for someone in prison. The fee should make an author think twice about the prospect of selling his or her work. If the work has little or no monetary value, it may not be worth the cost of registration, except, perhaps, for the psychological value of registering one’s IP. Eventually, we may be able to establish an evergreen fund to pay fees, which would then be repaid by authors following their receipt of sufficient revenues. Also, while each work can be separately registered for copyright, one or more creators can combine works into a single volume, such as an anthology of short stories or poetry and secure protection for all included works for the same fee as registering a single work. As noted, an author automatically retains copyright for his or her work upon its creation. If a reputable publisher wishes to acquire the work for publication, as a practical matter there may be no need for the author to register the copyright as it will be in the publisher’s interest to undertake registration of the work. In such a case, there is no registration burden on the author.74 Volunteers may register copyrights for any allowable works, literary, artistic, architectural, etc., as detailed on the Copyright Office website. In addition to assisting creators register copyrights, the volunteer can also assist the author in locating reputable publishers that might be interested in procuring the author’s work, and reputable galleries that might be interested in selling the artist’s work. As inmates typically do not have access to the Internet or other sources, this can be a crucial service provided by a volunteer. IPFI began by exploring how to enlist prison librarians in the enterprise. Libraries are an obvious nexus of literature in most any community today, but historically, the role of libraries has evolved from a more or less esoteric archival role, to serving religious purposes, to fulfilling a broad secular purpose, turning relatively recently toward focusing on minorities and disadvantaged groups.75 The evolution of social institutions is hardly at an end, and the voice for libraries

74

75

In some situations, the publisher will ask the author to sign a form conveying copyright ownership to the publisher in exchange for compensation. As the new owner of the copyright, the publisher will obviously move to protect its property rights fully by registering the work. Richard E. Rubin, Foundations of Library and Information Science 207–64 (2000).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

260

John R. Whitman

and social justice appears to be growing, with some declaring, “the need to put social justice at the heart of what public libraries are about.”76 Libraries do not act; librarians do. And librarians are willingly trained to serve their clients, guided by the institutional values of the modern library, described by Rubin to include, “service, reading and respect for the book, respect for truth and the search for truth, tolerance, the public good, justice as fairness, and aesthetics, possessing the elements of extraordinary creativity.”77 Could the same public library orientation of service and values pertain to librarians at work in prisons? Narratives by prison librarians, such as the experiences of Jill Grunenwald, in her account, Reading Behind Bars,78 should certainly be consulted as this project advances and as such sources emerge. Since our initial aim was to engage librarians in raising awareness of IP protection in prisons, it made sense to find out if there is any interest among librarians in doing so, even if otherwise not permitted by prison authorities. Our first challenge was identifying librarians working in or with carceral institutions. We were not able to locate a single source of such information and so we surveyed several sources that might reach such librarians, including the American Library Association’s Library Services to Prisoners Prison-L listserv and members of the Justice Arts Coalition. Our findings suggested that we expand our search for participants to include educators who work with prison populations. A subsequent survey confirmed interest among such groups. The following selections from open-ended comments from these surveys reveal widely different perceptions and circumstances. “I don’t foresee having much time to go in depth with registering copyright. I have been a practicing professional artist for all of my adult life, yet have never registered copyright either. It’s too difficult.” An art teacher working in/with prisons. “I submitted several pieces of poetry to the local college literary magazine and the work was published. One thing that I did because we were submitting as a group of writers, I wrote a short piece about our project and our process to include in our submission. I asked the men who were interested in submitting and submitted their work. It was a wonderful and proud experience for [the] men.” A writing teacher working in/with prisons. “Our students are very proud of their published work and the fact of the book is a huge motivator for them in their creative writing class. It is all extremely positive, our working relationship between the Alabama Writers’ Forum (a nonprofit 501(c)(3) arts service organization and partnership program of the Alabama state council on the Arts) AND The Alabama Department of Youth Services, the state agency designated with rehabilitating adjudicated youth, is a national model.” A writing teacher working in/with prisons. “I provide basic copyright information from the government, as well as encouragement and information regarding opportunities such as the PEN American Prison Writing contest, or books such as the Writer’s Market.” A librarian based within a detention facility. “There are no formal programs but a lot of individuals practicing art, music and writing on their own. Many of these inmates should copyright or, at least, learn the opportunity is available 76

77 78

John Pateman & John Vincent, Public Libraries and Social Justice 13 (2010). Indeed, Jonathan Band and Brandon Butler illustrate how the social efficacy of the copyright regime is dependent upon the social justice function that libraries perform. See herein Jonathan Band & Brandon C. Butler, Libraries, Copyright Exceptions, and Social Justice, ch. 17 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Rubin, supra note 76, at 248–60. Jill Grunenwald, Reading Behind Bars: A True Story of Literature, Law, and Life as a Prison Librarian (2019).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

261

to them during incarceration . . . I am a former inmate/artist who became involved upon release. The potential restriction is spreading the word to others who would benefit from a copyright . . . When I was incarcerated a number of my works were purged for the financial benefit of others. I’d like to get as much training as possible to serve others from ‘falling’ into that trap.” A family member or friend of one in detention. “Most of my creative writing students are not at all serious about their writing. But I have an occasional student who is a serious writer, mainly a poet. My best poet was devastated when the jail staff threw in the trash all of his work as they were transferring him from county jail to state prison. Apparently one cannot bring writing into prison for security reasons. But no one helped this man leave his work for a family member to pick up. This is the kind of stuff we are dealing with.” A writing teacher working in/with prisons. “I work with the Prison Creative Arts Project – a curricular program at the Univ. of Michigan, which I believe is the largest prison arts program in the world. We provide visual art, music, theatre, photography, and creative writing programming in the form of weekly arts workshops. We also host the Annual Exhibition of Art by Michigan Prisoners, which will have its 26th exhibition in March/April 2020, and publish an annual journal, now in its 13th year, called the Michigan Review of Prisoner Creative Writing. We send about 80 volunteers (mostly univ. students) into carceral facilities each week, and we serve all 26 adult prisons in the Michigan Dept. of Corrections, the Federal Correctional Institute at Milan (MI), several youth facilities, and many formerly incarcerated adults.” A drama teacher working in/with prisons.

Prison journalist John J. Lennon was unable to respond to the survey directly, but emailed via a friend “on the outside” (personal communication, 29 July 2019), explaining: My experience with copyright extends to signing author agreements with the media outlets that have published my work in print. This can vary by publication . . . I don’t typically sign agreements for online pieces, but I tend to write for respected outlets. There’s a certain element of trust in this.

Neither of these surveys was scientific in design. However, they describe responses from a convenience sample of people known or presumed to be engaged in working in or with places of detention. While we cannot generalize from these responses, the results are helpful to begin to understand what is already underway to engage inmates in creative works as well as an indication of interest in further engagement around copyright. Overall, there seems little downside, and virtually no effort, to informing inmates of the Constitution’s treatment of IP and the forms of protection, copyright, trademark, and patent. Barriers to be addressed that might impede creativity include restrictions on librarians and educators that prevent them from aiding prisoners to disseminate or publish their works, restrictions that might prevent incarcerated people from entering into contracts or conducting business transactions, limitations on allowable subject matter, access to materials and tools to write or create art, and others. There is wide variation in the policies and management of such issues across places of detention. While rules may vary from facility to facility, librarians and other educators can begin by inquiring about policies that may facilitate or impede the elements of this initiative. There is also the opportunity here to bring greater attention to new and existing journals and anthologies for literary works from incarceration, perhaps as an extension of work underway by PEN America’s Prison Writing Program. In addition, there is the opportunity to establish a reputable, nonprofit organization to operate an art gallery featuring works from incarceration. This gallery might be organized under the auspices of the Justice Arts Coalition. Together, PEN

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

262

John R. Whitman

America, the Justice Arts Coalition, and the nonprofit Die Jim Crow record studio could well collaborate in a concerted effort to facilitate the public dissemination of works created in prisons. We emphasize nonprofit undertakings because our preference is to benefit creators, not investors. IPFI’s efforts have revealed even further needs. More libraries are needed in prisons, offering a greater selection of reading materials beyond religious and legal works and popular fiction. More and varied courses are needed to cultivate the minds of those in detention. Greater opportunities for those in detention to interact with each other in performance and discourse could further stimulate creativity. Further research is needed to measure the effects of engagement in creative enterprise in places of detention. And perhaps annual awards, “Creative Confines,” could be bestowed on those facilities that have cultivated the greatest contributions to society by their inmates. Perhaps most fundamentally, we must ensure access to the materials for creativity to all of those in detention. We cannot assume that this population has ready access to the pen, the paper, the paintbrush, the paint, and other materials that constitute the media of creativity. Moreover, we cannot take for granted that this population even has access to the inspiration derived from pre-existing works. This is painfully not the case, particularly for those locked in the most punitive of institutions. Also, we must work to require safeguards that ensure that the products of creation are preserved and not arbitrarily destroyed or discarded. The creative works of those in detention are potentially no less socially or economically valuable than works from artists laboring in their ateliers or from scientists in their laboratories or professors in their ivory towers. Doran Larson, the founder of the American Prison Writing Archive, argues that such works are even more valuable, as they “document, as no other work can, what our claims to justice, rule of law, and equal treatment look like from the receiving end” (personal communication, 20 March 2020). To be clear, we have no intention of suggesting that engaging inmates in creative pursuits in any way plays a role in justifying the deplorable record of mass incarceration that is a cancer on our nation and for black represents a new form of Jim Crow.79 On the contrary, as implied by Dolan above, it shines a light on the actual conditions of incarceration. Redolent of Machiavelli’s description of his cell in 1513, Shaka Senghor writes more recently:80 If there’s one thing I remember about the cell that I inhabited for four and a half years, it’s the smell. Throughout the unit, the stench of defecation, of rotting feet, of unwashed armpits and unwashed asses mingled with the lingering cloud of pepper spray. It pervaded everything, from the air to your clothes and the sheets on your bed, and it will forever be burned in my memory as the smell of human despair.

We believe that too many incarcerated people today are themselves the victims of a society that neglects the needs of its most vulnerable, caused largely by deliberate public policies since the 1970s that pervert the Constitution’s commitment to “promote the general Welfare.” We agree with Maya Schenwar,81 who argues that the social challenge is not to improve American prisons to emulate those in countries like Norway and Greenland,82 but to make sure

79 80 81

82

Michelle Alexander, The New Jim Crow: Mass Incarceration in the Age of Colorblindness (2012). Senghor, supra note 34, at 185. Tracy Frisch, Criminal Injustice: Maya Schenwar on the Failure of Mass Incarceration, The Sun, June 2015, https:// www.thesunmagazine.org/issues/474/criminal-injustice-maya-schenwar. Greenland had 126 inmates in six prisons in 2019, by all accounts reasonably well treated. See https://www .prisonstudies.org/country/greenland-denmark (last visited Dec. 14, 2022).

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

IP Empowerment and Protection for Prisoners

263

that everyone has housing, food, and healthcare, because when people’s needs are met, they are less likely to commit crimes. And we can get to know our neighbors and nurture healthy relationships with those around us, because in a safe society people look out for each other in both good times and in bad.

Perhaps when this nation’s social policies are more in line with the collective values of our Constitution, there will be far fewer incarcerated. Moreover, we agree with Michelle Alexander83 and Bryan Stevenson84 that the 13th Amendment, Section 1, “Neither slavery nor involuntary servitude, except as a punishment for crime whereof the party shall have been duly convicted, shall exist within the United States, or any place subject to their jurisdiction” is a shameful loophole in what historian David Waldstreicher calls “slavery’s” Constitution85 that has been instrumental in the massive and disproportionate incarceration and the subsequent loss of rights of black people and obstructs the very aim of equal rights in the same Constitution. Under current conditions, the nation is failing to more fully benefit from the creative contributions that could be made by millions of souls in confinement, not because they lack the potential, but because this potential remains largely ignored, untapped, and in many ways, discouraged. IPFI offers a straightforward approach to addressing this opportunity to expand our collective creative body of work as a nation, to provide incarcerated people with productive use of their time and talents, and to help build skills that can help in eventual re-entry to the community. We emphasize that the nation would do well to learn and benefit from the creativity unleashed from detention, consistent with the original intent of the Constitution’s IP clause. While we are focusing on affirming the humanity of those in incarceration, we cannot lose sight of the larger circumstantial, systemic, and prejudicial environment that is so common to adults and children in detention. The profoundly needed changes in our society may or may not come from inspiring and protecting an individual inmate’s creativity. But their transformative journey to redemption and hopefully re-entry can certainly start with the affirmation of the Constitution’s protection of his or her creative expressions.

conclusion This chapter addressed the benefits both to society and to prison inmates of equitable access, inclusion, and empowerment afforded by IP protection extended to people in detention. It presented the Intellectual Property for Innovation project as a social justice opportunity for educators and librarians voluntarily to expand their traditional role of educator and information provider to include being a creativity facilitator, benefiting not only the marginalized and underserved population of men and women in detention but also society in general.86

83 84 85 86

Alexander, supra note 79. Bryan Stevenson, Just Mercy (2014). David Waldstreicher, Slavery’s Constitution: From Revolution to Ratification (2019). As Krista Cox explains, copyright can only fulfill its social function when law and policymakers appreciate how it can and must be employed to serve the public interest. See Krista L. Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (detailing, inter alia, how IP social activism led to the adoption of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled. The IPFI Project is thus an effort to implement this principle to the benefit of the self-actualization interests of incarcerated creatives and the public’s interest in the expressive and other contributions they can make to society as a whole.

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

264

John R. Whitman

We encourage all those interested to download and share the free IPFI Handbook for Librarians and Educators, to learn about copyrights, to raise awareness among those held in detention of their IP protection rights, and to assist them in filing their copyrights. Where possible, such volunteers might also help clients post their works online for sale through reputable sites. Sadly misunderstood by some as a captive labor supply, those in prison today should be seen by all as human beings with an impulse for creativity at least equal to that of the general population, but also with a unique story, perspective, insight, and contribution to make based on their experiences and reflections. The salubrious effect of engaging in creativity is almost certain to benefit the inmate, through transformation in some cases, and possibly ease his or her eventual community re-entry. We argue that society would do well to allow such creativity to flourish, and this opportunity is an invitation to librarians and educators to serve as the midwives of such innovation for the benefit of society as well as of our creative spirits.

https://doi.org/10.1017/9781108697613.018 Published online by Cambridge University Press

13 Works of “Recognized Stature” Under VARA Recognized by Whom? Sue Liemer*

Introduction I. VARA Protects U.S. Artists’ “Moral Rights” in Limited Ways II. Several Forces Shaped VARA III. VARA Leaves the Definition of “Recognized Stature” to the Courts IV. The Courts Weigh Evidence from Others to Decide Whether a Work Has Achieved “Recognized Stature” A. Carter v. Helmsley Spear B. Martin v. City of Indianapolis C. Pollara v. Seymour D. Phillips v. Pembroke E. The 5Pointz Saga Conclusion

page 265 267 268 271 272 273 274 276 277 279 288

It would be a dangerous undertaking for persons trained only in the law to constitute themselves final judges of the worth of pictorial illustrations . . .1

introduction In New York City, the 7 train rumbles above ground across the borough of Queens, before heading into an underground tunnel to cross the East River into Manhattan. Some 1.5 million people ride the 7 train every weekday. On November 18, 2013, as they looked out the window shortly before being enveloped by the tunnel’s darkness, they saw a dilapidated factory complex covered everywhere with vibrant graffiti. The next morning, on November 19, 2013, commuters riding the 7 train looked out the window at that same site and saw blank white walls. The property owner had ordered workers to paint the walls overnight.2 Here and there, bits of graffiti extended past the edges of the white paint, and some graffiti was still faintly visible under the paint. But mostly the walls were solid white. * Professor of Law and Associate Dean for Academic Affairs at Elon University School of Law. © Susan P. Liemer 2022. 1 Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903). 2 Cohen, et al. v. G&M Realty, 988 F. Supp. 2d 212, 214, n.2 (E.D.N.Y. 2013).

265 https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

266

Sue Liemer

Eight days earlier, lawyers representing the people who had created the graffiti stood in the federal courthouse for the Eastern District of New York. A temporary restraining order (TRO) preventing the destruction of the graffiti had expired,3 and the lawyers sought a preliminary injunction to extend the TRO.4 Judge Frederic Block heard their arguments and the arguments of the lawyers representing the owner of the old factory property. The owner testified that he had received the city’s permission to tear down the old buildings and erect a luxury apartment complex in its place.5 The people who created the graffiti (dubbed “exterior aerosol artists” by the court)6 did not want the building or their work demolished. On the bench, Judge Block doubted that the plaintiffs could prevail at trial. He indicated he would likely be denying the motion and said that “a written opinion would soon follow.”7 On November 20, 2013, eight days later and the day after the whitewashing, Judge Block issued his written opinion, explaining his decision.8 The legal dispute continued, bringing into sharp contrast the interests of the local hip hop arts community and the lucrative commercial real estate market. New Yorkers knew the site as 5Pointz, and the dispute received a lot of publicity. The ensuing litigation focused on the Visual Artists Rights Act (VARA),9 which prohibits the destruction of works of visual art “of recognized stature,” without the permission of the artist.10 One important issue was how to apply the “recognized stature” requirement. Implicit in that analysis is the question: recognized by whom? Who must recognize a work of visual art as having stature before it may receive VARA’s federal protection? The answer to this question lies squarely at the intersection of intellectual property (IP) rights and the social justice concerns of equitable access, inclusion, and empowerment focused on in this book.11 Humans have been creating visual art on walls since our earliest ancestors lived in caves, and visual art created directly on walls has been a well-established, respected art form throughout recorded history. But historically graffiti has been created by marginalized people, outside the social establishment and lacking access to other media to share their expression with the public. Who decided whether the 5Pointz graffiti was a work of visual art “of recognized stature” essentially determined whether the work of such outsider artists gained protection. Thus, those anointed as “experts” were granted the power to decide what kind of visual artist would enjoy access to the IP system, which works of visual art would be deemed worthy of “recognized stature,” and the extent to which marginalized groups and communities would experience the empowerment of self-expression using grassroots media.

3 4 5 6 7 8 9 10 11

Id. at n.1. Id. Id. at 220. Id. at 214. Id. Id. Visual Artists Rights Act of 1990 (VARA), 17 U.S.C. § 106A, et seq. 17 U.S.C. § 106A(a)(3)(B). Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

267

i. vara protects u.s. artists’ “moral rights” in limited ways In the United States, VARA provides unique rights for an “author” of certain types of “work of visual art.”12 The specific VARA rights are the right of attribution and the right of integrity.13 Most important to the focus of this chapter, the right of integrity allows the artist to prevent the “destruction of a work of recognized stature.”14 In addition, “any intentional or grossly negligent destruction of that work is a violation of that right.”15 As defined, a “work of visual art” is “a painting, drawing, print or sculpture,”16 or a photograph “produced for exhibition purposes.”17 Prints and photographs are covered only if they are in limited editions of “200 or fewer,” signed and numbered by the artist.18 The definition specifically excludes more commercial items like books, newspapers, and movies, as well as advertising and packaging.19 “[W]hether a particular work falls within the definition should not depend on the medium or materials used.”20 The courts are supposed to “use common sense and generally accepted standards of the artistic community in determining whether a particular work falls within the scope of the definition.”21 VARA may apply to a work that is temporary22 or still unfinished.23 So, in the United States, only an artist who creates one of the listed types of visual art enjoys the right to prevent its destruction via VARA. As a category of visual art, these works align with archaic, Western notions of “fine arts,” the types of visual art historically found in conventional museums, the private collections of wealthy individuals, and high-end auction houses. These are the types of visual art that typically were valued by elites. They are not mass-produced, commercial items.24 They are unique physical items or part of a very limited edition, whose scarcity accounts for much of their economic value.25 They are not works accessible privately by 12

13

14 15 16 17 18 19 20 21 22

23 24

25

17 U.S.C. § 106A(a). VARA was shoe-horned into the existing United States copyright statute, 17 U.S.C. § 101 et seq., thus many of VARA’s terms are defined in the main copyright statute’s definition section, 17 U.S.C. § 101. The 200year-old copyright law uses the term “authors” because it originally applied only to books and then gradually expanded to apply to other types of creative work. See Ruth L. Okediji, Through the Years: The Supreme Court and the Copyright Clause, 30 Wm. Mitchell L. Rev. 1633, 1647–49 (2004) (reviewing nineteenth-century and early twentieth-century judicial and legislative extensions of copyright to cover new technologies and additional types of creative works); Elizabeth L. Rosenblatt, User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks, ch. 16 in The Cambridge Handbook of Intellectual Property and Social Justice, Steven D. Jamar & Lateef Mtima eds., 2023) (addressing IP-SJ issues with respect to copyright law and fan fiction). 17 U.S.C. § 106A(a). The right of attribution gives the artist the right to have her name on her work and not the work of someone else. 17 U.S.C. § 106A(a)(1)(A) & (B). It also allows the artist to prevent the use of her name on a work that was modified in a way that would be “prejudicial to . . . her honor or reputation.” 17 U.S.C. § 106A(a)(2). The right of integrity separately allows the artist to prevent any modifications of her work that would be “prejudicial to . . . her honor or reputation.” 17 U.S.C. § 106A(a)(3)(A). 17 U.S.C. § 106A(a)(3)(B). Id. 17 U.S.C. § 101, work of visual art (1). 17 U.S.C. § 101, work of visual art (2). 17 U.S.C. § 101, work of visual art (1) & (2). 17 U.S.C. § 101, work of visual art A(I), (ii), & (iii). Carter v. Helmsley-Spear, Inc., 71 F.3d 77, 84 (2d Cir. 1995) [hereinafter Carter III]. Id. Cohen v. G&M Realty L.P., 320 F. Supp. 3d 421, 435–37 (E.D.N.Y. 2018), aff’d, Castillo v. G&M Realty L.P., 950 F.3d 155, 167–68 (2d Cir. 2020), cert. denied, 141 S. Ct. 363 (2020). Mass. Museum of Contemporary Art Found., Inc., v. Buchel, 593 F.3d 38, 65 (1st Cir. 2010). “Works of visual art” specifically do not include: “any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication” or “any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container.” 17 U.S.C. § 101, works of visual art (A)(i), (ii). See Susan P. Liemer, How We Lost Our Moral Rights and the Door Closed on Non-Economic Values in Copyright, 5 J. Marshall Rev. Intell. Prop. L. 1, 3, n.16 (2005).

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

268

Sue Liemer

most of the population. Thus, the very definition of the works that the statute addresses initiates its alignment with the interests of elites. VARA rights belong to the artist alone,26 and they last throughout the artist’s lifetime.27 If another person owns the physical art object or acquires the copyright in it, that other person does not enjoy the VARA rights.28 These rights are unique to the artist, and only the artist can exercise them.29 The artist may not transfer VARA rights but can waive them in writing.30 The remedies for violations of VARA are the general remedies provided for federal copyright infringement. These penalties may include actual damages and profits, ordinary statutory damages up to $30,000 per infringement, or special statutory damages up to $150,000 per infringement for wilful infringement.31 There are additional limits on VARA rights. If an artist creates a “work made for hire,”32 while performing duties within the scope of his employment as an employee, the artist has no VARA rights for the resulting work.33 Artists with little bargaining power in the marketplace often waive their VARA rights. And parties to a transaction involving a work of visual art often do not even know that VARA rights exist.34 In practice, artists’ VARA rights also tend to be limited by the real property interests of others.35 VARA does not necessarily protect art that incorporates its surrounding environment as an element of the art, i.e., site-specific art that would be physically destroyed if it were moved.36 Indeed, changes to the way a work is presented, including its lighting and placement, do not implicate VARA rights.37 In addition, VARA protection does not apply to works of art installed on other people’s property without the property owner’s permission. So, for example, when artists improved an empty city lot owned by others, creating a sculpture garden with wall murals, the court said it did not even have to reach the question of recognized stature, because Congress did not intend for artists to be able to “freeze development of vacant lots” just by putting their art there.38

ii. several forces shaped vara Congress enacted VARA in 1990, with an effective date of March 1, 1991,39 to help the United States comply with the Berne Convention, an international IP treaty.40 Congress ratified the

26 27 28 29 30 31 32 33 34

35 36

37 38 39 40

17 U.S.C. § 106A(b). 17 U.S.C. § 106A(d)(1). 17 U.S.C. § 106A(e)(2). 17 U.S.C. § 106A(b). 17 U.S.C. § 106A(e)(1). 17 U.S.C. § 504(a), (b), ( c); Castillo, 950 F.3d at 164, 166. 17 U.S.C. § 101. 17 U.S.C. § 101, work of visual art (B). U.S. Copyright Office, Study on the Moral Rights of Attribution and Integrity, https://www.copyright.gov/policy/ moralrights/ (2017) (last visited 11/18/22); RayMing Chang, Revisiting the Visual Artists Rights Act of 1990: A Follow-up Survey about Awareness and Waiver, 13 Tex. Intell. Prop. L.J. 129 (2005); U.S. Copyright Office, Waiver of Moral Rights in Visual Artworks, Executive Summary, https://www.copyright.gov/reports/exsum/html (1996) (last visited 11/19/ 22). Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128, 142 (1st Cir. 2006). Id. at 143; Board of Managers of Soho Int’l Arts Condominium v. City of New York, 2003 WL 21403333 (S.D.N.Y. 2003). 17 U.S.C. § 106(A)(c)(1). English v. BFC&R East 11th Street LLC, 1997 WL 746444, *4 (S.D.N.Y. 1997). Pub. L. 101-650, 104 Stat. 5128 (Dec. 1, 1990). Berne Convention for the Protection of Literary and Artistic Works (1886) (last amended 1979), https://www.wipo.int/ treaties/en/text.jsp?file_id=283698.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

269

treaty in 1988,41 more than 100 years after the first signatories42 and long after most countries in the world had.43 The sticking point for Congress was that the Berne Convention requires the right of attribution and the right of integrity.44 These rights limit what a buyer can do with a work of art after buying it, a dynamic that clashes with basic tenets of Anglo-American property law. The private ownership and market values of personal and real property do not always align with collective, societal interests and creative, cutting-edge, artistic values.45 VARA lawsuits tend to arise from large works of public art, which act as lightning rods for this tension between interests. Several concerns account for Congress’s eventual ratification of the Berne Convention and the passage of VARA. Foremost was the need to protect the burgeoning domestic software industry in the international marketplace.46 The ratification of the Berne Convention also responded to long-standing concerns about protecting art. In particular, implementing the right of integrity to protect art against destruction was viewed as “preservative in nature: Congress was concerned that the destruction of works of art represented a significant societal loss.”47 Some members of Congress, however, started paying attention to VARA only when Ted Turner started adding color to classic black and white movies.48 Although VARA rights are relative newcomers in the United States’ IP law, they are well established elsewhere49 and are acknowledged in the Declaration of Human Rights.50 Outside the United States, VARA rights are collectively referred to as artists “moral rights,” an inexact translation of the French, le droit moral.51 The word “moral” in this context is not the opposite of “immoral” or “amoral.” Rather, it refers to interests that are not economic or pecuniary, but are personal to the artist and also valued by the society. The closest analogy in the United States might be personal or civil rights.52 Artists’ moral rights developed gradually in the civil law,53 along with the types of economic rights that Anglo-American law recognizes in copyright law.54 First, celebrity 41 42 43

44 45

46 47

48

49 50

51

52

53

54

Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853 (1988). Berne Convention, supra note 40. See Zehra Betül Ayranci, Intellectual Property Social Justice on the International Plane, ch. 19 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (survey of international and transnational law with IP social justice implications). Berne Convention, art. 6 bis; see H.R. Rep. No. 101-514 at 7, reprinted in 1990 U.S.C.C.A.N. 6915, 6917. See generally Drew Thornley, The Visual Artists Rights Act’s “Recognized Stature” Provision: A Case for Repeal, 67 Clev. St. L. Rev. 351 (2019). See Liemer, supra note 25, at n.40. Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303, 324 (S.D.N.Y. 1994) [hereinafter Carter II], rev’d, Carter III, 71 F.3d 77 (2d Cir. 1995), cert. denied, 116 S. Ct. 1824 (1996). See Janine V. McNally, Congressional Limits on Technological Alterations to Film: The Public Interest and the Artists’ Moral Right, 5 High Tech L.J. 129 (1990); Don Shannon, Panel Weighs “Moral Rights” of Film Alteration, L.A. Times, Oct. 25, 1989, at 1. Carter III, 71 F.3d at 81–82. “Everyone has the right to the protection of the moral and material interests resulting from any . . . literary or artistic production of which he is the author.” Declaration of Human Rights, art. 27(2) (United Nations 1948). In some civil law countries, le droit moral also includes the right of disclosure and the right of withdrawal. See, e.g., art. L121-2 & art. L121-4, respectively, in the French Code de la propriété intellectuelle, Chapitre 1er: Droits moraux. The right of disclosure allows the artist alone to determine when a work is ready to be disclosed to the public, and the right of withdrawal allows the artist to determine that a work should be withdrawn from the public. Id. See Mariana Bernal Fandiño, Controversial Trademarks: A Comparative Analysis, ch. 21 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (discussing the broader civil law understanding of moral rights in a comparative law analysis of offensive and scandalous trademarks). See Susan P. Liemer, On the Origins of le Droit Moral: How Non-Economic Rights Came to Be Protected in French IP Law, 19 J. Int’l. Prop. L. 65 (2011). See generally Liemer, supra note 25.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

270

Sue Liemer

visual artists in the Renaissance untethered themselves from wealthy patrons to create independent careers, exercising individual clout in the marketplace.55 Next, as the printing press spread across Europe, making it easier to copy literature and printed images, writers and engravers explored ways to protect both their moral rights and their economic rights attendant to and embodied within the physical copies of their work.56 Then, in Paris on the eve of the French Revolution, the playwrights of the official theater created the first writer’s union, in large part to protect interests that developed into le droit moral.57 French courts began recognizing the interests of artists akin to moral rights, and the concepts spread as Napoleon brought France’s influence to many countries.58 As individual human rights ascended throughout the West, artists’ moral rights appeared in the case law and legislation of many European countries, and eventually in the Berne Convention, which came to be ratified worldwide.59 In purpose and effect, the development of moral rights was a democratizing force. They accounted for both the personal interests of individual artists and the interests of the general public. Artists no longer needed wealthy patrons or powerful political leaders to protect their art. And the broader society’s interests in protecting its patrimony were accounted for, too. From the artist’s perspective, moral rights help protect both the creative process that results in a finished work and the finished work itself.60 That creative process may include myriad aesthetic decisions, the exercise of various techniques, and the generation of original ideas. Moral rights have been compared to personal rights, in that they protect an extension of the artist’s self.61 “The rights spring from a belief that an artist in the process of creation injects his spirit into the work and that the artist’s personality, as well as the integrity of the work, should therefore be protected and preserved.”62 The protected creative expression may impact the artist’s personhood and reputation directly.63 Although not the reason for moral rights, they may impact the artist financially, too.64 For the society at large, moral rights recognize certain shared cultural values. They indicate that the society values creative work for more than just its monetary worth in the marketplace. Moral rights show artists that the society values the creative process and its contribution to the

55 56 57 58 59 60

61 62 63

64

See Liemer, supra note 53, at 78–79. See id. at 80–92; Liemer, supra note 25, at 9–19. See Liemer, supra note 53, at 95–105. See id. at 111–14. See supra pp. 268–69 and accompanying notes. Forty years before VARA was enacted, the artist Alfred Crimi lost a lawsuit against a church that painted over his fresco (a painting made on a wet plaster wall) while redecorating. He was quite elderly when he testified in Congress in support of VARA: “A work of fine art is not a replaceable commodity that can be duplicated. It is a one of a kind creation expressing the spirit and mood of the time of its conception and the psychological characteristics of the mind that conceives it. It is an inner expression of the soul that transcends physical appearance. Once destroyed, its spirit cannot be recaptured, not even by the artist who conceived it. Because of its very nature, a work of fine art is a precious expression of the heart and mind of the artist and should be protected.” Visual Artists Rights Act Amendment of 1986: Hearings on S. 2796 before the Subcomm. on Patents, Copyrights and Trademarks of the Senate Comm. on the Judiciary, 99th Cong., 2d Sess. 12–13 (1986). Thus, as discussed more fully in this chapter, moral rights can protect interests important to both artists and society, many of which cannot be fully accounted for by economic measures of value. See also infra, pp. 288–90. See Susan P. Liemer, Understanding Artists Moral Rights: A Primer, 7 Boston U. Pub. Int. L.J. 41, 43–44 (1998). Carter III, 71 F.3d at 81. “An artist’s professional and personal identity is embodied in each work created by that artist. Each work is a part of his or her reputation.” Martin v. City of Indianapolis, 192 F.3d 608, 611 (7th Cir. 1999), citing H.R. Rep. No. 101-514, at 15 (1990), reprinted in U.S.C.C.A.N. 6915, 6925. See Gilliam v. American Broad. Co., 538 F.2d 14, 24 (2d Cir. 1976).

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

271

life of the community. And moral rights protect the cultural patrimony of a country.65 Moral rights are meant to encourage artists “in the arduous act of creation,”66 to add their expressions to the social fabric. How extensive or restricted these rights are helps indicate what and who the society values. In most civil law countries, an artist cannot waive moral rights,67 because they protect both the artist’s and society’s interests. And in many civil law countries, these rights endure beyond the lifetime of the artist, when the heirs or executors may enforce the creative intent of the artist.68 In addition, in many countries an artist may exercise moral rights for a wide range of creative work, from music scores to fashion designs.69 Indeed, VARA has been criticized for limiting artists’ moral rights so extensively as to call into question the validity of the United States’ ratification of the Berne Convention.70 In one important respect, however, VARA expands moral rights. In the civil law tradition, the right of integrity only protects a work against modification or mutilation, not against total destruction of a work.71 A work that no longer exists may have less potential to harm an artist’s reputation than a work that misrepresents the artist’s original creation.72 In the United States, however, where the right of integrity “is meant to stress the public interest in preserving a nation’s culture, destruction is prohibited.”73 Perhaps the habit of tearing down the old to create the new in a country constantly reinventing itself requires more restraint to be written specifically into the law.

iii. vara leaves the definition of “recognized stature” to the courts The term “recognized stature” is not defined in the statute, leaving the courts to flesh out its meaning. Because some of the “rights protected and remedies provided under VARA are equitable in nature,” aggrieved artists are not necessarily entitled to a jury trial.74 So far, the bench, without jury verdicts, has determined whether contested works had the “recognized stature” required for VARA protection. (The graffiti artists’ case is the only one prior to 2020 that focused on “recognized stature” and proceeded with a jury trial, but just before the trial ended, the plaintiffs elected to have the judge decide the case.75) The test for recognized stature articulated in Carter II has generally served as precedent. That test states, to receive VARA protection against a work’s destruction, 65

66 67 68 69 70

71 72 73 74

75

“In our country, as in every other country and civilization, artists are the recorders, and preservers of the national spirit. The creative arts are an expression of the character of the Nation – they mirror its accomplishments, warn of its failings, and anticipate its future.” 133 Cong. Rec. S11,502 (Aug. 6, 1987) (statement of Sen. Ted Kennedy). Carter III, 71 F.3d at 82. See, e.g., art. L121-1 in the French Code de la propriété intellectuelle, Chapitre 1er: Droits moraux. Id. See, e.g., Id. at art. L112-2. See generally David E. Shipley, The Empty Promise of VARA: The Restrictive Application of a Narrow Statute, 83 Miss. L.J. 985 (2014); Kimberly Y.W. Holst, A Case of Bad Credit? The United States and the Protection of Moral Rights in Intellectual Property Law, 3 Buff. Intell. Prop. L.J. 105 (2005–2006); Natalie C. Suhl, Moral Rights Protection in the United States under the Berne Convention: A Fictional Work?, 12 Fordham Intell. Prop. Media & Ent. L.J. 1203 (2001–2002). See, e.g., Lacasse et Welcome v. Abbé Quénard, CA Paris, 1934 D.P.II 385. See Liemer, supra note 61, at 51 and accompanying footnotes. Carter III, 71 F.3d at 81. Pollara v. Seymour, 150 F. Supp. 2d 393, 399 n.10 (N.D.N.Y. 2001); Cohen v. G&M Realty L.P., 2017 WL 1208416, n.5 (E.D.N.Y. 2017). Cohen, 320 F. Supp. 3d 421. The court took the jury’s findings under advisement. Id. at 430–31. See infra at p. 283.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

272

Sue Liemer

“a plaintiff must make a two-tiered showing: (1) that the visual art in question has ‘stature,’ i.e., is viewed as meritorious, and (2) that this stature is ‘recognized’ by art experts, other members of the artistic community, or by some cross-section of society.”76

Two courts have questioned whether this test “may be more rigorous than Congress intended,” but did not provide an answer.77 For disputes about VARA’s right of integrity, the courts have been clear that “the recognized stature requirement is best viewed as a gate-keeping mechanism.”78 While the art does not need to be “equal in stature to that created by . . . Picasso,” it also cannot be simply “a five-year-old’s fingerpainting.”79 Of course, there is a large range of visual art between a Picasso and a child’s fingerpainting. VARA litigation to protect art from destruction usually focuses on whether the gate should open to protect a particular work. Naturally, judges make that determination based on the evidence in front of them and their understanding of it. Their understanding might not include the creative interests of working artists or the cultural interests of social groups with whom they have little in common. Accordingly, the recognized stature requirement as a gate-keeping mechanism implicates the social justice concerns of access, inclusion, and the empowerment of artists. Protection against destruction “is afforded only to those works of art that art experts, the art community, or society in general views [sic] as possessing stature.”80 Even when an artist and some of her work are well-known, the specific work of visual art in question still has to have recognized stature for VARA to protect it against destruction.81 Nonetheless, in the case of a very well-known artist, almost anything the artist creates could potentially have recognized stature.82 In this way, at least theoretically, the stature of a work that was never displayed could be recognized for the first time after its destruction.83 But generally people actually do have to be able to see a work of visual art so that it can achieve recognized stature.84 By way of example, a sculpture by a locally known artist, installed behind a 12-foot high hedge and visible only to the private property owner, was found to not have recognized stature.85

iv. the courts weigh evidence from others to decide whether a work has achieved “recognized stature” To date, only a handful of cases have examined the recognized stature requirement. They have tended to credit expert testimony more than public opinion or artists’ views. Indeed, “fighting experts are not uncommon in the sparse jurisdiction construing VARA’s ‘recognized stature’ criterion.”86

76 77 78 79 80 81 82

83 84 85 86

Carter II, 861 F. Supp. at 325. Martin, 192 F.3d at 612; Cohen, 320 F. Supp. 3d at 438. Martin, 192 F.3d at 612. Id. Martin v. City of Indianapolis, 982 F. Supp. 625, 631 (S.D. Ind. 1997). Id. See Castillo, 950 F.3d at 166 & 170, n.7; Pollara, 150 F. Supp. 2d at 397; Lubner v. City of Los Angeles, 45 Cal. App. 4th 525, 531, 53 Cal. Rptr. 2d 24, 29 (1996). See Pollara, 150 F. Supp. 2d at 397. Pollara v. Seymour, 344 F.3d 265, 271 (2d Cir. 2003) (Gleeson, J., concurring). Scott v. Dixon, 309 F. Supp. 2d 395, 400–401 (S.D.N.Y. 2004). Cohen v. G&M Realty L.P., 2017 WL 1208416 *2 (E.D.N.Y. 2017).

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

273

A. Carter v. Helmsley Spear In 1994, the first such case, Carter v. Helmsley Spear, Inc., involved numerous sculptural works incorporated into the interior public spaces of a large New York City office building. The artists were only part-way through their commission when the property manager asked them to stop and indicated the sculptures would be removed.87 The trial court acknowledged that, to prove recognized stature, “plaintiffs generally, but not inevitably, will need to call expert witnesses to testify before the trier of fact.”88 The plaintiff artists’ expert witnesses, who testified as to the recognized stature of the sculptures, were: • “a professor of art history at New York University,” who was also “an art critic, and the author of numerous books on art and art history,”89 90 • the “president and director of an art gallery specializing in contemporary art,” • the “president of the Municipal Art Society of New York . . . and a former chairman of the New York City Landmarks Preservation Commission,”91 and • a professor who “teaches two-and-three-dimensional design, and is an expert in visual art, including sculpture.”92 The primary expert witness for the defendants, the building’s owner was the “editor of a monthly magazine that reviews art,” who previously had been “employed by The New York Times as an art news editor and art critic.” His “credentials as an art critic [were] well established.”93 Thus, people well known in New York City’s art establishment provided the court with expert testimony as to whether the sculptures were “of recognized stature.” Among them, this group of witnesses had written doctoral theses, scholarly books, magazine articles for the trade, and a regular column in the world’s leading newspaper. These are all the types of hard copy publications that built professional reputations and careers in the art history and art review professions throughout the twentieth century. The group also included an individual involved in the highend art market and another who held leadership positions in the nonprofit and government sectors of the art world. Their credentials as experts in the world’s leading international arts city were impeccable. In addition, these expert witnesses were all college-educated white males, with European surnames. Only one of these expert witnesses had professional experience as a working artist. To find that the works in question were of recognized stature, the trial court in Carter relied almost entirely on the testimony of these witnesses.94 The court also noted that during the legislative process for VARA, some proposed language had stated specifically that a court “may take into account the opinions of artists, art dealers, collectors of fine art, and other persons involved with the creation, appreciation, history, or marketing of works of recognized stature.”95 Although this language was omitted before the bill’s passage, the court stated that “courts can, 87 88 89 90 91 92 93 94 95

Carter II, 861 F. Supp. at 313. Id. at 325. Id. at 323–24. Id. at 324. Id. at 325. Id. at 324. Id. Id. at 325–26. Id. at 325, n.10 (emphasis added).

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

274

Sue Liemer

and should, consider these sources in determining whether a given work is of recognized stature.”96 It did note that the change in the bill’s language gave courts more discretion as to “what sources may be considered.”97 Applying the two-tiered test that it announced, the trial court in Carter found the sculptures were “of recognized stature” and protected by VARA.98 That protection, however, was shortlived. On appeal, the Second Circuit found the sculptures were works made for hire and not protected by VARA.99 B. Martin v. City of Indianapolis Art experts also were relied on in examining whether a large outdoor sculpture was a work of recognized stature in Martin v. City of Indianapolis in 1997.100 In Martin, the artist received a city zoning variance and created a sculpture on public land. When an urban renewal project started, the plaintiff offered to move the sculpture for the city, but a bulldozer razed it anyway.101 With cross motions for summary judgment before the court, the plaintiff proffered the written opinions of two experts: • the gallery director for the School of Art at Indiana University, who had supported funding for the sculpture, and • the “art critic for the Indianapolis Star,” who was also an associate professor at Indiana University.102 Rather than the national and international reputations of the expert witnesses in Carter, these experts in Martin had regional reputations in the art world. Of course, they were in Indianapolis, which is not an international art center. But they, too, had the traditional indicia of art expertise, including college degrees and authorship of print publications. They were adults, earlier in their careers than the Carter expert witnesses, but working in well-established institutions, in positions where their jobs inherently entailed evaluating art. One expert witness was a white female, and one was a white male. They, too, were not working artists. The Martin court also considered additional documentary evidence, proffered by the plaintiff: • published previews and reviews of the work, in “[l]ocal Indianapolis publications” and in the state arts commission’s magazine, newspaper reports describing the plaintiff’s award for Best of Show in a government• sponsored state art show, and • “a published letter to the editor” from “one member of the community,” presumably in a print edition newspaper.103

96 97 98 99

100

101 102 103

Id. Id. Id. at 326. Carter III, 71 F.3d at 85–88 (using the works-made-for-hire test in Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)). Nonetheless, the District Court’s independent ruling on the issue of recognized stature was not overturned and thus remains important precedent. Martin v. City of Indianapolis, 982 F. Supp. 625 (S.D. Ind. 1997), 4 F. Supp. 2d 808 (S.D. Ind. 1998), 28 F. Supp. 2d 1098 (S.D. Ind. 1998), aff’d, 192 F.3d 608 (7th Cir. 1999). Martin, 982 F. Supp. at 628–29. Id. at 631. Id.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

275

All of these documents were familiar types of twentieth century print publications. Denying the defendant’s hearsay objection, the court wrote, “These statements are offered . . . to show that the declarants said them, not that the statements are, in fact, true.”104 The statements were “not being offered for the truth of the matters asserted therein.”105 But the court also stated that the content of the newspaper and magazine articles were offered “to show that respected members of the art community and members of the public at large consider [plaintiff’s] work to be socially valuable and to have artistic merit.” The court continued: The critical element of “recognized stature” involves community opinion about [his] work, not a determination that [his] work is inherently meritorious. The statements contained within the exhibits show how art critics and the public viewed [his] work, particularly [this sculpture], and show the sculpture was a matter worth reporting to the public.

The court said that it was simply considering the fact that the community had an opinion of this artist and this sculpture and had made that opinion known publicly, and so the work had stature.106 But the court’s explanation included the nature of that opinion – that the work had social value and artistic merit. Thus, the fact there was a public opinion about the work (not hearsay) and what that opinion was (potentially hearsay without further foundation) were not neatly separated. Adding to the lack of clarity, the court proceeded to state that the defendant “advanced no factual dispute regarding [the plaintiff’s] evidence,” and so the court considered “the facts within these exhibits and affidavits as undisputed.”107 So, to determine whether the proffered evidence was hearsay, the court looked only at the fact there were publicly stated opinions about the work. But then, because the defendant did not submit any contradictory evidence, the content of those opinions were taken as fact. All of those opinions were favorable. Based specifically on the proffered expert and general documentary evidence, the court found the sculpture was a work of recognized stature. The court particularly acknowledged that it valued the opinions of “respected” members of the art community and “art critics.”108 Again, these were professionals who held sway in the art world, not just any member of the art community, not neophytes. In addition, in the eyes of the court, the one individual who wrote a letter to the newspaper editor somehow stood in for the entire “public at large.”109 After addressing additional arguments raised by the defendant, the trial court denied the defendant’s motion for summary judgment and granted the plaintiff artist’s motion for summary judgment.110 After a separate hearing on damages, the court awarded statutory damages, attorney’s costs, and fees to the plaintiff.111 The court found there was no willful infringement, and thus no reason for enhanced damages, because the plaintiff did not produce “evidence showing that the City had knowledge or reason to know” the work “was protected by copyright law.”112

104

Id. at 630 (emphasis original). Id. 106 The appeals court majority read the trial court’s opinion this way. Martin, 608 F.3d at 612. The dissent found that the evidence supported the fact the work was “recognized,” and that evidence of its “stature” was lacking. Id. at 616 (Manion, J., dissenting). 107 Martin, 982 F. Supp. at 630. 108 Id. 109 Id. 110 Id. at 638. 111 Martin, 4 F. Supp. 2d at 811–12. 112 Id. at 811; see also Martin, 28 F. Supp. 2d at 1101–102. 105

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

276

Sue Liemer

On appeal, the Seventh Circuit affirmed the trial court “in all respects.”113 Apparently, ignorance of the law was an excuse. C. Pollara v. Seymour Next, in Pollara v. Seymour in 2001, an artist plaintiff survived the defendants’ motion for summary judgment in part by showing there was a genuine issue as to the recognized stature of the work in question. The plaintiff proffered the affidavits of two local art experts in Albany, New York, where the dispute arose.114 The artist had painted a large paper mural, to serve as a backdrop to a nonprofit group’s lobbying table in the New York state capital building.115 In dispute was whether the work could have recognized stature when it was torn down before it was displayed to the general public.116 The trial court stated that previous recognition was “the most conclusive basis” for determining recognized stature. But “a work’s stature could be ‘recognized’ by experts after the destruction of the work,” especially if the artist already had “an established reputation in the relevant community.”117 There the court seemed to be referring only to experts’ opinions within the art community as relevant. The court also referred to “VARA’s preservative purpose” and “the significant societal interest in the preservation of great art.”118 The overall message was that it is possible for any work by a well-known artist to be a work of recognized stature. After all, a Picasso that has never been exhibited is still a Picasso. Curiously, the Pollara court also mentioned how much an artist invests in a work and what a work contributes to an artist’s body of work even before its display. And then the court asserted that “substantial interests . . . accrue upon the creation of a work of art.”119 In context, the inference was that those interests could include VARA rights. But neither the statute nor the other case law account for the personal interests of the artist in determining the “recognized stature” required to protect a work from destruction. The court held that the plaintiff had shown a genuine issue of material fact, enough to have the issue decided at trial.120 The Pollara plaintiff did not prevail at trial, however, where she was unable to prove, inter alia, that her mural actually was a work of recognized stature. The Northern District of New York found the Southern District’s two-part test in Carter unhelpful. Although the work was “unquestionably meritorious” – as recognized by both the plaintiff’s expert witnesses and the court itself – the work was made to be displayed at a one-time event only and not preserved.121 The surprising detail there was inclusion of the court’s own opinion of the work, which the court described as “visually appealing” and showing “a great deal of artistic ability and creativity.”122 Suddenly, everyone’s an art expert, including federal court judges.

113

114 115 116 117 118 119 120 121 122

Martin, 192 F.3d at 614. The dissent, however, stated: “A plaintiff cannot satisfy his burden of demonstrating recognized stature through old newspaper articles and unverified letters, some of which do not even address the artwork in question.” Id. at 616 (Manion, J., dissenting). The dissent observed that “VARA was not designed to regulate urban renewal, but to protect great works of art from destruction and mutilation.” Id. at 615. Pollara, 150 F. Supp. 2d at 396–68. Id. at 394–95. Id. at 396. Id. at 397, citing Lubner, 45 Cal. App. 4th at 531, 53 Cal. Rptr. 2d at 29. Id. at n.8. Id. at 398 (emphasis original). Id. Pollara v. Seymour, 206 F. Supp. 2d 333, 336 (N.D.N.Y. 2002). Id. at 335.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

277

Nonetheless, the court held that the plaintiff had not met her burden of proving the work was “of recognized stature.”123 To hold otherwise would have extended protection against destruction to many works with “artistic merit” that nobody ever intended to preserve.124 After also finding the work was “promotional” in nature, the court held it did not fit the statutory definition of a work of visual art125 and dismissed the case.126 On appeal, the Second Circuit avoided the issue of recognized stature for a second time127 and affirmed the dismissal based on the promotional nature of the work.128 The Second Circuit also noted that the lower court had “politely found” the work had visual appeal and demonstrated artistic ability. The appeals court stated, however, that it was “steer[ing] clear of an interpretation of VARA that would require courts to assess either the worth of a purported work of visual art, or the worth of the purpose for which the work was created.”129 This part of the appellate decision reads as a gentle rebuke to the lower court for stepping beyond its role in deciding the legal issues and getting carried away in its foray into the world of art assessment. D. Phillips v. Pembroke In 2003, the court in Phillips v. Pembroke Real Estate, Inc., briefly addressed the recognized stature requirement at the preliminary injunction stage.130 This case involved site-specific sculptures that were incorporated into and provided elements of a park in urban Boston. The site management wanted to make some changes to the park, which were going to impact the plaintiff’s sculptures. The defendant did not dispute the works in question were “of recognized quality.”131 Nonetheless, the court listed the relevant evidence that the plaintiff proffered: • an affidavit from an art history professor and arts administration graduate program director at Boston University, • the testimony of the Executive Director of the Urban Arts Institute of the Massachusetts College of Art, who was also the program director for the state culture council and the program coordinator for public art installed during Boston’s Big Dig, • an article in the magazine High Profile Monthly, a regional print magazine for the architecture and construction industry, • an article in the Boston Business Journal, and 132 • an article on the Cambridge Arts Council’s website. The court also heard fact testimony from an architect and an engineer, and the court visited the site twice.133

123 124 125 126 127 128 129 130 131 132 133

Id. Id. at n.6. Id. at 337. Id. at 338. Pollara, 344 F.3d at 268. Id. at 272. Id. at 271. Phillips v. Pembroke Real Estate, Inc., 288 F. Supp. 2d 89, 103 (D. Mass. 2003). Id. Id. Id. at 92.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

278

Sue Liemer

As in Martin, in Phillips the evidence on recognized stature at this stage was mostly in unexamined documentary evidence, entered without objection. The court had in front of it the opinions of the usual experts: well-accredited academics, government program administrators, and commercial industry representatives. This evidence may seem somewhat more representative of those with VARA interests than in prior cases. The sculpture professor knew how artists work from first-hand experience. And the community arts council was used to considering community interests, not just experts’ concerns. But the arts council was in Cambridge, Massachusetts, the home of Harvard University and the Massachusetts Institute of Technology (MIT), which has a disproportionately elite and highly educated population. It also is not actually in Boston. Thus, no Boston neighborhood was directly represented in the evidence considered. For the first time in these cases, however, the court did consider an online source, the arts council’s website. The hegemony of elite, traditional print publications as credible sources was softening. The court’s two in-person site visits apparently were necessary to understand the site-specific nature of the works and the potential impact of park changes. The court found that the plaintiff had established “a likelihood of success” on the recognized stature requirement.134 The fact the court made this finding, even though the works’ recognized stature was not in dispute, demonstrated how important recognized stature was as a threshold matter. After granting a preliminary injunction for some of the works in dispute,135 the court certified a question to the Massachusetts Supreme Judicial Court (SJC), to determine whether state law afforded protections not pre-empted by VARA for site-specific works. The SJC said no,136 and the federal trial court vacated its preliminary injunction. On appeal, the First Circuit concluded that Congress did not intend for VARA to encumber real property,137 so VARA did not protect sitespecific works.138 Thus, the site management was able to make changes to the park that the parties and the courts alike had acknowledged would physically alter works of visual art with recognized stature, essentially destroying them. Thus, more than two decades had passed since Congress ratified the Berne Convention, a treaty requiring the right of integrity for artists. The implementing statute, VARA, was drawn so narrowly from the start as to be more of a legal pretense than a fulfillment of the United States’ treaty obligation. Then the federal courts applied VARA in ways that ensured its reach would remain even more limited than called for in its text. In Martin, city bulldozers purposely destroyed a sculpture after the artist offered to move it inexpensively, and the Sixth Circuit somehow concluded that that destruction was not willful, therefore not deserving of statutory treble damages.139 In Phillips, everyone involved in the case agreed that works of recognized stature would be destroyed, and the First Circuit gave the green light anyway.140 The Second Circuit, located in the home of the world’s leading art market, more than once avoided making a decision based on the right of integrity and the recognized stature standard.141 But it could not do so forever – and it was in the context of this precedent that the 5Pointz controversy, including its implications for a social justice construction and application of VARA, reached that court. 134 135 136

137 138 139 140 141

Id. at 103. Id. at 105. Phillips v. Pembroke Real Estate, Inc., 443 Mass. 110, 112, 819 N.E.2d 579, 580 (2004) (applying Massachusetts Art Preservation Act (MAPA), Mass. Gen. Laws, ch. 231, § 85S (1984)). Phillips, 459 F.3d at 142. Id. at 143. See supra, at pp. 274–76. See supra, at pp. 277–78. See supra, at pp. 273–74 & pp. 276–77.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

279

E. The 5Pointz Saga In Cohen v. G&M Realty L.P., the court undertook the fullest exploration so far of the “recognized stature” requirement.142 In the context of the New York City real estate market, where a once dilapidated and crime-ridden neighborhood was gentrifying into high-rise luxury apartments, the graffiti of young street artists might at first glance seem an unlikely crucible for refining the courts’ understanding of art worth preserving. In Cohen, a key background fact was the previous arrangement between the parties. The graffiti artists actually had received permission from the property owner, Wolkoff, to paint on the various surfaces of the old factory buildings. Wolkoff willingly deputized the lead plaintiff, Cohen, to curate the work. Cohen, in turn, developed a system of rules that aligned with graffiti artists’ practices, to determine who could paint where and how quickly a work could be painted over.143 Wolkoff approved of Cohen’s decisionmaking and the resulting work.144 No aspect of this arrangement was in writing. The understanding among the graffiti artists was that a work had to be better than what it replaced if an artist painted over someone else’s work. If you were going to paint over something, you had to paint something even better than it. The general graffiti world penalty for not respecting more talented artists was lack of respect for your own work, which meant it would be painted over more quickly than it otherwise might have been.145 This competitive dynamic permeates hip hop culture, no matter the medium, and spurs on innovation within art forms.146 Essentially, the 5Pointz graffiti artists painted within their own perpetual version of a dance-off, always trying to one-up each other and respecting the work of those who succeeded. They had their own organically developed mechanisms for recognizing the relative stature of the works created within their artistic community. At the old factory site, Cohen followed this hip hop code of conduct. He reserved some less desirable surfaces for beginners, with the understanding that whatever they painted would soon be covered over by others. He reserved upper story, outside walls, in full view of the passing New York City subway trains, for more important works by graffiti artists whose work he knew and respected.147 The 49 works that eventually were the subject of the lawsuit were all works that Cohen had decided deserved prominent locations on “long-standing” walls.148 This aerosol spray painting was not the clandestine tagging of teenagers, nor the finger painting of five-year-olds; it was actual art. Stylistically and thematically, many of the works challenged the status quo. The artists were a multicultural group. Many were immigrants to the United States. They included people of color and people with names of Hispanic, Italian, and Asian origin. They learned and advanced their art form on the street. They were young, fit, and fearless enough to spray paint for long hours standing outdoors on scaffolding up to five stories above street level. 142

143 144

145

146 147 148

Cohen v. G&M Realty L.P., 988 F. Supp. 2d 212 (E.D.N.Y. 2013), 320 F. Supp. 3d 421 (E.D.N.Y. 2018), aff’d, Castillo v. G&M Realty L.P., 950 F.3d 155 (2d Cir. 2020) (cert. denied 141 S. Ct. 363). Cohen, 988 F. Supp. 2d at 218–19. Id. at 219–20. The parties’ arrangement brought the subject works within the ambit of the statute, as works undertaken with the permission of the property owner. The parties’ arrangement also suggests that the owner of the property appreciated the benefits of properly curated graffiti art and, thus, to some extent, “recognized the stature” of these artistic contributions. See generally Al Roundtree, Graffiti Artists “Get Up” in Intellectual Property’s Negative Space, 31 Cardozo Arts & Ent. L.J. 959 (2013). Id. Cohen, 988 F. Supp. 2d at 223–24. Id. at 224.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

280

Sue Liemer

This contemporary form of painting on walls evolved one of the oldest art forms, and thus constituted the “progress of the arts” that the Constitution’s copyright clause was intended to promote, i.e., the creation and dissemination of inventive and creative works. Indeed, this diverse group of artists embodied the ideal of the Constitutional clause: grassroots art created by ordinary people, viewed daily by millions of citizens from all walks of American urban life. From an IP social justice (IP-SJ) perspective, 5Pointz achieved the aspirations of socially equitable access, inclusion, and empowerment, which ensure the ultimate social efficacy of the copyright system.149 This graffiti art gradually became the catalyst for the neighborhood’s gentrification. 5Pointz “had become the repository of the largest collection of exterior aerosol art . . . in the United States . . . and . . . a significant tourist attraction.”150 A tourist attraction, however, is not necessarily a work of visual art with the requisite recognized stature to receive VARA protection from destruction. 1. The Preliminary Injunction Decision The lawsuit arose when the plaintiffs realized destruction of the site was imminent and their other efforts to stop the destruction had failed. As described at the beginning of this chapter, the judge indicated from the bench that he was not likely to grant the preliminary injunction and would be issuing a written opinion soon. “Soon” turned out to be just eight business days later, but in the meantime the defendants had the plaintiffs’ graffiti art white-washed.151 At the preliminary injunction hearing, the Cohen court heard expert witnesses testify as to whether the works had recognized stature. In its decision, the court referred to those who testified as “purported expert witnesses,”152 indicating some skepticism as to how to much weight to give their testimony. The court described the defendants’ expert witness as “an art history professor of impeccable academic credentials.”153 She had two Masters’ degrees, a J.D., and a Ph.D. in art history, and she had produced scholarship on art crimes.154 The professor testified that the factors to use in determining the stature of a work included its “quality,” innovation, and “uniqueness,” as well as the public’s evaluation of it. She said that “a consensus of the art community and the scholarly community” could confer recognized status on a work. In her view, to have stature, the work “should be at a level where scholars agree that it is ‘changing the history of art.’”155 When pressed by the court, she agreed that if the public went to 5Pointz to see a particular work, it could have recognized stature without academic recognition. She considered graffiti to be a “‘subculture’ of the art world.”156 To determine whether the works in question were “recognized,” the defendants’ expert turned to other sources. She considered whether she could find references to the artists and 149

150 151 152 153 154 155 156

As discussed by Lateef Mtima elsewhere in this volume, recognition of the value of diversity in adding to the nation’s cultural patrimony is critical to the fulfillment of the promise of copyright. See Lateef Mtima, Copyright and the Interdependent Relationship Between Social Utility and Social Justice, ch. 5 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Cohen, 988 F. Supp. 2d at 214. See supra pp. 265–66. Cohen, 988 F. Supp. 2d at 215. Id. at 221. See https://www.jjay.cuny.edu/faculty/erin-thompson (last visited Nov. 18, 2022). Cohen, 988 F. Supp. 2d at 221. Id.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

281

the works “in academic publications or on the Internet.”157 At that time, in November 2013, she used Google to search for the names of the artists and the works in question, with few results. For most of the works, she found “no dissertations, no journal articles, no other scholarly mentions of the work.” A few of the works appeared online, but only on the 5Pointz website or where an artist had mentioned him or herself. Two of the works were mentioned once on “a street art web site, on a blog, or an artist’s blog.” These research results lead the expert witness to conclude that “none of the 24 works was of recognized stature.”158 She thought the one that “came the closest” was created by the only artist “mentioned in a dissertation, or a scholarly book or a journal article.”159 Once again, a traditionally established art expert, an elite academic with expertise in art history, gave full weight to the most traditional indicia of recognized stature. Like most other people would have in 2013, she did search online for information. But when she searched online, she was still looking for print publications – professional journal articles and scholarly dissertations – about the work, traditional indicia of merit. Her education and experience led her to give full weight only to traditional publications. She discredited sources not mediated by the academic elite, such as the street art web site and blog. Being mentioned by these newer media sources did not signal recognized stature in her established art world. This professor was middle-aged, white, and had a Northern European name. She relied on the same types of background knowledge and sources as the defendants’ expert witnesses mostly had in earlier cases. She did not provide an entirely independent opinion of the works in question. Just as the court relied on her, she in turn relied on other sources, and those were the most traditional, elite ones. In contrast, the plaintiffs’ expert witnesses were: • a documentary photographer, self-described as “one of the ‘forefathers’ of hip hop culture,”160 and • the director of a philanthropic arts foundation, an artist himself, who owned two art galleries and a $5 million contemporary art collection, which included works by the lead plaintiff.161 In addition, three of the plaintiff artists themselves testified on point.162 Before characterizing the testimony of the photographer and one of the artists, the court noted that “much of the testimony did not differentiate between” the two terms “recognized” and “stature,” but “assumed that if the work had artistic merit it was ipso facto of recognized stature.”163 The testifying artist described the quality of the works in actual art terms. He referred to “composition, color, line work, [and] detail.” He also spoke to the “technical ability” needed to create the works. The hip hop photographer also mentioned “details,” and described the works as “innovative” and “pioneering.”164 The artist and the photographer provided their opinions from first-hand knowledge of the works, the 5Pointz site, and hip hop culture. They knew that particular slice of the art world from functioning within it and actually were experts on

157 158 159 160 161 162 163 164

Id. Id. at 221. More works were added as the lawsuit proceeded. Id. Id. at 220. Id. at 221–22. Id. at 219, 220, 223–24. Id. at 220. Id.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

282

Sue Liemer

the subject matter. As the court indicated, however, they did not use a vocabulary that neatly delineated and defined the statutory terms “recognized” and “stature.” They spoke in the language of working artists in the hip hop culture, not in the language of academics or statutes. And their testimony was received with skepticism. The expert witness who was a philanthropist and collector, with experience as a working artist, also testified about the stature of the works in artistic terms, such as their “design, color, shape, [and] form.” In this way, he too used his first-hand knowledge of contemporary art to give an opinion about the works’ stature. For his opinion of the works’ recognition, this expert witness considered that some of the artists had been included in a museum exhibition of graffiti art, some specific works attracted the public to the 5Pointz site, and some of the works were seen daily by millions of subway riders. He also considered the impact of his own televised documentary film about 5Pointz, and its YouTube hits. He perceived recognition to come from “significant public exposure.” To form his opinion of the works’ recognition, he considered traditional indicia like the museum exhibition, new media like YouTube, and the practical reality of the subway riders. He testified that “everything is in flux from the old ways of doing things, and the way things are publicized and the way the media looks at things.”165 Thus, he was open to a variety of sources of information. In his view, a recognized work was one that, if “missing from the canon of art history . . . it would be a loss.”166 Of course, the history of art is replete with instances of pioneering work that was at first shunned and then eventually lauded. Conversely, simply being pioneering does not necessarily guarantee that a work will have stature and be recognized. In Martin, where the Seventh Circuit held the sculpture in question had recognized stature, nobody suggested the work had changed the history of art or contributed to the canon. In reality, art experts and the public alike often need time to appreciate innovative art fully and determine which works will stand the test of time. Even more time may be needed to appreciate emerging voices, especially those from previously marginalized communities, like the young graffiti artists at 5Pointz. IP-SJ mandates that marginalized artists be afforded that time, to be able to provide their aesthetic contribution to society. In the absence of such developmental breathing space, soon-to-be works of recognized stature are vulnerable to destruction. In the preliminary injunction decision, the Cohen trial court concluded that the plaintiffs raised “sufficiently serious questions” to move forward to trial. The decision also acknowledged that “the court ultimately will have to decide whether to embrace the strictures of the academic views espoused by the defendants or the more expansive ones suggested by the plaintiffs.”167 In the Eastern District of New York’s view, the temporary nature of the works did not disqualify them from VARA protection;168 the temporary nature of the works simply went to the question of an appropriate remedy. The court did indicate that the equitable remedy of an injunction was inappropriate for works never destined for permanence.169The court also articulated its assumption that the artists would not mind receiving monetary damages.170 Here the court made an assumption about the values and interests of others. IP-SJ encompasses interests beyond economic values and incentives. Monetary damages may not fully eradicate a harm, including interference with an artist’s creative decision as to whether and when exactly a work becomes 165 166 167 168 169 170

Id. at 223. Id. at 222. Id. at 226. See Pollara, 206 F. Supp. 2d at 336. Cohen, 988 F. Supp. 2d at 227. Id.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

283

temporary.171 The court also described with approval the property owner’s plans to include a few free-standing walls for graffiti art in the new apartment complex, to address the artists’ and the community’s interests. For young hip hop artists, working by their own rules on the rebellious edge of the art world, a luxury apartment development with designated graffiti walls surely would have smacked of cultural appropriation.172 In its findings, the Cohen court also weighed the behavior of the parties. The evidence showed the plaintiffs knew the site would never be permanently available to them. Some had painted their works even after the date when the property owner said he received a city variance for his new building project, thus “creat[ing] their own hardship.”173 For their part, the defendants allowed the artists to paint at the site without asking for VARA waivers and then benefited economically from the neighborhood’s enhanced reputation. Thus, the defendants had a role in creating their own exposure to “potentially significant monetary damages if it is ultimately determined after trial that the plaintiffs’ works were of ‘recognized stature.’”174 2. The Trial Decision When the 5Pointz case finally went to trial four years later, whether the works were of recognized stature was still at issue.175 By then, the dispute had received considerable publicity in the local news. Of course, New York City, the locus of the dispute, was an international art center, so the news also spread throughout the international art world. A jury spent three weeks hearing and considering evidence on 49 works by 21 artists, including Cohen, the lead plaintiff and curator. Although the plaintiffs decided at the close of the case to forgo the jury, the court allowed the eight-person jury to deliberate without informing them of the plaintiffs’ change of mind. The court wanted the jury’s genuine input specifically because the VARA right of integrity included “community-based standards.”176 In particular, “the court was keen to learn whether the jurors, as members of the community, would view the works as having achieved recognized stature.”177 The court then considered the jury’s input as if it had sat as an advisory jury.178 In this way, Cohen became the first VARA case in which members of the public directly considered the recognized stature issue.179 People living right there in the New York City borough of Queens and nearby locations provided input on whether the works were “recognized” and had “stature,” i.e., merit. In the Eastern District of New York, jurors are summoned randomly from voter registration lists of residents, “which represent a fair cross section of the 171

172

173 174 175 176 177 178 179

See Mtima, supra note 149; see also Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). For a broader discussion of the intersection of cultural appropriation and the IP ecosystem, see J. Janewa Osei-Tutu, Intellectual Property, Social Justice, and Human Development: Empowering Female Entrepreneurs Through Trademark Law, ch. 20 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Cohen, 988 F. Supp. 2d at 227. Id. at 226. Cohen, 320 F. Supp. 3d at 437–40. Id. at 430. Id. Id. The jury also considered whether each work was “mutilated, distorted, or otherwise modified to the prejudice of the artist’s honor or reputation,” the other way the right of integrity may be violated under VARA. Id. at 431; see 17 U.S.C. § 106A(a)(3)(A).

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

284

Sue Liemer

community,” “supplemented by lists . . . from the New York State Department of Motor Vehicles.”180 Upper, middle, and working class residents are all in the mix. Queens also happens to be one of the most demographically diverse counties in the United States. Of course, there are community members who are not well represented in jury pools. Some people do not register to vote. And, while many people in Queens do not need drivers’ licenses, many do receive state identification cards from the motor vehicle department. Other people under represented in jury pools may be undocumented immigrants, the homeless, and people with the resources to help them delay or avoid jury service. The hundreds of thousands of foreign tourists and local school children who took tours of 5Pointz were not in the jury pool. But, even acknowledging that many people were excluded, typically a jury of eight people in Queens County would be far more representative of the general public than a few art world experts would be. By allowing the jury to complete its work and taking the jury’s decisions under advisement, the Cohen court did account for community interests underlying VARA rights. Consistent with the IP-SJ recognition of the value of inclusiveness to the social function of copyright, the court considered more than the opinions of a few elites to decide whether the works had recognized stature. Both the judge and jury did hear from expert witnesses for each side on the issue of recognized stature. The defendants’ expert witness on this point was the same professor who testified for them at the preliminary injunction hearing.181 The plaintiffs’ main expert witness on recognized stature was: • “a certified art appraiser,” who previously had been an art expert for a major insurance company and an art professor at New York University.182 This expert in turn relied on a letter from: • the director of the contemporary art department at Doyle, one of the top New York City arts and antiques auction houses (and this individual also testified directly).183 Additionally, a fact witness who testified about recognized stature was: 184 • the creator of a 5Pointz exhibit for the Google Arts and Culture online platform.

These witnesses were well established in the academic and commercial art world, too, although by this time, in 2018, they were not tied only to traditional print publications to establish their expertise. To figure out what weight to give the expert testimony on recognized stature, the Cohen court had little precedent to rely on. First, it noted that the Seventh Circuit in Martin had “appropriately recognize[d] . . . that expert testimony is not the sine qua non for establishing that a work of visual art is of recognized stature.”185 Next, Cohen looked to the Carter trial court’s statement that, on the issue of recognized stature, “plaintiffs need ‘not inevitably . . . call expert witnesses to testify before the trier of fact.’”186 The Cohen court perceived these statements to align with

180 181 182 183 184 185 186

See https://img.nyed.uscourts.gov/files/local_rules/juryplan.pdf, § 4 (last visited Dec. 9, 2022). Cohen, 320 F. Supp. 3d at 430–31; see supra at p. 280. Id. at 432. Id. Id. Id. at 438. Id., quoting Carter I, 861 F. Supp. at 325.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

285

“Congress’s expansive recognition” of the moral rights of attribution and integrity.187 Nonetheless, the court found the plaintiffs’ traditional expert was “highly credible and afford[ed] great weight to her testimony.”188 The court found “fatal flaws” in the defendants’ expert’s “masterpiece standard” and “unduly restrictive” research.189 Some additional evidence considered was portfolios for each of the 21 plaintiff artists. These portfolios included color prints of the works in question, in both their original and destroyed states. The portfolios also provided evidence of each artist’s professional achievements and the media coverage they had received, in both traditional and newer media.190 The Cohen trial court also considered the testimony of the plaintiffs themselves on the issue of recognized stature, particularly the testimony of the lead plaintiff, Cohen. The court understood that the true expert on recognized stature at 5Pointz was Cohen himself. He was the curator of this site for working graffiti artists. Informed by graffiti artists’ practices, he developed the rules about who could paint what, where, and when. And he applied those rules, selecting the artists he knew could produce the best works, to paint in the best locations, where their work would be seen the most and preserved the most easily. The court found 37 of the works “achieved recognized stature by virtue of their selection by Cohen for these highly coveted spaces.”191 From some ten thousand images that had been spray painted on the walls of 5Pointz over the years, Cohen had chosen the 49 works in question for prominent locations and “long-standing” walls. In the court’s view, “[t]hat it was he who chose the works that are worthy of VARA protection in this litigation speaks volumes to their recognized stature.”192 Evidence in the portfolios and the plaintiffs’ expert witness corroborated the results of Cohen’s decisionmaking process. In addition, the court just could not help making known its own opinion of the works. It stated that they “reflect striking technical and artistic mastery and vision worthy of display in prominent museums.”193 The court also “was impressed with the breadth of the artists’ works and how many of the works spoke to the social issues of our times.”194 At one point, as the court described the evidence in the artists’ favor, it practically gushed: “But there is so much more.”195 The court very obviously stated its own opinion of the merit of the works, not heeding the Second Circuit’s rebuke of the Pollara trial court.196 In this way, the court seemed to use its independent assessment of the merit of the works to help determine their stature. Perhaps the fact that the judge was so moved by the works that he stepped out of his judicial role and into the role of the admiring public does indeed speak directly to their merit and stature. The Cohen trial court found the plaintiffs had produced so much evidence in their favor that “even under the most restrictive of evidentiary standards almost all of the plaintiffs’ works easily qualify as works of recognized stature.”197 In the end, the court concluded that 45 of the 49 works

187

188 189 190 191 192 193 194 195 196 197

Id. Although the details are beyond the scope of this chapter, VARA’s multi-year legislative history does not necessarily support this assertion that Congress had an expansive view of moral rights. The many limits within the statute memorialize many compromises made by the members of Congress who proposed the bill for years before its passage. Id. at 439. Id. Id. at 431. Id. at 439. Id. Id. at 431. Id. Id. at 439. See supra pp. 276–77. Cohen, 320 F. Supp. 3d at 438.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

286

Sue Liemer

had achieved recognized stature.198 In previous cases, the expert testimony had comprised most of the evidence. But the expert testimony in Cohen was just some of the evidence considered. Thus, Cohen expanded greatly who had input into the decision on whether a work of visual art had achieved recognized stature. Turning to the question of damages, the court found that the evidence fully supported a finding of wilful destruction. The court ordered the maximum statutory damages.199 The individual artist’s awards ranged from $75,000 to $1,325,000, and the total awarded was $6,750,000.200 Before this dispute, most of the artists had not sold a work for more than a few thousand dollars.201 Back in 1997, the Seventh Circuit in Martin had concluded that willful infringement was a necessary finding for maximum damages, not wilful destruction, and the defendant simply was not aware of VARA when it undertook urban renewal.202 The 5Pointz saga certainly made real estate developers in New York City aware of VARA. Developers with major investments at stake could no longer totally ignore lowly artists. The economic disparities, however, could still make it easy for developers to force artists to sign contracts with VARA waivers. Thanks to their lawsuit, however, the 5Pointz plaintiffs themselves are no longer obscure, emerging artists. They are not likely to be signing VARA waivers under economic duress. They have achieved the level of renown in the art world that gives most of their work recognized stature. 3. The Decision on Post-Trial Motions The Cohen trial court issued an unusual decision when it denied the defendants’ post-trial motions.203 In a distinct change of registers, Judge Block wrote mostly from the first person point of view, rather than from the third person point of view of the court. On the issue of recognized stature, Judge Block reiterated that a work’s stature could be recognized by “art experts, other members of the artistic community, or some cross-section of society.”204 Anticipating the case would be appealed, in a long appendix he listed how each of those three groups recognized the stature of each of the 21 artists and 49 works.205 The list included recognition by the press in every type of media, museum exhibitions, online photography collections, music videos, documentary films, a major motion picture,206 private commissions, social media followers, Instagram likes, travel guides and websites, private tours, school field trips, selection for the best 5Pointz locations, viewing by millions of daily train commuters, the testimony of the expert and fact witnesses, and the jury’s findings.207 In the end, the trial decision had accounted for how millions of individuals, from many sectors of society, experienced this art. It was by far the most inclusive and egalitarian decisionmaking process on the issue of recognized stature under VARA to date. The most likely reason Judge Block shifted to first person, however, was to explain the damages award. The property owner had been a difficult witness throughout the proceedings. 198 199 200 201 202 203 204 205 206 207

Id. at 440. Id. at 447. Id. at 448. Id. at 442. See supra pp. 274–76. Cohen v. G&M Realty L.P., 2018 WL 2973385 (E.D.N.Y. 2018). Id. at *7, quoting Carter, 861 F. Supp. at 325. Id. at *11–*33. Now You See Me (Summit Entertainment 2013). Cohen, 2018 WL 2973385 at *11–*33.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

287

Eventually it came out that, at the preliminary injunction hearing, he had lied about receiving demolition permits and having a short time frame before various tax credits and other crucial benefits expired. In truth, the property owner did not even apply for demolition permits until four months after the preliminary injunction hearing.208 Judge Block stated, “it simply stuck in my craw that I was misled that the demolition of the buildings was imminent when there was not even an application for demolition extant. I was appalled at this conscious material misrepresentation.”209 A writer needs to use first person to convey in full the sense of “stuck in my craw.” Judge Block indicated that had the property owner been truthful, there likely would have been an injunction until the demolition actually took place and then ordinary statutory damages.210 The wilfulness of the property owner’s lies in court caused the maximum damages award. The maximum damages award was not intended to make the artists whole or to compensate society for a cultural loss; it was intended to punish the property owner for his courtroom behavior and deter others from lying in court in the future. It was not the destruction of works of recognized stature that stuck in the craw of Judge Block. The harm done to each artist and the loss to society did not appall him. As in the Martin case, the willfulness behind the destruction of art could somehow be excused. Even in this case with a large damages award and the input of many sectors of society, the lived experiences of the relevant art community and the general public were of lesser concern, in contrast to the goals of VARA. 4. The Appeal In February 2020, the Second Circuit issued its decision in the 5Pointz appeal, affirming fully the trial court’s decision.211 This time, the Second Circuit considered recognized stature head on. It recognized that “the crux of the parties’ dispute on this appeal [was] whether the works . . . were works of ‘recognized stature,’ . . . protected from destruction.”212 The appeals court provided clarifications that should be helpful in future VARA disputes. First it defined a work of recognized stature generally as “one of high quality, status, or caliber that has been acknowledged as such by a relevant community.”213 The court then defined each term in the recognized stature standard. For the term stature, the court repeated the first half of the general definition, stating “[a] work’s high quality, status, or caliber is its stature.”214 And the court stated that “[t]he most important component of stature will generally be artistic quality.”215 For the term recognized, the court continued, “the acknowledgment of that stature speaks to the work’s recognition.”216 “The relevant community” to acknowledge the work “will typically be the artistic community, comprising art historians, art critics, museum curators, gallerists, prominent artists, and other experts.”217 Thus, it is these experts who will recognize the “artistic quality” that determines a work’s stature.

208 209 210 211 212 213 214 215 216 217

Id. at *1–*5. Id. at *5 (emphasis added). Id. at *2, *4. Castillo v. G&M Realty, 950 F.3d at 162, 166. Id. at 166. Id. Id. Id. Id. Id.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

288

Sue Liemer

Note that this initial list of who gets to decide does not include the community in which the art is located. In a bench trial, members of the general public, who may perceive the work as part of their social fabric and local identity, may have no direct input. The appeals court only accounted directly for the public’s interest in cultural preservation when it stated that recognized stature was “necessarily a fluid concept,” so that a lesser work by a “highly regarded” artist could receive VARA protection.218 Many artists who are members of marginalized social groups, including the truly avant garde, may have difficulty proving they are highly regarded. In addition, “fluid” concepts are particularly subject to bias, implicit or otherwise. In the next breath, however, as the court reminded judges to not become art critics,219 it stated that “expert testimony or substantial evidence of non-expert recognition will generally be required to establish recognized stature.”220 The “substantial evidence of non-expert recognition” standard appears only in this caution to the judiciary, not in the direct definition of “recognition.” This less central mention of “substantial evidence of non-expert recognition” will have to suffice for now to persuade future courts to consider the general public’s recognition of a work. The statement does make clear that the judge’s opinion of the art is irrelevant. In terms of appellate procedure, the Second Circuit approached the trial court’s determination that the works in question were “works of recognized stature” as findings of fact.221 Thus, under the applicable standard of review, they were “reviewable only for clear error.”222 Applying the long-established standard for finding clear error, the appeals court found none.223 The 5Pointz appeal obviously was a big win for the individual plaintiffs financially. But nothing can bring the artists’ original art back. Monetary damages after-the-fact do not preserve works of art, no matter how big the award is. Society’s art preservation goals are not advanced by awarding money damages for art after it is destroyed. Only by recognizing the social justice obligations and their effects on copyright can this aspect of copyright’s social utility be sustained. While the full impact of the 5Pointz case remains to be seen, some consequences are predictable. Although the large damages award was intended to have a punitive effect in this case, it pales compared to the huge budget and profits of the real estate development project. The damages will end up being just one of many costs of developing the site. Rather than having a deterrent effect in the future, the damages award likely will cause real estate developers to require that artists sign VARA waivers. It may also discourage developers from commissioning artists for future development projects. Thus, the market may shrink for some artists’ work.

conclusion In the end, the creative spirit and process of each 5Pointz artist, as they emerged from spray painting obscurity to international acclaim, can never be recaptured. Collectively, they were instrumental in bringing a new generation’s multicultural visual art to the world, using an ancient platform in an innovative way. As Senator Kennedy had said years before,224 artists anticipate the future; unfortunately, the legal system was not quite ready to help them preserve it.

218 219 220 221 222 223

224

Id. Id., citing Bleistein, 188 U.S. at 251; Pollara, 344 F.3d at 271. Id. Id. at 167. Id. Id., citing Wu Lin v. Lynch, 813 F.3d 122, 132 (2d Cir. 2016) (quoting United States v. Gypsum Co., 333 U.S. 364, 395 (1948)). See supra note 61.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

Works of “Recognized Stature” Under VARA: Recognized by Whom?

289

VARA has now been on the books for 22 years and there have been about as many lawsuits based on it. However, with each lawsuit, the judges, municipalities, and property owners seem to encounter VARA for the first time. VARA contains personal protections and social aspirations akin to civil rights. Yet new civil rights laws that protect personal rights and address society’s concerns tend to become more established after 22 years. In addition, Berne Convention protection for software created in the United States is a given fully now, but Berne Convention protection for works of visual art remains elusive in the United States. Most working visual artists are still considered people living on the fringe of society, even while the commercial and academic art worlds are relatively secure economically and socially. VARA presents an unprecedented opportunity in the history of American copyright to recognize and protect society’s interests in the creation of visual art beyond those that can be measured by commercial success and mainstream acceptance and acclaim. While the limited moral rights bestowed by VARA offer protection for individual creative works, they also provide protection for the individual creative process, including the artist’s aesthetic choices, exercise of specific techniques, and generation of original ideas. The recognition of moral rights encourages the artist to imbue her work with intimate aspects of her individual being and to offer up her personal expressions as aesthetic swatches through which to embroider society’s cultural quilt.225 As demonstrated by the foregoing court decisions, the recognized stature prerequisite to VARA protection can be used to disenfranchise marginalized artists and communities from the ambit of the statute. But this is by no means an inevitable application of the law. Construed through the lens of IP-SJ, VARA’s recognized stature requirement could instead be assessed in light of the standards and artistic values of the relevant artistic community and its audience, which may perceive the subject works as part of their social fabric and local identity. Such an approach is particularly important in connection with the assessment of artistic expression, forms, and styles outside the mainstream. Moreover, this approach is consistent with the IP-SJ precepts of equitable access, inclusion, and empowerment, allowing access for nontraditional art into the copyright ecosystem based on innate artistic merit and content, as opposed to standards external and even inimical to their fundamental characteristics or message. To achieve VARA’s social function fully, the judiciary must become better educated about this federal law that protects artists’ personal rights and collective social interests, and about how an IP-SJ perspective can aid in interpreting and applying the statute’s provisions. Judges who maintain appropriate professional distance and deference in all kinds of other emotionally laden legal proceedings could be trained to do the same when lawsuits concern works of visual art. Judicial training on implicit bias and cultural sensitivity could include the ways in which different cultural groups and individuals express themselves via the arts. The bar also could be better educated about VARA and how it can be used to protect artists and communities, particularly those traditionally underserved by copyright. Few lawyers with IP practices know much about VARA, and even most copyright specialists have only heard of it. Perhaps the lawyers with the greatest need to know about VARA are those who represent private and public real estate owners and developers. When state bar associations develop CLE programs for real estate, construction law, and municipal attorneys, they would do well to include sessions about VARA. 225

See generally https://en.wikipedia.org/wiki/Quilt (last visited Nov. 18, 2022). In many cultural traditions, the art of quilting is both a communal and individual expression of commemoration; the rights implicated by VARA involve the same interweaving of personal expression into the communal identity.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

290

Sue Liemer

In addition, artists and community and social activists would benefit from learning how to use VARA to protect works of visual art that have become part of their oeuvres and their community’s life. Communities that have embraced the benefits of public art need to learn how to protect their interests, too. Many types of community organizations provide programming to educate the public about rights relevant to disputes that arise in their communities. Some programming explaining artists rights could round out those educational offerings. Having the necessary precedents and training in place to teach the judiciary, the bar, property owners, communities, and artists that VARA is an actual federal law would go a long way to protect artists moral rights and society’s non-economic interests in art. Crediting those witnesses who are best positioned to recognize the stature of a work of visual art in the context of its community would respect and protect the artists, the communities, and the patrimony of the nation. The irony underlying these VARA disputes is that the arts are more than an important means of self-expression and fulfillment for artists and society. It is through the arts that we can literally see through someone else’s eyes and see how another individual perceives the world. Our experience of an art form allows us inside the mind of another person, experiencing a bit of another person’s consciousness. Through the arts we can come to understand others who have experienced very different lives from our own, across time and space, or right next door now. It is a way of understanding anyone who is different from us. The arts educate us about each other. They help us value the other in our diverse, multicultural society. They show us what we have in common, the universal truths about being human beings. Limiting whose voices are heard in VARA disputes silences artists and cuts off this essential audience experience. Who gets to say whether a work of visual art has recognized stature determines whose art will be preserved for future generations to see who we were and who they have become.

https://doi.org/10.1017/9781108697613.019 Published online by Cambridge University Press

14 The Lead Sheet Problem in Music Copyright: Williams and Skidmore Revealed the Systematic Diminution of Pop Music’s Aural Composers Seán M. O’Connor*

Introduction I. Aural Composers’ Outsized Role in Popular Music II. Distinguishing Forms of Musical Written Notation III. The Copyright Office’s Misguided Pre-1978 Written Notation Deposit Requirement IV. The Lead Sheet Problem and its Disproportionate Effect on Minority and Disadvantaged Composers V. Recommended Composer Remedies and Judicial Responses to the Lead Sheet Problem that Would Advance Social Justice A. Composer Self-Help B. Judicial Responses Conclusion

page 291 292 297 303 308 317 317 318 319

introduction American copyright embraces all kinds of creative expression, howsoever such expression might be documented. Despite the comprehensive scope of American copyright, it has at times been misconstrued to exclude some modes of creative expression. This chapter examines the adverse intellectual property social justice (IP-SJ) impacts of the requirement of written notation to obtain a United States copyright in a musical composition in place until 1978, and still affecting a vast number of valuable works. IP-SJ1 requires that everyone be included, empowered, and

* Professor of Law, George Mason University, Antonin Scalia Law School; J.D., Stanford Law School; M.A. (philosophy), Arizona State University; B.A. (history), University of Massachusetts, Boston. The author wishes to thank Lateef Mtima, Steven Jamar, Lita Rosario, Richard Busch, Robert Clarida, Judith Finell, Ingrid Monson, Janis Gaye, Joseph Fishman, Joe Bennett, Peter Menell, Sandra Aistars, Kevin Madigan, David Lowery, Chris Castle, Mitch Glazier, Victoria Sheckler, Josh Friedlander, Peter Nicolas, Zahr Said, Jake Linford, Kristelia Garcia, Mark Wittow, Steve Tapia, Madhavi Sunder, Bradfield Biggers, Cameron Carlson, Leron Vandsberger, Michael Dean, Tim Rivenburg, Peter Vay, Mary Catherine Amerine, and the incredible librarians at the Gallagher Law Library at University of Washington School of Law where the original research for this chapter was undertaken. All errors are the author’s own; comments welcome at [email protected]. 1 See Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) for the explanation of the IP-SJ theory.

291 https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

292

Seán M. O’Connor

provided the ability to express themselves and to profit therefrom, even if the music does not arise out of or comport with European classical music traditions and mechanisms, especially written notation. Until 1978, the United States Copyright Office maintained a policy of requiring the copyright registration deposit of a musical composition to be submitted in written musical notation format. This policy contravened the 1909 Copyright Act, in effect from 1909 until 1978, and also discriminated against traditionally marginalized composers. A specific method of notating music privileges the kinds of music for which that notation was developed. This is particularly evident in the case of European classical music staff notation. Composers not fluent in this specific form of musical notation – especially those who work in aural musical traditions, or who are from disadvantaged communities or backgrounds and thus did not enjoy access to formal music education – have been routinely discriminated against when the copyright system has been incorrectly construed to require the use of such notation. Such misapplication of the law has historically been used to deny protection to works that contain creative musical expression, but which were not documented by their composers in the written notation method received from the European classical musical tradition. This chapter examines a particular consequence of the foregoing for aural composers (those who perform and write by ear): valuable elements of their compositions have been denied protection simply by dint of the composers’ inability to transcribe their works into Western musical notation. As a result of two recent decisions – Williams v. Gaye2 and Skidmore v. Zeppelin3 – as well as the resulting analyses and advocacy of IP-SJ scholars and activists, this long-standing tradition of intellectual property social injustice has recently come to light. After establishing the fundamentals of aural composition in section I, section II articulates various ways of capturing music in written notation. Section III then explains the impact of the Copyright Office’s misguided restriction of copyright registration deposit copies to written musical works, which resulted in an unintentional, but unjust, coverage gap between the bare bone “lead sheets” often submitted as the copyright registration deposit and what the aural composer actually wrote. Finally, section IV proposes four ways in which composers and courts can recover the rich scope of works by aural composers and thus provide appropriate copyright protection, in fulfillment of the IP-SJ mandates of the copyright law.

i. aural composers’ outsized role in popular music At the outset, I define “aural” (by ear) musicians as well as the misguided stigma against them.4 Interestingly, the bias seems to be as much a matter of perceived popular expectations as the result of intentional discrimination within the music industry. In fact, it appears the biggest open secret now is that many if not most leading composers in all manner of pop genres – rock, country, blues, hip hop and rap, R&B, and funk – do not read musical notation fluently. 2 3 4

895 F.3d 1106 (9th Cir. 2018). 952 F.3d 1051 (9th Cir. 2020). I use “aural” here instead of “oral” because I focus on this “playing by ear” nature of learning, playing, and composing music directly on instruments without written notation intermediation. By contrast, “oral” connotes folk and other traditions in which senior musicians directly instruct junior musicians in how to play particular songs as a means of preservation and transmission across generations. Both aural and oral traditions are predominant in the transmission of not only traditional folk music forms, but also in new popular music forms. See Brief for Institute for Intellectual Property and Social Justice Inc. et al. as Amicus Curiae Supporting Appellees, Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018) opinion amended and superseded on denial of rehearing en banc by Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018) (No. 15-56880), 2016 WL 7494673.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

293

Long before musical notation systems emerged in medieval Europe, composers and performers composed, learned, and passed down music by ear and show-how. Sitting around in a group, musicians watch and listen to each other to convey musical passages and ideas. This ancient, core mode of music conveyance still dominates among many musicians around the globe – even in Western countries where sophisticated musical notation is well established. An excellent illustration of this is the recently released documentary Get Back by Peter Jackson.5 In it we see the members of arguably the most famous classic rock group of all time, The Beatles, composing new songs and performing old ones, individually and together, primarily through aural means. An assistant keeps track of lyrics occasionally by writing them down. But the musicians themselves do not create or use written notation of any kind. Even those musicians fluent in written notation must still learn proper phrasing and timbral techniques through aural show-how. Professional musicians do not become so through reading books alone. They study under great teachers and practice extensively to master the “procedural knowledge” (muscle training and memory) necessary to perform well. Note the continued use of conductors for classical orchestras – what is this other than a leader visually conveying how she wants the music on the page interpreted for a particular performance? This interpretive zone means that there is not just one rigid way to perform a piece as written. At the same time, composers fluent in written notation still usually compose on an instrument such as piano or guitar. The anecdotes of Mozart and Beethoven being able to compose at least some of their great works completely in their heads – with only the physical act of writing notes on a page – are generally used to show their truly exceptional ability. In other words, the exceptions prove the rule. While aural learning thus has always remained a constant in music composition and performance, the codification of music into written notation allowed dissemination of musical works at a distance. The notated sheets could be sent to other cities, towns, and regions where someone who was fluent in the notation system (and understood the performance conventions implicit in the genre from aural training) could perform a minimally viable version of the composition without ever seeing or hearing the composer or anyone else perform the piece. Just as Latin provided a common language and “republic of letters” culture that facilitated transmission of ideas across Europe – even as the continent was divided among many principalities, customs, and local vernacular languages6 – the new musical notation enabled transmission of musical ideas across the continent. At the same time, developing widespread literacy – for literary, mathematical, scientific, or musical writings – was a challenge, although early modern Europe had some minor relative success. Even with the greater success in America and Europe over the past century or so, mathematical, scientific, and musical notation literacies generally lag behind alphabetic literacy.7 This may be because of the baseline requirement of a threshold level of alphabetic literacy for modern industrialized democracies. By contrast, folk or popular music performers could continue learning and transmitting music sufficient for performance across generations. It was 5

6

7

The first bits of creation are shown in Part 1 at the 1:03:08–1:06:45 marks. The Beatles: Get Back, Documentary (Peter Jackson ed., Walt Disney Studios, Apple Corps, & WingNut Films 2021) https://ultimateclassicrock.com/paulmccartney-beatles-get-back/. See Edward Grant, The Foundations of Modern Science in the Middle Ages, 152–58, 172–86 (1996). Both of these codification tools (writing and musical notation) arguably set the stage for the major advances in arts and sciences for both the scientific revolution and renaissance of the eleventh through thirteenth centuries (during which the innovation of universities emerged) and then the Renaissance of the fourteenth to fifteenth centuries and the scientific revolution of the seventeenth century. Written music notation has its origins well before the staff notation that came to dominate European classical music 500 years ago, but it was then that what we recognize as staff notation really took hold. Id.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

294

Seán M. O’Connor

only among the emerging formally educated or apprenticed musicians in the lineage originating out of commissioned or client–patron music for the Church or royal courts that facility with written notation became de rigueur.8 The rise of “popular music” in the late nineteenth and early twentieth centuries notably reelevated “folk” and vernacular music genres, contrasting them against the highly sophisticated symphonic music of the Classical and Romantic periods. Of course, the Romantic movement in formal music arguably itself set the stage for the new “popular music” by re-introducing emphasis on the emotional content of music along with folk music themes. But while Romantic music largely incorporated white European folk themes, new versions of Black African-based musical forms were spreading across America in the modes of blues and gospel music. The “blue notes” characterizing the melodic and harmonic components of these forms – flatted thirds, fifths, and sevenths off the European major scale – soon found their way into other emerging musical forms. Most notably, ragtime, barrelhouse, Dixie, and jazz were effectively mash-ups of European marching band-type instrumentation and musical forms with the blue notes and shuffle rhythms of blues and gospel. Meanwhile, in Appalachia, the South, and the “Middle West,” country music had emerged from traditional Scots–Irish reels and jigs. All of these forms had more direct appeal – especially for weekend dances and juke joints – than did formal music by classically trained composers and performers. Songwriter Stephen Foster typified the fame and impact possible for the new popular music. Many of the nuances of these new forms of popular music are difficult to capture in musical notation – even more difficult than capturing classical musical compositional features. One example includes rhythmic innovations resulting from the blending of rhythms from different cultures and genres. A foundational premise of Western written notation is the even subdivision of time from whole to half to quarter to eighth, to sixteenth etc. notes. While triplet notation or dotted time extension conventions can give a simulacrum of time outside rigid even subdivisions, they cannot really capture modern pop rhythms that drive ahead, lag behind, or “swing” across the beat. Another example is the microtone “innovation” in modern music that really is just a throwback to ancient forms of music that pre-date – and thus “ignore” – the modern obsession with 16 fixed half tones as the “atomic” structure of music. Beyond the blue notes that can be notated with flats in the half tone system, micro-tones that are crucial to “bent” notes such as on a guitar or voice – where the performer swoops smoothly up or down in pitch from the original tone – cannot be readily accounted for in European music notation. While many bends do in fact go up or down a half or even whole pitch – which can be annotated – much of the emotional impact of bluesbased styles is in flat or sharp ephemeral deviations that do not reach even a half tone increment. Furthermore, innovative techniques such as slide guitar or pitch bending on a harmonica just need to be heard and seen to be replicated. These developments intensified as the “fretboard gymnastics” of modern rock guitar – e.g., two-handed tapping à la Eddie Van Halen – meant that how you played something was often more important than the bare notes to be played. It is not impossible to convey many important features of twentieth and twenty-first century popular music in conventional music notation.9 But it has often been easier and faster to 8

9

Written notation in fact originated among monks looking to capture and disseminate regular patterns of plainsong (e.g., Gregorian chant) among monastic and lay choirs. See Anna J. Reisenweaver, Guido of Arezzo and His Influence on Music Learning, 3 Musical Offerings 37, 38–42 (2012). See, e.g., Robert Brauneis, Musical Work Copyright for the Era of Digital Sound Technology: Looking Beyond Composition and Performance, 17 Tul. J. Tech. & Intell. Prop. 1, 36–40 (2014).

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

295

compose and convey songs in these forms by watching and listening rather than through written notation. And in fact, to capture what musicians are playing and composers composing, supplemental notation outside of the traditional music staff notation often are invented and deployed to convey to others who wish to play the music on their own instruments the specific mechanics or techniques of playing.10 Most crucially, the lack of fluency in written notation has proven no serious impediment to composers or performers of popular music from the twentieth century to today. In fact, most popular music forms such as rock, blues, country, and hip hop do not even use sheet music in performance. To the contrary, the emotionally cathartic performance aesthetic of playing to and communing with the audience in these popular music forms is antithetical to sitting behind and reading sheet music. Similarly, many popular music songwriters in genres like folk, rock, country, and blues do not even compose all the parts a full band might play in their compositions. Instead, the songwriter comes in with a melody and chord structure, and maybe a couple of suggested riffs for a lead instrument like guitar or horn, and generally lets the other band members create and add their own parts, with only guidance as to whether it fits the vibe or aesthetic vision the songwriter was seeking to create. The creation of a number of classic The Beatles songs captured in Get Back again provides a master class in the melody and chord skeleton approach. Amidst a delightfully surprising number of impromptu jams on classic old songs – again with nary a sheet of music in sight – one after the other of The Beatles introduce a basic vocal melody and chords to the other bandmates. Not only are the other band members expected to create their own parts, but they are also clearly relied on to workshop the rudimentary composition itself. In fact, the viewer comes away with a distinct sense that The Beatles strongest talent was in being a top notch, selfcontained composition critique and editing machine. They are by and large wonderfully open to each other’s critiques and suggestions as well. Underscoring this critique collective insight, the most tense part of documentary comes to a head when Paul McCartney is trying to direct George’s parts on Paul’s song. George seems to feel that Paul is ambiguously micro-managing: Paul can’t say exactly what the part should be – which George says he would be willing to play – but at the same time he does not like George’s approach in creating one. Ultimately, George temporarily quits The Beatles over this issue.11 When he comes back, he is a co-equal again with insightful critiques of the others’ rough compositional ideas. But for those viewers imbued with the composer-as-arranger concept of songwriters, it will be quite surprising as to how much the compositional ideas change from the first rough demo in the rehearsal space to the final polished song. Alternately, some classic songs grow out of mere riffs. One example that suffuses the Get Back documentary is the song Get Back itself – a major later career hit for The Beatles. It starts with Paul simply vamping on a driving bass part – really a rhythm on mainly one note. Fans of The Beatles can recognize the song just from this bass rhythm and the documentary flags this off-thecuff bit by Paul as the beginnings of the song. Paul adds some vocal ideas later. But the other

10

11

For example, the flute “overblowing” technique at the heart of the artistic and commercial value of flautist James Newton’s composition Choir was more or less captured in his basic score. See Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004). Arguably, the break was also the result of a long build up from the sessions for the previous album The Beatles (often referred to as the “White Album”) in which each band member composed and recorded many of their own songs as essentially solo projects with the other members (and outside musicians such as Eric Clapton) playing as sidemen. The premise of the Get Back project was to “get back” to their roots as a tight, rocking, egalitarian band, and not a collection of separate composers.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

296

Seán M. O’Connor

members add quite a bit both musically and lyrically. The subject matter is soon a political piece countering rising anti-immigrant sentiment in Britain at the time. But over time, the on-the-nose pro-immigrant lyrics metamorphose into the ones fans know today, which while they are about unconventional characters are not necessarily about immigrants. Is this Paul’s song anymore? Was it ever his song? It is officially published as a Lennon–McCartney piece, but that is because of Paul and John’s credit and publishing deal sealed early in their career with then manager Brian Epstein to be a songwriting partnership regardless of who produced the core idea for any particular one.12 Leaving The Beatles behind for the moment, another example of a riff driven composition is Funky Drummer “by” James Brown. It starts when Brown’s drummer, Clyde Stubblefield, plays a new funk beat he has produced in the studio. The other musicians join in and soon James Brown is ad-libbing spotty lyrics on top.13 Even as popular music forms eclipsed classical music in terms of commercial appeal, there lingered a sense that the latter was “real” or “serious” music while the former was ephemeral and inconsequential. In other words, Beethoven would be remembered through the ages while a Tin Pan Alley ditty writer would not. As basic music education expanded in American public schools, written music notation became accessible even to those who barely finished high school. Thus, a sense emerged that any serious or professional musician would be able to read and write music in the same way that an author writing a novel would have to be literate. And yet, in one of pop music’s long-kept open secrets, many or even most successful songwriters across the various genres were not fluent, if not flat-out illiterate, at written notation. This included early twentieth century giants such as blues pioneer legend Robert Johnson,14 stage musical genius Irving Berlin,15 and jazz innovator Dave Brubeck.16 Mid-century rockers and soul/funk/R&B masters including Elvis Presley,17 Bob Dylan,18 John Lennon,19 Paul McCartney,20 Stevie Wonder,21 Aretha Franklin,22 Jimi Hendrix,23 Eric Clapton,24 and Marvin Gaye25 all fit the bill. The tradition continued through the end of the twentieth century and into

12

13 14 15 16 17

18

19 20

21

22 23

24

25

See Daniel Kreps, Paul McCartney Talks Nixed ‘McCartney/Lennon’ Songwriting Credit, Rolling Stone, Jul. 5, 2015, https://www.rollingstone.com/music/music-news/paul-mccartney-talks-nixed-mccartney-lennon-songwriting-credit-36633 / (last visited Dec. 15, 2022). https://www.youtube.com/watch?v=i9vTA3nyquc (last visited Dec. 15, 2022). https://www.themusicstudio.ca/blog/2017/11/909/ (last visited Dec. 15, 2022). https://hellomusictheory.com/learn/famous-musicians-who-cant-read-music/ (last visited Dec. 15, 2022). Id. https://www.youtube.com/watch?v=rZbkY_RRL2A (last visited Dec. 15, 2022); https://www.classicfm.com/discovermusic/famous-musicians-who-cant-read-music/ (last visited Dec. 15, 2022); https://hellomusictheory.com/learn/ famous-musicians-who-cant-read-music/. https://www.classicfm.com/discover-music/famous-musicians-who-cant-read-music/; https://hellomusictheory.com/lea rn/famous-musicians-who-cant-read-music/. https://www.classicfm.com/discover-music/famous-musicians-who-cant-read-music/. Id.; https://www.youtube.com/watch?v=rZbkY_RRL2A; https://hellomusictheory.com/learn/famous-musicians-whocant-read-music/. https://www.classicfm.com/discover-music/famous-musicians-who-cant-read-music/; https://hellomusictheory.com/lea rn/famous-musicians-who-cant-read-music/. Id. https://www.youtube.com/watch?v=rZbkY_RRL2A; https://www.classicfm.com/discover-music/famous-musicians-who -cant-read-music/; https://hellomusictheory.com/learn/famous-musicians-who-cant-read-music/. https://www.classicfm.com/discover-music/famous-musicians-who-cant-read-music/; https://hellomusictheory.com/lea rn/famous-musicians-who-cant-read-music/. https://www.hollywoodreporter.com/business/business-news/marvin-gaye-family-defends-blurred-lines-trial-outcomeappeals-court-958705/ (last visited Dec. 15, 2022).

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

297

the current one with Michael Jackson,26 Eddie Van Halen,27 Prince,28 and Taylor Swift.29 Even leading movie score composers including Danny Elfman and Hans Zimmer are not fluent in musical notation.30 This list is by no means comprehensive and it is likely that more pop music composers are not fluent – or even literate – in written notation than those who are. This technical limitation clearly has had little impact on their ability to convey their compositions to other musicians to perform and record. One side benefit of the Williams and Skidmore cases is that they revealed the lack of written notation fluency or use by the core composers in each. This has corresponded with a general increase in revelations by other major pop composers that they are not literate or fluent in notation. And yet, most of the revelations seem sheepish or apologetic. The prestige of formal music education and use of written notation still hold significant sway over pop musician’s selfperception despite the lack of strong benefits from these modalities of music. It is as if these musicians fear they will appear to be frauds to the general public if they admit not being able to read music notation fluently. While there may be some truth to this for some segments of the general population, music fans by and large seem deeply unconcerned.

ii. distinguishing forms of musical written notation There are various methods of written music notation – e.g., European staff notation, guitar tablature notation – and various categories within each method. The three main categories of European staff notation are based on the detail or completeness of the notation written. A full score such as this excerpt from Beethoven’s Ninth Symphony in Figure 1 below is used by orchestra conductors. It contains separate staves for each instrument scored. This sheet covers only eight measures or bars of the work. At the left margin are the names of each instrument for a given staff line: flauto (flute), oboe, etc. Composers trained in European staff notation generally use this form, scoring simultaneous parts for various instruments, such as stringed instruments, woodwind, brass, and percussion. Even though this is the most detailed and complete written notation of a music composition, the conductor and each player must still bring to each part and to the score overall their knowledge of pace, accents, expressive playing, and much more to translate the black marks on paper into the emotive sounds we hear. If no interpretation was required, or if interpretation was not even possible because of the precision of the score, then the notable differences among performances of a work by various musicians and conductors would not exist. In other words, as long as the performance was by a skilled orchestra, we would not care which performance or recording we hear. And yet, classical music fans are adamant about which orchestra, conductor, hall, or even particular performances of that same combination on different nights they hold to be “the best.” For those not steeped in music culture, an analogy is the live theater: different directors and actors can bring very different readings to the same play as written.31 This is evidenced by the different reviews each receives from critics and the public. 26 27

28 29

30 31

https://hellomusictheory.com/learn/famous-musicians-who-cant-read-music/. https://www.youtube.com/watch?v=rZbkY_RRL2A; https://hellomusictheory.com/learn/famous-musicians-who-cantread-music/. https://hellomusictheory.com/learn/famous-musicians-who-cant-read-music/. https://www.classicfm.com/discover-music/famous-musicians-who-cant-read-music/; https://hellomusictheory.com/lea rn/famous-musicians-who-cant-read-music/. https://www.classicfm.com/discover-music/famous-musicians-who-cant-read-music/. A playwright pens specific lines to convey a particular message. However, the message ultimately conveyed to the audience when the play is performed is a function of both the written lines and how the lines are delivered by the actor

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

298

Seán M. O’Connor

fig ure 1 4.1

Contrast this full score, or conductor’s score, with a published “short score,” commonly referred to as “commercial sheet music” (or “sheet music”). The latter is what most amateur musicians are familiar with. It does not score all the instrument parts for the work. Rather, it creates a new arrangement of the composition that focuses on only some elements, often those that can reasonably be played by two hands on a keyboard by a beginning to intermediate musician. Figure 2 shows the first page of the commercial sheet music for Marvin Gaye’s Got to Give It Up. Sheet music typically contains a treble clef that shows the melody with some harmony and a bass clef that shows chords along with perhaps a bass line. If the composition contains a vocal performing the part. An actor’s approach to performing a role, and even the message to be conveyed, is often informed by having seen prior performances or interpretations of the role, and differing messages can be communicated notwithstanding the fact that the character’s lines are always the same. Stage direction, either written or provided orally, is another way to shape an actor’s interpretation and performance of a role.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

299

fig ure 14. 1 (cont.)

melody, then that is generally scored in an extra treble clef above the piano staves or on the treble clef piano staff. In that case, the two-handed piano part in treble and bass clefs below the vocal melody staff generally have harmonic and chord parts, together with instrumental hooks or flourishes, and a bass line set up across both those staves. The only other instrumentation usually given is the abbreviated names of chords – e.g., “A7” – above the top staff for chordal accompaniment on guitar, banjo, ukulele, etc. In some cases, as in Figure 2, a diagram of a guitar version of this chord is given in addition to the abbreviated name, and oftentimes that voicing of the chord is simply a first position, or beginners, version of the chord and not the one intended by the composer or used by the musicians in the recorded composition Even more often, no direction as to how to play this chord, in the sense of rhythmic strum or fingerpicking

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

300

Seán M. O’Connor

fi gu r e 14. 2

pattern, is given. The chord name simply appears above the staff at the point when the accompanist should start playing it, and implicitly ends only when another chord name appears, or the mark “N.C” (no chord) appears. Accordingly, sheet music for popular music is rarely one and the same with the actual composition unless the composer wrote the music as that exact two-handed piano part – e.g., sheet music of Scott Joplin’s piano rags. To make the music easier for the amateur musician to play or sing, commercial sheet music often presents songs in a different key from the original composition, with different notes and often simpler chords, and with integral parts written by the composer omitted (such as lead or bass guitar parts, horn parts, etc.). So even in the case of a piano composition such as a Joplin rag, the commercial sheet music aimed at the amateur market – traditionally the vast majority of sheet music sales – would likely still be a simplified arrangement. Additional factors such as articulation – i.e., how the notes should be played such as staccato, legato, accented, etc., – are often not specified in this type of notation. Usually, at most, there is a style note at the beginning of the piece, such as “moderately” in Figure 2 above. Just like the piano part, notated chord names and stock guitar diagrams above the top staff are often simplified from what appeared in the actual composition so that they are easier for the beginning to intermediate guitarist to play. In particular, the default, again, is to use beginner “open” chords – those that use open strings and fretting in the first three frets (or first position) – if at all possible, to achieve a rudimentary simulacrum of the harmonic and chordal accompaniment. While these open or first position chords are perfectly fine, and in fact used extensively in folk, country, and singer-songwriter genres, they are often eschewed in jazz and more sophisticated subgenres of pop, rock, funk, and soul. This is in part because the open, unfretted strings in these chords tend to ring out and are harder to control dynamically than chords where all notes are fretted.32 In Marvin Gaye’s Got to Give It Up itself (the song at the heart of Williams), 32

Open chords also often use five or six strings and thus can sound “looser” than higher position and more sophisticated chords that use only the minimum notes necessary to construct the chord. For example, a G chord requires only three

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

301

a guitar player using an open position A7 – with the fifth, third, and first strings ringing out unfretted – would have a difficult time emulating the tight rhythmic pattern the composition requires (and as played on the keyboard in the commercial recording).33 In many cases, even a singer-songwriter who composes on guitar and voice will write a specific guitar part that has melodic embellishments or includes a bass line that make it more than just a sequence of generic open chords. The famous example of the guitar parts from Taurus and Stairway to Heaven at issue in Skidmore both use a particular arpeggiated fingerpicking style and chromatic descending bass line.34 The question then is what constitutes the song?35 Is it simply the “main” or “top” melody line? Or is it that melody line specifically in the context of an unusual harmonic structure? How about using particular instruments, timbres, recording, or performing techniques? Further, as in Taurus and Stairway, there can be “accompaniment” parts that are readily identifiable and distinctive to the listener such that they are integrally part of the “composition” and potentially protectable on their own. These are not simply “chord changes” anymore, but rather distinctively played instrumental passages. If a guitarist is seeking to perform the composition as songwriters such as California or Page wrote it, then she simply cannot strum – in some indeterminate manner – the open position chords as named and identified above the sheet music staves. Rather she would have to listen to a performance and/ or possibly work out a part from the two-handed piano part in the sheet music, if it contained a reasonable simulacrum of the actual descending bass line arpeggiated guitar part. This is what many of us tried to do back when Stairway to Heaven came out in the 70s and significant experimentation was required to get anything close to Page’s part. Even members of The Beatles and their engineer Glyn Johns note the inaccuracy of sheet music available in the late 1960s.36 In one break from creating music, the group is talking with a representative from the publishing company where The Beatles – individually or perhaps as Apple Corps – owns a catalog including not only their own compositions but those of many others.37 They are admiring and laughing about some of the entries. But then they briefly discuss

33

34

35

36 37

notes (G B D), while the standard open or first position G chord uses all six strings with redundancies of notes (G B D G B G). This makes for a nice big “chunky” or “jangly” chord, which is perfect for, say, a big sing-along chorus. But, for anything else, I would go with at least a G barre chord (G D G B D G, all notes fretted on third, fourth, or fifth frets), and play palm muted with emphasis on the low root, fifth, octave “power chord” portion on sixth, fifth, and fourth strings when there is a vocal or other instrument melody line. The higher notes can be added for emphasis and to fill out the sound during breaks in the main melody. In very tight jazz type situations, I might go instead with a strict triad of G B D on fourth, third, and second strings, at fifth, fourth, and third frets, respectively. Or, of course, substitute a more interesting, sophisticated chord like a G6 or Gmaj7 (if the harmonic structure allows). When I play the song, I use either: a mainly closed A7, with only an open fifth string A root, up around the fifth fret (A G C# D A; open fifth, sixth, fifth, fifth frets, respectively); or closed A7 up around the 12th fret (A C# G A; 12th, 11th, 12th, 10th frets, respectively). These voicings allow tight, funky vamping appropriate to the groove. Advanced scores of both songs by those trained in written notation tend to show this passage as a progression of completely different chords over the first three measures. See, e.g., Skidmore v. Zeppelin, 952 F.3d at 1059. However, both composer/guitarists (California and Page) played them on guitar as an A minor over descending bass notes. This particular chromatic descent under a minor chord is a common device known to most decent guitarists and none of us – that I am aware of – think of it as completely different chords. As such, it is almost certainly musical scènes à faire, and one can easily find on the Internet demonstration and comparison, such as my own on YouTube at https://www .youtube.com/channel/UCTgz0Fo6VT5zcylFCRcEawg. For a more detailed consideration of the issues in this paragraph, see Joe Bennett & Sean M. O’Connor, Determining the Composition, in The Oxford Handbook of Music Law & Policy (Sean M. O’Connor ed., 2021), https://www .oxfordhandbooks.com/view/10.1093/oxfordhb/9780190872243.001.0001/oxfordhb-9780190872243-e-4. Get Back (Walt Disney Studios 2021). Billboard provided a good timeline of ownership of The Beatles’ music publishing catalog in 2017. Dan Rys, A Brief History of the Ownership of the Beatles Catalog, Billboard, Jan. 20, 2017, https://www.billboard.com/music/rock/ beatles-catalog-paul-mccartney-brief-history-ownership-7662519/#.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

302

Seán M. O’Connor

fig ure 1 4.3

how poor many of the released sheet music copies are in relation to the actual song, which they likely take to be the released recording of it (as most of us do today). Lead sheets, the third category of European staff notation, are the most stripped down, abstracted versions of compositions. They often contain a single treble clef showing the main melody with chord names given along the top as they are in sheet music – but without the guitar diagram. Sometimes lead sheets include other notable parts such as a bass line, as in the lead sheet for Got To Give It Up in Figure 3, or give performance directions such as “moderate swing.” Lead sheets are designed to be used by professional performers who know how to interpret and extrapolate from them and they function as a kind of shorthand for composers. For example, popular music “fake books” compile standard show tunes, jazz standards, or pop

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

303

standards, etc., in lead sheet form so that musicians already familiar with the song can “fake it” with just melody and chords in live performances, especially where they take requests from the audience.38 However, because these are aimed at the professional musician, the chord names across the top of the staff will often be more complex and on par with the “actual” chord used by the composer for the work, e.g., Gmi7(♭5) (which indicates a G minor chord with a seventh tone and a flatted fifth tone). Occasionally, and significantly, a lead sheet will contain an additional element, such as the bass line in Got To Give It Up, that is considered exceptionally important for the song. In my experience, no professional musician believes that modern pop song compositions consist only of the single melody (and lyrics) plus basic chord indications that a lead sheet typically shows. The composition as notated in shorthand on the lead sheet is not limited to what is inscribed within the four corners of the lead sheet. The composition as actually composed includes melody, harmonies, chord progressions, rhythms, and many other stylistic elements. We may play a stripped-down version off the cuff in a night club to appease a drunk patron who has called it out, but we are often a bit embarrassed to do so. In sum, only a full or conductor’s score captures all the elements of a composition and even that score does not fully notate all of the nuances of phrasing, timbre, and other crucial aspects of modern pop music that can often make one song a hit and another that seems quite similar a flop. Commercial sheet music and lead sheets fare far worse as documentation of the scope of a composition, insofar as they intentionally do not include all elements of the music. Note for example, that sheet music and lead sheets omit percussion entirely, and yet rhythm is often central to modern pop hits, especially in hip hop and rap. While experienced musicians who have heard a performance of the full composition can often reconstruct it largely by ear using the sheet music or lead sheet as a guide, such reconstruction only underscores that these limited notated forms should never be used as the sole delineation of the scope of a composition for copyright purposes – absent evidence they contain the sum total of what the composer believed she had written.

iii. the copyright office’s misguided pre-1978 written notation deposit requirement Prior to 1897, music copyright was limited to written notations, with no performance right. This was likely in order to comply with the requirement of a “writing” in both the IP Clause of the U.S. Constitution39 and the Copyright Act of 1870 in force at the time.40 The only mode of infringement was to make a written or printed copy of the registered copy. Audio recordings in the form of wax cylinders, acetate disks, or player piano rolls were just emerging in the late 1800s. An 1897 amendment to the Act added performance rights.41 Accordingly, infringement of the copyright in a musical composition was no longer limited to copying physical copies of printed versions of the music. Unauthorized performances infringed the copyright holder’s rights in the composition. It did not matter whether musicians performed the music by ear, or from sheet music purchased legally, or from lead sheets, or from other notation created to recall the work to the mind of the performers. It was the performance itself that if done without authorization 38

39 40 41

See, e.g., R&B Fake Book: 375 Rhythm & Blues Songs (1999) (includes Got to Give It Up, at 134); The Real Book (6th ed. 2016) (originally compiled by the Berklee College of Music in the 1970s). U.S. Const. art. I, § 8, cl. 8. 16 Stat. 198 (Jul. 8, 1870). Act of Jan. 6, 1897, 29 Stat. 481 (Jan. 6, 1897).

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

304

Seán M. O’Connor

infringed the copyright. The performance rights in a musical work were neither tied to any written or printed embodiment nor confined in scope to that embodiment in any form of written notation. By the turn of the century, recorded music was established enough that litigation was being brought by composers and their publishers on grounds that it infringed the exclusive right of copying (not performance).42 In 1908’s White-Smith Publishing Company v. Apollo Company, the Supreme Court affirmed lower court holdings that the perforated sheets embodying copyrighted songs for use in player pianos were neither “writings” nor “copies” in the statutory sense because they were not “‘a written or printed record of [the musical composition] in intelligible notation.’”43 The key was that “intelligible notation” meant something that human musicians could read and perceive or perform the work. The decision sent composers and music publishers to Congress, just as the Court had suggested.44 The major restatement of law in the Copyright Act of 1909 thus extended “copy” to include “mak[ing] any arrangement or setting of [a musical composition] or of the melody of it in any system or notation or any form of record in which the thought of an author may be recorded and from which it may be read or reproduced.”45 In case one doubts whether this provision really extended protection beyond human-readable notation, further provisos creating the new “mechanical license” described plainly what Congress had in mind: “That the provisions of this Act, so far as they secure copyright controlling the parts of instruments serving to reproduce mechanically the musical work.”46 “Mechanically” was the term used because the player pianos of the time were purely mechanical devices that the user had to pump via foot pedals to activate the mechanism. Electric motor driven turntables were not available yet and electric amplification for the sound itself would not be feasible until 1915. Accordingly, commercial use of electricity in recording and playback would not occur until the next decade. Thus, all Victrolas, wax cylinders, etc. of the time were purely acoustic-mechanical devices that relied on acoustic horns for concentrating and amplifying sound as well as crank mechanisms to wind up a coil or springs to power rotation of the disk or cylinder for playback. But if copyright on musical compositions was now extended to mechanical reproductions, why couldn’t a composer gain protection for a work recorded only in such mechanical form? The relevant sections of the Act did not limit the process for securing copyright in musical compositions to human-readable notation: Sec. 9 That any person entitled thereto by this Act may secure copyright for his work by publication thereof with the notice of copyright required by this Act; and such notice shall be affixed to each copy thereof published or offered for sale in the United States . . . Sec. 10. That such person may obtain registration of his claim to copyright by complying with the provisions of this Act, including deposit of copies, and upon such compliance the register of copyrights shall issue to him the certificate provided for in section fifty-five of this Act. Sec. 11. That copyright may also be had of the works of an author of which copies are not reproduced for sale, by the deposit, with claim of copyright, of one complete copy of such work if it be a lecture or similar production or a dramatic or musical composition.47 42 43 44 45 46 47

See White-Smith Publishing Company v. Apollo Company, 209 U.S. 1, 12–14 (1908) (summarizing cases). Id. (using quotation marks but not citing a source). The court felt appropriately constrained by the Copyright Act as it stood at the time. Act of Mar. 4, 1909, § 1(e), Pub. L. 60-349, 35 Stat. 1075 (Mar. 4, 1909) [hereinafter Copyright Act of 1909]. Id. Id. at §§ 9–11 (emphases added).

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

305

It would seem that a player piano roll, or a Victrola disk, could be published with copyright notice – and likely were so marked. Even if not reproduced for sale – with or without copyright notice – they should still have been satisfactory to serve as the deposit copy under Section 11. There is an as-yet unsubstantiated claim by former Register of Copyrights, Marybeth Peters, that the Copyright Office did in fact accept player piano rolls as deposits to register copyrights in musical compositions during the 1920s and 1930s.48 Notably, unauthorized mechanical recordings were treated as infringing rights in the musical composition itself, like making a copy of the musical score, but not treated as infringing the performance right that also attached to the musical composition. The player piano scroll was the infringing item, not the performance of the composition thus encoded on the player piano.49 Thus, any argument that the extension of copyright protection to mechanical recordings was limited to the performance right – such that “copies” were not copies of the composition and could not serve as registration deposits for it – is unavailing. Under the text of the statute, if mechanical recordings are copies of anything, they are copies of the composition. Further, any sense that “records” is a modern term meaning, say, vinyl music disks – and hence geared towards the sonic experience and not the composition – is an anachronistic, yet common, mistake. “Recording” was used simply because these were “records” in the sense of memorialization of certain information such as the “records” at your local hospital, school, etc. It was not a neologism created for vinyl music disks. Thus, “records” are fixed expressions of information in whatever media for whatever content. The relevance for disfavored aural composers is that they could have used the versions of player piano master devices that would cut a roll from an actual performance on the piano. As the Court in White-Smith explained, there were three ways that piano roll masters were made.50 First, a skilled worker would mark a blank roll by hand with a pencil to draw the blocked areas to be cut out. The holes allowed air to pass through the roll when passing through a player piano, which in turn allowed pneumatic pressure to activate the corresponding piano key, striking the piano strings to make the desired tone and holding it for as long as the opening continued. This was all very steampunk and quite time consuming, requiring good musical knowledge on the part of the drafter. Once the original was drawn, a copy of it was made and the relevant areas cut out. This subsequent “master” was then used in a machine that could mechanically perforate copies. The second way a roll could be made was to copy the master created by another firm. And the third – most relevant here – was “[b]y playing upon a piano to which is attached an automatic recording device producing a perforated matrix from which a perforated music roll may be produced.”51 This should – and may – have been a godsend to aural composers. Now they could “record” and distribute copies of their works without having to be fluent in written notation or hire a transcriber to do so. Granted, the recording pianos were likely expensive. It is also not clear any were available for hire. There may also have been concerns about how accurate the devices were, in terms of exact phrasing of passages. But accuracy would have been apparent on any playback. 48

49

50 51

Conversation of Howard Abrams with Marybeth Peters, former Register of Copyrights on Oct. 19, 2016. Whether she believed this through awareness of historical deposits, lore within the Copyright Office, or otherwise (as this was well before her time) is unclear. Of course, a public performance of a composition by means of a player piano could infringe the performance right in the composition. 209 U.S. at 10. Id.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

306

Seán M. O’Connor

Whether aural composers tried to use recording player pianos is unclear. We do know that George Gershwin used one to make a recording of himself playing Rhapsody in Blue.52 Otherwise, they were stuck with the existing system in which a music publishing company’s staffer would transcribe some version of the composer’s work (either from a live or recorded performance), of which the composer could not herself verify the accuracy. At best, the aural composer could seek out a trusted person fluent in written notation to play the publisher’s transcript for them. But in that case, the composer could have asked that person to transcribe the piece directly. Whether the publisher would have accepted this is a different question. My guess is that bias would have been involved. A publisher may well have accepted for copyright registration and deposit the written notation from a credentialed composer (e.g., a classical composer with a music degree), while rejecting something from an “unschooled” songwriter, especially if that person did not notate it themselves. Likewise, Victrola and other company’s disks or wax cylinders should have been allowed for use by aural composers to record and deposit their works to the Copyright Office. It is true that these media looked even less like “notation” than did piano rolls. But if the term “copies” under the Copyright Act had effectively been extended to include such media, then notation form did not matter anymore. It might be argued that Section 1(e) was only a provision for what sorts of things might infringe a composer’s copyright and not about extending what counted as a copy for registration purposes. In other words, under this account, there were two kinds of “copies”: those that represented the author’s work for establishing copyright and others that could be considered infringing on that copyright. This argument draws its most strength from the location of the extension – in Section 1(e) and not Section 1(a) where the core exclusive copy rights are established. Section 1(e) seems drawn to performance rights, which were not at issue in cases such as White-Smith. And yet, the relevant language in Section 1(e) specifically references Section 1(a): “and for the purposes set forth in subsection a hereof.”53 Accordingly, a reading that has Section 1(e) extending the definition of “copies” – for any purpose – to mechanical reproductions seems to have the better support. Another speculative argument for why the Copyright Office resisted allowing mechanical reproductions for deposit and registration is that doing so could risk confusing musical composition rights with any new rights that might emerge around the audio recordings themselves. And in fact, rights in audio recordings would be recognized under both state common and statutory law in some jurisdictions by mid century as recordings evolved into their own art form.54 Advances in studio recording technology such as multitrack tape recorders enabled the creation of aesthetic studio artifacts that were seen as distinct from any underlying musical composition. Congress’ decision to craft a separate category of copyrightable works – “sound recordings” – locked in a tension emerging between composers and performers for legal rights as to what each produced. Joe Bennett and I explore the long-term implications of this elsewhere.55

52 53 54

55

https://www.youtube.com/watch?v=cv85myxKb8k (last visited Dec. 15, 2022). Copyright Act of 1909, supra note 45, at § 1(e) (emphasis added). The introduction of multitrack tape recording in mid century meant that artists could easily “overdub” additional parts onto the first parts recorded on the tape – essentially accompanying themselves. More importantly, it allowed for the creation of audio collages that need not have been capable of being performed live. By the late 1960s, superstar band like The Beatles and The Beach Boys created concept albums that included just such studio collages. Sgt. Pepper’s Lonely Hearts Club Band and Pet Sounds, respectively, are often cited as pioneering albums in this regard. See Bennett & O’Connor, supra note 35.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

307

The shortcomings of the mandatory written notation system for aural composers could have been avoided from the 1909 Act onward with a different policy at the Copyright Office.56 Just as today, where an audio recording can serve to register both the composition and sound recording rights, the Copyright Office could have allowed wax cylinders, Victrola disks, piano rolls, etc., to serve as registration and deposit copies. Furthermore, once Congress passed the Sound Recording Act in 1971 (which created the new subject matter category of “sound recordings”)57 the legal distinction between the categories was clear and the Copyright Office could – and should – have allowed recordings to be submitted as registration and deposit of both rights. Instead, the Copyright Office seemed to use the passage and implementation of the major restatement of the Copyright Act of 1976 to allow audio recordings for registration of compositions as well as sound recordings. But nothing in the statute addressed such a change, despite the Ninth Circuit’s unsubstantiated claim in Skidmore that a new provision for commercially released phonorecordings to count as publication of the underlying compositions “changed” registration and deposit copy requirements.58 Neither Sections 407 nor 408 – dealing with copyright deposit and registration, respectively – say anything about using the newly defined “phonorecords”59 for purposes of registering and depositing musical works. While Section 407 does give the Copyright Office the authority to exempt categories of works from deposit requirements altogether, or limit deposits to one copy, it does not say anything about changing the form of deposit except for pictorial, graphic, or sculptural works.60 Thus, again, whatever authority the Office may have had for allowing submission of phonorecordings to register and deposit musical compositions must have already existed under the 1909 Act, or was simply not addressed by either. In the latter case, then, the Office was no more or less authorized to do this under either statute. 56

57 58

59

60

I use the terms “phonorecording” or “audio recording” to signify a physical or electro-magnetic reproduction of musical sound to distinguish these artifacts from the legal category of “sound recordings” just as the Copyright Act does. See 17 U.S.C. § 101. Pub. L. 92-140, § 3, 85 Stat. 391, 392 (1971). 952 F.3d at 1062 (“The copyright requirements were changed dramatically by the 1976 Copyright Act, which provided that public distribution of a sound recording qualified as publication of a musical composition. Id. § 101. In other words, composers could submit a recording rather than sheet music as the deposit copy for a musical composition,” emphasis added). The Ninth Circuit seems to make an unsubstantiated leap from the arguably ambiguous inclusion of “phonorecordings” in Section 101’s definition of “publications” (even though the court mistakenly uses the legally different term “sound recording”) to mean that the release of phonorecordings containing performances of all manner of copyrightable subject matter constituted publication of those underlying works. However, it is equally – or perhaps more – likely that “phonorecordings” was included in this definition to accommodate sound recordings alone (whose inherent or natural “writing” medium is a phonorecording). Even if the inclusion of “phonorecordings” effects the change in what constitutes publication of musical compositions as the court says, and that concededly seems to be the assumption of other courts and commentators, such a change does not entail a change in registration and deposit requirements. Still further, as Lateef Mtima, Steve Jamar, and I argue in our briefs in Williams and Skidmore, nothing in the 1909 Act prohibited the Copyright Office from accepting phonorecordings to register copyrights in musical compositions. Brief for Sean O’Connor and Institute for Intellectual Property and Social Justice Inc. as Amicus Curiae Supporting Appellant, Skidmore v. Zeppelin, 952 F.3d 1051 (9th Cir. 2020) 2019 WL 2996343; Brief for Institute for Intellectual Property and Social Justice Inc. et al. as Amicus Curiae Supporting Appellees, Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018) opinion amended and superseded on denial of rehearing en banc by Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018) (No. 15-56880), 2016 WL 7494673. For a different perspective, see Brauneis, supra note 9, at 5–6, 31–32; Robert Brauneis, How Much Should Being Accommodate Becoming? Copyright in Dynamic and Permeable Art, 43 Colum. J. L. & Arts 101, 112–15. “Phonorecords” are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “phonorecords” includes the material object in which the sounds are first fixed. 17 U.S.C. § 101. 17 U.S.C. § 407(c).

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

308

Seán M. O’Connor

Because there are no known express statements on the matter, it is impossible to know at this time why the Copyright Office believed it could not accept phonorecordings for composition registrations and deposits until implementation of the 1976 Act. Possibilities include a misguided adherence to the Supreme Court’s positions in White-Smith,61 even after Congress rejected the Court’s adamant arguments about audio recordings not being “writings” and effectively abrogated the decision through the 1909 Act. In fairness, the Office may have viewed White-Smith as a constitutional ruling that Congress had no authority to “abrogate” through legislation. The Office’s position could also reflect a disdain of pop music or aural composers, or at least a view that “real” musicians would be fluent in written notation. The reasoning might also have been that any composition worth its salt would attract a publisher who could have the song transcribed into notation. Regardless of what the reasons were, as shown in the next section, the effect was disproportionately felt by disadvantaged and minority composers.

iv. the lead sheet problem and its disproportionate effect on minority and disadvantaged composers The combination of the Copyright Office’s requirement of written notation and the music publishing industry’s practice of depositing lead sheets to register pop songs set up a massive gap between what musicians (and producers) had composed and what was recorded in the Office. Bob Clarida has called this “undeposited authorship.”62 Because of the written notation registration requirement, creative, original elements of a musical work not expressed in written notation were not recorded in the Office, notwithstanding the fact that such elements are entitled to protection under the Act.63 Whether the publishing industry understood the potential implications of this gap before Williams and Skidmore is unclear. In the latter case, the U.S. Court of Appeals for the Ninth Circuit (“Ninth Circuit”) directly ruled that the scope of a pre-1978 musical composition’s copyright is limited to what was notated in the deposit copy.64 While the problem affects even major twentieth century pop composers at the peak of their careers who had the industry’s resources behind them, this chapter focuses on how much more so this problem harmed minority and disadvantaged composers. In his excellent Rock Riff Rip-Off article in Bloomberg Businessweek, Vernon Silver documented what many composer-lawyers already knew: an unknown and potentially staggering percentage of rock’s iconic riffs were not included in deposited lead sheets.65 Silver looked at deposit copies for classic rock hits – a genre whose songs are often defined by a central repeating 61

62

63

64 65

Bob Brauneis asserts this position for the Copyright Office from his historical research, but to be clear does not take the step of calling it “misguided” as I do. See Brauneis, supra note 58, at 112. Bob Clarida, Music, Deposit Copies and Skidmore v. Led Zeppelin: A Workaround, 263 N.Y.L.J. 55 at 10, Mar. 23, 2020. Where the composition contains both protectable and unprotectable elements, the copyright extends only to the protectable ones. Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904 (9th Cir. 2010). Protectable aspects include discrete elements such as original melodic lines, harmonic lines, and percussive parts, as well as an original combination of these and other elements, even if some of the elements are individually not protectable. Swirsky v. Carey, 376 F.3d 841 (9th Cir. 2004). For example, the standard 12-bar blues chord progression is not itself protectable, but a particular original expression of it combined with other elements can be. Exactly where the line between protectable expression and nonprotectable expression is to be drawn is largely a matter of fact to be decided by the jury. Id.; Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000). See also Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (literary works). 952 F.3d 1051, 1062-64 (9th Cir. 2020). Vernon Silver, Rock Riff Rip-Off, Bloomberg Businessweek, June 20, 2019.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

309

guitar riff or hook – and found that key riffs in the Eagles’ Hotel California, Bruce Springsteen’s Born to Run, and Lynyrd Skynyrd’s Free Bird were not included. He then posited that such passages were free for the taking and industrious composer musicians could simply build new songs around these well-known and popular riffs – perhaps stitching multiple ones together as a kind of greatest riffs medley – even as the overall song (or at least “main” melody and accompanying chords) was still protected by copyright. However, Silver’s interest was piqued by Led Zeppelin guitarist Jimmy Page’s admission on the witness stand in Skidmore that his iconic solo at the end of Stairway to Heaven was not included in the deposit copy of the song registered with the Copyright Office.66 In his article, Silver is not clear as to whether what he found missing for Hotel California and Free Bird are structured guitar parts – the introduction/verse arpeggiated guitar chords in the former and slide guitar intro and repeating guitar motif in the latter – or the guitar god improvised solos at the ends of those songs.67 He does state that the portion missing in Born to Run is the saxophone solo. The distinction between structured riffs, hooks, or solos, on the one hand, and true improvisational solos, on the other hand, matters because of the tradition in rock, jazz, blues, and country to leave room for – and not notate in advance – the latter. Thus, even a full score of the piece would not notate these solos. The underlying chords, percussion, and other parts could be notated in a full score, but the staff line for the soloing instrument in that passage would simply say “improv” or something similar. Illustrative examples are jazz compositions that are set pieces for each instrument to take turns improvising after a few runs through a set melodic theme that defines the work for the listener. Or consider pieces by jam band genre groups such as the Grateful Dead or Phish with a similar set-up. For these groups, part of each piece can actually be open for improvisation by the entire band at the same time. The central point is that if it’s written in advance, it’s not improvisation, and live experimentation at each show is the appeal to real fans of these genres. For many classic rock songs, however, the line can be blurry. What started as solo improvisational showpiece segments of a song developed in the rehearsal space and in live shows were sometimes locked in by a memorable take of that improvisation that was selected for the studio recording. When recorded music came to dominate listeners’ perception of what constituted “the song” by the mid-twentieth century, many of those fans then came to expect to hear a faithful live reproduction of the entire recorded version at concerts. Guitarists and other soloing players could then find themselves constrained to play the particular take that they had made up on the fly in the studio. In these cases, what was now effectively a structured, pre-ordained solo should have been notated in whatever deposit copy was submitted to the Copyright Office – or an updated copy should have been submitted if a preliminary version without it had been deposited before the studio recording locked in a particular version. Got To Give It Up’s copyright registration provides a clear example of the problem because, just as in so much popular music of the time, the composition’s rhythm (outside of the melodic “lead” line) and percussion were not notated. Forget for the moment concerns over the court allowing copyright protection for “style” or “genre.” The court was not being asked to, nor did it consider to, protect either of these. Rather, the issue is that Gaye carefully wrote, or closely

66 67

Id. The solos at the end of these songs are actually hybrids in that some passages are true improvisational solos that can be varied at each performance, while other passages in them are tightly synchronized harmonies or unison doubling between two guitars that had to be scripted and performed precisely the same way each time.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

310

Seán M. O’Connor

directed, all the instrumental parts that make this an iconic song and groove. And yet the only elements that made it into the lead sheet deposit are the lead vocal melody, chord names, and, thankfully yet unusually, at least the key bass motif that opens and underlies much of the song. If he had been a classical music or other notation-fluent composer, Gaye would have written a full score showing each percussion part – including cowbells – and rhythm instrument part,68 as well as background vocals, that work together to create the indelible feel and groove of this masterpiece. Instead, some unidentified staff writer at his publisher listened to presumably a recording of the song and then sketched out the usual abbreviated lead sheet with whatever he or she thought was the “main” melody and basic chord structure. By all accounts, Marvin Gaye had no interaction or input on this process, nor was the result ever submitted to him for approval. While some try to write “groove” out of copyright as some sort of mystical, unquantifiable essence that magically blesses – or not – a particular track or performance,69 this is nonsense. Alternately, groove is conflated with style or genre, and equally drummed out of copyright because those things are expressly not supposed to be protectable under the case law. But skilled musicians can simply listen to the various percussion and rhythm instrument parts, and how they play off each other, to recreate the groove of a specific piece perfectly and predictably. It is no more mysterious or magical than musicians recreating the main melody line or a particular riff. And while the groove of a particular song may be generic to a genre the song is written within – and hence constitutes unprotectable musical scènes à faire – it is not always this way. Just as a composer can use a generic set of chord changes in a song or craft an original set, she can select a stock groove or create an original one. Where distinct and original, each can be a protectable element of the overall composition. Clyde Stubblefield’s widely sampled Funky Drummer “groove” is, again, instructive. On one level, by his own admission, it is simply a funk beat.70 Ergo, just Stubblefield’s stylistic take on a funk genre beat setting up a “groove” he likes. And yet, this has arguably become one of the most sampled and re-performed drum parts in funk, soul, hip hop, and rap history. If this is “generic” within the genre, then why has it become a fundamental sample? It’s not the recording techniques, which are straightforward. If it’s his “style,” then what does that mean in the sense of what is he doing a stylistic take on (or of )? The Platonic ideal of a funk beat? Let’s look at it from a drummer’s perspective: it can be broken down and copied; it can even be notated in drum notation (within the limits that codification bring for all music). It is not something that only Stubblefield can do in some magical way. Why can’t we just call this what it is: a percussion composition? Stubblefield wrote a drum part, and a pioneering one at that. If he were John Philip Sousa writing drum parts for a march, would we say the parts were just “style” or “groove” and not copyrightable? For that matter, how is it any different than Paul McCartney riffing on his Hofner bass in a driving rock genre “style” or “groove” that undeniably becomes the copyrighted song Get Back? Zooming out from a particular instrument part that drives and anchors a great song to the full recorded creation, we should also question why a composer who intentionally uses the recording 68

69

70

A piano, guitar, bass, and other instruments can be “rhythm instruments” in any given piece or at any given period within a piece. For example, Dave Brubeck plays the piano in Take Five as almost entirely a rhythm instrument. See, e.g., David Post, Blurred Lines and Copyright Infringement, Wash. Post, Mar. 12, 2015, https://www .washingtonpost.com/news/volokh-conspiracy/wp/2015/03/12/blurred-lines-and-copyright-infringement/?noredirect= on&utm_term=.128eb87d3b5; Neil McCormick, How Can You Copyright a Shuffle?, The Telegraph, Mar. 11, 2015, https://www.telegraph.co.uk/culture/music/rockandpopmusic/11463948/How-can-you-copyright-a-shuffle.html. https://www.youtube.com/watch?v=i9vTA3nyquc.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

311

studio process and tools to craft a complete musical production cannot claim the final product as a “composition.” Consider musique concrète71 pioneer Pierre Schaeffer in the 1940s.72 The Oxford Dictionary of Music refers to his creations as “compositions” even when they include tape decks playing sounds and other modes of reproducing existing sounds such as that of railway trains. John Cage, often noted for his 4’33” “tacet” piece, composed to tape decks and unconventional “instruments” as well.73 It is not clear whether Schaeffer or Cage copyrighted their works. Gershwin notated for old-fashioned car squeeze bulb horns in the full score for An American in Paris.74 Presumably this was included in the copyright registration as his publisher likely used Gershwin’s own transcription of his composition. Finally, the most well-known work of musique concrète is the Beatles’ Revolution 9 released on the White Album.75 Exposing millions to this avant-garde musical genre – whether appreciated or not – this track was copyrighted with Lennon & McCartney as composers. Accordingly, why not notate all the recorded parts of, say, the songs on Sgt. Pepper’s as compositions for copyright purposes then? Full score versions of The Beatles’ recorded songs have been published.76 The answer seems to be that none of the people in charge of copyright registration – even for a work by The Beatles as arguably the biggest pop-rock music act in the world at the time – considered it as much more than a trivial pop novelty for music composition purposes. A practice had developed for pop music publishers to simply deposit and register a lead sheet version of songs. Whether this was because publishers and the industry accepted that these were only placeholders for the full composition or because they in fact felt that only the main melody, words, skeleton chord structure, and maybe a stray transcribed bass line or riff here and there represented the bulk of the song’s commercial value, is hard to know. At the same time, there has arguably been a classist or elitist, if not outright racist, combination of explicit and implicit rejection of rhythm and beats as the proper domain of music composition copyright. Black Americans, often from underprivileged backgrounds, have consistently led the way to fascinating new rhythms and beats that time and again have created whole new genres of popular and commercially successful music.77 A prime example is the hip hop and rap that emerged from inner city neighborhoods in the late twentieth century. But of course, gospel, blues, and jazz also emerged from rural or inner city largely poor Black communities. Even rock and roll in the form of proto pioneers such as Ike Turner (Rocket 88 is often positioned as the first rock song), Chuck Berry, and Little Richard grew out of such communities. There is, of course, a difficult issue with separating a pioneering composition and the genre it helps spawn. As a society, we do not want to stifle the growth of that genre by allowing copyright on the pioneering song(s) to lock down those who would expand the emergent genre. This issue is in part what fuels those who conflate the groove of a particular song with a style or genre. But 71 72 73 74

75 76 77

See musique concrète, Oxford Dict. Music (6th ed. Joyce Kennedy et al. eds., 2012). Schaeffer, Pierre Henri Marie, in Oxford Dict. Music, supra note 71. Cage, John, in Oxford Dict. Music ; electronic music, in id. Michael Cooper, Have We Been Playing Gershwin Wrong for 70 Years, N.Y. Times, Mar. 2, 2016, at C1, http://www .nytimes.com/2016/03/02/theater/have-we-been-playing-gershwin-wrong-for-70-years.html?smid=nytcore-iphoneshare&smprod=nytcore-iphone&_r=0 (last visited Nov. 18, 2016). Revolution 9, The Beatles (Capitol 1968) (popularly known as the “White Album”). The Beatles – Complete Scores (2d rev. ed. 1993). See Kevin J. Greene, African-American Innovators and Copyright Law: From Blues, Soul and Funk to Hip-Hop, in Hip Hop & The Law 277 (Pamela Bridgewater et al. eds., 2015); “Papa’s Got a Brand-New Bag”: Innovation, Copyright Law and Black Artists, in African-American Culture and Legal Discourse (Lovalerie King & Richard Schur eds., 2010).

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

312

Seán M. O’Connor

in practice this theoretical problem is largely avoidable through the creativity of artists and the desire of most to not be “derivative” in the artistic sense. Copycats will always be copycats and it is of less concern to me if some imitators will be found to have infringed pioneer artists’ work. Original artists with true vision are unlikely to produce anything too close, overall, to source inspiration as that would invite derision as slavish imitators. Blues as a genre, for example, includes a multitude of particular grooves. Some of these grooves are “generic” or established enough that they should be considered scènes à faire and not protectable by anyone at this point. Some artists work cleanly within these established grooves and consider their originality to be in the particular stories, lyrics, or melody lines they sing. But others craft original grooves, at least in some songs, and have become identified with that groove. Examples include John Lee Hooker for Boogie Chillen78 and Boom, Boom,79 or, crossing into early rock, Bo Diddley and his “Bo Diddley beat” on songs like his eponymous debut single.80 These grooves are no more nor less distinct and original than an original melody line or lyrics in a blues composition. Why should these distinct and original rhythm parts or grooves not be protectable while the melody line is? Those wishing to build a new exciting groove could license it just as other musical elements are licensed. Put another way, no one suggests that a scored formal percussion ensemble piece is not protectable. And yet what is this other than a groove? Assuming for this hypothetical that the piece does not include percussive melodic instruments such as steel drum, vibraphone, marimba, or xylophone (which are generally classed as part of the percussion section), and is only comprised of drum parts, there is by definition no melody or harmony component to the composition.81 Or consider marches, especially those with original percussion elements. The value of these was often less the melody than the rhythm. In fact, jazz emerged in part from the blending of march elements with blues and gospel melodies and harmonies – especially again with the use of blue notes. When looked at this way, a kind of musical racism is indeed suggested from these patterns of what is included and what is excluded from copyright protection.82 Melody, the primary focus of classical European music, has often been proposed as the core of music.83 Traditional music commentators even held this for European folk music, much of which actually turns as much on rhythms and beats as African-based music has been. But when Romantic era European composers began incorporating “folk music themes” into their compositions, it was largely – although not exclusively – the melodic elements of these pieces that made their way in. Perhaps with a watered-down simulacrum of the intriguing rhythms of those sources.

78

79

80

81

82 83

https://www.youtube.com/watch?v=G4pp02_GN9A (last visited Dec. 15, 2022); https://en.wikipedia.org/wiki/Boogie_ Chillen%27 (last visited Dec. 15, 2022). https://www.youtube.com/watch?v=V1xcM3XCvPE; https://en.wikipedia.org/wiki/Boom_Boom_(John_Lee_Hooker_ song) (both last visited Dec. 15, 2022). https://en.wikipedia.org/wiki/Bo_Diddley_beat (last visited Dec. 15, 2022). As noted in the Wikipedia entry, arguably other artists recorded versions of this specific groove before Bo Diddley, even though it became associated with him. Admittedly, drums can and should be “tuned” to specific pitches. Yet, the effect on the listener of this is still not one of melody or harmony. See supra note 79. See Joseph Fishman, Music as a Matter of Law, 131 Harv. L. Rev. 1861 (2018). To be very clear, no insinuation should be taken here that Professor Fishman is racially motivated in this excellent article. His intended position is wholly pragmatic as a way to cut down on what he perceives to be blossoming confusion over the scope of copyright for musical compositions in litigation. Thus, he does not deny that rhythm, beats, and other nonmelodic components of music are valuable parts of compositions. Rather, it is just that allowing litigation over them could be too confusing for judges and juries.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

313

In the current era, where beats are individually crafted and licensed in and of themselves to form the basis of someone else’s song, there is clear originality and commercial value to “groove” standing on its own. In fact, many new compositions are built from an original beat or groove.84 Traditional “lead” melodies and instruments can be almost an afterthought. Consider hip hop and rap again. Rarely does one melodically sing or hum along. Instead, one mimics or dances to the beat, or raps along with the rapper. This is the artistic expressive mode of an enormous, international community. It has long spilled over beyond its original largely Black pioneers to draw in creators and fans of all ethnicities. It seems absurd to say the genre’s core elements are not protectable by copyright. Granted, today’s aural composers can submit deposit copies in the form of either phonorecordings or sheet music produced by playing the piece on a keyboard connected to transcription software such as Sibelius. Thus, both the major copyright registration hurdle for aural composers and the problem of lead sheets generally has been eliminated. For the latter, the composer can use the transcription software not only for a two-handed keyboard part she could play at one time, but also can instead play each actual part she wants as part of the composition, one at a time, to build up an accurate full score of her work. This pushes off the deeper issue of what counts as protectable to the courts and copyright infringement litigation, which is beyond the scope of this chapter. Nonetheless, the lead sheet issue remains potent because of the vast number of valuable pre1978 works. The recent sales of entire catalogs of classic rock and pop songs at eye popping multi-million valuations underscores what is at stake for pre-1978 compositions.85 Furthermore, not all aural composers or their publishers either knew, understood the implications of, or simply even chose to take advantage of the phonorecording deposit option once it became available. The first year that the policy took effect – 1978 – only 14 percent of musical work registrations were accompanied by phonorecords rather than written notation.86 While registrations of unpublished works – which Bob Brauneis, who conducted this research, suggests is a loose proxy for amateur (or perhaps unsigned) composers – switch over more quickly to phonorecord deposits – written notation deposits decline to 50 percent by 1983 and then to 20 percent and below by 2000 onwards – registrations of published works (and hence “industry” practice) take until 1995 to decline to 50 percent and thereafter maintain between 20 percent to 30 percent until his study ends in 2012.87 Thus, the lead sheet issue hardly ends in 1978 and an untold massive number of further works are at risk under the Ninth Circuit’s draconian “four corners” rule. One also wonders whether the hedge funds and other “smart money” investors who are buying publishing catalogs have considered that iconic parts of many of the compositions may not even be covered by copyright under the Ninth Circuit’s rule.88 In Skidmore, the Ninth Circuit dismissed these social justice issues without really taking their measure (although part of this was in response to the inartful way counsel argued the issue to the court): Skidmore also complains that restricting protection to the deposit copy disadvantages musicians who do not read music because it can be time consuming and expensive to make an accurate deposit copy. Apparently, that was not a problem here, as Wolfe’s work was transcribed for the 84 85

86 87 88

See Bennett & O’Connor, supra note 35. Ben Sisario, A $550 Million Springsteen Deal? It’s Glory Days for Catalog Sales, N.Y. Times, Dec. 20, 2021, https:// www.nytimes.com/2021/12/20/arts/music/bruce-springsteen-catalog.html (last visited Dec. 15, 2022). See Brauneis, supra note 9, at 28–29, Fig. 1. Id. at 28–30, Fig. 1. Not to mention the question of termination rights.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

314

Seán M. O’Connor

sheet music deposit. Digital transcription and other technological advances undercut this argument, not to mention that for decades now, sound recordings have been accepted as the deposit copy.89

As Lateef Mtima, Steven Jamar, and I argued in our amicus brief to the court, the issue was twofold: (i) who wrote the transcription; and (ii) could Wolfe as composer have checked it to make sure it was accurate?90 Just because there is a transcription does not mean justice has been done. There are many cases where artists and composers were exploited by someone else filing legal documents in the artist or composer’s name – even if the documents were facially valid. The court also ignores that the issue in front of it was a pre-1978 composition, where “digital transcription and other technological advances” were not available. This was not an all or nothing situation: the court could have made a ruling limited to pre-1978 compositions. At the same time, given the lag in uptake for the new deposit rules, the issue remains live and potent even for post-1978 registrations. Finally, the court ignores our point connecting the music publishing industry practice of submitting lead sheets with the Copyright Office’s allowance for the software industry to submit truncated placeholder registration and deposit copies of code. Under Copyright Office rules, presumably under its authority to exempt partially or completely the deposit requirements in the Copyright Act,91 software copyright registrants may submit the first and last 25 pages, or a “representative” 50 pages if there is no clear beginning and end to the code, for code with no claimed trade secrets.92 This likely was put in place because of the millions of lines of code in modern software. Obviously, pop music compositions do not have that level of complexity. Yet, the point is that registration and deposit copies need not categorically contain all parts of a work to be valid. The software copyright system seems to work well enough for the industry as far as identifying and supporting enforcement of copyrights. While we have argued that some level of classism, elitism, or flat-out racism explains courts’ disfavoring of non-melodic aspects of musical compositions – whether notated or not – what explains the choice of publishers themselves to deposit only lead sheets? Even if courts routinely chose to ignore or not enforce non-melodic aspects of a registered song – which was not necessarily ever true – why not still submit all the elements the composer created and hope that over time some courts would enforce them all? This is a more difficult question. As suggested above, it could be from a combination of: (i) assuming an industry standard practice would be followed by the courts that the lead sheet was just an identifying placeholder for what were known to be works fully fleshed out and documented elsewhere; (ii) cynical disdain for the longevity of two- to three-minute pop songs and their own express or latent prejudice against the “primitive” beat aspects of the new pop genres; and (iii) a lingering misperception that only melody was protectable under copyright law. We also should not underestimate the willingness of some record labels and publishers to take advantage of composers’ lack of sophistication in business and law. The stories are legion of some labels and publishers effectively defrauding young artists and composers with either 89 90

91 92

952 F.3d at 1063. Brief for Sean O’Connor and Institute for Intellectual Property and Social Justice Inc. as Amicus Curiae Supporting Appellant, Skidmore v. Zeppelin, 952 F.3d 1051 (9th Cir. 2020) 2019 WL 2996343. 17 U.S.C. § 407(c). 37 C.F.R. 202-20(c)(vii)(A); Circular 61: Copyright Registration of Computer Programs (U.S. Copyright Office) (“You can submit the entire source code for the program, or you can submit a representative portion”), https://www .copyright.gov/circs/circ61.pdf. Similar rules apply, allowing for some redaction of lines, where parts of the code are also covered by trade secrets.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

315

terrible deals or even outright registering copyrights in an executive’s name – even where the composition was not made as a work made for hire. The August Wilson play Ma Rainey’s Black Bottom,93 as rendered for the screen by Ruben Santiago-Hudson,94 provides a vivid example of how this kind of exploitation would happen. Levee thinks he is getting a recording deal at the white-owned label where Ma Rainey is recording and so he gives copies of the songs he is writing to the owner. But the owner deceives Levee by saying the songs are not that good, while paying him a pittance and declaring that there will be no recording deal. After Levee tragically kills another character in a fit of rage and humiliation over the lost deal that he had been bragging about to his bandmates, the studio owner is shown recording those very same songs with a white band. However, the color lines get blurred in the troubled history of labels, publishers, and Black artists. Berry Gordy, the legendary Black founder of Motown Records, was accused of similarly taking advantage of artists and composers. Even in Williams, we have Black artist Pharrell Williams teaming up with white Robin Thicke to infringe Marvin Gaye’s song. Notwithstanding who was doing the unscrupulous acts, the net result was that predominantly Black, other minority, or disadvantaged composers and artists were the ones suffering the consequences. The latter were all at the mercy of those with money, connections, lawyers, and recording studios. With little to no formal music training, these artists could neither notate their own compositions nor confirm what a professional transcriber wrote ostensibly on their behalf. And that was if they even understood the copyright registration process or knew that copyright existed for authors like them. By the late 1960s, aural pop composers had more resources at their disposal to document what they were writing – at least in phonorecording form. Relatively inexpensive, portable reel to reel tape recorders allowed even beginning artists to make basic recordings of themselves, with or without other musicians playing additional parts. Those who had achieved some success had access to first 4-, and then 8-track recording studios and could overdub multiple instruments for song demos, whether playing the parts themselves or directing others more proficient on the given instrument to do so. In the 1970s, things should have been still more promising for aural composers. Inexpensive cassette recorders were available that provided even greater ease of home use. And professional studios moved up to state of the art 24-track tape recorders. This provided a richer environment for experimenting with different instrumentation through overdubs and then being able to pick and choose among different takes of, say, a guitar part in the same stretch of tape. Further, signal processing devices such as plate reverb, slap-back tape echo, advanced compression, and frequency equalization (EQ) enabled aural composers who understood the equipment to craft sonic landscapes in the studio that were central to the song being composed. This was, of course, the legacy of the “studio album” pioneered by The Beatles and The Beach Boys discussed above.95 Marvin Gaye, among others, was a genius at composing with not only musical instruments, but also with the studio and its sonic effects. His album What’s Going On is legendary not just for the songs and their social messages, but also for the distinct and consistent sonic ambience of all the songs across the album. It plays almost like one long song or symphony with multiple 93 94 95

August Wilson, Ma Rainey’s Black Bottom: A Play in Two Acts (1985). Ma Rainey’s Black Bottom (Netflix 2020). Admittedly, the Skidmore court might argue that if a composer had access to a 24-track studio, she could afford to have paid a professional transcriber to draft written notation. Ditto for today, when the means can be Sibelius or other transcription software.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

316

Seán M. O’Connor

movements. Thus, elements like cowbells and congas – EQ’d and placed in a particular reverb setting throughout the album – are not incidentals to a separate “main” composition. Nor are they solely the conception and work of some nameless engineer who is simply trying to make a nicer phonorecording of a composition. They instead are a key part of the composition. It may not be too much to say that the composition is the entirety of the instruments and voices recorded in that particular way. This in fact presaged the increasing number of composers from the 1980s onward who write from certain instrument sounds.96 The part is not a melody played on keyboard, for example, but played on a particular synth patch setting.97 Similarly, it is not just a guitar part, but for distorted guitar, perhaps through a phase shifter (1970s through early 1980s),98 or a clean guitar through a chorus effect pedal (1980s to present).99 This focus on the exact timbre of each instrument and use of the studio and its tools as compositional devices only accelerated in the digital recording age. In this context, it is not clear how much the legal line between “compositions” and “sound recordings” should matter.100 Marvin Gaye wrote Got To Give It Up just before the Copyright Office changed its deposit policy.101 Thus, his publisher submitted a lead sheet to register the copyright. While the district court allowed that the copyright might not be restricted to the lead sheet, it would not allow any evidence for what else might be in the composition beyond any written evidence the Gaye family might be able to provide. The problem was that none existed. The only – and best – evidence of what Marvin Gaye composed was the phonorecording he created and which would be mixed and mastered for release as the commercial sound recording. Thus, the legal scope of the composition was de facto restricted to the deposited lead sheet by the court. Despite this, the Gaye family, as heirs to the copyright, prevailed on the jury’s finding of substantial similarities between the melody, chords, and fortuitous bass line in the lead sheet, on the one hand, and the recording of Blurred Lines, on the other. On appeal, the Ninth Circuit affirmed the judgment, but declined to rule on the phonorecording and lead sheet issue which had been appealed by the Gaye family. However, as stated above, the Ninth Circuit then squarely ruled on the lead sheet issue in the appeal of Skidmore.102 Randy California was also an aural composer and the lead sheet deposited for Taurus did not contain all the elements that his estate claimed he composed – to wit, most or all of the rest of the instrumentation on the phonorecording of the song created by California. Like the Gaye situation, this phonorecording was also the commercially released sound recording. In both cases, the courts seemed as much concerned about potentially confusing the sound recording right with the composition right for the jury as with restricting the copyrighted composition to the deposited lead sheet as its own principle. Thus, it would be interesting to see the result in a similar case, but where there was a private phonorecording of the composer that included all the parts he wrote. Notwithstanding any credible evidence that could show what an author actually composed, 96 97

98

99

100 101

102

See Bennett & O’Connor, supra note 35. The opening synth chords to Jump by Van Halen are an excellent example. See https://www.youtube.com/watch?v= SwYN7mTi6HM (last visited Dec. 15, 2022). The opening phase shifting drums and guitar chords in You’re All I’ve Got Tonight by The Cars are illustrative. See https://www.youtube.com/watch?v=UZ1VZLMJ8D8 (last visited Dec. 15, 2022). The main guitar part in What I Am by Edie Brickell and the New Bohemians typifies this sound. See Edie Brickell & New Bohemians - What I Am - https://www.youtube.com/watch?v=tDl3bdE3YQA (last visited Dec. 15, 2022). The guitar solo then adds an envelope filter effect pedal, whose sound is often confused as a wah-wah pedal. See Bennett & O’Connor, supra note 35; Brauneis, supra note 9, at 7–10. As mentioned above, it is unclear whether publishers changed their deposit practices after the Copyright Office policy change. Thus, even if Gaye wrote the song the following year, a similar lead sheet may have still been the form of deposit. 952 F.3d at 1062–64.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

317

the Ninth Circuit ruled that a copyright must be limited to the deposit copy, even if a court accepted that the composer in fact wrote parts not included in that deposit copy. Accordingly, we are now stuck with a serious issue for a wide range of composers who may find that some of the most valuable elements of their compositions are not in fact protected under copyright – at least in the Ninth Circuit. While the problem may be most acute for songs registered before 1978 – when registrants were stuck with the Copyright Office’s written notation requirement – it would also be unfair to penalize the large number of post-1978 registrants who did not understand the existence or benefits of phonorecording deposits. Further, with the public domain year currently only 1927 (all works registered for copyright through 1927 are now outside of copyright protection), an enormous number of pre-1978 works – not to mention post-1978 compositions – will be with us for a long time, given the length of copyright terms even under the 1909 Act.

v. recommended composer remedies and judicial responses to the lead sheet problem that would advance social justice The gap between what a lead sheet documents and what the composer actually composed is significant in many cases. When multiplied by the scores of composers likely affected, it transforms from a personal hardship to a major injustice. And when those affected are predominantly from minority or disadvantaged backgrounds, the injustice becomes exploitive. This is because composers were induced at least in part to write and then share their creations based on a sense that they were protected by copyright, but now major parts of their creations are exposed and vulnerable to unjust enrichment by others. Arguably, there has been a kind of massive malpractice and breach of an implied duty of care and competency by publishers and lawyers to allow this coverage gap to metastasize. This final section of the chapter proposes ways for composers to ameliorate their exposure and courts to close the gap. A. Composer Self-Help Just because a copyright has been registered by a lead sheet deposit copy does not mean the composer is stuck with only this version for copyright purposes. Instead, she has a couple of related options open to her. Neither of these would require a lawyer or any technology or written notation skills beyond a phonorecording or Sibelius-generated sheet music for the deposit copy. 1. Register an updated version Any author can register an updated version of their work with the Copyright Office. Generally, this is due to new material being added to the work. The new material does not extend its protection back to the earlier registered version for purposes of infringement claims. Further, while the new material will secure its own new term as a derivative work, the new registration will not extend the term of the pre-existing work. 2. Register a new arrangement A related option is that proposed by Bob Clarida to register a new arrangement of the composition.103 This is particularly apt when “new” instrumentation has been “added.” While this might 103

Clarida, supra note 72, at 10.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

318

Seán M. O’Connor

seem like a dodge for a work that already existed, given the Ninth Circuit’s decision, the parts not included in the lead sheet deposit have not been registered and so under the law they are effectively a new arrangement for the elements covered by the lead sheet deposit. In fact, Bob Clarida asserts that the Rolling Stones did just this to capture all the instrumentation in Sympathy for the Devil, submitting a phonorecording of the studio version of the song and claiming the arrangement back to 1968. B. Judicial Responses As a preliminary matter, the restriction to the contents of a lead sheet is not necessarily the law of the land, but rather only in the Ninth Circuit for now. Accordingly, other circuits are encouraged to consider the matter carefully before following the Ninth Circuit’s lead on this. At the same time, regardless of any circuit’s position on lead sheets – including that of the Ninth Circuit – it is crucial for courts to allow musically proper interpretation of lead sheets, including extrapolation where necessary. 1. Allow Authenticated Phonorecordings Which Document the Full Scope of the Composer’s Musical Work Composers not fluent in European staff notation, composers who work in aural traditions and genres where such notation is not very helpful, and composers from disadvantaged backgrounds have routinely been discriminated against by a copyright system at times improperly administered to extend protection to only certain kinds of privileged works. This misapplication of copyright law contravenes the social objectives of the law.104 Excluding the best evidence for what such authors actually composed – the phonorecording of the work – perpetuates these discriminatory practices and traditions by penalizing them for working in genres and at times when it was difficult for marginalized composers to protect their interests. Courts outside the Ninth Circuit can help remedy this legacy of discrimination by allowing phonorecordings as evidence of the scope and content of an aural composer’s creation. Doing so would strengthen the case for protection of original and distinctive percussion, vocals, and other elements that composers routinely include as part and parcel of their musical compositions. To the extent that courts are concerned whether a phonorecording captures all and only a particular author’s work, this becomes simply an evidentiary matter. In other words, there will be situations in which other musicians composed their own parts for a songwriter’s core melody and chord changes. Thus, allowing a final commercial phonorecording as evidence of that songwriter’s composition may be overinclusive as to the scope of the songwriter’s musical work. Accordingly, appropriate testimony and documentary evidence is warranted to ensure that any claims as to the scope and content of a particular author’s contribution to the underlying musical work represented are accurate. So many composers, particularly those who created original and inherently American music art forms such as jazz, country, bluegrass, R&B, and rock and roll, were not fluent in European staff notation, even as they were musicians and composers of the first rank. Their compositions lived and breathed for them in the phonorecording they made that would either be released commercially or

104

See Lateef Mtima, Copyright and the Interdependent Relationship Between Social Utility and Social Justice, ch. 5 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Lateef Mtima, Copyright and Social Justice in the Digital Information Society: “Three Steps” Toward Intellectual Property Social Justice, 53 Hous. L. Rev. 459, 482–84 (2015).

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

Lead Sheet Problem in Music Copyright

319

used to “sell” the song to other producers or performers who would then record a cover of the composition to release as a sound recording. If placeholder lead sheets prepared by music publishers with little to no involvement of the composer, or simplified published sheet music for the amateur home market, are allowed to determine the scope of copyright protection in a composition, then the creative contributions of some of our nation’s greatest innovators will be denied protection in deference to received nineteenth-century European traditions inapt to uniquely American creativity. 2. Allow Musically Justified Extrapolative Interpretation of Lead Sheets Even the most constrained reading of lead sheets to determine the scope of the copyrighted composition must include interpretation of rhythms and harmonic voicings as integral elements. As mentioned above, the chord symbol alone, written over the staff with no other indications, does not tell the performer how to play it. She must interpret it in conjunction with the written melody line and any performance indications, and perhaps her knowledge of the actual composition, to play it as the composer composed it. The frequency of playing the chord (e.g., “eight-to-the-bar”), the rhythm (e.g., swing), the voicing (i.e., the order of stacking the tones comprising it),105 and playing method (e.g., “Travis picking” on guitar) must all be interpreted from the lead sheet. These elements can be integral to the composition. In fact, even in Williams, the Williams party expert Sandy Wilbur conceded that “chord notation is representational,” “there are numerous ways to notate a chord,” and “reasonable musicologists may differ on how to notate a chord.” Thus, not only can professional performers and musicologists interpret key, tempo, time signature, style/genre terms, and the written notes, but they also must so interpret simply to transform this shorthand into a viable and playable composition. Rhythmic extrapolation from the lead sheet was further assisted and justified in Williams by the inclusion of a key bass riff at the beginning of the song, noted bass simile – meaning “play similarly throughout.” Gaye family musicologist Judith Finell described the bass line with its distinctive descending motif in bars 4–5 and 7–8 as part of the “heartbeat” of the song. This gave her extra guidance in determining the rhythmic figures of the chords and their voicing. This bass riff is even more than the “heartbeat” – which suggests rhythm only – it is also a key melodic line in the song, occupying a role similar to the distinctive lead guitar riffs in The Beatles’ Day Tripper and Roy Orbison’s Pretty Woman,106 as well as the iconic organ part in Procul Harum’s A Whiter Shade of Pale that was ultimately adjudicated as creative and integral to the song, entitling its composer, Matthew Fisher, to co-author status.107

conclusion Williams and Skidmore have brought to the fore an issue that has long vexed me, beginning in my first career as a professional musician: what relationship does written notation have to a 105

106

107

Extending the discussion of harmony from above, chords generally contain three or more notes “stacked” together from low to high tones. A root major chord is three tones: the first, third, and fifth notes of the major scale played simultaneously. Minor chords use a flatted or minor third in place of the major third. Other kinds of chords generally add extra tones beyond the first, third, and fifth. For example, the dominant seventh chord adds the dominant or flatted seventh tone of the scale to a major chord. On a keyboard, the default approach is to play chords in order of their tones as described above. On other popular instruments such as guitar, the standard chord form may be quite different, and indeed there may be multiple “standard” ways to play a single chord on that instrument. See, e.g., Sean O’Connor, What Composers and Copyright Attorneys Can Teach Each Other, Part 2, https://www .youtube.com/watch?v=Ibjp3erJkA8. Fisher v. Brooker and Others [2009] U.K.H.L. 41 (U.K. 2009).

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

320

Seán M. O’Connor

living, breathing musical work? Back then, the freeing shift from introductory guitar lessons focused on sight reading of notation to auto-didactic aural learning of songs and guitar techniques allowed me to transform within a year from a “tin ear” amateur into a gigging professional. While I used to be embarrassed by my reliance on playing and composing by ear, I now realize I was in good company. I also now can confidently assert that in some significant cases the lead sheet or sheet music, as applicable, is not an accurate representation of the song composed by some of the geniuses of pop music. That the Copyright Office long enshrined a written notation requirement for copyright registration and deposit made what seemed like only a maddening inconvenience to the musician seeking to learn a song from notation into a full-blown legal problem for composers and music publishers. Further, this requirement was not mandated by the 1909 Act and in fact arguably contravened it. The hardship of the Office’s requirement, compounded by the music publishing industry’s reliance on the lead sheet registration practice, is especially acute for aural musicians from minority or disadvantaged backgrounds. Such composers could not protect themselves by checking the registration lead sheets directly or by paying a trusted third party they likely could not afford to review for them at the time. This also assumes such composers even understood the process and felt empowered to demand access to the copyright registration forms before submission to the Copyright Office. As such, a great injustice has been worked upon minority and disadvantaged composers. This chapter explored the problem to propose solutions that can be implemented by composers and courts, respectively. Taking up these measures can begin to remedy the injustice worked on these composers. While the Ninth Circuit dealt a major blow against such composers – perhaps unwittingly, although our brief set the social justice issues out before the judges – other circuits can do better. With the right case and counsel, the matter could even be taken to the Supreme Court to obtain a nationwide ruling vindicating the social justice issues at stake for our great legacy songwriters.

https://doi.org/10.1017/9781108697613.020 Published online by Cambridge University Press

15 Applying Social Justice Principles in the Practice of Intellectual Property Law Krista L. Cox

I. Overview II. Intellectual Property and Public Interest III. Patent Law and Social Justice in Practice IV. Copyright Law and Social Justice in Practice V. Marrakesh Treaty: A Case Study in Copyright Social Justice Advocacy Conclusion

page 321 323 324 326 329 335

i. overview Intellectual property (IP) often conjures up images of blockbuster Hollywood movies, bestselling novels, pharmaceutical drugs, or new technologies like Bluetooth or drones. When people think of intellectual property, some immediately think about the protections rather than the other half of the equation: access. Because patents and copyright are infused in so much of our daily life in today’s digital, highly technological world, ensuring equitable access has become an increasingly important part of the IP debate. In the United States, the concept of balance – and therefore access to IP – is the basis for granting patents and copyright. The IP system is grounded in the Constitution which grants Congress the power to make laws, “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”1 This approach to IP places the public interest above that of authors and inventors. The Supreme Court of the United States has confirmed that “The primary objective of copyright is not to reward the labor of authors, but ‘to promote the Progress of Science and useful Arts.’ To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. The result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.”2 Knowledge provides the building blocks for new creation and equitable access

1 2

U.S. Const., art. 1, § 8, cl. 8. Feist Publications v. Rural Telephone Service Co., 499 U.S. 340, 349 (1991).

321 https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

322

Krista L. Cox

to IP products is therefore critical in advancing the Constitutional purpose of the IP system.3 Ultimately, access to knowledge is critical in advancing progress and creation, benefiting society as a whole. The utilitarian approach taken in the United States has an obvious link to the public interest and social justice. However, even in other countries, which adhere to the idea that an author’s rights flow from a theory of natural rights, IP rights do not exist in isolation. Some who uphold the right of authors and inventors as paramount point to the Universal Declaration of Human Rights (UDHR), a highly influential post-World War II human rights document. Article 27(2) of the UDHR reads: “Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.”4 While the UDHR is a “soft law” instrument without contracting parties, it is foundational in human rights discussions and has had tremendous influence in customary international law. Many of the provisions have also formed the basis of binding international human rights treaties; the aforementioned article was incorporated in the International Covenant on Economic, Social and Cultural Rights (ICESCR), which reads: “The States Parties to the present Covenant recognize the right of everyone . . . to benefit from the protection of the moral and material interests resulting from any scientific, literary and artistic production of which he is the author.”5 While these international instruments reference the benefit of authors, the provisions cannot be read in isolation. In fact, the right to enjoy the benefits of culture and scientific progress immediately precede these provisions. For example, article 27(1) of the UDHR reads: “Everyone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits.” Similarly, the ICESCR protects the rights: “To take part in cultural life; [and] to enjoy the benefits of scientific progress and its applications.”6 Other critical rights espoused in a variety of international human rights treaties – including the International Covenant on Civil and Political Rights, the Convention on the Rights of the Child, and the Convention on the Rights of Persons with Disabilities – similarly depend on the ability to access works of authorship.7 Freedom of thought; freedom of opinion and expression; the freedom to seek, receive, and impart information and ideas through any media regardless of frontiers; the right to take part in government; the right to seek employment; the right to life and health; and the right to education are some of the specific internationally recognized human rights that depend on access to information or access to the benefits of scientific progress.8 3

4 5

6 7

8

See Authors Alliance, “Q&A with Lateef Mtima of the Institute of Intellectual Property and Social Justice,” Sept. 5, 2018 (“I believe that the IP law can only fulfill its Constitutional mandate to promote the progress of the arts and sciences if its interpreted and applied so as to require the broadest and most socially equitable participation in the IP system – everyone in society should have an equitable opportunity to contribute to and to enjoy the fruits of the national storehouse of creative and innovative output. A social justice perspective of the role of IP protection in the political economy actually ensures fulfillment of the Constitutional directive: Socially equitable access to IP and IP protection engenders widespread participation in and contribution to the IP ecosystem, and socially equitable dissemination of the results therefrom reignites and perpetuates the creative and inventive cycle to society’s ultimate benefit”). Universal Declaration of Human Rights, art. 27(2), Dec. 10, 1948. United Nations, International Covenant on Economic, Social and Cultural Rights (ICESCR), art. 15(1)(c), Dec. 16, 1966. Id. at (1)(a)–(b). Krista L. Cox, Accessible Formats for People with Visual Disabilities: A Human Right Requiring a Binding Legal Instrument, Knowledge Ecology International, Nov. 17, 2011, https://www.keionline.org/21726. See, e.g., United Nations, ICESCR, arts. 1, 6, 13, 15, Dec. 16, 1966; International Covenant on Civil and Political Rights, arts. 18–19. Dec. 16, 1966; Convention on the Rights of a Child, arts. 12–14, 17, 23, 28–29, 31, Nov. 20, 1989; Convention on the Rights of Persons with Disabilities, arts. 9, 21, 24, 27, 29–30, Dec. 13, 2006. See also Betül Ayranci, Intellectual Property Social Justice on the International Plane, ch. 19 in The Cambridge Handbook of Intellectual

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

Applying Social Justice Principles in the Practice of Intellectual Property Law

323

IP systems need not be grounded in pure economic terms, divorced from the public interest. Indeed, some creators need no incentives to create, but instead do so for a variety of other reasons including curiosity, personal enjoyment, to secure reputational benefits, or to share and spread ideas, which ultimately serves the public. A grandmother, for example, may sit in her garden and paint images of her rose bushes as a hobby. A high school student might tinker in his basement with a new gadget to see if he can improve upon it. A professor might write an academic paper to spur discussion in hopes of gaining tenure. A scientist may be driven by altruistic motives to solve a societal problem. While many artists and inventors may be motivated by the promise of financial benefits, even they often want their works to be widely shared as validation of merit.9 Copyright and patent law can and should seek balance, protecting the artist or inventor, while ultimately supporting human rights by aiming for inclusive and equitable access and providing opportunities for socio-economic empowerment; such equities ultimately benefit the public as a whole by ensuring socially just application of the IP system.10 Because those who benefit from the view that IP is grounded in economic theory are typically those with the resources to bring litigation or lobby for more stringent protections, it is critical for public interest and consumer advocates to give voice to the general public and de-emphasize the idea that financial incentives and metrics are the only way to promote new culture and inventions. Advocates for human rights and social justice have a critical place in legal and policy work on IP.11

ii. intellectual property and public interest While IP rights play an important role in promoting the creation of new cultural works and investments in scientific discoveries, it can also hinder the public’s access and enjoyment to these advancements. Because IP gives the owner a right to exclude others, copyright and patents can be used as barriers to inclusion. An author or patent owner may choose to give only the highest bidders (or those with market power) access, resulting in inequitable access to information and advancements, sometimes excluding entire communities. A delicate balance is therefore essential in order to ensure that the many human rights that depend upon access to information and inventions – the rights to education, to health, to employment, to opinion and expression, to take part in society, and others – may be realized and do not end up subordinate to the rights of authors and inventors. Many countries have laws that could conceivably conflict

9

10

11

Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (identifying and assessing mechanisms extant in the predominant international treaties and instruments which mandate IP social justice). It is important to note, however, that while there may be numerous incentives to create, economic considerations are nonetheless important and “IP social justice is anything but antithetical to economic considerations. Economic incentives and rewards not only stimulate IP activity generally, but they also serve an important social justice purpose in the achievement of the IP law’s social mandate. While human instinct provides natural and powerful motivation to engage in intellectual pursuits, secular incentives can augment the drive to achieve, especially for those with limited options for personal advancement. For many in marginalized communities, IP endeavors offer unique prospects for individual and communal entrepreneurial empowerment, in addition to the promise of politico-cultural self-determination.” Lateef Mtima, IP Social Justice Theory: Access, Inclusion and Empowerment, 55 Gonzaga L. Rev. 401, 418 (2020). See id. at 420 (“Socially just application and enforcement of intellectual property rights guarantees inclusion of marginalized and developing world artists, inventors, and IP entrepreneurs, and preserves their secular incentives to contribute and disseminate the fruits of their intellectual endeavors. And socially balanced exploitation of intellectual property product helps equalizes health and education standards, promotes socio-economic empowerment, and fosters universal respect for the intellectual property system”). See, e.g., Steven D. Jamar, The Human Right of Access to Legal Information: Using Technology to Advance Transparency and the Rule of Law, 1 Global Jurist Topics 1 (2001), https://ssrn.com/abstract=1148802.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

324

Krista L. Cox

with the government-granted monopolies held by copyright or patent holders, such as laws regarding freedom of expression or those protecting disability rights. In order to square IP provisions with other laws protecting human rights, there must either be an acknowledgment that a hierarchy of rights exist – and, subsequently, a determination made as to which rights supersede others – or that there must be a way to balance IP with other essential rights. Viewing the world through the lens of human rights and social justice, there are countless opportunities to practice IP law in the ultimate service of the public good. Although the words “IP law” may bring up associations of large companies, represented by large law firms, ensuring proper balance to protect user rights and access is an equally important dimension to IP practice, particularly in the digital era. The practice of copyright law, for example, need not focus solely on protections for large movie studios. Instead, attorneys are needed to help documentary filmmakers who need to rely on fair use to create their films. Similarly, while patent holders do rely on attorneys for patent prosecution, other attorneys can challenge low-quality patents and promote generic competition. Those who have a passion for patent law or copyright law, yet also a deep desire to serve the public, need not pick one or the other; opportunities abound to blend IP and social justice. Public interest IP jobs usually focus on promoting the rights of consumers – including empowering marginalized communities – and curtailing abuses of IP rights.

iii. patent law and social justice in practice For those interested in ensuring protections for consumers in the patent system, there are several avenues to pursue. For example, a number of careers are dedicated to ensuring access to affordable medicines. Because a patent holder possesses the exclusive right to the invention, he will also be able to exclude others from creating competing versions of that same medicine. Without fear of competition, the patent holder can charge any price the market will bear for the medicine. Where there are no suitable alternatives – for example, a novel cancer treatment – the patent holder may feel particularly emboldened to charge even higher prices and patients may have no choice but to pay these exorbitant costs; those who cannot afford these medicines will die without treatment. Sometimes, price hikes happen overnight and for no apparent reason other than increasing profits.12 Public interest advocates play an important role in increasing visibility of the problem and challenging the current system in which medicines are inaccessible to those who cannot afford the high prices.13

12

13

Even when a drug is older, the pharmaceutical industry has demonstrated its willingness to raise prices significantly. For example, Turing Pharmaceuticals raised the price of the “orphan drug” Daraprim, a medication used to treat certain parasitic infections, from $13.50 per tablet to $750 per tablet. Daraprim, an older drug, nonetheless had no real competition as a “specialty drug” with a relatively low incidence of disease for which the medication would be necessary. See Andrew Pollack, “Drug Goes from $13.50 a Tablet to $750 Overnight,” N.Y. Times, Sept. 20, 2015, https://www.nytimes.com/2015/09/21/business/a-huge-overnight-increase-in-a-drugs-price-raises-protests.html. Similarly, Eli Lilly tripled the cost of insulin, as did its competitors that manufacture insulin: Novo Nordisk and Sanofi Aventis. Drug companies often engage in a practice known as “evergreening” or making small modifications to obtain new monopolies on older or expired patented medicines. See Lydia Ramsey, A 93-Year-Old Drug that Can Cost More Than a Mortgage Payment Tells Us Everything that’s Wrong with American Healthcare, Business Insider, Sept. 16, 2016, https://www.businessinsider.com/insulin-prices-increase-2016-9. For example, Universities Allied for Essential Medicines supports initiatives to expand access to essential medicines, particularly for those inventions that relied on public funding, through responsible patent and licensing practices; see https://www.uaem.org/. Public Citizen’s Global Access to Medicines Program similarly seeks to overcome patent barriers and promote generic competition to support affordable and equitable access; see https://www.citizen.org/ article/access-to-medicine-learn-more/.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

Applying Social Justice Principles in the Practice of Intellectual Property Law

325

In order to combat the tendency of rightholders to strengthen their monopolies at the expense of patients, some organizations take on efforts to challenge patents that should never have been granted. Because patent offices are often under immense pressure to grant patents quickly and work through a backlog of applications, patent applications are not always given adequate review.14 Incentives to review quickly can result in a bias toward granting patents, even when such applications are weak and should not be granted.15 Those interested in the intersection of IP and social justice can use their knowledge of the patent system to ensure that only high quality patents remain. For example, in 2018 the Supreme Court of the United States upheld the inter partes review system, which is an opportunity to challenge patents at the USPTO that should never have been granted in the first place without litigating the patent through traditional court systems. In Oil States Energy v. Greene’s Energy Group, Justice Thomas, writing for a seven-justice majority, notes that because a patent is a public right, the USPTO can reconsider a grant of that right.16 When patents are revoked, generic pharmaceutical companies can provide competition and reduce the high costs of pharmaceutical drugs. Another instance blending patents and social justice involves bringing legal challenges to the scope of patentability.17 For example, in the high-profile case concerning the patentability of isolated DNA, advocates including the Public Patent Foundation and the American Civil Liberties Union fought to invalidate patents that were granted with the BRCA1/2 genes that were critical in diagnostic testing for those with breast cancer.18 Ultimately, the Supreme Court in a unanimous ruling held that isolated DNA are products of nature and therefore not eligible for patent protection. This landmark ruling essentially invalidated the practice of patenting isolated genes, thereby affecting monopolies held over diagnostic testing for specific genes and mutations. These patent fights promote balance in the patent system, not only in reducing prices for medicines, but also for diagnostics which can ultimately save lives by allowing earlier medical interventions. Public interest advocates can also shape the patent ecosystem and promote affordable access to essential medicines to work against sham transfers that try to exploit sovereign immunity and keep unpatentable claims from being challenged.19 Advocates for balance can also work within the existing system. For example, some patent attorneys negotiate licenses for lower prices to 14

15 16

17

18 19

See, e.g., Michael D. Frakes & Melissa F. Wasserman, Is the Time Allocated to Review Patent Applications Inducing Examiners to Grant Invalid Patents?: Evidence from Micro-Level Application Data, NBER Working Paper Series (2014), https://www.nber.org/papers/w20337.pdf (“as examiners are given less time to review applications upon certain types of promotions, the less prior art they cite, the less likely they are to make time-consuming obviousness rejections, and the more likely they are to grant patents. Moreover, our evidence suggests that these marginally issued patents are of weaker-than-average value. These findings demonstrate that a factor other than the patentability of applications may be pushing grant rates upwards. All else equal, they thus support the general sentiment that the PTO may be biased towards allowing patents”); Michael D. Frakes & Melissa F. Wasserman, Irrational Ignorance at the Patent Office, 72 Vanderbilt L. Rev. 975 (2019). Id. 584 U.S. __ (2018) (“Inter partes review involves the same basic matter as the grant of a patent. So it, too, falls on the public-rights side of the line . . . [and] inter partes review involves the same interests as the determination to grant a patent in the first instance. The primary distinction between inter partes review and the initial grant of a patent is that inter partes review occurs after the patent has issued. But that distinction does not make a difference here”). See herein Mason Marks, People Are the Lifeblood of Innovation, ch. 4 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (discussing how the judicially established Abstract Idea Exemption limiting patentable subject matter protects the public interest in delineating the scope of patent protection). Association for Molecular Pathology v. Myriad Genetics, 569 U.S. 576 (2013). See Krista L. Cox, A New Patent Loophole? Paying off a Native American Tribe to Exploit Its Sovereign Immunity, Above the Law, Sept. 28, 2017, https://abovethelaw.com/2017/09/a-new-patent-loophole-paying-off-a-native-americantribe-to-exploit-its-sovereign-immunity/.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

326

Krista L. Cox

pharmaceutical drugs in developing countries, such as with the Medicines Patent Pool.20 Allowing those in the Global South to afford essential medicines, for example to treat HIV/ AIDS, is a critical component in protecting the right to health and ensuring that the right to life is not dependent on the amount of money in a person’s pocketbook. Beyond medicines and health, advocates can work to support better innovation generally and protect consumers by fighting against patent trolls – individuals or organizations that purchase inexpensive patents for the express purposes of litigation, often where the patent should not have been granted, or to initiate sham lawsuits to extract a settlement from the alleged infringer.21 Patents play a role in a wide range of technology, including everyday electronics, cars, clean or “green” technology and more. Ensuring that overly broad patents are not granted protects consumers from overpaying and also promotes true innovation by strengthening patentability criteria. At its core, practicing patent law in the service of the public interest involves ensuring that the IP system does not unduly restrict access to new, often life-saving innovations. Like other areas of IP law, public interest advocates work to promote balance and ensure that patients, consumers, and the general public have a voice. Without activists to fight for social justice in this space, rightholders would be able to wield their monopoly power in a way that might, for example, unnecessarily harm public health.

iv. copyright law and social justice in practice Advocates working in the copyright space must also work to promote balance and ensure that the general public is not blocked from accessing information. While copyright traditionally covered books, music, and film, in the digital era its reach is far greater, touching on every piece of software and smart technology consumers rely on daily. From cars and tractors to iPhones and thermostats, copyright is literally everywhere today, which heightens the need for a balanced copyright ecosystem. With copyright term lasting the life of an author plus 70 years, or 95 years for most corporate works, the impacts of an unbalanced copyright system are immense – works can be locked away for decades, often for more than a century.22 As Justice Breyer noted in dissent in Eldred v. Ashcroft, the Supreme Court case in which the majority upheld the power of Congress to set the copyright term and extend the term retroactively,23 today “copyright term is not limited, but virtually perpetual. Its primary legal effect is to grant the extended term not to authors, but to their heirs, estates, or corporate successors. And most importantly, its practical effect is not to promote, but to inhibit, the progress of ‘Science’ – by which word the Framers

20

21

22

23

The Medicines Patent Pool works with patent holders and generic manufacturers to create licenses and sublicenses designed to provide more affordable access to medicines used to treat HIV, tuberculosis, and hepatitis C for those living in low- and middle-income countries. Patent trolls typically are not concerned with actual innovation, but instead use the patents to block others from use or further innovation. Patent trolls typically use patents as a legal weapon to extract quick settlements and licensing fees. Lengthy copyright terms not only prevent users from relying on the copyrighted material for excessive periods, but also contribute to the “orphan works” problem where it is often difficult, if not impossible, to find the rightholder. Copyrights are often transferred as companies go out of business, or are inherited by an author’s heirs and then licensed or sold. As a result, tracking down the current rightholder 50 years after the author’s death, sometimes more than 100 years after the work was created, can be a costly or futile effort. 537 U.S. 186 (2003). The Court, by a seven to two margin, interpreted the term “limited times” as meaning “confined within certain bounds,” “restrained,” or “circumscribed” and found that extending the copyright term by 20 years did not exceed this prescription. The majority noted that on the question of whether the extension was a “rational exercise of legislative authority conferred by the Copyright Clause . . . we defer substantially to Congress.”

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

Applying Social Justice Principles in the Practice of Intellectual Property Law

327

meant learning or knowledge.”24 Lengthy copyright terms can effectively lock away knowledge and public interest advocates are needed to oppose continued copyright term extension, as well as the drive to export such terms to other countries.25 Activists can promote a robust public domain to draw attention to the problems of copyright term extension and the importance of access to knowledge. For example, as a result of the Copyright Term Extension Act26 in the United States, the public domain was essentially stalled for 20 years.27 Published works did not see their copyrights expire and the storehouse of knowledge remained locked away until January 1, 2019, when works finally entered the public domain again. In addition to promoting more reasonable copyright terms, copyright public interest advocates can advance other priorities to protect consumer use. With such a lengthy copyright term in many countries – even the international standard of life of the author plus 50 years is sufficiently long to create problems – one of the strongest tools in promoting balance and advocating for the rights of the copyright user is through copyright limitations and exceptions.28 Every copyright system provides for certain limitations or exceptions to the author’s rights so as to allow for the use of copyrighted material under certain circumstances without the author’s express permission. Common exceptions to copyright include those covering exhaustion of rights (also known as the “first sale doctrine”), education, cultural heritage institutions (such as libraries), quotation, news of the day, and for those who are visually impaired. However, the strength of these exceptions varies by jurisdiction and not all countries have them. Beneficiaries of these exceptions must ensure that new legislation or judicial opinions do not encroach on critical limitations to copyright law. Advocates can work on legal and policy work for organizations serving educational and cultural heritage institutions, journalists, or those with visual or hearing impairments. Additionally, broad limitations and exceptions, such as fair use or fair dealing, exist in many countries.29 Fair use, in particular, is a critical exception for countries that have it – most notably the United States – because of its flexible nature.30 Fair use balances four statutory factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the

24 25

26 27

28

29

30

Id. Elsewhere in this volume, Marcela Palacio Puerta provides a firsthand account of how IP social justice advocacy helped to shape the U.S.–Colombia Free Trade Agreement on copyright interests. Professor Puerta’s efforts led to a Congressional invitation to meet with the Colombian Copyright Office and ultimately resulted in the adoption of some of her specific recommendations. See Marcela Palacio Puerta, The Role of Nonrightsholder Advocates and Academics in Achieving Social Justice Balance in Copyright: The Case of Colombia, ch. 22 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Sonny Bono Copyright Term Extension Act, 112 Stat. 2827 (1998). The Center for the Study of the Public Domain does a roundup each year, highlighting prominent books, music, and movies that would have entered the public domain had copyright term extension not occurred. For example, Jonathan Band and Brandon Butler explain how copyright limitations and exceptions enable libraries to perform their role and support the public interest in the copyright ecosystem. See herein Jonathan Band & Brandon C. Butler, Libraries, Copyright Exceptions, and Social Justice, ch. 17 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Lateef Mtima, “Three Steps” Towards Intellectual Property Social Justice, 53 Hous. L. Rev. 459, 466–80 (2015) (comparing the prevailing limitation and exception mechanisms and their function in preserving the public interest in the global copyright system.). For the fair use/fair dealing provisions in copyright laws globally, see Jonathan Band, Fair Use/Fair Dealing Handbook (2015), http://infojustice.org/archives/29136. 17 U.S.C. §107.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

328

Krista L. Cox

effect of the use upon the potential market for or value of the copyrighted work – which courts view holistically to see whether, on balance, the use is fair and serves the public interest.31 The fair use provision in the United States is essentially future-proof, accommodating changing technologies and industries by relying on a weighing of statutory factors rather than highly specific technologies.32 Flexible limitations and exceptions have become even more important in the digital era as technology evolves at lightning speed; specific exceptions run the risk of obsolescence if they are framed in terms of existing technology. While fair dealing is more common globally, some countries in recent years have adopted a United States style fair use provision.33 Advocates for consumers can work to expand open-ended exceptions, such as fair use, in countries that do not have broad exceptions. Additionally, activists are needed to defend those exercising their fair use rights, such as documentary filmmakers or creators of parodies. Beyond defending fair use in litigation, public interest advocates can work to ensure that users of fair use are comfortable with the doctrine. While some critics of fair use assert that the doctrine is confusing, studies reveal that fair use is actually a predictable doctrine34 enabling the creation of codes of best practice in fair use to help communities in particular.35 For example, codes of best practice in fair use exist for documentary filmmakers, academic and research libraries, software preservationists, and more.36 These codes allow individuals in a particular community to better understand how their actions can comply with the fair use factors, effectively empowering them to make educated decisions about when and how to exercise their rights in a manner likely to avoid litigation. Additionally, in the digital era, technological protection measures can hinder the use of physical items such as cars and other smart technology. These “digital locks” exist on embedded 31

32

33

34

35 36

See, e.g., Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) (“there may be a strong public interest in the publication of the secondary work”); Authors Guild v. Google, 804 F.3d 202 (2d. Cir. 2015) (“The more the appropriator is using the copied material for new, transformative purposes, the more it serves copyright’s goal of enriching public knowledge”). In the Supreme Court’s recent decision in Google v. Oracle, the Court considered the novel question of whether copying of API for purposes of interoperability was a transformative use. The flexibility of fair use allowed the Court to weigh factors, rather than requiring reference specifically to interoperability or computer code, uses that certainly would not have been conceived of when the statute was codified. The majority opinion notes, “we have understood the provision to set forth general principles, the application of which requires judicial balancing, depending upon relevant circumstances, including ‘significant changes in technology’” (citing Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 430 (1984). Indeed, the Court notes that fair use is designed to address advances in technology: “fair use can play an important role in determining the lawful scope of a computer program copyright, such as the copyright at issue here. It can help to distinguish among technologies. It can distinguish between expressive and functional features of computer code where those features are mixed. It can focus on the legitimate need to provide incentives to produce copyrighted material while examining the extent to which yet further protection creates unrelated or illegitimate harms in other markets or to the development of other products. In a word, it can carry out its basic purpose of providing a context-based check that can help to keep a copyright monopoly within its lawful bounds.” See Band, supra note 29. Israel and South Korea are two examples of countries that have adopted the U.S. style fair use exception. South Africa has also introduced fair use into a copyright amendment bill. Pamela Samuelson, Unbundling Fair Uses, 77 Fordham Law Review 2537 (2009) (“[f]air use law is both more coherent and more predictable than many commentators have perceived once one recognizes that fair use cases tend to fall into common patterns”). See Center for Media and Social Impact, Codes of Best Practice in Fair Use, https://cmsimpact.org/resources/codes/. These “Codes of Best Practices in Fair Use” are relied on by many different communities to ensure inclusive and equitable access. The project, spearheaded by Professors Peter Jaszi and Pat Aufderheide, have empowered various communities to exercise these fair use rights. In the documentary filmmaker community, for example, insurance companies have been more willing to extend insurance to filmmakers complying with the Code than prior to the Code’s existence.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

Applying Social Justice Principles in the Practice of Intellectual Property Law

329

software in many everyday objects but can prevent what would otherwise be legal repair of what are traditionally analog items, such as a toaster oven or coffee maker. Public interest organizations participate in proceedings to permit the circumvention of digital locks for a number of legitimate purposes, including the right to repair.37 Other exceptions to anticircumvention rules that advocates have requested over the years include, for example, jailbreaking of cell phones, the ability to create clips of audiovisual material for educational purposes, and to preserve software. Without advocates to participate in these regulatory proceedings, consumers would face absurd results that would prevent them from engaging in activity that would be legitimate in the analog world, including tinkering with products an individual lawfully owns. Ultimately, many rightholders seek to strengthen their own rights through efforts to extend the copyright term or reducing the applicability of limitations and exceptions, either by bringing court cases asserting that particular uses are inappropriate or through legislative changes. On the other side, consumer-oriented organizations – including nongovernmental organizations that advocate for the public interest, consumer rights groups, and cultural heritage organizations – work to defend these critical limitations and exceptions and, where appropriate, to expand them.38

v. marrakesh treaty: a case study in copyright social justice advocacy In a global society, one critical issue with the IP system is that these laws are considered territorial. The existence of a particular limitation or exception in one country does not mean the same use could be exported to another country. As a general rule, domestic laws apply within the confines of its national territory, and even those residing in a country with strong copyright limitations and exceptions cannot use these laws to benefit those in other countries. Even if the use was created lawfully under an existing limitation or exception in one country, that same copy could be prohibited from being imported by someone residing in another country, even in a jurisdiction that has a similar exception. The Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (Marrakesh Treaty) is a prime example of how practical application of the intersection of IP law and social justice can successfully serve an underserved population. It did so to serve those with visual impairments or print disabilities and address the barriers copyright and territoriality of IP can have. Significantly, the Marrakesh Treaty did not simply appear and its success is a direct result of years of activism. This case study demonstrates that even when the solution is obvious as an intellectual matter, significant support, advocacy, and lobbying are required actually to achieve results. It also highlights the reality that debates about IP rights go beyond legal theory and have real consequences for those involved. 37

38

See Copyright Office, Rulemaking Proceedings Under Section 1201 of Title 17, https://www.copyright.gov/1201/; see generally Leah Chan Grinvald & Ofer Tur-Sinai, Intellectual Property Law and the Right to Repair, 88 Fordham L. Rev. 63 (2019). For example, iFixIt advocates for the right to repair physical products that people own but that have embedded software with technological protection measures. See iFixIt, The Repair Revolution, https://www.ifixit.com/Right-toRepair. SPARC focuses on reducing barriers to access knowledge through open access, particularly for educational material, https://sparcopen.org/. Organizations like the Center for Democracy and Technology, https://cdt.org/whowe-are/, and the Electronic Frontier Foundation, https://www.eff.org/, advocate for balanced copyright, particularly in the digital environment. See also Krista L. Cox, “Intellectual Property Law Meets Public Interest Law,” Above the Law, Jan. 18, 2018, https://abovethelaw.com/2018/01/intellectual-property-law-meets-public-interest-law/; Band & Butler, supra note 28, at xx.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

330

Krista L. Cox

The Marrakesh Treaty seeks to address a problem known as the “book famine,” where estimates reveal that only between 1 and 7 percent of all published works are made in a format accessible to those who are blind, visually impaired, or otherwise print disabled. These formats may include Braille, audio books, refreshable Braille, and text-to-speech. Without accessible versions of published works, those who have print disabilities are effectively barred from access to knowledge. Information, commonly found in textual works, is fundamental to a number of human rights including the rights to take part in society, participate in cultural life, enjoy the benefits of scientific progress, exercise freedom of opinion and expression, seek and impart information, education, and employment opportunities.39 These rights are well recognized in the international community and exist in both soft law documents – such as the UDHR – as well as hard law – such as the ICESCR, the International Convention on Civil and Political Rights (ICCPR); the Convention on the Rights of the Child (CRC); and the Convention on the Rights of Persons with Disabilities (CRPD).40 Despite the existence of several treaties noting the importance of access to knowledge and information, IP laws can pose a barrier to these rights. While each of these international treaties details different provisions that rely on access to knowledge, the CRPD specifically supports balancing IP rights with the rights of those with disabilities because it is necessary for full and effective participation and inclusion in society, as well as equality of opportunity. Article 21 of the CRPD, for example, mandates parties to “provide information intended for the general public to persons with disabilities in accessible formats and technologies appropriate to different kinds of disabilities in a timely manner and without additional cost.”41 Relatedly, article 30.3 specifically references IP barriers and requires parties to “take all appropriate steps, in accordance with international law, to ensure that laws protecting intellectual property rights do not constitute an unreasonable or discriminatory barrier to access by persons with disabilities to cultural materials.”42 While the CRPD, as well as other international human rights treaties, provides these specific acknowledgments, the Marrakesh Treaty was not a foregone conclusion. The reality that the most effective way to address the “book famine” was through an international solution spurred several years of negotiations at the World Intellectual Property Organization (WIPO) before culminating in the successful diplomatic conference in 2013 that produced the Marrakesh Treaty. The success of the Marrakesh Treaty was a historic one: it is the first WIPO treaty to focus on the rights of the user, rather than the right of the rightholders.43 But the history of the treaty demonstrates the critical need for public interest advocacy in producing consumer-focused outcomes; it likely would not have happened without groups advocating for human rights and social justice issues consistently pushing the issue forward. 39

40

41 42 43

Krista L. Cox, Accessible formats for people with visual disabilities: a human right requiring a binding legal instrument, Knowledge Ecology International, Nov. 17, 2011, https://www.keionline.org/21726; see also herein Band & Butler, supra note 28, at xx (discussing the importance of the Marrakesh Treaty to the social utility and social justice functions of libraries). Of course, the benefits of inclusive copyright policies can impact the participation in the copyright ecosystem of a variety of marginalized groups. See, e.g., John R. Whitman, Intellectual Property Empowerment and Protection for Prisoners, ch. 12 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Ayranci, supra note 8, at xx (providing an overview of the leading treaties and instruments which set forth international standards of IP protection and which details how these agreements acknowledge these obligations to serve the public interest, and further assesses their current and potential role in promoting IP social justice throughout the global IP ecosystem). United Nations, Convention on the Rights of Persons with Disabilities (2006). Id. In addition to the historic substantive nature, it entered into force more quickly than any other modern WIPO treaty.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

Applying Social Justice Principles in the Practice of Intellectual Property Law

331

The origins of the Marrakesh Treaty date far back – at least to 1982 when the Working Group convened by WIPO and the United Nations Educational, Scientific and Cultural Organization (UNESCO) drafted Model Provisions Concerning the Access by Handicapped Persons to the Works Protected by Copyright.44 Following the report, in 1985, Wanda Noel published a report for the Executive Committee of the Berne Convention and the Intergovernmental Committee of the Universal Copyright Convention. Noel’s report emphasized both the need for national exceptions in copyright law for those with disabilities, as well as the need for cross-border solutions.45 Noel suggested the creation of “an entirely new international instrument addressing both matters.”46 WIPO had long been aware of the problems faced by those with disabilities, as well as the need to find a potential solution. However, real movement toward an international treaty did not begin until the 2000s, largely driven by activists. The topic of copyright and disabilities continued to receive attention at WIPO, with additional studies performed. In 2006, a WIPO survey found that only about one-third of countries worldwide had national exceptions to allow for the creation and distribution of accessible format works for those who are print disabled.47 The majority of these countries were in the developed world, despite a higher prevalence of visual impairments in developing countries.48 The lack of copyright exceptions in the majority of the world was not the only problem as the strength of existing provision varied widely and accessible format works generally could not be shared across borders. Cross-border sharing is critical in addressing the book famine, allowing the sharing – rather than duplication – of resources. For example, countries sharing a common language – such as English, Spanish, French, or Arabic – would not have to waste resources creating the same accessible format in each country. Without an international solution, a popular book such as Harry Potter and the Sorcerer’s Stone would need to be created in an accessible format in the United States, the United Kingdom, Canada, Australia, New Zealand, and so forth, despite the fact that each country has primarily English speakers; the same would be true for the creation in Spain, Argentina, Nicaragua, Colombia, Mexico, etc. Cross-border exchange also serves individuals who read more than one more language or do not speak the native language of their country of residence. In the fall of 2008, the first draft of a treaty proposal – more than 20 years after Noel’s recommendations – was presented to WIPO and was later the subject of several meetings of the WIPO Standing Committee on Copyright and Related Rights (SCCR). This was the point at which discussions on a treaty began in earnest. The World Blind Union’s (WBU’s) treaty contained provisions for minimum standards for limitations and exceptions to copyright and would facilitate the cross-border exchange of accessible format works for beneficiaries. At the 44

45

46 47

48

Berne Union, Working Group on Access by the Visually Impaired and Auditory Handicapped to Material Reproducing Works Protected by Copyright (1982), https://www.wipo.int/edocs/pubdocs/en/copyright/120/wipo_pub_120_1982_12 .pdf Wanda Noel, Copyright Problems Raised by the Access by Handicapped Persons to Protected Works, IGC(1971)/VI/11 (1985), http://keionline.org/sites/default/files/noel_wipo_unesco_85_readable.pdf. Id. World Intellectual Property Organization (WIPO), Limitations and Exceptions: Access to Books for the Visually Impaired – Background Brief, https://www.wipo.int/pressroom/en/briefs/limitations.html (“A WIPO survey in 2006 found that fewer than 60 countries have limitations and exceptions clauses in their copyright laws that make special provision for persons who are blind, visually impaired, or print disabled, for example, for Braille, large print or digitized audio versions1 of copyrighted texts. Furthermore, because copyright law is “territorial”, these exemptions usually do not cover the import or export of works converted into accessible formats, even between countries with similar rules”). Judith Sullivan, Study on Copyright Limitations and Exceptions for the Visually Impaired, SCCR/15/7 (2007), https:// wipo.int/meetings/en/doc_details.jsp?doc_id=75696.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

332

Krista L. Cox

following SCCR, in the spring of 2009, Brazil, Ecuador, and Paraguay tabled a proposal based on the WBU’s text (Mexico and then Argentina joined the proposal at a later date). Subsequently, the United States, the European Union, and the African Group also tabled their own proposals. While the introduction of actual language was a step forward, the outcome remained uncertain and negotiations continued for several more years before WIPO agreed to call a diplomatic conference. The history of the Marrakesh Treaty illustrates the role activism plays in ensuring that the IP system serves the public interest and the IP social justice precepts of equitable access, inclusion, and empowerment for all. Here, there was a clear problem: very few works were made in a format that people with print disabilities could access. The solution was obvious: create international standards mandating IP limitations and exceptions to allow for the creation of accessible formats for those with print disabilities and permit cross-border sharing to encourage the sharing of resources. Additionally, unlike other areas where the need for balance in copyright law pits the market for rightholders against user demands, here the market serving those with print disabilities is so minimal that publishers consistently choose to forgo the creation of accessible formats. Thus, this traditional barrier, where rightholders object to limitations and exceptions for fear that they will lose their market, did not exist in the case of the Marrakesh Treaty. The market for print disability was one that had been ignored and abandoned by rightholders. Thus, conceptually, the Marrakesh Treaty should not have been a polarizing issue; all stakeholders and the international community agreed that those who are blind deserved access to published works. And yet, even with a clear problem and a clear solution, without concerns about losing the value of the copyright, the road to the Marrakesh Treaty was still fraught with uncertainty, first on whether a diplomatic conference would be called, and then whether it would successfully result in a binding legal instrument. At each SCCR, as well as in the months between these official WIPO meetings, over the course of several years, public interest groups advocated for a binding legal instrument to address the book famine problem. Representatives from the World Blind Union, the National Federation for the Blind, the International Federation of Library Associations and Institutions, the Library Copyright Alliance, the Trans-Atlantic Consumer Dialogue, and Knowledge Ecology International, to name but a few, would give oral statements at SCCR, meet with delegates from WIPO member states, provide technical assistance to delegates, and write briefing notes on various aspects of a potential treaty. Critically, these advocates ensured that delegates could not ignore the demands for a binding treaty, even though some member states appeared to oppose a treaty solution. Even after WIPO finally called for an official two-week diplomatic conference to be held in June 2013, a successful outcome was not guaranteed. Past diplomatic conferences on other copyright issues resulted in failure to reach an agreement, demonstrating the need for continued activism to ensure that the international community would feel pressure to reach consensus. Indeed, when a treaty did ultimately emerge, journalists later called it the “Miracle in Marrakesh.”49 This alliterative headline was not necessarily exaggerated, when just a few days earlier the prospect of a failed diplomatic conference seemed like an unfortunate possibility. On June 24, 2013, midway through the diplomatic conference, the President of the Conference called a plenary session for all delegates. He announced that he was telling a hard truth, repeatedly calling the situation a “crisis” because, while all member states recognized the 49

Catherine Saez, “Miracle in Marrakesh: ‘Historic’ Treaty for Visually Impaired Agreed,” IP-Watch, June 26, 2013, https://www.ip-watch.org/2013/06/26/miracle-in-marrakesh-historic-treaty-for-visually-impaired-agreed/.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

Applying Social Justice Principles in the Practice of Intellectual Property Law

333

need for a treaty, there was no real progress on critical issues. He pointed out that progress appeared to be moving forward very slowly, making it apparent that the negotiations would not finish in time and called such an outcome unacceptable. He also noted that after the five days of negotiations that had already taken place, only three of the 37 outstanding issues had been resolved and, at this pace, the diplomatic conference would fail. Because of the administrative matters that would need to take place at the end of the conference – including a day for legal scrubbing of the text, a day for adoption of the agreement, and a day for the closing and signing ceremonies – there were only three days left for negotiations and the President of the Conference raised concerns that the remaining 34 issues could be resolved in that time period. In a particularly striking moment of the speech, the President of the Conference threatened to close down the airports so that nobody could leave until a treaty was concluded, noting that it would be embarrassing to fail to come to a consensus that would allow those who were blind or had print disabilities to access published works on an equal basis with those without disabilities. While the President of the Conference painted a bleak picture, it was one of the defining moments of the diplomatic conference. Numerous country delegates spoke during that plenary, calling for delegations to show more flexibility, calling for progress, and also noting that leaving Marrakesh without a signed treaty would be an unacceptable outcome. Many emphasized the human rights aspect of the issue and voiced optimism that a treaty would still emerge. Some delegations specifically called on the United States and the European Union – the two delegations seen as blocking progress because of the large publisher and rightholder stakeholders in these countries – to show more flexibility. The United States and the European Union, in response, also expressed optimism, claiming that they were willing to work toward a successful outcome. Despite the bleak picture painted that day, civil society delegates continued lobbying sympathetic countries to ensure that, on balance, the language of the treaty would be positive and allow for effective limitations and exceptions for the beneficiaries of the treaty. While a treaty was the goal of the diplomatic conference, activists also worked tirelessly for positive language that would not be too restrictive or harm existing limitations and exceptions in countries like the United States. Interactions between stakeholders – including rightholders, as well as activists – and delegates continued throughout the rest of the diplomatic conference. As publishers worked to push for restrictive language, such as numerous references to what is known as the TRIPS “three-step test” that can be seen as limiting the scope of limitations and exceptions,50 civil society pushed in the opposite direction, pointing out that overly restrictive language would result in a useless treaty that failed to achieve the desired outcome of increasing access to published works for the blind. 50

See Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), arts. 19, 21, 24, 26, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299. In accordance with TRIPS, signatory nations are free to adopt limitations and exceptions to intellectual property rights, provided that such limitations and exceptions satisfy the TRIPS three-step test, which requires that limitations or exceptions (i) apply only in special cases, (ii) do not unreasonably prejudice the legitimate interests of the rights holder, and (iii) do not conflict with the normal commercial exploitation of the intellectual property work. See Daniel J. Gervais, Towards a New Core International Copyright Norm: The Reverse Three-Step Test, 9 Marq. Intell. Prop. L. Rev. 1, 13–14 (2005) (“The three-step test has become the cornerstone for almost all exceptions to all intellectual property rights at the international level. It has been used as the model for exceptions to all copyright rights in the TRIPS Agreement (article 13), to the rights created by the WIPO Copyright Treaty (article 10), and the WIPO Performances and Phonograms Treaty (article 16). Interestingly, in the TRIPS Agreement, it is also the basis for exceptions to industrial design protection (article 26(2)), and patent rights (article 30)”). See also Lateef Mtima, Copyright and Social Justice in the Digital Information Society: “Three Steps” Toward Intellectual Property Social Justice, 53 Hous. L. Rev. 459, 496–503 (2015) (proposing a framework for achieving IP social justice objectives that is compliant with the threestep test).

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

334

Krista L. Cox

In addition to providing technical assistance on the precise language of the treaty and working to counteract demands of rightholders, activists also provided important reminders to all those involved in the negotiations. As delegates argued about concepts, redlines, specific words, and commas, activists with visual impairments made statements in side events and smaller group settings reminding everyone to be human and remember that the reason negotiators were gathered at the diplomatic conference was to solve a serious problem for people. Ultimately, success would be measured in the benefits for those who are blind or visually impaired. One activist noted that, at one point in the negotiations, the treaty had become a game of poker, trading one provision for another. He went on to argue that it was imperative not to think in such reductionist terms and to ensure that the final redlines were set by those who were blind, rather than by anyone else. Interventions like these served as a reminder that the outcome of the diplomatic conference would have real impacts on real people with disabilities and demonstrated how important it is for the beneficiaries of a treaty to be present as their own advocates. Among the hard-fought victories reflected in the final text included: respect for national legislation and permission to implement the treaty in a variety of different ways (including explicit reference to fair practices, dealings, and uses); permitting export of accessible formats directly to beneficiaries; broad language on the type of work the treaty applied to; the elimination of any obligation to restrict the creation and distribution of accessible format work to instances where an accessible format was not commercially available; an article on privacy for beneficiary persons; and language requiring parties to take appropriate measures to ensure that technological protection measures would not prevent beneficiaries from enjoying the limitations and exceptions of the treaty. In terms of policymaking, there is no doubt that the wide range of advocates and stakeholders led to deep consideration on a number of issues, ultimately leading to the final treaty text. Although the Marrakesh Treaty is often referred to in shorthand as a “treaty for the blind,” the text covers those with print disabilities more broadly. Beneficiary persons under the treaty include those whose physical disability makes it impossible to hold or manipulate a book,51 for example an amputee or individuals who have a paper allergy and cannot manipulate pages. Without groups who have worked with those in the print disability community advocating for robust treaty provisions, it is possible that this category of beneficiaries would have been forgotten and left out. Similarly, although some early discussions of a treaty considered whether the scope should also cover those with hearing disabilities, as work on a legal instrument advanced, delegates focused solely on those with print disabilities. This concentration may have resulted from the heavy advocacy from the World Blind Union and other groups representing those with visual impairments. Ultimately, the conclusion of the treaty was heralded as a success, providing an internationally recognized solution to the book famine. Countries swiftly began the process of ratifying and implementing the Marrakesh Treaty, thereby using the treaty to fulfill their obligations under other human rights treaties, such as the CRPD, and to eliminate tensions between domestic disability laws and copyright. India was the first country to deposit its instrument of ratification on June 30, 2014.52 After Canada became the 20th country to ratify the Marrakesh Treaty,

51

52

World Intellectual Property Organization (WIPO), Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (2013), art. 3(c). WIPO, India Is First to Ratify “Marrakesh Treaty” Easing Access to Books for Persons Who Are Visually Impaired, June 30, 2014, https://www.wipo.int/pressroom/en/articles/2014/article_0008.html.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

Applying Social Justice Principles in the Practice of Intellectual Property Law

335

the instrument entered into force on September 30, 2016.53 Canada’s Minister of Innovation, Science and Economic Development, Navdeep Bains, noted that: “The coming into force of the Treaty will mark the last step of a long journey toward a more inclusive global community, where print-disabled and visually impaired people can more fully and actively participate in society and reach their full potential.”54 As of this writing, 67 countries have ratified the Marrakesh Treaty,55 including the EU and the U.S., which will benefit beneficiaries in these countries. Despite the successes in achieving the first human-rights based treaty at WIPO and the relatively rapid ratifications globally, there is still more work to be done to ensure that the full benefits of the Marrakesh Treaty are realized. In addition to advocacy to ensure that additional countries ratify the treaty, its implementation has varied greatly from country to country. Some implementing legislation creates unnecessary barriers, such as imposing requirements that the treaty provisions can only be used if there are no commercially available accessible formats (with no recognition that different types of formats may be necessary to fulfill the needs of specific disability), and social justice advocates can propose language that ensures broader, more equitable access.

conclusion The very existence of the Marrakesh Treaty demonstrates the power of social justice advocacy in the IP space. Applying social justice values in the practice of patent and copyright law ensures that rights do not tilt too far toward rightsholders, and takes into account equitable access and inclusion for the public at large, and in particular, for marginalized communities. Ensuring balance in the IP system not only furthers access to information and scientific advancements, but also empowers the public more fully to realize a vast array of human rights from the right to education to the right to seek employment to the right to health – in short, the right to selfactualization through access to IP achievement.

53

54

55

WIPO, Marrakesh Notification No. 21: Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled Entry into Force, June 30, 2016, https://www.wipo.int/treaties/en/ notifications/marrakesh/treaty_marrakesh_21.html. The other countries who were among the first 20 necessary for entry into force include (in order of ratification): El Salvador, United Arab Emirates, Uruguay, Mali, Paraguay, Singapore, Argentina, Mexico, Mongolia, South Korea, Australia, Brazil, Peru, North Korea, Israel, Chile, Ecuador, and Guatemala. WIPO, Canada’s Accession to Marrakesh Treaty Brings Treaty into Force, June 30, 2016, https://www.wipo.int/press room/en/articles/2016/article_0007.html. The current list of contracting parties is available at WIPO-Administered Treaties, Contracting Parties, Marrakesh VIP Treaty, https://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=843.

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.021 Published online by Cambridge University Press

par t v

IP Social Justice in the Information Age

https://doi.org/10.1017/9781108697613.022 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.022 Published online by Cambridge University Press

16 User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks Elizabeth L. Rosenblatt*

Introduction I. Fanworks and Expressive Dialog II. Fanworks Provide a Unique Avenue for Social Justice Narratives III. Fanworks Are Empowering A. Fanworks Help Fans Gain Confidence in Themselves and Their Minority Identities B. Fanworks Expand the “Author Function” IV. Fan Communities Are Sites of Cross-Cultural Exchange, Discussion, and Challenge Conclusion: Bringing It Back to Intellectual Property Law

page 339 340 342 348 349 351 354 359

[Fandom] is the supportive, creative space for blacks who after seeing a movie in which all the main characters are white, thinks, “I would do it differently, and here’s how.” Fanfiction is for the girls who read a comic book in which the heroes are all men, and imagines herself as Captain America. Fanfiction is for all those who watch/listen/read to a story and cannot empathize with the characters as they are, but see potential in tweaking, recreating, and re-imagining the story to fit and resonate with their own lives. Finally, fanfiction is for all groups of people misrepresented in our mass media, and it gives them a space to create alternatives which are as empowering for the producer as the consumer. – N.J.B.

introduction For as long as there have been works, there have been fanworks – works made by people who feel so passionately about something that they want to discuss it, make new things about it, and join with others who feel similarly about it. Fanworks are often described in the Internet age as kinds of * Professor of Law, University of Tulsa College of Law. I am also the volunteer Legal Chair of the Organization for Transformative Works (OTW), a U.S. nonprofit that works on behalf of fans and fanworks worldwide. In addition, I have also represented fans and fanworks in a professional capacity in copyright and trademark litigation, some of which was pending at the time of writing. Some of the discussion herein reflects research conducted by the OTW and overlaps with positions taken by the OTW in legal advocacy work; however, the views expressed are solely my own. Thanks to the editors for inviting me to contribute and for their suggestions. Thanks also to Casey Fiesler, Stacey Lantagne, Mel Stanfill, and Rebecca Tushnet for their insights.

339 https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

340

Elizabeth L. Rosenblatt

“user-generated content.” Because anyone can make them, share them, and experience them, fanworks provide uncommonly powerful opportunities for expressive empowerment, access, and inclusion. In addition, fanworks are uniquely well suited to advancing social justice by using wellknown sources to highlight injustices; and the affinity groups that surround fanworks carry special potential to empower creators and act as sites of progress. At the same time, fanworks have a tense relationship with intellectual property (IP) doctrine and enforcement: fanwork creators are authors in their own rights, but because fanworks build upon pre-existing material, they can also run afoul of actual, perceived, or threatened copyright and trademark risks. This chapter addresses those potentials and precarities. It explores the relationship between fanworks, social justice, and law to highlight how, by providing avenues for access, inclusion, and empowerment, IP doctrines that encourage fan endeavors also advance the goals of IP social justice (IP-SJ).

i. fanworks and expressive dialog Fanworks reflect, as the Star Trek motto goes, “infinite diversity in infinite combinations.”1 Indeed, they are so wide-ranging that it is difficult to pin down a definition that distinguishes them from any other kind of work. As a threshold matter, calling fanworks “user-generated” is misleading, because there is no such thing as a nonuser-generated work. The roles of “creator” and “user” are always, by their nature, overlapping. As literary theorists and IP scholars have observed, expressive meaning-making is necessarily communicative and dialogic.2 Expression in a vacuum is meaningless, because meaning comes from the intersection of speaker and hearer. Moreover, until a creator selects words or other communicative tools to serve their own communicative intentions, those words already have meaning in the minds of others, and that pre-existing meaning informs a creator’s choices. In that way, all expression is “relational” – it reflects a relationship between speaker/listener and hearer/speaker – and the term “user-generated” inevitably applies to all works, and to the meaning of all works. The dialogic nature of expression is at odds with IP law’s need to assign a particular “owner” or “author” to trademarks and copyrighted works. The law selects one person in an expressive chain of speakers and hearers, and labels that person the creator, despite the contributions of others in the chain. Often, this selection comes at the expense of minority contributors, whose works are incorporated into works deemed “authored” by dominantculture appropriators; while comparable appropriation is legally and morally condemned when conducted by minorities.3 This imbalance highlights why a system that focuses on the relational nature of expression – affording respect to all participants in a communicative chain – is more egalitarian than one that conceives of each expression only as an isolated, singularly “ownable” entity. 1

2

3

Edward Gross & Mark A. Altman, The Fifty-Year Mission: The Complete, Uncensored, Unauthorized Oral History of Star Trek 35 (2016) (quoting Rod Roddenberry, son of Gene Roddenberry, explaining that Star Trek is “based on the idea of IDIC, which was one of the backbones of the original series . . . which means ‘infinite diversity in infinite combinations.’ It’s the idea that it’s universal acceptance.”). See generally, e.g., Carys J. Craig, Copyright, Communication, and Culture: Towards a Relational Theory of Copyright Law (2011); Mikhail Bakhtin, Discourse in the Novel, in Literary theory: An Anthology 674, 677 (Julie Rivkin & Michael Ryan eds., 1998). See Elizabeth L. Rosenblatt, Copyright’s One-Way Racial Appropriation Ratchet, 53 U.C. Davis L. Rev. 591 (2019) (comparing, for example, harsh treatment of sampling and musical imitation for purposes of Black-coded hip hop and rap music with favorable treatment of sampling and musical imitation for purposes of white-coded musical uses including musicological preservation, mainstreaming, electronic dance music, sound collage, and musique concrete); Mel Stanfill, Rock This Way: Cultural Constructions of Musical Legitimacy, ch. 3 (Manuscript, on file with author).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

341

There are IP doctrines that take dialogism into account. In copyright law, the fair use doctrine implicitly recognizes value in dialog, to some extent, by listing criticism and comment as the sorts of uses likely to qualify as “fair.”4 In trademark doctrine, the First Amendment defense outlined in Rogers v. Grimaldi implicitly acknowledges that trademarks may carry expressive or cultural meaning beyond that intended or contributed by the mark holder.5 Right of publicity laws, which are also relevant to cumulative creativity, also often acknowledge that First Amendment expression may require depicting or discussing real people.6 These doctrines create space for a particular variety of “user-generated” content: fanworks. Fanworks are new expressive works based on existing media. The term includes a very wide array of creative endeavors: fan fiction; fan art; fan crafts (such as knitted, crocheted, or quilted goods); fan games (video games, tabletop role playing games, board games); fan music (including mashups, sampling, and other forms of remix done by fans, as well putting fan-inspired lyrics to preexisting music, often known as “filk”); fan films; fan vids and anime music videos (AMVs) (video montages setting clips of film or TV to pre-existing music); replica prop creation; cosplay (wearing costumes replicating or inspired by existing characters); fan publications (often called “‘zines” when in hard copy, or their online equivalents); discussion boards (and similar fan-conversation mechanisms, including blogs and social media groups); and countless other forms of “remix” made by people who love (fans) – or passionately dislike (antifans) – media source material. The source material can be anything from traditional books, tv, and movies to real people to advertisements. Fanworks celebrate, imitate, critique, or reinterpret their source material – for example, fan fiction may create more of an existing story; put characters in an alternate universe; combine the worlds of multiple media sources; retell the story from the villain’s perspective; explore potential or noncanonical relationships between characters; or explore how a story would work if its characters were different races or genders. Although fanworks can be created on a professional basis and sold for money, they are more commonly created out of love (or hate) for the source material and made available for free or exchanged with other fans. By this definition, Tom Stoppard’s play Rosencrantz & Guildenstern Are Dead is fan fiction, as is Alice Randall’s slavefocused retelling of Gone With the Wind in The Wind Done Gone, as are the 386,149 Harry Potter stories on the fan fiction site known as The Archive of Our Own.7 Fanwork creation is a way for fans to make media sources their own – by making fanworks, fans act as “textual poachers,”8 using their own interpretive lenses, building communities, and in some cases, subverting hegemonic messages.9 This chapter will focus on fanworks according to this broad definition, with the aim of demonstrating why legal frameworks that promote the creation of fanworks also promote access, inclusion, and empowerment by facilitating critical expressive endeavors in marginalized spaces and facilitating the growth of diverse affinity spaces. 4 5

6

7

8 9

17 U.S.C. § 107. Rogers v. Grimaldi, 875 F.2d 994, 999–1002 (2d Cir. 1989). The Rogers test, or a version of it, has been widely adopted across circuits. See, e.g., Westchester Media v. PRL USA Holdings, 214 F.3d 658, 664–65 (5th Cir. 2000); ETW Corp. v. Jireh Publ., 332 F.3d 915, 926–28 (6th Cir. 2003); Fortres Grand Corp. v. Warner Bros. Entertainment Inc., 947 F. Supp. 2d 922, 931–932 (N.D. Ind. 2013), aff’d on other grounds, 763 F.3d 696, (7th Cir. 2014), cert. denied, 574 U.S. 1108 (2015); E.S.S. Entm’t 2000 v. Rock Star Videos, Inc., 547 F.3d 1095, 1099–100 (9th Cir. 2008); Univ. of Alabama Bd. of Trustees v. New Life Art, Inc., 683 F.3d 1266, 1279 (11th Cir. 2012). See, e.g., Cardtoons, L.C. v. Major League Baseball Players Assoc., 95 F.3d 959 (10th Cir.1996); ETW Corp. v. Jireh Publ., 332 F.3d 915, 931–32 (6th Cir. 2003); Hart v. Elec. Arts, 717 F.3d 141, 158–65 (3d Cir. 2013); Winter v. DC Comics, 30 Cal. 4th 881, 134 Cal. Rptr. 2d 634, 69 P.3d 473, 476, 479 (Cal. 2003). https://archiveofourown.org/tags/Harry%20Potter%20-%20J*d*%20K*d*%20Rowling/works, as of Nov. 22, 2022. This number grows daily. Henry Jenkins, Textual Poachers: Television Fans and Participatory Culture (1992). Janice Radway, Reading the Romance: Women, Patriarchy, and Popular Culture (1984).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

342

Elizabeth L. Rosenblatt

ii. fanworks provide a unique avenue for social justice narratives Fanworks are fundamentally dialogic – created in response to a pre-existing work, they are part of a conversation with the pre-existing work and (typically) with the creator or audience of that work. As such, like any form of un-requested “audience participation,” they complicate the creator/consumer hierarchy.10 Using and commenting on pre-existing material “readily permits critique of existing structures – by creating possibilities and alternatives, remixes demonstrate that there is no single, necessary story.”11 Therefore, even the most lovingly uncritical fanwork is an act of resistance to hierarchy: it posits that someone other than the underlying creator/IP owner has something worthwhile to say. As scholar Catherine Tosenberger explained: [I]ssues of gender, race, class, sexuality . . . have affected who has access to that institutional approval . . . Fandom is a space where people who have historically been denied access to institutional narrative creation have said, ‘Well, then, we’ll tell this story our way’ . . . The Internet has exacerbated fandom’s anarchic tendencies, and all those old cultural hierarchies – creator/consumer, male/female, straight/queer, art/crap – are getting shaken up . . . In fandom, you don’t have to be anointed by the Official Culture Industry to be an artist, to share your work and have it be appreciated.12

Fanworks also operate as critical commentary on their sources. Considering the relationality of meaning-making, it is not necessarily obvious to every consumer what that commentary means – but every fanwork is, necessarily, in conversation with the prior works that inspired it and the media systems in which those prior works were made.13 As fan studies scholar Francesca Coppa described the practice of making and sharing fan vids, “Like a literary essay, a vid is a close reading. It’s about directing the viewer’s attention to make a point.” By presenting a new “interpretive lens to help the viewer to see the source text differently . . . [a vid] is more akin to arts criticism than to traditional music video.”14 Fanworks exist not only in conversation with their source material, but also in conversation with society at large – since the earliest days of Usenet, fanworks have been shared and discussed online,15 and over time have become more and more exposed in interactive spaces where the ease and immediacy of communication makes them particularly conducive to resisting hierarchy and provoking systemic change.16

10

11

12

13

14

15

16

This is true even of seemingly uncritical “mimetic” fan pursuits such as the building of replica props, which by their nature challenge the superiority of the props’ initial creators (i.e., intellectual property owners). See Matt Hills, From Dalek Half Balls to Daft Punk Helmets: Mimetic Fandom and the Crafting of Replicas, 16 Transformative Works & Cultures (2014), https://doi.org/10.3983/twc.2014.0531. Comments of the Organization for Transformative Works to the USPTO/NTIA, Nov. 13, 2013, 29, http:// transformativeworks.org/sites/default/files/Comments%20of%20OTW%20to%20PTO-NTIA.pdf (OTW Comments). Catherine Tosenberger, Potterotics: Harry Potter Fanfiction on the Internet 34–35 (unpublished Doctoral Dissertation, University of Florida 2007), https://ufdcimages.uflib.ufl.edu/uf/e0/01/96/05/00001/tosenberger_c.pdf. Henry Jenkins, Fan Fiction as Critical Commentary, Confessions of an Aca-Fan (Sept. 27, 2006), http://henryjenkins .org/2006/09/fan_fiction_as_critical_commen.html. Francesca Coppa, Women, Star Trek, and the Early Development of Fannish Vidding, 1 Transformative Works & Cultures (2008), http://journal.transformativeworks.org/index.php/twc/article/view/64. Francesca Coppa, A Brief History of Media Fandom, in Fan Fiction and Fan Communities in the Age of the Internet: New Essays (Karen Hellekson & Kristina Busse eds., 2006) (providing a chronological history of media fandom beginning with science fiction fandom and fanzines in the 1920s). See Erin Watley, Race, Gender, and Digital Media: The Mis-Adventures of Awkward Black Girl and Representations of Black Female Identity, in Controversies in Digital Ethics 248–63 (Amber Davisson & Paul Booth eds., 2016); Rukmini Pande, Squee from the Margins: Fandom and Race (2018) (“media fandom spaces do function as online spaces wherein creative and transformational activities around popular cultural media texts allow for significant critical

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

343

Fanworks are particularly well suited to empowering marginalized speakers and narratives, because they allow fans to put themselves, their critiques, and their desires into popular settings that otherwise underrepresent or underexplore those things. For example, one common form of fanwork re-centers attention on female, minority, or disabled characters who were portrayed as secondary.17 Another common genre, the “Mary Sue” or “self-insertion” work, places a character representing the fan-creator among the main characters of a pre-existing work.18 Alternate Universe and crossover works allow fans to explore social justice issues by transplanting characters into other (real-world or media-inspired) settings.19 Gender- and race-bending works allow fans to explore issues of race, gender, and representation by changing the gender of characters or replacing white characters with nonwhite ones and envisioning how the story would change.20 A related form of fanwork fills in racially specific gaps left by “colorblind” sources.21 Another particularly common form of fanwork, known as “slash,” allows fans to explore LGBTQ+ issues by placing characters in noncanonical, typically homosexual, relationships.22 These are but a few examples. Even less overtly resistant fan communities, such as the those that make AMVs, still involve cross-cultural engagement and resistance to authority, as overseas viewers engage with Japanese fans, learn Japanese, and recontextualize and introduce Japanese media sources into Euro-American contexts. Indeed, although anime fan communities do not tend to be the “critical, feminist” hotbeds that some other fanwork-creating communities are, they involve translating Japanese source material into other languages and communicating across national and cultural boundaries, and therefore “gesture towards a cohesive cultural body that has learned to undermine the oppressive influence of national boundaries.”23 Some might argue that one need not make derivative works to create works that focus on underrepresented characters or insert social justice themes into a narrative. Without question, so-called “original” works – particularly works by minority creators – are also crucial to advancing social justice. But fanworks are different, and in many ways better at advancing principles of

17

18

19

20

21

22 23

interventions into hegemonic narratives about gender, sexuality, race, religion, and disability, among other axes of identity,” albeit messy ones). See Kristen J. Warner, ABC’s Scandal and Black Women’s Fandom, in Cupcakes, Pinterest, and Ladyporn: Feminized Popular Culture in the Early Twenty-First Century 32, 34 (Elana Levine ed., 2015) (“One of the ways that Black female fandom makes Black femininity visible is by consciously moving mediated women of color, who often occupy supporting roles, to the center, transforming them into leads in fan-produced discourse”). See Anupam Chander & Madhavi Sunder, Everyone’s a Superhero: A Cultural Theory of “Mary Sue” Fan Fiction as Fair Use, 95 Calif. L. Rev. 597, 599–613 (2007). See Kavita Mudan Finn & Jessica McCall, Exit, Pursued by a Fan: Shakespeare, Fandom, and the Lure of the Alternate Universe, in Shakespeare and Creative Criticism 38–53 (Rob Conkie & Scott Maisano eds., 2019). See, e.g., Megan Justine Fowler, Rewriting the School Story Through Racebending in the Harry Potter and Raven Cycle Fandoms, 29 Transformative Works & Cultures (2019), https://journal.transformativeworks.org/index.php/twc/ article/view/1492/2153 (discussing fanworks that cast characters Harry Potter and Ronan Lynch as Black and queer, which disrupts popular assumptions about Britishness, Irish-Americanness, and masculinity); Christopher McGunnigle, Rule 63: Genderswapping in Female Superhero Cosplay, Gender and the Superhero Narrative 144, 160 (Michael Goodrum, Tara Prescott, & Philip Smith eds., 2018) (“genderswapping [cosplay] is transformative, allowing the cosplayer to perform alternate codes that reflect normally subdued aspects of her personality”); Racebent Disney, http://racebentdisney.tumblr.com/; Dark Agenda, Racebending Revenge Fanworks Challenge, http://darkagenda.dreamwidth.org/tag/challenge:+racebending+revenge (producing fanworks based on any source, in any medium); Chromatic Recasting, http://fanlore.org/wiki/Chromatic_Recasting (listing fanworks that have recast various TV shows and movies). Warner, supra note 17, at 34, 44–46 (explaining how Black female fan communities transform Scandal’s Olivia Pope into “a more culturally specific Black woman”). See Coppa, supra note 15, at 48–54. Susan Noh, Subversion and Reification of Cultural Identity in Global Fandoms, 17 Gnovis 25, 35 (2016).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

344

Elizabeth L. Rosenblatt

inclusion, because they are capable of correcting or shining a light on what is missing from, or overrepresented in, mainstream media. As fan writer Sharon wrote: As a Black girl, when I first started to write fanfiction (privately), it was borne not out of a need to see a fictional version of myself hook up with the show’s resident dreamboat (but even if it was, so what?), but to combat the nameless feeling that came over me every time I fell in love with a story that took place in a world where people like me, apparently, didn’t exist – or worse, served only as the punchline or background characters. If I did see characters like me, the dialogue seemed to consist of tired stereotypes – your standard “oh hell nos” and “You go girl.” There’s nothing wrong with talking like that . . . but when that’s the only Black girl on your show, you have a huge problem. And so, so much of what I see on TV and read in books – especially in genres I love, like fantasy and science fiction – has a huge problem.24

Fanworks come with their own well-known context and their own built-in audience. This familiarity allows creators not only to say their own thing, but also to say their own thing about dominant culture to those familiar with that dominant culture; and to use the signs and symbols of dominant culture to “talk back” to inequality. Take, for example, Orion Martin’s fanwork “What if the X-Men Were Black?” which re-colors several covers of the X-Men comics to give every mutant “a skin color that was some shade of brown.” Martin’s work thus uses the comic’s own images to raise questions about whether the comic, often lauded for raising issues of social commentary, is entirely effective at doing so.25 Or take the tumblr site “saved by the bell hooks,” which houses memes that superimpose quotations from Black feminist scholar bell hooks over illustrative images from the TV sitcom Saved By The Bell. These memes use popular culture and social justice theories to illuminate each other in a lighthearted way.26 Such critical repurposing of familiar signs and symbols, which scholar Sonia Katyal has dubbed “semiotic disobedience,”27 is legally hazardous unless the law permits the repurposing of copyrighted and trademarkprotected material. Perhaps their tendency to permit semiotic disobedience explains why intertextual and remix creativity are disproportionately practiced by women and minority creators.28 Although much of what society considers “fandom” remains white, cisgendered, heterosexual, able-bodied, young, and male in many areas of popular culture,29 fannish “semiotic productivity” is “associated with the cultural tastes of subordinated groups, particularly those disempowered by any combination of gender, age, class, and race.”30 Or, as fan N.J.B. wrote, fanwork creation: 24

25

26

27

28

29

30

Sharon, My Love Letter to Fanfiction: Or, How Fanfiction Is the Turducken of Literature and a Lot More Important to (Some) WOC Than You Think, Black Girl Nerds (blog), Feb. 15, 2015, https://blackgirlnerds.com/love-letterfanfiction-fanfiction-turducken-literature-lot-important-woc-probably-think/. See Orion Martin, What If the X-Men Were Black?, The Hooded Utilitarian, Dec. 16, 2013, https://www .hoodedutilitarian.com/2013/12/what-if-the-x-men-were-black/. http://savedbythe-bellhooks.tumblr.com/; see Alison McCracken, Tumblr Youth Subcultures and Media Engagement, 57 Cinema J. 151 (2017) (discussing tumblr sites’ ability to act as “an alternative, tuition-free classroom, a powerful site of youth media literacy, identity formation, and political awareness that often reproduces cultural studies methods of media analysis”). Sonia K. Katyal, Semiotic Disobedience, 84 Wash U. L. Rev. 489, 493 (2006); see also John Tehranian, Towards a Critical IP Theory: Copyright, Consecration, and Control, 2012 BYU L. Rev. 1233, 1278–81 (2012). Abigail Derecho, Archontic Literature: A Definition, a History, and Several Theories of Fan Fiction, in Fan Fiction and Fan Communities in the Age of the Internet 61, 67 (Karen Hellekson & Kristina Busse eds., 2006); OTW Comments, supra note 11, at 29; Coppa, supra note 14 (discussing female origins of fanvidding communities). See Mel Stanfill, The Unbearable Whiteness of Fan Studies 305, 311 (Paul Booth ed., 2018) (describing the trope of “pasty-faced nerds” and the prevalence of unexamined whiteness in fan communities and their depiction). John Fiske, The Cultural Economy of Fandom, The Adoring Audience: Fan Culture and Popular Media 30, 37 (Lisa A. Lewis ed., 1992).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

345

is the supportive, creative space for blacks who after seeing a movie in which all the main characters are white, thinks, “I would do it differently, and here’s how.” Fanfiction is for the girls who read a comic book in which the heroes are all men, and imagines herself as Captain America. Fanfiction is for all those who watch/listen to/read a story and cannot empathize with the characters as they are, but see potential in tweaking, recreating, and re-imagining the story to fit and resonate with their own lives. Finally, fanfiction is for all groups of people misrepresented in our mass media, and it gives them a space to create alternatives which are as empowering for the producer as the consumer.31

Alice Randall, author of The Wind Done Gone, explained how she began with fan fiction before moving on to retell Gone With the Wind from the slaves’ perspective: The Wind Done Gone is a story of reading, writing, and redemption, the story of a woman, a black woman, who reads her way into writing and writes her way into redemption. It is in some sense my story. When I was a girl of six or seven I fell in love with the television series Batman. And like many loves, there was something I hated in it too: I hated the fact that no one who looked like me was in the story. For two weeks after that awareness I was frustrated. The third week I wrote myself in. I literally began to write out Batman scripts and write a part for me into them, a Bat Girl part. My Bat Girl wasn’t a sidekick; she was a catalyst; every time I wrote her into a story, she changed its ending. When they took Batman off the air, I made my first longdistance phone call. I wanted to save the show. Later, when I read Gone With the Wind (GWTW), I fell in love with another pop culture artifact. This was a troubled love from the beginning. I had to overlook racist stereotyping and Klan whitewashing to appreciate the ambitious, resilient, hardworking, hard-loving character who is Scarlett. Like so many others, I managed to do it. Then one day, rereading the novel, an enormous question arose for me from the center of the text. Where are the mulattos on Tara? Where is Scarlett’s half-sister? Almost immediately I knew I had to tell her story, tell the story that hadn’t been told. Tell it because the silence injured me.32

Fanworks that place underrepresented characters in the foreground of sources and genres in which they are commonly backgrounded is a form of “restorying”33 or “counter-storytelling” – resisting oppressive narratives by “telling the stories of those people whose experiences are not often told,”34 made all the more powerful because the counter-storytelling is situated in the speech genre of the underlying works. In the fanvid “Origin Stories,” for example, vidder Gianduja Kiss uses a rap song by Aesop Rock featuring John Darnielle and video clips from the TV shows Buffy the Vampire Slayer and Angel to highlight characters of color in those shows and demonstrate how the shows’ arcing narratives are built on the efforts of largely ignored women of color.35 Many powerful examples of counter-storytelling exist in cosplay, which permits fans to engage in embodied expressions of diversity;36 or subversive, playful, or disruptive performances of 31 32

33

34

35

36

OTW Comments, supra note 11, at 30. A Conversation with Alice Randall, Houghton Mifflin Harcourt, http://www.hmhbooks.com/readers_guides/wind_ done_gone/index2.shtml#conversation (last visited Nov. 11, 2013, no longer available). See Ebony Elizabeth Thomas & Amy Stornuaiuolo, Race, Storying, and Restorying: What Can We Learn from Black Fans?, 29 Transformative Works & Cultures (2019), https://journal.transformativeworks.org/index.php/twc/art icle/view/1562/2121. Daniel G. Solórzano & Tara J. Yosso, Critical Race Methodology: Counter-Storytelling as an Analytical Framework for Education Research, 8 Qualitative Inquiry 23, 32 (2002). Gianduja Kiss, Origin Stories (Feb. 24, 2008), https://giandujakiss.livejournal.com/360051.html; see also Coppa, supra note 14. See Tiffany M. Hutabarat-Nelson, Fantastical Body Narratives: Cosplay, Performance, and Gender Diversity 43–45 (unpublished Doctoral Dissertation 2017), https://ir.library.louisville.edu/cgi/viewcontent.cgi?referer=https://scholar .google.com/&httpsredir=1&article=3785&context=etd.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

346

Elizabeth L. Rosenblatt

sexuality, gender, race, age, and physical ability.37 For example, female cosplayers of color may use their bodies and costuming skills to embody canonically white or male superheroes and to resist the stereotype that superheroes (and superhero-fans) are white and male.38 The practice of “gender-bending” cosplay (in which a cosplayer creates a costume that changes or subverts a character’s gender expression) or “crossplay” (in which a cosplayer emulates a character whose gender is different from their own) can be used to resist hegemonic concepts of gender or highlight failures of representation in comic books.39 As cosplayer Rena explained: “I don’t like the fact that a lot of female characters in comic books don’t have clothes so it’s like you can be a female character or you can gender bend a character and actually get to wear clothes.”40 The practice of “racebending” cosplay – cosplayers of color wearing the costumes of superheroes usually depicted as white – provides a particularly powerful counter-narrative. As an example, Chaka Cumberbatch, a cosplayer of color, recounted an interaction with a young Black female fan at a convention who observed Cumberbatch cosplaying Huntress (a superheroine who is canonically depicted as white), and told her that “she didn’t know black girls were ‘allowed’ to cosplay, that she hardly knew any black female superheroes, and that she had no idea ‘people like us’ could join in on things like comic books, cosplay, and conventions.”41 Cosplayers who dress superheroes or princesses in hijabs provide material counter-narratives to implicit biases about Islam and fandom.42 Because they derive from existing, already-known works, fanworks’ social justice narratives can reach those who might not ordinarily engage with issues of social justice. Firefly fans may not think to read an essay about underrepresentation of Asian performers in mainstream American cinema, but will watch “How Much Is the Geisha in the Window,”43 a fan vid that demonstrates how the show’s use of Chinese and Japanese-inspired material embodies racist stereotypes and underrepresents Asian actors.44 Avengers fans may not know much about Black Twitter, but they will learn about it – and perhaps something about the politics of African American hair and nails – through memes created by African American fans, showing Avengers star Chris Evans 37

38

39

40

41 42

43 44

See Jason Bainbridge & Craig Norris, Posthuman Drag: Understanding Cosplay as Social Networking in a Material Culture, 32 Intersections: Gender and Sexuality in Asia and the Pacific (2013); Mick Broderick and Katie Ellis, Trauma and Disability in Mad Max: Beyond the Road Warrior’s Fury 93–101 (2019); Zainab Hasnain, How Costumers are Using Cosplay to Overcome Mental and Physical Disabilities, The Verge, Oct. 11, 2017, 1:56 p.m. EDT, https://www.theverge.com/2017/10/11/16447270/cosplaying-disabilities-new-york-comic-con-panel-wheelchairautism; TaLynn Kel, Breaking Normal: Living My Life As Authentically As I Can, https://talynnkel.com/subscribe (offering presentations on topics including “Cosplay as Resistance” concerning body type, race, physical ability, age, and gender). Ellen Kirkpatrick, On [Dis]play: Outlier Resistance and the Matter of Racebending Superhero Cosplay, 29 Transformative Works and Cultures (2019), https://journal.transformativeworks.org/index.php/twc/article/view/ 1483/2107. See Hutabarat-Nelson, supra note 36, at 14–17 (describing and providing examples of gender-bending cosplay and crossplay). Manuel Andres Ramirez, From the Panels to the Margins: Identity, Marginalization, and Subversion in Cosplay 42 (unpublished Master’s Thesis, University of South Florida) (Mar. 8, 2017), https://scholarcommons.usf.edu/cgi/ viewcontent.cgi?article=7946&context=etd. Kirkpatrick, supra note 38. See Beth Timmins, Muslim Women Are Incorporating Their Hijabs Into Incredible Disney Cosplay Makeovers, Independent, July 21, 2017, 16:24, https://www.independent.co.uk/life-style/hijab-cosplay-creative-frozen-elsa-disneypopular-characters-a7853561.html; Zoe Weiner, Hijabi Women Dressed Like the “Avengers” at Comic Con, Teen Vogue, Oct. 10, 2018, https://www.teenvogue.com/story/hijab-avengers-comic-con-cosplay. Lierdumoa, How Much is the Geisha in the Window (Firefly), https://www.youtube.com/watch?v=fZr9wsZz_bk. Comments of the Electronic Frontier Foundation in RM 2011-07, Rulemaking on Exemptions from Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies, Dec. 1, 2011, at 55 (“Exposure to a particular fanvid based on Joss Whedon’s Firefly series taught the class about the unreflexive white privilege involved in producing a show in which the main characters all speak Chinese but there are no Asian actors”).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

347

altered to put him in long acrylic nails and a hair bonnet.45 Fans of Disney’s Beauty and the Beast, the anime show Hetalia, and the television show The 100 may know little about Filipino history and culture, but in each fandom, as scholar Abigail De Kosnik explains, there are fanworks that illuminate the complexities of the relationship between the U.S. and the Philippines by portraying that relationship metaphorically. These works: demonstrate the potential power of fan productions to teach fans about minority identities, histories, and cultures, and about the fraught and multilayered relationships that develop over long stretches of time between minoritarian and majoritarian (brown and white, Asian, and American, colonized and colonizing, Global South and Global North) groups. Fan artists and authors can raise awareness and comprehension of these undertaught situations and dynamics . . . [that] can foster and deepen their audiences’ felt connections with not only with fictional characters and worlds but also with actual places, peoples, and politics.46

Social science research underscores the empowering nature of fan activity. Fanworks can combat harmful stereotypes by correcting stereotypical or whitewashed portrayals in underlying media sources and recoding mainstream media to include fans’ own characters, vernaculars, and situations.47 The ability to see characters like oneself in a story setting one admires is empowering in its own right.48 And regardless of the content one produces, the process of producing expression and belonging to an expressive community is empowering.49 Finally, the resulting expressive works can act as a sort of proof-of-concept for the creators of the underlying work and the public at large, who gain exposure to diversity, counter-examples to their unconscious biases, and objective evidence that there is a place for improved minority representation in mass culture.50 Thus, while proponents of economic justifications for copyright law might argue that copyright holders should have the exclusive right to authorize and be compensated for fan expression, IP-SJ considerations allow copyright law to acknowledge the compelling and unique social value of those expressions. Rather than counselling for doctrines that maximize compensation to and control by underlying copyright holders, IP-SJ considerations demonstrate what sits 45

46

47

48

49

50

See Kaleigh Fasanella, Memes of the Avengers Stars With Acrylic Nails Are Going Viral, Allure, June 4, 2019, https:// www.allure.com/story/avengers-with-acrylic-nails-memes. Abigail De Kosnik, Relationshipping Nations: Philippines/US Fan Art and Fan Fiction, 29 Transformative Works & Cultures (2019), https://journal.transformativeworks.org/index.php/twc/article/view/1513/2113. See, e.g., Sarah Florini, Enclaving and Cultural Resonance in Black Game of Thrones Fandom, 29 Transformative Works & Cultures (2019), https://journal.transformativeworks.org/index.php/twc/article/view/1498/2161 (discussing fan groups that discuss and recode popular shows such as Game of Thrones into African American Vernacular English (AAVE)); Nilanjana Dasgupta & Anthony G. Greenwald, On the Malleability of Automatic Attitudes: Combating Automatic Prejudice With Images of Admired and Disliked Individuals, 81 J. Personality & Soc. Psychol. 800 (2001) (explaining that images of admirable members of minority groups can counter the effects of stereotypes). See, e.g., Claude Steele, A Threat in the Air: How Stereotypes Shape Intellectual Identity and Performance, 52 Am. Psychologist 613 (1997) (discussing concept of stereotype threat–the connection between exposure to negative stereotypes and depressed performance by stereotype targets on standardized tests). See generally Elizabeth Rosenblatt, Belonging as Intellectual Creation, 82 Missouri L. Rev. 91, 96–101, 104, 108 (2017) (discussing importance of experiencing a sense of belonging and relationship between belonging and fanwork creation); Ramirez, supra note 40, at 25–29 (discussing community-building and sense of belonging in cosplay communities); Voodoo Howyacall, Cosplaying While Black Is Actually a Far More Positive Experience than You Might Think, The Mary Sue, May 10, 2015, 11:00 a.m., https://www.themarysue.com/cosplaying-while-black/. See generally Henry Jenkins, Negotiating Fandom: The Politics of Racebending, in The Routledge Companion to Media Fandom 383–94 (Melissa A. Click & Suzanne Scott eds., 2017). See also Kristen J. Warner, (Black Female) Fans Strike Back: The Emergence of the Iris West Defense Squad, in The Routledge Companion to Media Fandom 253 (Melissa A. Click & Suzanne Scott eds., 2017) (discussing the role of fan activism in improving casting diversity); Hutabarat-Nelson, supra note 36, at 68–74.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

348

Elizabeth L. Rosenblatt

on the other side of the scale of balanced copyright doctrines, providing social justice grounds for a robust fair use doctrine and for limitations on a copyright holder’s exclusive right to prepare derivative works.51 This is not to say that every fanwork is a treatise on social justice. Quite the contrary: “the Internet presents both utopia and dystopia, and . . . fandom is reactionary and indifferent as often as it is progressive.”52 Fans and scholars alike have justly criticized many fan communities for embracing the same stereotypes and replicating the same failures of representation of mainstream media sources.53 Fan studies have all too often focused on fandom’s liberating narratives around gender and sexuality while ignoring the interests of minority fans or ignoring intrafandom tensions concerning (for example) race, ethnicity, nationality, disability, and age.54 This chapter does not seek to amplify that short-sightedness. Rather, this chapter asserts that even though fandom and fanworks often suffer from many of the same stereotypes and exclusions of the “real” world, fandom and fanwork-creation nonetheless advance social justice – not only because they carry the potential for semiotic disobedience, but also because they provide avenues for otherwise-underrepresented creators to build self-confidence, skills, and communities they may not otherwise have. Moreover, as discussed below, even when fanworks and fan communities fail utterly at promoting immediate social justice – as they have done all too often – fan communities promote social justice in a larger (albeit slower) sense by providing unique sites for discussion and improvement.

iii. fanworks are empowering Fans frequently report that creating fanworks is empowering. Indeed, in a study conducted by the OTW, it was not uncommon for fan-creators to characterize fandom as having saved their lives.55 Other studies provide similar reports of self-empowerment, with fans reporting that participation helped them deal with classroom bullies, become more secure, feel a sense of confidence, and experience self-validation.56

51

52

53

54

55 56

Lateef Mtima, Copyright and the Interdependent Relationship Between Social Utility and Social Justice, ch. 5 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Jason Sperb, Reassuring Convergence: Online Fandom, Race, and Disney’s Notorious Song of the South, 49 Cinema J. 27 (2010). See generally, e.g., Pande, supra note 16; Rebecca Wanzo, African American Acafandom and Other Strangers: New Genealogies of Fan Studies, 25 Transformative Works & Cultures (2015); Stanfill, supra note 29; Rukmini Pande and Swati Moitra, “Yes, The Evil Queen Is Latina!”: Racial Dynamics of Online Femslash Fandoms, 24 Transformative Works and Cultures, http://dx.doi.org/10.3983/twc.2017.908; halfhardtorock, Untitled (“don’t trust fandom adults who”), Tumblr, May 1, 2016, 2:21 p.m., https://halfhardtorock.tumblr.com/post/143697419513/ dont-trust-fandom-adults-who-are-waaaaaaaaaaay; Moth, Shipping, Fandom Racism, and Reylo, YouTube, Sept. 15, 2018, https://www.youtube.com/watch?v=llrVZwOvXzI&t=269s. See generally Abigail De Kosnik and andré carrington, Fans of Color, Fandoms of Color, 29 Transformative Works & Cultures, https://journal.transformativeworks.org/index.php/twc/article/view/1783/2169 (introducing special issue of fan studies journal on race and fandom); Pande, supra note 16 (discussing race, fandom, and shortcomings in “fandom is beautiful” scholarship). OTW Comment, supra note 11, at 20. See, e.g., Marjorie Cohee Manifold, What Art Educators Can Learn from the Fan-Based Artmaking of Adolescents and Young Adults, 50 Studies in Art Educ. 257, 264 (2009); Ramirez, supra note 40, at 29–30 (describing how cosplay helps participants, including participants of color, feel more comfortable with strangers); Christopher M. Lucas, “This Isn’t for You, This Is for Me”: Women in Cosplay and their Experiences Combatting Harassment and Stigma 54–55 (Masters’ Thesis, 2018), https://mds.marshall.edu/cgi/viewcontent.cgi?article=2150&context=etd.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

349

A. Fanworks Help Fans Gain Confidence in Themselves and their Minority Identities Many women credit fanwork creation with changing their lives and helping them find their own voices.57 Fans of color, LGBTQ+ fans, and disabled fans often say that creating and consuming fanworks helped them face adversity and gain confidence in themselves and their own minority identities. For example, slash and gender-bending fanworks – which place characters in queer relationships or change their genders – can play a significant role in the process of empowerment for LGBTQ+ fans. As fan Lillian K. explained: The availability of non-heteronormative narratives in mainstream media is, rather unfortunately, slim. As I was going through puberty, I relied on fanfiction to give me these queer storylines and explore as proxy the spectrum of sexuality and gender. I could read all the plots – cliche, subverted cliche, or original idea – but now with a same-sex couple, or a trans* protagonist, and not have it be A Big Deal, because it wasn’t. And it shouldn’t be. It is through fanfiction that I first learned the term “asexual,” which, after further research, I now identify as. It is through fanfiction that I lost that unfamiliar-idea uneasiness regarding nonheterosexual, non-cisgender identities and people, which made me a better, more accepting person.

Because it is so material and embodied, cosplay provides particularly vivid examples of how fanworks give fans opportunities to explore “aspects of themselves that they were timid, intimidated, or had no means of exploring” otherwise.58 Women may use cosplay as a route to selfactualization by cosplaying characters they believe represent them or by cosplaying characters they perceive as powerful.59 Transgender cosplayer Robin Scott explained that cosplaying in a gender-neutral “skant” dress from Star Trek: The Next Generation was an “initial route, in a way, toward figuring out what I wanted to do with my gender.”60 Other LGBTQ+ cosplayers report similar experiences: cosplayer Kittum found that “[o]nce I learned that I could only relate to male characters, I got into the habit of only cosplaying men, and realized that I deeply enjoyed expressing myself in that way,” and came to realize their own bigender identity.61 Cosplayer Harry, who is known for playing a transgender character from the video game Dragon Age: Inquisition, explains: “Displaying my transgender pride flag as a cape while wearing full armor feels like such a power move in today’s social climate and I want others to feel empowered witnessing it, even if they’re not in a position to fight themselves.”62 Playing a gender-less character likewise helped cosplayer Sennedjem understand their identity as agender, aromantic, and asexual.63 Cosplayers Shiva and Kanehima portray their characters as being in a queer relationship, even when the relationship does not exist canonically, so “we can show the 57

58

59 60

61

62 63

Betsy Rosenblatt & Rebecca Tushnet, Transformative Works: Young Women’s Voices on Fandom and Fair Use, in eGirls, eCitizens 385, 388 (Jane Bailey & Valerie Steeves eds., 2015). Id.; see also Robin S. Rosenberg & Andrea M. Letamendi, Personality, Behavioral, and Social Heterogeneity Within the Cosplay Community, 28 Transformative Works & Cultures, http://dx.doi.org/10.3983/twc.2018.1535 (associating cosplay participation with “internal transformation, such as empowerment, pride, acceptance, bravery, uniqueness, heroism, and power, depending on the character(s) chosen”). See Lucas, supra note 56, at 48–50 (recounting women’s explanations of character choices). J.A. Micheline, Cosplaying While Trans: Exploring the Intersection Between Cosplay and Gender Identity, Vice, Mar. 1, 2015, 10:42 p.m., https://www.vice.com/en_uk/article/wd4v5z/cosplaying-while-trans-569. Kristina Manente, LGBTQ+ Cosplayers Reveal the Queer Video Game Characters They Identify With, SyFyWire, June 26, 2019, https://www.syfy.com/syfywire/lgbtq-cosplayers-reveal-the-queer-video-game-characters-they-identify-with. Id. Id.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

350

Elizabeth L. Rosenblatt

world that we exist, we are here, but most of all, we can show others like us that they are not alone.”64 For similar reasons, fanworks provide outlets for fan-creators to feel empowered in their own minority racial identities.65 One fan, Talitha78, described making a fanvid entitled “‘White’ and Nerdy,” focused on an African American character, as a way of exploring issues of race, identity, and stereotypes: “Like [the character in the vid], I am a nerd of color in a society where nerdiness is frequently coded as ‘white.’ With this vid, I want to subvert that stereotype.”66 A teacher described how creating fanworks helped one of her students, a 14-year-old fan of color, find her voice and succeed academically: It turned out that she was getting frustrated in English class because, as a female ChineseAmerican immigrant, she couldn’t relate to the readings in class, that were mostly written by and featuring European-American men. She much preferred writing fanfiction where she could explore other Chinese-American girl characters, rather than writing about characters and authors who had nothing in common with her and bored her to tears . . . We came to an agreement: as long as C completed her homework each night, she could get extra credit for writing fanfiction. Seven years later, C is a senior in college double-majoring in English and photography. She finished that year with a B+ in English, largely thanks to her skillfully-written fanfiction, and she eventually decided that English was her very favorite subject.

By the same token, fanworks can provide empowering experiences and depictions of physical and mental disability. As fan Medellia explained: There are relatively few stories in pop culture about people with disabilities, fewer where they’re main characters, even fewer in genre fiction . . . [I]n [fandom], I found more depictions of a wheelchair user having power, respect, love and adventures than I’ve ever seen in “real” entertainment . . . I have friends and allies who share my interests, and we can tell the stories and make the art we want to see, for each other. It wouldn’t have worked the same for us to individually make up stories for original characters; that’s lonely work and we never would have come together if not for our interest in characters we knew and loved.

Physically disabled cosplayer Nicholas McCarthy, who cosplays both with and without his wheelchair, urges others to experience the empowerment he feels cosplaying: I was a hermit before I found Cosplay . . . Cosplay has changed my life because it has opened up a whole new avenue where I can use my creative side of my brain. I quickly realized that I wasn’t only one like me out there in the Cosplay community. I also quickly made new friends that I can share the same interest as me without judging me about my disabilities. Hopefully you can do the same.67

As these stories demonstrate, fanworks provide opportunities not only for fans to create and consume self-empowering depictions, but also to forge empowering connection with others who may understand them. As Amanda B. explained: I am an aromantic, asexual autistic with an anxiety disorder and I knew none of that throughout nearly my entire high school career. . . Fanfiction truly, honestly, was the only thing that got me 64 65

66

67

Id. See Pande, supra note 16, at 39 (discussing how Asian American fan engagement with fandom for Asian media “provided a touchstone to home cultures [and] served as a base on which to build friendships and broader fan communities”). talitha78, White and Nerdy, YouTube, Mar. 31, 2009, http://www.youtube.com/watch?v=Iquni9PMBMk; see also talitha78, Comment to New Psych Vid: “White” & Nerdy (Gus), YouTube, Apr. 23, 2009, http://talitha78.livejournal .com/191915.html. Nicholas McCarthy, My Experience Cosplaying (With Physical Disabilities), Nerdbot, July 22, 2018, https://nerdbot .com/2018/07/22/cosplaying-with-disabilities/.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

351

out of bed some days . . . [fandom] has given me, an autistic woman who cannot read faces or body language, cannot hold a conversation, cannot stand to be touched, a way to feel less alone.68

Cosplayer Jay expressed something similar: “Growing up, I was ostracized not just for being a plus sized [woman] but being poor and having a father with a reputation. I found the cosplay community, and my life would not be the same without them. It gave me a family I needed and never thought I could have.”69 Black cosplayer Chaka Cumberbatch, who founded the hashtag #28DaysOfBlackCosplay, explained how empowering it can be for fans of color to connect with each other: Things are starting to get better, but we still have so few characters of color in our comics, video games, anime, manga and movies. It can be disheartening, never seeing anyone who looks like you in the media you love so much. Being able to physically see Black cosplayers out at cons, literally wearing their fandom on their sleeves is just so intensely satisfying on a level I may not ever be able to accurately describe. I have times when I’ll walk around cons in cosplay, make eye contact with another Black nerd (in or out of costume), and the flicker of hope, relief and wordless recognition that passes between our eyes as we smile and nod at each other routinely confirms to me how important it is for us to be out there representing.70

Thus, fanworks also serve the human actualization function of copyright. In addition to contributing to diversity of expression, fanwork creation also enables self-realization for many who may otherwise lack sufficient fulfillment opportunities. B. Fanworks Expand the “Author Function” Authorship, in the terminology of Michel Foucault, is a “function,” which affords certain cultural respect to an author’s creation and gives the author a form of ownership, not only legal (in terms of copyright, which attaches to all writings, whether or not they are “authored”), but also conceptual; it confers a sort of valor and immortality, and inscribes the author’s work as worthy of constituting a statement in larger discourse.71 Membership in the “author function” club is constrained by invisible gatekeepers – in Foucault’s terms, “the legal and institutional systems that circumscribe, determine, and articulate the realm of discourses.”72 Fan cultures and communities disrupt this gatekeeping function, and invite into the author function many who might be excluded by systemic discrimination. Exposure to fan-made works, in turn, inspires and empowers fans to engage in their own creative endeavors.73 From an inclusion standpoint, this is

68 69 70

71

72

73

OTW Comment, supra note 11, at 38. See Lucas, supra note 56, at 101. Jamie Broadnax, #28DaysOfBlackCosplay: More Than Just A Hashtag, BlackGirlNerds Blog, Feb. 5, 2015, https:// blackgirlnerds.com/28daysofblackcosplay-just-hashtag/. Michel Foucault, What Is an Author?, in Language, Counter-memory, Practice: Selected Essays and Interviews by Michel Foucault (Donald F. Bouchard ed., 1980) 118, 124 et seq. (“what, for instance, were Sade’s papers before he was consecrated as an author? Little more, perhaps, than roles [sic] of paper on which he endlessly unraveled his fantasies while in prison”). Id. at 130; see also Robert F. Brauneis, Copyright, Music, and Race: The Case of Mirror Cover Recordings, ch. 9 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (providing concrete example of court acting as authorship gatekeeper). Mizuko Ito, The Rewards of Non-Commercial Production: Distinctions and Status in the Anime Music Video Scene, 15 First Monday (2010), http://www.uic.edu/htbin/cgiwrap/bin/ojs/index.php/fm/article/view/2968/2528 (describing the development of anime music video communities).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

352

Elizabeth L. Rosenblatt

particularly valuable in communities where would-be creators may not be encouraged to express themselves. When fans create, they act not only as writers, coders, costumers (and etc.), but also as authors. Because fanworks come with a built-in audience and entail relatively low costs of creation and distribution,74 they give inexperienced or anxious creators audiences, platforms for distribution, and perhaps most importantly, the freedom to begin, free from professionalization gatekeepers. From that starting point, fan-creators can build skills and confidence, and find their voices. As Elisa D. explained: I am disabled and forced to work out of my home. I slid into a deep, thick depression and thought about suicide. But then, from following one of my favorite TV shows on discussion boards, I discovered fan fiction. It was great to see people who shared my interests. More important, it started me writing again. I used to be a professional writer, and for several years I had severe writer’s block. Freed from the constraints of publication, etc., I was able to write stories again. One story in particular, which turned into a comic novel, gave me something to get out of bed for. The fact that other fans were enjoying the story and waiting for the next installment was incredibly helpful.75

Fanwork creation is a low-friction entry point into authorship that, compared to professionalized creation, has low barriers to entry. Fanworks come with a built-in audience and, to some extent, pre-generated characters and worlds. That fanworks are often distributed for free on the Internet, on pre-existing networks designed for fanworks, eases the road to distribution, audience, feedback, and community. Encouragement and training from mentors and like-minded community members encourage people to participate and stay.76 Not only do fanwork creators have a built-in audience and wellestablished social media and archival distribution mechanisms, they also have access to a normsdriven population of teachers and editors. For generations, fans have engaged in mentoring and “beta-reading” – editing and suggesting improvements – for each other. The skills taught through fandom often echo those recommended by education professionals.77 Fan artists learn to draw or paint, fan fiction writers learn to write and edit, vidders and AMV creators learn video editing, archivists and game-makers learn to code,78 cosplayers learn to sew, create makeup effects, make wigs,79 and so forth. Online fanwork communities provide unique opportunities for training and feedback, and community norms demand that fans help each other learn and improve. These norms span multiple communities, including beta readers, cosplayers, and fanartists who engage in mutual critique;80 and cross-cultural peer-training networks within communities 74

75 76 77

78 79 80

Rebecca Tushnet, I Put You There: User-Generated Content and Anticircumvention, 12 Vand. J. Ent. & Tech. L. 889, 903–905, 930, n.168 (2010); see also Marcus Boon, In Praise of Copying 147 (2010) (montage “is a poor people’s art,” based on limited resources), http://www.hup.harvard.edu/features/boon/In-Praise-of-Copying-by-Marcus-BoonHUP-free-full-text.pdf. OTW Comment, supra note 11, at 24. See, e.g., Howyacall, supra note 49 (encouraging other older, Black fans to cosplay). Henry Jenkins, Why Heather Can Write, MIT Tech. Rev., Feb. 6, 2004, http://www.technologyreview.com/news/ 402471/why-heather-can-write/; Rebecca W. Black & Constance Steinkuehler, Literacy in Virtual Worlds, in Handbook of Adolescent Literacy Research (2009) (identifying fandom and fan fiction as sources of sophisticated literary practices requiring deep engagement with multiple literatures and rewarding linguistic and cultural diversity; “many such practices are perfectly within the realm of what various national standards and other policy documents indicate we, as a society, value and ought to foster in our youth”). Pande, supra note 16, at 36–37; OTW Comment, supra note 11, at 38–60. See Lucas, supra note 56, at 57–58 (re cosplayers). See Manifold, supra note 56, at 265.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

353

of “fansubbers” who translate Japanese media into other languages.81 The fanvid community has acted as a “female training ground” in which women teach other women web design, coding, video editing, and filmmaking.82 Similar mentoring structures exist in other fanwork communities. For example, as Mizuko Ito describes in her ethnographic study of anime music video (AMV) communities, the structure of one of the dominant AMV sites invited the lessexperienced to build skills: “[animemusicvideos.org] features lengthy guides on how to make and evaluate AMVs that are targeted to the aspiring editor. In our interviews with editors, many described how they relied on these guides in making their first forays into AMV making. Editors also described how they would turn to the forums on the org for questions about AMVs, and could count on somebody with expertise to respond . . . every editor we spoke to described how they started making AMVs as part of their participation in the anime fandom, and that they picked up video editing skills in the process of working to make their own AMVs.”83 Furthermore, much modern media fan engagement is largely online and pseudonymous, which obscures many of the proxies for privilege that maintain educational hierarchies, and allows fans to reveal themselves and their identities at their own pace. While many formal educational opportunities reinforce privilege, taking part in fannish mentoring requires only an Internet connection and a willingness to participate. As Angelica S. explained to the OTW: After high school I didn’t have any hopes for a college education. It took me years to even start taking classes at my local community college. But I spent a lot of time in fandom: I loved TV and film and the vids, fic, and meta analysis people made about them. I’d spend hours reading the discussions fans from all education levels and walks of life would have. I became familiar with a far wider group of people than my small, largely low income community could offer. I read and admired fanworks and commentary by women who were medical doctors and grad students in media studies and visual artists and published fiction writers. I wanted to be part of those discussions, but doing so required me to “lurk” long enough to build my critical thinking and writing skills. My first attempts at engaging weren’t that great, but people were kind and welcoming and slowly I built my own analytical and creative voice. Fandom made up for the limits of the K-12 education my family was able to afford. Based on my successes at community college, I was ultimately accepted into UCLA. Not only did the creative community of fandom teach me the skills necessary to get to that place, but once I was there the people I knew from fandom who came from higher class and highly educated backgrounds supported me! They gave me advice my parents couldn’t, since neither of them had been to college. They encouraged me and told me I was smart enough and good enough.

Because of the particular communities of training, consuming, feedback, and discussion that fandom fosters, fanwork creators gain not only opportunities to find their voices, build skills, experience belonging, and engage in semiotic disobedience, but they also imbue themselves with the status and self-regard that comes with adopting the “author function.” Creating fanworks transforms the consumer into a maker – makes them part of a conversation, acknowledges their voice as one worthy of being heard. Participants are empowered to persist in expressing themselves through the experience of “self-efficacy,” the ability to envision oneself as an artist.84 In fact, studies indicate that engaging in fanwork creation likely further fuels civic participation,

81

82 83 84

See Mizuko Ito, Ethics of Fansubbing in Anime’s Hybrid Public Culture, Fandom: Identities and Communities in a Mediated World 333, 346–47 (Jonathan Gray, Cornel Sandvoss, & C. Lee Harrington eds., 2017). OTW Comment, supra note 11, at 52. Ito, supra note 73. See Manifold, supra note 56, at 260.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

354

Elizabeth L. Rosenblatt

as well: People who create fanworks are more likely to participate in institutional politics than those who do not.85

iv. fan communities are sites of cross-cultural exchange, discussion, and challenge Part of what makes fan activities special, as discussed above, is that they are not done in isolation. Media fans are, by and large, digitally savvy, highly networked, and community oriented. In addition to using digital tools to create fanworks, they also use their networks to communicate with each other, build friendships, raise money for charity, and advocate for change.86 Fandom is, as scholar Kristen J. Warner described, a set of places “where strangers with shared affinities come together to safely meet and decide how to protect their love object while also forming factions that self-regulate . . . fight, align, and discuss with one another with full knowledge that skirmishes, while often problematic, are par for the course.”87 As rosy as this picture sounds, however, fan spaces are as varied as fans, and are far from utopian. For all the stories of individuals empowered by fandom, there is no shortage of stories about individuals feeling alienated or burdened by prejudice and structural inequalities within fandom.88 Some fan spaces are lauded for being more accepting of diversity – particularly when it comes to gender and sexuality – than the world outside.89 Like most areas of society, however, media fandom(s) have a very long way to go in terms of realizing equality and social justice, especially when it comes to race. Fans who diverge from the most normative identities of male, heterosexual, cisgendered, young, able-bodied, thin, whiteness often face many of the same struggles and stereotypes within fandom that they face in the world at large.90 Fans and fanworks that challenge stereotypes often receive hostile reactions from other fans who disagree or would prefer not to confront difficult truths – reactions made all the stronger by the participants’ passion for their own interpretations of the source material. These exchanges can become vituperative, and the burdens of hostile behavior in fan environments fall (as they do everywhere) disproportionately on already-disadvantaged participants, who must decide whether to endure, educate, or exit. Each type of response, of course, comes with significant cognitive and emotional costs.91 This potential for conflict exists because fandom consists of “affinity spaces” – physical, metaphorical, and online spaces “where people affiliate with others based primarily on shared 85

86 87 88 89 90

91

Henry Jenkins, “Cultural Acupuncture”: Fan Activism and the Harry Potter Alliance, Transformative Works and Cultures, no. 10, doi:10.3983/twc.2012.0305 (2012); Neta Kligler-Vilenchik & Sangita Shresthova, Learning through Practice: Participatory Culture Civics, Youth and Participatory Politics Research Network, Macarthur Foundation (2012), http://ypp.dmlcentral.net/sites/all/files/publications/Learning%20Through%20Practice_KliglerShresthova_Oct-2-2012.pdf. See Louisa Stein, Millennial Fandom 3–4 (2015). Warner, supra note 50, at 255. See generally Pande, supra note 16. See Lucas, supra note 56, at 68–71. See, e.g., Klink & Minkel, supra note 90 (“Shadowkeeper: . . . putting the onus on fans of color to improve fandom racism is like asking people to work harder to fix societal racism. Fans of color can speak up and bring attention to the issue, call out racist behavior, [and we] occasionally get loud enough for white fans to hear us, which of course brings defensive white fans and racist trolls flocking in to derail the conversation”); Kirkpatrick, supra note 38, at 7.1 (discussing challenges leveled at racebending cosplayers); Jenkins, supra note 50, at 383–94. See, e.g., Samira Nadkarni, “A Discipline Overrun With Whiteness”: #FSN2019 and Making a Statement, Stitch’s Media Mix, May 13 2019, https://stitchmediamix.com/2019/05/13/fsn2019-and-making-a-statement/ (discussing burden borne by fan scholars of color in “learning experiences” for white scholars); Ramirez, supra note 40, at 54 (describing “mental gymnastics” required of cosplayers with minority status).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

355

activities.92 Because affinity spaces are sustained by common passions and endeavors that cut across demographics, they bring together participants who may vary widely in age, class, race, gender, or educational level.93 Fans agree only on their love of a particular source material, and often on their way of loving it – collectors, cosplayers, and slashfic writers gather in distinct physical and online spaces,94 for example – but may agree on nothing else. Fan spaces that are explicitly “resistant and subversive in their exploration of queer identities vis-à-vis the . . . socially dominant notion of enforced heteronormativity” may hold people with sharply divergent views on everything else.95 Yet it is precisely this internal diversity – along with fandom’s fundamental underpinnings of critical engagement – that holds the seeds of fandom’s potential.96 Unlike many other areas of society, fandom creates opportunities for participants to encounter, confront, and combat inequality within itself.97 When fanwork tropes or practices incorporate hurtful or exclusionary stereotypes, fan spaces exist to shine light on why those tropes are problematic, and fan communities can pressure participants into self-correction. Affinity spaces “encourage distributed knowledge, each member’s skill set becoming a potential resource for others.” This is particularly true of fandom spaces, which are affinity groups designed around media literacy and critical engagement, which means that its participants are experienced at analyzing, evaluating, and decoding what they perceive, and encoding them with new meaning.98 Thus, fandom brings together disadvantaged people and privileged people who might not otherwise encounter each other, but who share critical techniques, affections, and vocabularies; and gives those privileged people community-based incentives to listen. As Rukmini Pande explains, “increased visibility of discussions of racism in fan spaces and fan works is influenced as much by an increase in number of [nonwhite] fans as it is by their increasing confidence in claiming these identities and building communities around them.”99 By raising issues of race in fandom, for example, nonwhite fans are “(re)read[ing] the text of fandom communities via their own particular subjectivities. In doing so, they are talking back to theoretical structures and scholarship that have so far erased them”100 – in other words, they are doing to fandom what fandom does to its media sources. Fan social-network spaces such as LiveJournal, Dreamwidth, tumblr, cosplay.com, and others have hosted a steady stream of wide-ranging and lengthy conversations about racism in popular culture, media, and fandom. Although these debates are continuous,101 one particularly vigorous period of debate is known within fandom as “RaceFail’09,” a complex web of social-media discussions about cultural appropriation, racial stereotyping, gatekeeping, and related topics that

92

93 94 95 96

97

98

99 100 101

James Paul Gee, Situated Language and Learning 67, 87 (2004); see also Hutabarat-Nelson, supra note 36, at 108–109 (describing cross-demographic aspects of cosplay affinity space). Gee, supra note 92, at 87. See id. at 110–12. Pande, supra note 16, at 13. See id. at 53 (“media fandom comprises a series of transnational spaces in which complex discussions about identity and representation are taking place”). See id. at 46 (“[F]ans are engaged in interrogating their own biases, arguing about notions of representation, finding new ways of engaging with source texts, and organizing around certain social justice issues . . . within the act of squeezing over the latest Marvel movie”). Theresa A. Redmond, Unboxed: Expression as Inquiry in Media Literacy Education, 20 J. Literacy & Tech. 208, 212 (2019). Pande, supra note 16, at 14. Id. See id. at 31 et seq.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

356

Elizabeth L. Rosenblatt

peaked in the early months of 2009.102 Thousands of fans and professionals took part, and subsequent discussions of race and ethnicity in fandom frequently refer back to this period.103 For some white fans, RaceFail’09 was probably the first time they confronted these issues headon – which should not have been true, but undoubtedly was. One would have hoped that, following RaceFail’09, the marginalization of racialized fans would have subsided. Certainly, many white fans learned from the experience, and some good came from it. As Leah Clarke wrote about the experience: “I’m trying to become aware of the stupidity that my own privilege is resulting in . . . [and edited to add] The post that pointed out how egocentric and essentially stupid my post was may well be the most important thing I’ll ever read.”104 Jamaican-Canadian SF author Nalo Hopkinson explained some of the benefits – albeit complicated benefits – to come out of the discussion: The vehement response of people of color to RaceFail got more people paying attention, both white and of color. It showed us people of color that we do have a certain strength of numbers, that there are more of us than the one or two visibly of color people you’ll usually see at a con. People of color in this community have started publishing ventures together as a result. Some white people in the community began addressing the issue and began creating forums for discussion. Some of them held fast, even when they came under attack from all sides. A small handful of them had the guts to examine their own statements and actions, perceive where they had been racist, and admit it. More positive change that came out of RaceFail: Fans of color began daring to blog their experiences and their feelings about systemic racism in fantasy and science fiction (both in the literature and in the community) because they realized there was some backup. Fans of all stripes – and by that I mean ‘white people, too” – began challenging each other to read books by people of color and review and discuss them, and they are by heaven doing it. Can I just say, I love me some fandom? Fandom is not exempt from the kind of wrongheadedness that humans display every day. But when fans conspire to do a good thing, it is most well done indeed, with verve and enthusiasm.105

But improvement is slow, and does not always happen, and only the most utopian vision of fandom could pretend that it would. Online discussions of privilege and marginalization – racial and otherwise – in fanworks and fan communities continue to be active, tense, and often hostile. Seven years after RaceFail’09, an essay by fanfiction writer Franzeska entitled “Your Vagina is a Bigot; My Vagina is a Saint,” addressing issues surrounding race and fanworks based on the film Star Wars: The Force Awakens, as well as the discussion that followed its publication, exemplified that many things had not changed. But some had. One of the essay’s key assertions was that white fans had become afraid to write (any) fanfiction about characters of color, for fear of being accused of racism in their depictions. While this very premise is offensive, it reflects that in the years following RaceFail’09, not only did space exist for discourse about depictions of race in fanfiction, but that space was also prevalent enough for someone to write an essay expressing fear of such discourse. In other words, as tense and hostile as social justice conversations can become 102 103

104

105

See RaceFail’09 (wiki entry), Fanlore, https://fanlore.org/wiki/RaceFail_%2709. See rydra_wong, RaceFail’09, https://rydra-wong.dreamwidth.org/148996.html (collecting RaceFail’09 posts); see also Sarah N. Gatson & Robin Anne Reid, Race and Ethnicity in Fandom, 8 Transformative Works and Cultures (2012). Sarah Clarke, Addendum to the Racefail Post and an Apology, Capybaras are Haters, Mar. 15, 2009, 9:19 p.m., https://leahclarke.wordpress.com/2009/03/15/addendum-to-the-racefail-post/. Nalo Hopkinson, A Reluctant Ambassador from the Planet of Midnight, 3 J. of the Fantastic in the Arts 339, 348 (2010).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

357

within fandom’s affinity spaces, the existence of those conversations demonstrates that fandom provides spaces for them to take place.106 Not only do online and physical fan spaces act as informal sites for debate and conversation, but also the organizers of fan conventions and events have increasingly included structured efforts, including discussion panels specifically targeted at addressing and remedying discrimination.107 This may be most visible in the field of cosplay, where cosplayers who challenge hegemonic narratives may encounter even more hurtful, exclusionary, or oppressive reactions than other fanwork creators. While fanfiction and fanart circulate predominantly within circles that may be more familiar with certain kinds of counter-narratives, cosplayers perform their fanworks in public spaces such as science fiction or comic book conventions, and frequently encounter criticism or other hostile reactions to their size, gender and sexuality expressions, age, disability, or race.108 And even within cosplay communities, heated discussion persists regarding whether it is acceptable for white cosplayers to darken their skin or wear eye makeup when playing characters of color, notwithstanding the oppressive history of raceface. Many (presumably white) cosplayers defend this (increasingly rare, but not unheard-of ) practice on the basis that such cosplay is celebratory and focused accurately portraying a character rather than mocking a character or race.109 For obvious reasons, such discussion is likely to be painful for cosplayers of color. It should not have to happen. But the mere fact that it is happening holds some promise. The “Cosplay Is Not Consent” movement demonstrates how discussion about social issues can occur in affinity groups in ways that it does not in the “real world.” Although gender discrimination and harassment are prevalent throughout society, cosplayers have advanced an anti-harassment campaign focused on reassigning blame for inappropriate behavior away from the victim experiencing it. This campaign has made it easier to discuss social issues surrounding gender, harassment, and rape culture within fan/convention communities than outside it, and helped educate people on what constitutes harassment.110 In addition, changes in technological popularity have made fan spaces more porous in ways that generate cross-cultural discourse. The fan clubs and locked, invitation-only online communities of yore were limited in this regard, and the prevalence of moderated forums all too often resulted in (explicit or implicit) censorship of conversations surrounding inequity. By comparison, platforms like tumblr and Twitter and the rising tide of fan podcasts allow such discussions to happen and mean that even enclaved topics can end up reaching broader audiences.111

106

See Pande, supra note 16, at 67; see also, e.g., Fanlore, Your Vagina is a Bigot; My Vagina is a Saint (wiki entry), https://fanlore.org/wiki/Your_Vagina_is_a_Bigot;_My_Vagina_is_a_Saint (discussing 2016 essay about race in Star Wars fanfiction and responses to it). 107 See, e.g., Hasnain, supra note 38 (discussing panel at New York Comic Con about cosplaying with disabilities and addressing disability accessibility and accommodations at cons); Tai Gooden, Unmasking the Cosplay Community’s Sexism and Racism Problem, The Establishment, May 12, 2016, https://web.archive.org/web/20170518133102/https:// theestablishment.co/unmasking-the-cosplay-communitys-sexism-and-racism-problem-3ca9431f58c0?gi=250bd276b4a8 (discussing the role of panels in combating cosplay discrimination); Max Eddy, Cosplayers Speak Out on Racism in the Fandom, PCMag, Oct. 13, 2013, https://www.pcmag.com/news/316830/cosplayers-speak-out-on-racism-in-thefandom (reporting on New York Comic Con panel); See VividCon 2010 Fanlore Page, Fanlore (last updated Dec. 7, 2011) http://fanlore.org/wiki/Vividcon/Vividcon_2010#Con_reports.2C_Convention_Posts.2C_Panel_Notes_ and_Vid_Re cs (describing talitha78 and Deepa D.’s panel “Race and Representation in Vidding”). 108 Nearly every study or news story about cosplay contains examples of this behavior. For a small sampling, see, e.g., Hutabarat-Nelson, supra note 36, at 6, 71–73 (describing some such reactions). 109 See Ramirez, supra note 40, at 49–50. 110 See Lucas, supra note 56, at 96–99. 111 See Pande, supra note 16, at 63 et seq.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

358

Elizabeth L. Rosenblatt

The Iris West Defense Squad, a community of online fans of the (African American) character Iris West on the television show Arrow, trended weekly on Twitter in 2015, and consciously used that visibility to bring attention to issues of representation in genre television.112 The #DemThrones hashtag, in which Black fans discussed Game of Thrones using AAVE and culturally resonant references, and often focused on the show’s characters of color, gained widespread recognition during the show’s fifth season.113 Although outsider access to these communities may open members to hostility, it also creates a common-interest-based window into Black culture and discourse for fans who might not otherwise encounter it. The benefits of these discussions may be slow and burdensome, but they are real. Empirical research shows that members of fandoms that engage in charity and value diversity, empathy, and helping are more likely to self-identify as global citizens and endorse diversity as a positive value.114 Thus, social justice narratives in fanworks and discussions of social justice in fan spaces have a compounding impact: they not only empower those who create and consume them, but they also shape the attitudes of fellow fans, who adopt the social justice values of their fandoms. And they are personal. As fan Beatrice O. explained: Fanfic has probably most impacted me in the area of gender and race relations. This is a constant topic of discussion in fannish circles, either because we are studying/analyzing the source material or critiquing one another’s work . . . That discussion has also given me a lot of resources for real life. In training for my career, I regularly had to sit through race-relations seminars; the essays linked to from [a particular fan-post about race in Star Trek fiction] were often clearer and more helpful than the resources the seminar leaders had. So I passed them on when I thought they might be helpful; those resources have also shaped how I respond to certain situations when they crop up in my day-to-day life. So learning about bias, bigotry, and racism in fiction helped give me resources to use in real life.115

Nicky expressed something similar: [F]andom has complicated, important conversations about gender, sex, race and class that equal and exceed most of the discussions I had in college. Because they are taking place online, their audience and participants are huge and hugely varied, and it was easy for a newcomer like me to catch up on the basics. When I walked into my first gender studies course in college, I was miles ahead of the curve, already conversant in the vocabulary, well used to deconstructing media, statistics, and press, and with a better understanding of the complexity and depth of the issues.116

I want to be very clear that I do not view fan communities’ social justice failures as somehow good because they spark conversation. They are terrible. The harm they work on marginalized fans is intense, and is compounded not only by the fact that their burdens fall disproportionately on marginalized fans (as noted above), but also by the fact that fan spaces are often billed as inclusive, “safe” spaces for women and LGBTQ+ people whose interests fall outside the mainstream. Fans who bring up issues of race, gender, and disability in fandom spaces can be seen as “killjoys” who spoil the fun of otherwise-oblivious fans.117 As fan studies scholar Rukmini 112 113 114

115 116 117

Warner, West, supra note 50, at 260. Florini, supra note 47, at 3.6. See generally Courtney N. Plante et al., “One of Us”: Engagement with Fandoms and Global Citizenship Identification, 3 Psych. of Popular Media Culture 49 (2014). OTW Comment, supra note 11, at 37. Id. at 48. See Flourish Klink & Elizabeth Minkel, Episode 22A: Race and Fandom Part 1, Fansplaining (2016), https://www .fansplaining.com/episodes/22a-race-and-fandom.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

359

Pande explains, being such a “killjoy . . . is a deeply alienating experience, as it involves either the internalized acceptance that certain pleasures and explorations are simply unavailable, or the identification of being someone who consistently brings unwanted drama to fan spaces. This is a fraught process.”118 I also want to be clear that the responsibility for improving fan culture should not rest on marginalized fans. There is no question that privileged community members need to take more responsibility than they have, thus far, for promoting social progress in fan communities.119 It would be far better if people knew better and if those failures never happened. But when they do happen (as they do everywhere), fan spaces are uniquely well suited to hosting social-justice-promoting discussion.

conclusion: bringing it back to intellectual property law So why does this discussion belong in a book about IP law? Because, as discussed above, fan activities all exist in a state of legal precarity. Copyright law calls into question the legitimacy of these socially beneficial endeavors – but, from an IP social justice perspective, it should not. Economic justifications for copyright law focus on different priorities in advancing copyright’s ultimate ends of promoting expressive endeavors, such as ensuring that commercial publishing can be profitable enough to allow creative professionalization. While the potential to professionalize creative endeavors doubtless holds some potential to facilitate diversity of expression, IP-SJ reminds us that professionalization is only part of a much larger picture,120 and requires us to consider mechanisms of advancing empowerment, access, and inclusion in expressive endeavor. Although a purely economic approach might consider fanworks to be at odds with the profit-maximization policies underlying copyright law’s derivative work right, a social justice approach compels us to value the unique opportunities that fan activities provide to promote copyright’s ultimate goals of enhanced and diverse expression; and in turn, to consider ways in which profit-maximization may undermine – or at least, be less important than – empowerment, access, and inclusion in promoting copyright’s ultimate expressive goals. Although copyright law’s fair use doctrine leaves room for fan creativity, the massive universe of fanworks is, in many ways, orthogonal to the laws’ central policy aims, and there is a constant risk that, in prioritizing economic aims, the law may ignore the enormously beneficial, transformational possibilities of fanworks for IP-SJ. As a matter of copyright policy, therefore, viewing fan activities through an IP-SJ lens leads to the conclusion that providing copyright owners with broad authority to challenge derivative works may harm fanworks’ unique avenues for achieving the expressive empowerment, access, and inclusion aspects of copyright’s objectives. Although fair use doctrine generally favors fans’ transformative, noncommercial acts of creation and communication, especially since most fan activities do not compete with works that copyright holders would be likely to create, it does not solve this harm.121 When fanworks’ transformative meanings are less obvious, when fans seek to make money from their works, or when the works’ quality is high enough to be perceived as 118 119

120

121

Pande, supra note 16, at 13. See Mel Stanfill, Fans of Color in Femslash, 29 Transformative Works & Cultures (2019), https://journal .transformativeworks.org/index.php/twc/article/view/1528/2111. See Deidré A. Keller & Anjali S. Vats, A Primer on Critical Race Intellectual Property, ch. 26 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See 17 U.S.C. § 107 (identifying the nature of the derivative work, its commerciality, and its competitive effect on the market for the underlying work as factors to consider in assessing fair use); Steven D. Jamar, Crafting Copyright Law to Encourage and Protect User-Generated Content in the Internet Social Networking Context, 19 Widener L. J. 843 (2010) (proposing clarified standards for noncommercial uses).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

360

Elizabeth L. Rosenblatt

competitive, the works become easier to challenge. This places particular burdens on disadvantaged fans, who may have a greater need to seek profit from their high-quality fanworks than those who can afford to treat fandom as a hobby.122 Is a racebending or genderbending cosplayer “transforming” the image of the performer whose character they embody? Certainly. Will a court see it that way? It is hard to say. In addition, when fanworks contain controversial material – as social-justice-focused works are more likely to do – they are more likely to face copyright challenges regardless of how much merit (or lack thereof ) those challenges may have. This, too, carries extra burdens for disadvantaged fans, who are less likely to have the resources to defend against even an unmeritorious claim. IP-SJ also bolsters justifications for copyright law’s safe harbors for online service providers, and demonstrates why incursions into those safe harbors may disproportionately harm marginalized fans. Under the Digital Millennium Copyright Act (DMCA), online service providers are insulated from liability for their users’ (alleged) infringements under certain circumstances. These safe harbors are crucial to the creation of fanworks and fan communities simply because they allow fan sites and fanwork archives to exist without being crushed by threats of copyright litigation.123 Even beyond that, however, such safe harbors enhance social justice because they permit sites to be hands-off, which facilitates the growth in diversity and social-justice discourse in fan communities. When fans operate in closed, heavily moderated spaces, marginalized fans may be discouraged or prevented from engaging in the sort of critical discourse that enhances fandom’s social justice potential. In contrast, open, less-regulated platforms allow fans to speak freely and invite the wider world to partake of fans’ critical activities.124 The DMCA’s safe harbors are contingent on “notice-and-takedown” provisions, which require platforms to remove material if they receive notice that the material infringes copyright. While these provisions have the potential to benefit all authors – including fans – those benefits depend on the scope of their demands.125 Controversies abound regarding what level and type of knowledge a platform may have before being required to take down material,126 as well as the extent to which platforms may make their own judgments regarding infringement and fair use when they receive a takedown notice.127 Some have suggested that notice-and-takedown requirements are insufficient to protect copyright holders from monetary losses from online infringement, and some platforms, most notably YouTube, have addressed this concern with programs that allow trusted parties (such as record companies or movie studios) to “monetize” – that is, receive royalties for – content they believe to be infringing, rather than having that material taken down.128 IP-SJ provides a tool for evaluating these debates: in order to preserve the empowerment, access, and inclusion benefits of fan creation, mainstream copyright holders should not be able to require platforms to monitor their content or take down content merely 122

123

124 125 126

127 128

See Lateef Mtima, The Idea Exclusions in Intellectual Property Law, 28 Texas Intell. Prop. L. J. 343, 380, 384 (2020) (discussing how the judicial exceptions which preclude IP protection for the ideas embodied within IP works preserves opportunities for marginalized creatives, who typically lack the resources to win the first-to-publish “professionalization race,” to undertake their own “follow on” expressive development of those ideas and thus produce additional works for society’s ultimate benefit). See generally Statement of Organization for Transformative Works on Section 512 and the Copyright Office Section 512 Report, June 9, 2020 (OTW 512 Statement) https://www.transformativeworks.org/wp-content/uploads/2020/06/ OTW-Senate-Submission-re-512-and-CO-Report-20200609.pdf. See Pande, supra note 16, at 63 et seq. See OTW 512 Statement, supra note 123, at 11–15. See, e.g., Viacom Intern. v. YouTube, 676 F.3d 19 (2d Cir. 2012); Ventura Content v. Motherless, 885 F.3d 597 (9th Cir. 2018); BMG Rights Management v. Cox Communications, 861 F.3d 293 (4th Cir. 2018). See OTW 512 Statement, supra note 123, at 7–12. See How Content ID Works, https://support.google.com/youtube/answer/2797370?hl=en.

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks

361

because it contains copyrighted (but potentially transformatively noninfringing) material.129 Mainstream copyright holders should not have free rein to have material removed from the Internet without ample consideration of fair use. Measures to prevent online copyright infringement should avoid making fans the unintended victims of anti-piracy efforts. And allowing mainstream copyright holders to monetize fanworks undermines the empowerment aspect of IPSJ, by taking away fans’ ability to profit from their fanworks (should they choose to),130 taking away fans’ ability to give those works away freely (should they prefer to), and creating the perverse outcome that rather than empowering fans to criticize mainstream media systems, monetization may direct economic benefit toward the very copyright holders they are critiquing. Giving such power to mainstream copyright holders would inevitably place the heaviest burdens on those who create works that criticize their sources; those who create subversive works and do not feel comfortable with the legal vulnerability inherent in challenging the removal of material; and those without the resources to challenge wrongful takedowns. In sum, fanworks and fan communities provide avenues for access, inclusion, and empowerment, and IP doctrines that encourage fan endeavors also advance the goals of IP-SJ. Viewing copyright through the IP-SJ lens illuminates the normative importance of acknowledging the compelling and unique social value of fanworks, and counsels for balanced copyright doctrines that include fans and fanworks as legitimate creators of valued expression.

129 130

See generally OTW 512 Statement, supra note 123; Jamar, supra note 121. See Steven D. Jamar and Christen B’anca Glenn, When the Author Owns the World: Copyright Issues Arising from Monetizing Fan Fiction, 1 Tex. A & M L. Rev. 959 (2014).

https://doi.org/10.1017/9781108697613.023 Published online by Cambridge University Press

17 Libraries, Copyright Exceptions, and Social Justice Jonathan Band and Brandon C. Butler

I. Copyright Exceptions, Copyright’s Purpose, and Social Justice page 363 II. Circulation and the First Sale Doctrine 363 A. Throughout American History, Libraries Have Promoted Democratic Values By Lending Books to the Public 364 B. Americans Borrow Books and Other Materials From Libraries 4.4 Billion Times a Year 365 C. The First Sale Doctrine Enables Library Lending 366 D. Library Lending During the Pandemic 367 III. Internet Services and the DMCA Safe Harbors 367 A. Internet Access 368 B. Institutional Repositories 370 C. Information Location Tools 371 IV. Preservation of Cultural Heritage, Section 108, and Fair Use 371 V. Accessible Format Copies, Fair Use, and the Chafee Amendment 373 A. Fair use 374 B. Section 121 (the Chafee Amendment) and Equity for the Print-Disabled 376 C. The Triennial 1201 Exemption Rules 377 D. The Marrakesh Treaty and Implementing Law 378 Conclusion 379

Libraries in the United States promote social justice by preserving and providing the public with free, equitable access to information. Libraries can provide this free access only because of exceptions and limitations in the U.S. Copyright Act such as the first sale doctrine, the fair use right, and the safe harbors for providers of online services. As a result of these exceptions and limitations, Americans at every social-economic level of our society enjoy access to the knowledge contained in millions of copyrighted works, and they use that knowledge to improve their daily lives and to enhance their participation in and contributions to civil society. This chapter explores the importance of these exceptions and limitations, particularly in the modern remote information society, to the pursuit of the precepts of equitable access, inclusion, and empowerment in the fulfillment of libraries’ social justice mission.

362 https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

363

i. copyright exceptions, copyright’s purpose, and social justice Copyright law in the U.S. exists to serve the public interest.1 The Constitution empowers Congress to award copyrights to authors “for limited times” in order to “promote the progress of science.”2 The copyright system assumes that, generally speaking, granting exclusive rights will provide an incentive to authors and publishers who might not otherwise create or publish new works. These incentives are a means to an end, however, and the law includes limitations and exceptions to exclusive rights to ensure they do not unduly burden the very public interest they were designed to serve,3 especially the First Amendment values of freedom of expression and access to knowledge.4 We should recognize, then, that the general fair use right and the specific provisions described below are as important to the vindication of copyright’s ultimate purpose as the copyright holder’s exclusive rights themselves.5 The limitations Congress enacted in Sections 107–1226 help to define the ambit of the copyright holder’s Section 106 rights, which themselves exist explicitly “Subject to” the rights and uses described in Sections 107–122.

ii. circulation and the first sale doctrine Section 106(3) of the Copyright Act grants the copyright owner the exclusive right “to distribute copies or phonorecords of the copyrighted work to the public by . . . lending.”7 However, the first sale doctrine, codified at Section 109(a) of the Copyright Act, terminates the copyright owner’s distribution right in a particular copy “lawfully made under this title” after the first sale of that

1

2 3

4

5

6

7

See, e.g., Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1986 (2016) (“[C]opyright law ultimately serves the purpose of enriching the general public through access to creative works”) (quoting Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994); Feist Pubs., Inc. v. Rural Tel. Svc. Co., Inc., 499 U.S. 340, 349 (1991) (“The primary objective of copyright is not to reward the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts’”); Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975) (“[P]rivate motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts”); Fox Film Corp. v. Doyal, 286 U. S. 123, 127 (1932) (“The sole interest of the United States and the primary object in conferring the monopoly lie in the general benefits derived by the public from the labors of authors”). U.S. Const. art. I, § 8, cl. 8. Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook on Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Eldred v. Ashcroft, 537 U.S. 186, 190 (2003) (characterizing fair use as a “built-in First Amendment accommodation” in copyright law); Golan v. Holder, 565 U.S. 302 (2012). The First Amendment protects the right to receive information as well as the right to speak. See Board of Education, Island Trees Union Free School District v. Pico, 457 U.S. 853, 867 (1982) (the right to receive information is “an inherent corollary of the rights of free speech and press that are explicitly guaranteed by the Constitution” and “a necessary predicate to the recipient’s meaningful exercise of his own rights of speech, press, and political freedom”). In addition to being among the beneficiaries of fair use, libraries and educational institutions in particular have been granted special dispensations to ensure that copyright’s purpose is served when exclusive rights get in the way. Section 108 of the Copyright Act empowers libraries to make and distribute copies in a variety of situations – replacement copies for themselves or for other libraries, chapters, and articles for personal study, entire works for personal study, entire works for any purpose during the last 20 years of a work’s copyright term, and to users at other libraries through interlibrary loan. Most recently, as part of the Music Modernization Act, Congress empowered libraries to copy and distribute sound recordings first published prior to 1972 when they are no longer commercially available. See 17 U.S.C. § 1401 (f )(1)(B). That provision makes § 108(h) applicable to these sound recordings, so the additional conditions in § 108(h) will apply here, too. The Copyright Act is Title 17 of the U.S. Code (U.S.C.). For ease of reading, in the text of this chapter we will refer to sections of the Copyright Act only by section number, not including the full citation; but we will include the full citation in the footnotes. 17 U.S.C. § 106(3).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

364

Jonathan Band and Brandon Butler

copy.8 The House Judiciary Committee Report on the 1976 Copyright Act explains that under Section 109(a), “[a] library that has acquired ownership of a copy is entitled to lend it under any conditions it chooses to impose.”9 The first sale doctrine thus is critical to the operation of libraries: “Without this exemption, libraries would be unable to lend books, CDs, videos, or other materials to patrons.”10 In short, the first sale doctrine is essential to one of the most basic library functions: lending books and other materials to the public. A. Throughout American History, Libraries Have Promoted Democratic Values By Lending Books to the Public For almost 400 years, libraries in America have been lending books and other materials. In 1638, John Harvard bequeathed his collection of books to a newly established college in Cambridge, Massachusetts for the use of its faculty and students.11 Benjamin Franklin in 1731 helped establish the Library Company of Philadelphia, which allowed its stockholders to borrow its books.12 William Rind created a commercial circulating library in Annapolis in 1763, which rented books for a small fee.13 By the end of the eighteenth century, many towns throughout the new nation had academic libraries, membership libraries, circulating libraries, or church libraries.14 In 1800, Congress established the Library of Congress. President Thomas Jefferson appointed the first Librarian of Congress, and sold his private collection to the Library of Congress in 1815, after its collection burned during the British occupation of Washington, D.C., in the War of 1812.15 Thomas Jefferson also articulated a vision of libraries across the country providing broad public access to books. In a letter to John Wyche, Jefferson stated that: “I have often thought that nothing would do more extensive good at small expense than the establishment of a small circulating library in every county, to consist of a few well-chosen books, to be lent to the people of the county under regulations as would secure their safe return in due time.”16 During the first half of the nineteenth century, access to books increased. Apprentice libraries were established for the use of young men migrating to the cities to help them “train for the new factory system which had been brought about by the industrial revolution.”17 Mercantile libraries developed for the use of merchants and law clerks. School districts began to invest in 8 9 10

11 12

13

14 15

16

17

17 U.S.C. § 109(a). H.R. Rep. No. 94-1476, § 109, at 79 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5693. Carrie Russell, Complete Copyright: An Everyday Guide For Librarians 43 (2004). John R. Whitman, Intellectual Property Empowerment and Protection for Prisoners, ch. 12 in The Cambridge Handbook on Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Michael Harris, History of Libraries in the Western World 173 (1999). Id. at 183–84. Benjamin Franklin explained his rationale for organizing a library: “by thus clubbing our Books to a common Library, we should, while we lik’d to keep them together, have each of us the Advantage of using the Books of all the other Members which would be nearly as beneficial as if each owned the whole.” Benjamin Franklin, The Autobiography of Benjamin Franklin 130 (Leonard W. Labaree ed., 1964). “In many ways more democratic than the subscription social libraries, the circulating libraries often allowed women to have books, featured reading rooms with long hours, and provided access to a variety of reading matter, including newspapers, popular pamphlets, and novels.” Dee Garrison, Libraries, in Encyclopedia of the United States in the Nineteenth Century (Paul Finkelman ed., 2001). Harris, supra note 11, at 202–203. Id. at 196–97. The Library of Congress circulates materials to Supreme Court Justices, Members of Congress, thousands of Congressional employees, and other libraries (which can make the materials available to users within the library premises). The Library of Congress – Interlibrary Loan, http://www.loc.gov/rr/loan/loanweb1.html (last visited Nov. 17, 2022). Letter from Thomas Jefferson to John Wyche (May 19, 1809), in Thomas Jefferson: A Chronology of His Thoughts 223 (Jerry Holmes ed., 2002). Jean Key Gates, Introduction to Librarianship 70 (1968).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

365

libraries for their students. By 1853, New York State had created school district libraries throughout the state with over 1,604,210 volumes.18 Horace Mann urged Massachusetts to follow New York’s lead because he “saw the library as an essential contributor to the educational program of the school, as an invaluable aid in continuing education and in self-improvement, and an indispensable part of the cultural life of the people.”19 In 1848, the Massachusetts legislature authorized the City of Boston “to establish and maintain a public library, for the use of the inhabitants.”20 In the following decades, other public libraries were established, but the public library movement accelerated dramatically after 1881 through the philanthropy of steel magnate Andrew Carnegie. Carnegie said that “[t]here is not such a cradle of democracy upon the earth as the Free Public Library, this republic of letters, where neither rank, office, nor wealth receives the slightest consideration.”21 Carnegie ultimately funded the construction of 1,679 public library buildings in 1,412 communities across the United States.22 In the twentieth century, the federal government expanded its support of libraries far beyond the Library of Congress. During the Great Depression, the Works Progress Administration built 350 new libraries and repaired many existing ones.23 In 1941, President Franklin Roosevelt issued a proclamation identifying libraries as “essential to the functioning of a democratic society” and “the great tools of scholarship, the great repositories of culture, the great symbols of the freedom of the mind.”24 Congress enacted the Library Services Act of 1956 and the Library Services and Construction Act of 1964 to provide federal funding for library construction. Currently, the Institute of Museum and Library Services, an independent federal agency, administers the Museum and Library Services Act of 1996 and its 2003 reauthorization to channel millions of dollars of federal funding annually to libraries throughout the United States.25 B. Americans Borrow Books and Other Materials From Libraries 4.4 Billion Times a Year Notwithstanding the spread of digital technology, millions of Americans check out books and other materials from libraries. The collections of the over 9,000 public libraries in the country

18 19

20 21

22 23

24

25

Id. at 79. Id. at 80. Indeed, the role that libraries can play in promoting self-actualization can extend to all members of society, as John Whitman explores elsewhere in this volume as means by which to uncover the expressive potential within the incarcerated population. See Whitman, supra note 10. Boston Public Library – Founding Legislation, http://www.bpl.org/bpl-history/ (last visited Nov. 21, 2022). Adam Arensen, Libraries in Public Before the Age of Public Libraries: Interpreting the Furnishings and Design of Athenaeums and Other “Social Libraries,” 1800–1860, in The Library as Place: History, Community, and Culture 74 (John Buschman & Gloria J. Leck eds., 2007) (“When mention is made of the dependence of a democratic society on an informed citizenry, the American public library usually comes to mind as the instrument which has had as its fundamental purpose the serving of this crucial need”); Gates, supra note 17, at 91. See also United States Office of Education, Public Libraries in the United States of America iii (1876) (“[O]ur libraries will fulfill in every respect their high station as indispensable aids to public education, to the privilege and responsibility of instructing our American democracy”). Harris, supra note 11, at 246–47. Byron Anderson, Public Libraries, in St. James Encyclopedia of Popular Culture 133 (Tom Pendergast & Sara Pendergast eds., 2000). Patti Clayton Becker, Books and Libraries in American Society During World War II: Weapons in the War of Ideas 49 (2005). Institute of Museum and Library Services, http://www.imls.gov/about/mission/legislation-budget (last visited Nov. 21, 2022).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

366

Jonathan Band and Brandon Butler

contain 1.44 billion materials, of which 27 percent are ebooks.26 For these materials, there were a total of 2.23 billion circulation transactions in 2016.27 The collections of 81,920 public school media centers contain 1.03 billion books and 38 million phonorecords and audiovisual materials.28 These materials were checked out 2.05 billion times during the 2007–2008 school year.29 The collections of 3,793 academic libraries include 1.09 billion copies of printed materials, as well as 122 million phonorecords and audiovisual materials and 252 million ebooks.30 There were a total of 154 million circulation transactions for these materials in 2012.31 All this library lending is enabled by the first sale doctrine. C. The First Sale Doctrine Enables Library Lending Justice Breyer, writing for the U.S. Supreme Court in Kirtsaeng v. John Wiley & Sons, Inc.,32 stated that the first sale doctrine “is a common-law doctrine with an impeccable historic pedigree.” He quoted a 17th century articulation of “the common law’s refusal to permit restraints on the alienation of chattels,”33 and observed that “a law that permits a copyright holder to control the resale or other disposition of a chattel once sold is similarly ‘against Trade and Traffi[c], and bargaining and contracting.’”34 Justice Breyer underscored “the importance of leaving buyers of goods free to compete with each other when reselling or otherwise disposing of these goods.”35 Competition, “including the freedom to resell, can work to the advantage of the consumer.”36 Based on these common law principles, the Supreme Court articulated the first sale doctrine in 1908 in Bobbs-Merrill Co. v. Strauss.37 The Court held that a copyright owner’s exclusive distribution right is exhausted after the owner’s first sale of a particular copy.38 Congress codified the first sale doctrine in the Copyright Act of 1909. Congress recodified it in the Copyright Act of 1976. The first sale doctrine operates at every level of the U.S. economy. It allows wholesalers to sell products covered by copyright, including products distributed in copyrighted packaging, to retailers without first securing distribution licenses from the manufacturers. The first sale doctrine likewise permits retailers to sell products to consumers without obtaining distribution 26

27

28

29

30 31 32 33 34 35 36 37 38

Institute of Museum and Library Services, Public Libraries Survey Fiscal Year 2016 13 (2019). In 2007, e-books represented just 1.44 percent of collection materials. Id. In 2016, there were a total of 1.35 billion visits to public libraries, an average of 4.36 visits per person. Id. at 18. There were 245.7 million reference transactions. Id. Public libraries offered 2.85 million programs for children and 500,000 programs for young adults. Id. at 22. National Center for Educational Statistics, U.S. Department of Education, Characteristics of Public and Bureau of Indian Education Elementary and Secondary School Library Media Centers in the United States: Results From the 2011–12 Schools and Staffing Survey 14 (2013). National Center for Educational Statistics, U.S. Department of Education, Characteristics of Public and Bureau of Indian Education Elementary and Secondary School Library Media Centers in the United States: Results From the 2007–08 Schools and Staffing Survey 9 (2009). National Center for Education Statistics, U.S. Department of Education, Academic Libraries: 2012 First Look 8 (2014). Id. at 4. 133 S. Ct. 1351, 1363 (2013). Id. Id. Id. Id. 210 U.S. 339, 350–51 (1908). The Court noted that its decision applied solely to the rights of a copyright owner that distributed its work without a license agreement. Cf. Venor v. Autodesk, 621 F. 3d 1102 (9th Cir 2010) (holding that the first sale doctrine does not apply to copyrighted software distributed pursuant to license agreements as opposed to sales transactions).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

367

licenses. Finally, the first sale doctrine permits consumers to rent or lend the products to other consumers, or to sell or give the products away when they no longer need them. In Kirtsaeng, the Court in particular recognized the importance of the first sale doctrine to libraries. The case concerned the narrow issue of whether the first sale doctrine applied to copies of works manufactured outside of the United States. The Court specifically noted that U.S. library collections contain at least 200 million books published abroad. The Court observed that unless the first sale doctrine applied to these foreign made books, libraries could not lend these books without obtaining the copyright owners’ permission – an impossible task. This holding underscored the importance of the first sale doctrine to all library lending: without it, a library would infringe the copyright owner’s exclusive right of distribution every time it circulated any item in its collection not yet in the public domain. D. Library Lending During the Pandemic When the COVID-19 pandemic made circulation of physical books impossible, libraries could no longer rely on the first sale doctrine to make most of their collections available. The first sale doctrine applies to the circulation of physical copies of books and other materials. It does not apply to electronic lending, which involves the making of a copy in the user’s computer. The first sale doctrine is an exception to the distribution right, not the reproduction right. Thus, when a public library lends an ebook, it typically does so under a license from the publisher. However, fair use may permit lending of an ebook in certain circumstances. Many libraries believe that fair use allows controlled digital lending (CDL) where a library uses technical controls to circulate works digitally only to as many simultaneous readers as there are physical copies of a specific title in its collection (a limitation sometimes called the “owned-to-loaned ratio”). The physical copies are taken out of circulation while the digital versions are available, and technical controls prevent users from redistributing or copying the digital version.39 During the pandemic, academic libraries have relied on various forms of CDL to provide access to works in their collections, even though the libraries have been physically closed. This enabled students and faculty to continue essential research and educational activities. Additionally, the Internet Archive established the National Emergency Library (NEL), under which it suspended the “owned to loaned” ratio of its Open Library CDL program, permitting unlimited simultaneous readers to access electronic books in its collection (with some other limitations, including that works published in the last five years were excluded from the NEL). The Internet Archive reasoned that lifting this limitation was appropriate because almost all the libraries in the country were closed, preventing free public access to millions of physical books in library collections. A group of publishers sued the Internet Archive for operating the NEL as well as its more limited Open Library. In March 2023, the district court found the Internet Archive’s Open Library, as well as the NEL, competed directly with the commercial eBook licensing market for libraries. Because of this direct competition, the Internet Archive’s use was, according to the court, not “transformative” within the meaning of the first fair use factor, and harmed the market for the work, contrary to the fourth fair use factor.” The Internet Archive announced that it would appeal this decision. The programs referenced above that were initiated by academic libraries during the pandemic are distinguishable because they did not compete directly with the commercial eBook licensing market for libraries. 39

See Position Statement on Controlled Digital Lending, controlleddigitallending.org/statement (last visited Nov. 21, 2022).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

368

Jonathan Band and Brandon Butler

iii. internet services and the dmca safe harbors Libraries provide to their users a variety of Internet-related services that promote intellectual property social justice (IP-SJ). As a practical matter, libraries can provide these services only because the safe harbors of the Digital Millennium Copyright Act (DMCA) limit libraries’ liability for their users’ online activities. The “mere conduit” safe harbor in Section 512(a) has enabled libraries to provide Internet access to its users; the Section 512(c) “hosting” safe harbor has permitted research libraries to serve as institutional repositories for open access materials; and the Section 512(d) “linking” safe harbor has allowed libraries to provide information location services to users.40 A. Internet Access Not only large commercial entities such as Verizon and AT&T act as “service providers” within the meaning of Section 512(k)(1)(A). Libraries play this role as well. In the United States, there are virtually no Internet cafés that provide users with the hardware necessary for Internet access. While Starbucks has Wi-Fi, it does not supply laptops. And although increasingly more Americans at all income levels own smart phones, it is difficult (if not impossible) to fill out an online job application, or apply for healthcare, on a smart phone. Libraries are the only source for free Internet connectivity and Internet-ready computer terminals for most Americans. The importance of the Internet to daily life, and lack of reliable access to the Internet from the homes of millions of predominantly lower income Americans, was starkly displayed during the COVID-19 pandemic. In particular, tens of millions of children could not participate in online classes because their homes did not have broadband or the household did not have a sufficient number of computers for all the children seeking access to online classes. As many as 77 percent of Americans without Internet access in their homes rely on public libraries for Internet access.41 Public libraries provide the public with access to over 294,000 Internet-ready computer terminals.42 In 2016, there were 276 million user-sessions on these computers. There were 227 computer uses per 1,000 visits to public libraries.43 A Pew Research Center survey revealed that 23 percent of Americans aged 16 and up went to libraries to use computers, the Internet, or a WiFi network.44 Approximately 7 percent of Americans used libraries’ Wi-Fi signals outside when the libraries were closed.45 (During the COVID-19 pandemic, even though many public libraries were closed, the libraries left their WiFi networks on, enabling users without home connectivity to access the Internet from outside the library structure. Indeed, some libraries boosted their Wi-Fi networks to enhance this 40

41

42 43 44

45

17 U.S.C. § 512. In 1998, Congress adopted safe harbors from copyright liability for providers of Internet services. The objectives were to provide legal certainty for services providers; and to provide incentives for services providers to cooperate with rights holders to address infringement. The statute is very complex and has been the subject of extensive litigation. In brief, Internet access providers such as Comcast are not held liable for the infringing activities of their subscribers so long as they adopt and implement policies for terminating the accounts of repeat infringers. Providers of services where users could post content, such as YouTube, are not held liable for infringing content posted by users so long as they expeditiously remove content upon receiving a notice of claimed infringement from the rights holder. For a more detailed discussion, see U.S. Copyright Office, Section 512 of Title 17 (2020). Pew Research Center, “Public Libraries and Technology: From ‘Houses of Knowledge’ to ‘Houses of Access,’” (2014), https://www.pewresearch.org/internet/2014/07/09/public-libraries-and-technology-from-houses-of-knowledge-tohouses-of-access/ (last visited Nov. 21, 2022). Institute of Museum and Library Services, Public Libraries in the United States Survey, Fiscal Year 2016 29 (2019). Id. Pew Research Center, Library Usage and Engagement (2019), https://www.pewresearch.org/internet/2016/09/09/ library-usage-and-engagement/ (last visited Nov. 21, 2022). Id.

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

369

outside-the-premises access.) Library users who take advantage of libraries’ computers and Internet connections are more likely to be young, Black, female, and lower income.46 Around 42 percent of Black library users used libraries’ computers and Internet connections, as did 35 percent of those whose annual household incomes were $30,000 or less.47 According to the Pew Research Center survey, 61 percent of library computer users who used the Internet at a library in the past 12 months did research for school or work; 53 percent checked email; 38 percent received health information; 26 percent took online classes or completed an online certification.48 Libraries’ broadband connections are particularly important in rural areas; 58 percent of rural adults believe that access to high speed Internet is a problem in their community.49 Accordingly, public libraries in rural areas have the highest ratio of Internet accessible computers: 23 computers per 5,000 people.50 Libraries in K-12 schools and institutions of higher learning provide Internet access for students and faculty. Additionally, at many institutions of higher education, the library operates the campus-wide network.51 Academic and school libraries also provide Internet access for students who do not have such access at home. During the COVID-19 pandemic, some community colleges that were otherwise closed still allowed students without broadband to use Internet-connected computer terminals in the college libraries.52 A study performed by the Information School of the University of Washington for the Institute of Museum and Library Services demonstrated the importance of the Internet access provided by public libraries to people near or below the poverty line. The study found that, in 2009, over 77 million people accessed the Internet from public libraries in the United States.53 Fortyfour percent of people below the poverty line used library computers for Internet access and other services. Among young adults below the poverty line, the level of usage increased to 61 percent.54 A 2012 study on the economic benefit of Texas public libraries found that Internet access via library computer terminals saved users over $300 million in 2011.55 The Wi-Fi provided by the Texas libraries saved users over another $20 million. Approximately 62 percent of the Texas library directors said that the Internet access was “extremely beneficial” to users, while a further 20 percent indicated that it was “quite beneficial”; in addition, 56 percent of the directors said that Internet access was the single most important resource provided by their libraries. The users’ online activities included: performing homework for classes from grade school to college; taking continuing education courses; training and testing for job certifications and licenses; looking,

46 47 48 49

50 51

52 53

54 55

Id. Id. Id. Pew Research Center, Digital Gap Between Rural and Nonrural America Persists (2019), https://www.pewresearch.org/ fact-tank/2019/05/31/digital-gap-between-rural-and-nonrural-america-persists/(last visited Nov. 21, 2022). Institute of Museum and Library Services, Public Libraries in the United States Survey, Fiscal Year 2016 29 (2019). At many colleges and universities, the libraries participate in the administration of campus-wide Internet access services. Under the Higher Education Opportunity Act, educational institutions have significantly more obligations to address copyright infringement by subscribers than do commercial Internet service providers. See http://www .educause.edu/library/higher-education-opportunity-act-heoa (last visited Nov. 21, 2022). Lauren Lumpkin, A Community for Students’ Needs, Wash. Post, Apr. 2, 2020, at B1,. Samantha Becker, Opportunity for All: How the American Public Benefits from Internet Access at U.S. Libraries 2 (2010), http://www.imls.gov/publications/opportunity-all-how-american-public-benefits-internet-access-us-libraries (last visited Nov. 21, 2022). Id. at 5–8. Bureau of Business Research, IC2 Institute, University of Texas at Austin, Texas Public Libraries: Economic Benefits and Return on Investment, 2012, at 39–42.

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

370

Jonathan Band and Brandon Butler

and applying for, jobs; applying for unemployment benefits and social assistance; applying for disaster aid, as well as finding family during and after natural disasters; working short-term, paid online jobs; developing and operating businesses by placing and receiving orders; researching price comparisons; marketing new products; using online banking; and filing taxes. Numerous library directors indicated that some users were running small businesses entirely via the Internet at their library. The Texas directors noted that even users with home Internet access use the library Internet access because of its greater bandwidth and faster service. Additionally, not all users have the option of Internet access at their residence. “Ranchers and others in rural area in particular have difficulty obtaining reliable and reasonably priced Internet at their residences.” Further, numerous directors reported that users with laptops accessed their libraries’ wireless service after normal hours; they cited examples of users parking near the library when the library was closed to access an Internet connection. Lack of connectivity is more than a rural issue. A study of the public libraries in New York City found that 2.9 million residents don’t have broadband access at home.56 Thus, between 2002 and 2011, the libraries have increased their total number of public access computers by 89 percent. Between 2007 and 2011, the number of computer sessions logged at public computers in the city’s libraries grew by 62 percent, from 5.8 million sessions in 2007 to over 9.3 million sessions in 2011. The Section 512(a) safe harbor for “mere conduits” has enabled libraries to provide Internet access without the specter of liability for onerous copyright damages because of infringing user activity.57 B. Institutional Repositories With the growth of open access scholarly communications, libraries increasingly host online institutional repositories where academic authors can post papers, articles, and theses, and make these materials available online.58 These repositories promote IP-SJ by making a wealth of information freely available to all, particularly those groups and communities which historically have had little access to elite scholarly and pedagogical resources. Most articles posted in repositories would otherwise be available only to those with affiliations to big universities who can afford expensive subscriptions to academic journals. The Section 512(c) safe harbor shelters libraries from liability for infringing material that may be contained in the materials posted by third parties. Elsevier, for example, has sent thousands of takedown notices to websites hosted by Harvard University, University of California Irvine and academia.edu, a social networking site for academics. The articles targeted by these Elsevier notices typically have been posted by their authors, who may have transferred their copyright to Elsevier in the publication agreements. The publication agreements often allow authors to post their final, peer-reviewed manuscript of the articles, but not the final published version, i.e., as formatted by the publisher. Elsevier asserts that it pursued only “final version of published journal articles” posted without their 56 57

58

Center for the Urban Future, Branches of Opportunity, 2013, at 6. At many colleges and universities, the libraries participate in the administration of campus-wide Internet access services. Under the Higher Education Opportunity Act, educational institutions have significantly more obligations to address copyright infringement by subscribers than do commercial Internet service providers. See http://www .educause.edu/library/higher-education-opportunity-act-heoa (last visited Nov. 21, 2022). See Brianna Schofield & Jennifer Urban, Takedown and Today’s Academic Digital Library, I/S: A Journal of Law and Policy for the Information Society, Nov. 2015, https://lawcat.berkeley.edu/record/1127554 (last visited Nov. 21, 2022).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

371

authorization. The Section 512(c) safe harbor provided a mechanism for libraries to avoid getting caught in the middle of a dispute between the authors and their publisher. C. Information Location Tools Libraries also rely on the Section 512(d) safe harbor for information location tools. Librarians prepare directories that provide users with hyperlinks to websites the librarians conclude in their professional judgment to contain useful information. Section 512(d) shelters a library from liability if the website linked to, unbeknownst to the library, contains infringing material.

iv. preservation of cultural heritage, section 108, and fair use Preservation of cultural heritage has long been a critical function of libraries. This function is especially important with respect to the preservation of the cultural production of communities outside the mainstream of society. U.S. libraries and archives contain large collections of such materials. These collections – as all library and archival collections – are under constant threat from fire, flooding, deterioration, and obsolescence. In the pre-digital era, libraries relied on specific exceptions in the Copyright Act to make preservation copies.59 Digital technology now provides unprecedented opportunities to preserve our cultural heritage. Digital technology enables the making of higher quality copies at lower cost than ever before. These copies can be stored in searchable databases that allow users to locate works far more effectively and efficiently. Searchable databases also enable users to detect patterns across a large number of works, opening new fields of research. These databases of preserved works consume far less space than the original copies. Additionally, backup repositories and databases can be created and stored in separate locations to ensure their survival. For these reasons, libraries and archives throughout the United States have embarked on mass digitization projects to preserve their collections.60 Fully 96 percent of large or medium-sized libraries are digitizing parts of their collections, and 78 percent are preserving some of their borndigital materials.61 Similarly, 87 percent of archives are digitizing their collections.62 The specific preservation exceptions in 17 U.S.C. § 108 are of limited utility for digital preservation, however, because they allow only the making of three copies of a work, while digital preservation invariably involves far more intermediate and backup copies. As a result of the limitations of Section 108, libraries and archives must principally rely on the fair use right to engage in digital preservation of works still in copyright. The fair use jurisprudence over the past decade gives collecting institutions a high degree of confidence that digital preservation of their collections is a fair use. The Second Circuit in Authors Guild, Inc. v. HathiTrust63 ruled that fair use permitted a consortium of libraries to create and maintain a database of electronic copies of over 10 million

59 60

61 62 63

17 U.S.C. § 108(b) for unpublished works and 17 U.S.C. § 108(c) for published works. U.S. Inst. of Museum and Library Serv., Protecting America’s Collections: Results from the Heritage Health Information Survey 38 (2019). Id. at 51. Id. at 49. 755 F.3d 87 (2d Cir. 2014).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

372

Jonathan Band and Brandon Butler

books.64 In finding that HathiTrust’s provision of full-text search functionality was a fair use, the court relied heavily on the Court’s decision in Campbell v. Acuff-Rose Music, Inc.,65 particularly Campbell’s focus on the importance of transformative use under the first fair use factor, the purpose and character of the use. The HathiTrust court concluded that “creation of a full-text searchable database is a quintessentially transformative use,” because it “does not ‘supersede the objects or purposes of the original creation.’”66 The HathiTrust court also relied on two Ninth Circuit decisions concerning Internet search engines – Kelly v. Arriba Soft Corp.,67 and Perfect 10, Inc., v. Amazon.com, Inc.68 – as well as a Fourth Circuit decision involving a plagiarism detection database – A.V. ex rel. Vanderheye v. iParadigms, LLC.69 A year after HathiTrust, another Second Circuit panel reaffirmed HathiTrust’s holdings in Authors Guild v. Google, Inc.70 The HathiTrust court did not explicitly rule that digital preservation per se was a fair use. However, it observed that: “[b]y storing digital copies of the books, the HDL preserves them for generations to come, and ensures that they will still exist when their copyright terms lapse.”71 Moreover, any library or archives that engaged in a mass digitization project for preservation purposes would invariably provide search functionality, which HathiTrust (and Google, Arriba Soft, Perfect 10, and iParadigms) explicitly found legitimated the creation and maintenance of full-text and full image databases. This cluster of circuit court decisions provides libraries and archives with a high degree of confidence that courts would find their digital preservation activities to be fair uses.72 Additionally, in the triennial Section 1201 Rulemaking, the Register of Copyrights found that 64

65 66 67 68 69 70 71 72

For a discussion of HathiTrust in the context of identifying social justice bases for exceptions and limitations and for nontransformative first fair use factor assessment, see Lateef Mtima, “Three Steps” Towards Intellectual Property Social Justice, 53 Hous. L. Rev. 459 (2015). 510 U.S. 569 (1994). 755 F.3d at 97 quoting Campbell, 510 U.S. 569 (1994) at 579. 336 F.3d 811 (9th Cir. 2003). 508 F.3d 1146 (9th Cir. 2007). 562 F.3d 630 (4th Cir. 2009). 804 F.3d 202 (2d Cir. 2015). Authors Guild, Inc. v. HathiTrust, 755 F.3d (2d Cir. 2014) at 103. Unfortunately, there is less clarity concerning the access collecting institutions may provide to the digitally preserved copies. To the extent the preserved materials were not originally intended for use in research or teaching, there may be a strong argument that providing access for such purposes is highly transformative and thus fair. See, e.g., Swatch Grp. Mgmt. Servs. v. Bloomberg L.P., 756 F.3d 73 (2d Cir. 2014) (finding financial news publisher that reproduced and distributed full audio recording of earnings call was fair use because news reporting was transformative purpose relative to original purpose of earnings call); White v. West Publ’g Corp., 29 F. Supp. 3d 396 (S.D.N.Y. 2014) (finding Lexis and West engaged in fair use in providing full text access to legal briefs in their research tools because research is a new purpose relative to the briefs’ original purpose of persuading courts, and “processes of reviewing, selecting, converting, coding, linking, and identifying the documents ‘add . . . something new, with a further purpose or different character’ than the original briefs”); Am. Inst. of Physics v. Schwegman Lundberg & Woessner, P.A., No. 12-528 (RHK/JJK), 2013 U.S. Dist. LEXIS 124578 (D. Minn. July 30, 2013) (finding law firm use of full text of scholarly articles in patent prosecution was transformative and thus fair use). Courts may also find the fourth fair use factor strongly favors libraries in cases where works are not commercially available, or are only available in second-hand markets or at very high prices. See, e.g., Cambridge Univ. Press v. Patton, 769 F.3d 1232, 1277 (11th Cir. 2014) (“absent evidence to the contrary, if a copyright holder has not made a license available to use a particular work in a particular manner, the inference is that the author or publisher did not think that there would be enough such use to bother making a license available . . . [so] there is little damage to the publisher’s market . . . and hence the fourth factor should generally weigh in favor of fair use”); De Fontbrune v. Wofsy, 409 F. Supp. 3d 823 (N.D. Cal. 2019) (holding that fourth factor favors fair use in light of “disparate markets and wildly different price points” for multi-volume book series containing photographs of paintings by Pablo Picasso). More generally, “orphan works” (whose owners are unknown or unlocatable) are susceptible to a variety of fair use arguments, especially in the hands of libraries and archives. See generally, Patricia Aufderheide et al., Statement of Best Practices in Fair Use of Collections Containing Orphan Works

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

373

the digital preservation activities of libraries, archives, and museums relating to software, video games, and motion pictures did not infringe copyright.73 On this basis, the Register recommended that the Librarian of Congress grant exemptions to the prohibition of circumvention of technological protection measures for the purpose of preservation.74 Agreeing with these recommendations, the Librarian granted the exemptions.75

v. accessible format copies, fair use, and the chafee amendment In many cases, the format in which information is stored creates differential barriers to access, creating information haves and have-nots. A book available only in a print format is inaccessible to readers with a print disability, for example. Readers with impaired motor function may not be able to turn physical pages in a printed book. Readers with limited eye mobility or difficulty focusing may not be able to visually scan a page, whether paper or electronic. Viewers with impaired hearing may not be able to perceive the dialog in an audiovisual work such as a feature film or an instructional video. These barriers can have dramatic effects on a person’s quality of life, reducing their opportunities to participate in culture, to enjoy deep aesthetic experiences, to learn new skills, to obtain educational or professional credentials, and generally to live a full, well-rounded life and otherwise contribute to civil society. In a just society, a person’s life prospects should not be shaped by arbitrary mental or physical differences. Accordingly, a central aspect of libraries’ social justice mission is ensuring equitable access to information for all members of society, regardless of their ability to pay, and regardless of their physical or mental characteristics. Because format can be a barrier to access, breaking down barriers often requires converting information to new formats. In many cases, this requires libraries to take steps that would normally be forbidden by copyright: to reproduce, adapt, distribute, display, and even perform protected works without the permission of the copyright holder. Without appropriate safety valves, copyright’s monopoly would be a barrier to accessibility, and thus a barrier to social justice. It would give copyright holders a license to discriminate, however unintentionally, by giving them the exclusive right to decide the formats in which their works will be made available. Fortunately, as we have already seen, copyright does have safety valves to ensure the limited monopoly it creates does not undermine its ultimate constitutional purpose, “to promote the Progress of Science” and culture. Copyright law includes two key statutory provisions, fair use and Section 121, that protect this activity domestically.76 The Copyright Office’s triennial anti-

73 74

75 76

for Libraries, Archives, and other Memory Institutions (2014), https://cmsimpact.org/code/statement-best-practices-fairuse-collections-containing-orphan-works-libraries-archives-memory-institutions/ (last visited Nov. 21, 2022); Jennifer M. Urban, How Fair Use Can Help Solve the Orphan Works Problem, 27 Berkeley Tech. L. J. 1379 (2012), https://lawcat .berkeley.edu/record/1125074?ln=en. In addition to fair use, 17 U.S.C. § 108(e) permits copying out-of-commerce works for patrons upon request. Furthermore, it should be noted that in the triennial Section 1201 Rulemaking, the Register of Copyrights found that providing off-premises access to preserved software likely was a fair use. U.S. Copyright Office, Section 1201 Rulemaking: Eighth Triennial Proceeding Recommendation of the Register of Copyrights 268–76 (2021). The Section 1201 Rulemaking is discussed in greater detail below in section V.C. U.S. Copyright Office, Section 1201 Rulemaking: Seventh Triennial Proceeding Recommendation of the Acting Register of Copyrights 240–45, 270–71 (2018); U.S. Copyright Office, Section 1201 Rulemaking: Eighth Triennial Proceeding Recommendation of the Register of Copyrights 88–94 (2021). 37 CFR § 201.40(b)(3), (17), and (18). The Copyright Act includes another limitation favoring libraries serving disabled persons: 17 U.S.C. § 110(8) permits “performance of a non-dramatic literary work, by or in the course of a transmission specifically designed for and primarily directed to” patrons who are unable to “read normal printed material” or “hear aural signals” as a result of

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

374

Jonathan Band and Brandon Butler

circumvention rulemaking has also consistently recognized and vindicated accessibility as an important value, and has declared repeatedly that fair use protects the creation and distribution of accessible texts.77 The Marrakesh Treaty provides another clear pathway for cross-border sharing of accessible texts. By means of these provisions, copyright law ensures that proprietary interests yield to accessibility when the two come into apparent conflict. A. Fair Use The broadest protection for making and sharing accessible texts comes from fair use, codified at Section 107 of the Copyright Act. As libraries apply the flexible, equitable test for fair use, they can look to legislative history, best practices, and (most importantly) to the Authors Guild v. HathiTrust opinion, the first and only judicial application of fair use to a library’s efforts to provide accessible formats to persons with disabilities. The House Report on the 1976 Copyright Act describes several activities Congress believed were likely to be fair under the newly codified doctrine, and courts have relied on these examples for guidance in relevant circumstances. One such illustration is “the making of copies or phonorecords of works in the special forms needed for the use of blind persons.”78 The House Report goes on to give as examples of these “special forms” both Braille and recordings of books being read aloud. It notes that works in these formats “are not usually made by the publishers for commercial distribution,” and endorses both the efforts of the Library of Congress and the work of “individual volunteers” in local libraries who make accessible copies in response to patron requests. This congressional intent was endorsed by the Supreme Court in the Sony Betamax case,79 and later weighed as part of the first factor inquiry in HathiTrust. It also factored into the development of best practices for academic and research libraries. Fair use best practices statements, developed through a rigorous process of interviews and small group discussions followed by independent legal review, have enabled a wide array of communities to better understand and exercise their fair use rights.80 The Code of Best Practices in Fair Use for Academic and Research Libraries81 (ARL Code) expresses the consensus of academic and research librarians on the application of fair use to a set of situations they frequently encounter. Principle Five of the ARL Code states that providing accessible material is likely to be fair, particularly when tailored to the specific needs of the patron.82 The ARL Code also provides that the fair use case is strongest when efforts are coordinated with the university’s disability services office, when the library informs users of their rights and responsibilities, and when it adopts policies that are widely and consistently applied.

77

78 79

80 81

82

their disability. These transmissions must be “made without any purpose of direct or indirect commercial advantage” and made available through the facilities of a government body, a noncommercial educational broadcast station, or a narrowly defined set of broadcasters. This permits qualifying libraries to stream content directly to patrons with disabilities in these limited situations. See, e.g., U.S. Copyright Office, Section 1201 Rulemaking: Sixth Triennial Proceeding to Determine Exemptions to the Prohibition on Circumvention, Register’s Recommendation 134 (2015) (“making e-books accessible to persons who are blind, visually impaired or print disabled is a noninfringing use”). H.R. Rep. No. 1476, 94th Cong., 2nd Sess. 66, 73 (1976) (“House Report”). Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 455 n.40 (1985) (“Making a copy of a copyrighted work for the convenience of a blind person is expressly identified by the House Committee Report as an example of fair use”). Peter Jaszi and Patricia Aufderheide, Reclaiming Fair Use (2d ed. 2018). Association of Research Libraries et al., Code of Best Practices in Fair Use for Academic and Research Libraries, Washington, D.C.: ARL, Jan. 2012, https://www.arl.org/wp-content/uploads/2014/01/code-of-best-practices-fair-use.pdf. Id. at 22.

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

375

No cases involving copyright and accessibility were decided prior to or for almost four decades following the passage of the 1976 Copyright Act. The appellate courts’ first encounter with the issue was in Authors Guild v. HathiTrust, part of the litigation in response to the Google Books project.83 No court has ruled on the application of fair use to accessible texts since the Second Circuit’s 2014 opinion in HathiTrust, which is destined to be highly influential.84 The case dealt with digital preservation and non consumptive research as well as accessibility, and its other holdings are described elsewhere in this chapter. This section will focus on the court’s treatment of accessibility. The Authors Guild alleged that HathiTrust and the University of Michigan were infringing copyrights by providing accessible texts to qualified print-disabled patrons. The Second Circuit held to the contrary, applying the four-factor fair use test. The first factor, the nature and purpose of the use, easily favors libraries, for several reasons. As previously discussed, the legislative history shows an unequivocal intent that fair use permit libraries to make accessible copies for the print-disabled. The opinion also cites the Supreme Court’s endorsement of this principle in Sony. The court also quotes with approval the House Report’s allusion to the lack of a functioning market to provide accessible format copies to the print disabled, an issue that resurfaces in consideration of the fourth factor. Finally, the court rounds out its consideration of the first factor by highlighting the importance of accessibility as a social “purpose.” It notes that since the passage of the 1976 Copyright Act, Congress has “reaffirmed its commitment to ameliorating the hardships faced by the blind and the print-disabled.”85 As evidence, the court cites the Americans with Disabilities Act and the Chafee Amendment. Taken together, these considerations tilt the first factor decisively in favor of HathiTrust. The court gives the second factor (the nature of the work used) the swift, dismissive treatment that has become standard in fair use cases. Because HathiTrust includes all kinds of works (fiction and nonfiction, scholarly and popular, etc.), that factor technically disfavors fair use, but the court is quick to note that it is “rarely determinative.”86 Indeed, scholars have found the second factor is never determinative, and rarely influential at all.87 The third factor (the “amount and substantiality” of the use) is assessed entirely in light of the first: the court asks whether the nature and quantity of copying is appropriate to the purpose of providing access to the print-disabled, which it has already found to be a valid one. The only dispute appears to be over which files and how many copies of a given work HathiTrust can retain as part of its efforts to serve the print-disabled. In finding the HathiTrust Digital Library can retain page images as well as extracted text, the court reasons that doing so is reasonable because “gaining access to the HDL’s image files – in addition to the text-only files – is necessary [for some print- disabled users] to perceive the books fully.”88 Keeping four copies in disparate locations is justified by the need to “balance server load” and to “guard against risk of

83 84

85 86 87

88

See section IV above for more on the HathiTrust litigation. Even organizations that filed briefs against HathiTrust during the litigation seem to have made their peace with the opinion, subsequently praising the court’s “carefully-limited reasoning and interest balancing.” Jonathan Band, AAP Praises Wisdom of HathiTrust and Google Books Decisions, Project DisCo (May 18, 2017), http://www.project-disco.org/ intellectual-property/051817-aap-praises-wisdom-of-hathitrust-and-google-books-decisions/ (last visited Nov. 21, 2022). HathiTrust, 755 F.3d 87, 101–102 (2d Cir. 2014). Id. Robert Kasunic, Is That All There Is: Reflections on the Nature of the Second Fair Use Factor, 31 Colum J. L. Arts 529–70 (2007). 755 F.3d 87, 103 (2d Cir. 2014).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

376

Jonathan Band and Brandon Butler

data loss,”89 reasonable technological steps in achieving HathiTrust’s valid overarching purposes. Finally, the court turns to the fourth factor, the effect of the use on the market for the works used. Here the court notes that the commercial market in books for the print-disabled is extremely limited, “a mere few hundred thousand titles, a minute percentage of the world’s books,” especially when compared to the “more than 10 million volumes” in the HathiTrust Digital Library. The court also cites the common practice of authors forgoing royalties on accessible formats, then returns to the 1976 House Report, which invoked market failure in its own finding that fair use should protect the provision of accessible copies to the print-disabled. The court’s conclusion is clear, broad, and unconditional: “we conclude that the doctrine of fair use allows [HathiTrust] to provide full digital access to copyrighted works to their printdisabled patrons.” The breadth of this conclusion, together with the clarity of the foregoing analysis, establishes fair use as a powerful source of authority for libraries to create and use digital collections to provide accessible materials not only to people with print disabilities, but people with other disabilities as well. B. Section 121 (the Chafee Amendment) and Equity for the Print-Disabled Section 121 of the Copyright Act, often referred to as the Chafee Amendment because it was first introduced by Rhode Island Senator John Chafee, merits coverage here because it further demonstrates congressional intent to limit copyright’s exclusive rights to facilitate broad access to information for the disabled. Specifically, it provides clear protection for making and sharing accessible texts for use by people with print disabilities. In the HathiTrust case, the district court found Section 121 as well as fair use applied to the defendants’ conduct.90 Also, some of the DMCA exemptions described below still track Section 121 rather than Section 107. The provision was first adopted in 1996 and was updated as part of the U.S.’s implementation of the Marrakesh Treaty, resulting in additional clarity and a broader scope, in regard to both works covered and eligible persons.91 Section 121(a) provides that: Notwithstanding the provisions of Section 106, it is not an infringement of copyright for an authorized entity to reproduce or to distribute in the United States copies or phonorecords of a previously published literary work or of a previously published musical work that has been fixed in the form of text or notation if such copies or phonorecords are reproduced or distributed in accessible formats exclusively for use by eligible persons.92

The italicized terms have statutory definitions worth unpacking. Most if not all libraries are “authorized entities” for purposes of the statute. The term’s statutory definition is: “a nonprofit organization or a governmental agency that has a primary mission to provide specialized services relating to training, education, or adaptive reading or information access needs of blind or other persons with disabilities.” Libraries meet this definition, as they do have provision of such services as “a primary mission.” As the district 89 90 91

92

Id. Authors Guild, Inc. v. HathiTrust, 902 F. Supp. 2d 445, 465 (S.D.N.Y. 2012). The Copyright Office has published a concise and useful guide to the Marrakesh Treaty Implementation Act, including references to relevant legislative history: U.S. Copyright Office, Understanding the Marrakesh Treaty Implementation Act (May 2019), https://www.copyright.gov/legislation/2018_marrakesh_faqs.pdf). Emphasis added.

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

377

court’s opinion in HathiTrust held: “The ADA requires that libraries of educational institutions have a primary mission to reproduce and distribute their collections to print-disabled individuals, making each library a potential ‘authorized entity’ under the Chafee Amendment.”93 The next defined term is “accessible formats.” Added to Section 121 by the Marrakesh Treaty Implementation Act, “accessible formats” are defined as “an alternative manner that gives an eligible person access to the work . . . to permit him or her to have access as feasibly and comfortably as a person without such disability.” The Senate Report language clarifies that the provision includes “related illustrations” such as graphs, maps, tables, or other forms of presentation. Furthermore, “It is understood that authorized entities may introduce such changes in a copyrighted work as are necessary to make the work accessible in the alternative format, taking into account the accessibility needs of the persons concerned. Such changes include, but are not limited to, differences in format or presentation.”94 The next term that needs definition is “eligible persons.” The statute describes three categories of persons who meet this definition: those who are blind, those who have a “visual or perceptual or reading disability” that cannot be corrected and that renders them unable to read printed works, and anyone “otherwise unable, through physical disability, to hold or manipulate a book or to focus or move the eyes to the extent that would be normally acceptable for reading.” Thus, eligible persons are not only folks with physical disabilities specifically affecting vision, but also folks with any disability (including learning disabilities and mobility impairments) that affect their ability to read text in a standard format. There are additional limitations to Section 121’s scope. It only allows modification of “previously published literary work[s] or . . . previously published musical work[s] that ha[ve] been fixed in the form of text or notation.” The statute also requires certain notices be included on the copies provided under its auspices.95 Fair use provides a flexible right to make accessible formats available to folks who need them, but for print disabilities, Section 121 provides libraries a clear, well-defined right to do so. C. The Triennial 1201 Exemption Rules The DMCA created a new cause of action, separate from copyright infringement, that a copyright holder could bring against anyone who circumvents a technological protection measure (TPM) that effectively controls access to an in-copyright work. In other words, it created a new bar against the hacking of digital locks. This bar is not expressly subject to any of the limitations and exceptions in the Copyright Act, including fair use. In recognition of the likely burden the provision could place on lawful uses, Congress also requires the Copyright Office to conduct a rulemaking process every three years during which it hears evidence of Section 1201’s effect on lawful uses and recommends rules exempting certain uses from the law’s bar on circumvention. The Librarian of Congress has the ultimate authority to issue exemptions based on the Register’s recommendations. Advocates for exceptions bear the burden of

93 94 95

902 F. Supp. 2d 445, 465 (S.D.N.Y. 2012). S. Rep. No. 115-261 (2018), https://www.Congress.gov/115/crpt/srpt261/CRPT-115srpt261.pdf (last visited Nov. 21, 2022). 17 U.S.C. 121(b)(1)(B) and (C). The inclusion of the copyright notice (e.g., “© 2019 Oxford University Press”) is a familiar practice for libraries, who must include this notice with copies it makes under Section 108. The language required by subsection (B) (“notice that any further reproduction or distribution in a format other than an accessible format is an infringement”) is problematic, as it is not an accurate representation of the law! Libraries might be able to avoid misleading their patrons by adding language, e.g., “Unless permitted by the fair use doctrine or another provision of the Copyright Act, further reproduction or distribution.”

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

378

Jonathan Band and Brandon Butler

convincing the Register and the Librarian that their uses are lawful and that they are unduly burdened by the anti-circumvention provision. Since 2003, every set of exemptions has included a rule permitting circumvention of TPMs protecting ebooks that prevent use of accessibility functions by print-disabled readers.96 The shape of these exemptions has evolved over time thanks to the efforts of disability rights organizations, education groups, and law clinics. Starting in 2012, the rules were expanded to cover circumvention by “authorized entities” as defined in Section 121.97 The rules were renewed in each subsequent cycle, and the policy of the Americans with Disabilities Act has been cited in support of the lawfulness of these uses. In 2018, a new rule was adopted to permit captioning and audio description of video material for instructional uses, again with a predicate finding that “making motion pictures accessible to students with disabilities by adding captions and/or audio description is likely noninfringing.”98 That finding is based on fair use, not Section 121, which does not apply to audiovisual works. It is also noteworthy that the 2018 rule specifically references the legal obligations that disability rights laws place on educational institutions, recognizing that copyright must yield to these obligations.99 The 2021 rule expanded the exemption for accessibility for people with print disabilities to comply with Section 121 as it was updated by the Marrakesh Treaty Implementation Act, discussed in the next section.100 It also made technical expansions of the other exemptions relating to people with disabilities.101 This long pattern of rulemaking activity provides more evidence of a general government policy favoring social justice in the form of accessibility, and it adds an expert agency’s repeated endorsement to the judicial recognition of fair use’s applicability in HathiTrust. More broadly, it shows the U.S. Copyright Office recognizes, in its own rulemakings, the scope and validity of exemptions to copyright rules favoring accessibility. D. The Marrakesh Treaty and Implementing Law The Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled was adopted by the World Intellectual Property Organization’s (WIPO) member states (including the United States) in 2013. The treaty is a response to what is often characterized as a “global book famine,” in which 285 million people in the world are blind or visually impaired but only 1–7 percent of books are published in accessible formats.102 According to WIPO, “The Treaty has a single objective: to increase access 96

97

98

99

100

101 102

All the triennial rules and related materials are collected together at https://copyright.gov/1201/ (last visited Nov. 21, 2022). U.S. Copyright Office, Section 1201 Rulemaking: Fifth Triennial Proceeding Recommendation of the Register of Copyrights 25 (2012). U.S. Copyright Office, Section 1201 Rulemaking: Seventh Triennial Proceeding Recommendation of the Acting Register of Copyrights 101 (2018). Id. at 107 (noting that the DMCA’s rule against circumvention was “adversely affecting the ability of educational institutions to offer accessible formats of motion pictures on an equal basis in conformance with their legal responsibilities”) (emphasis added). U.S. Copyright Office, Section 1201 Rulemaking: Eighth Triennial Proceeding Recommendation of the Register of Copyrights 125 (2021). Id. at 64. World Intellectual Property Organization, The Marrakesh Treaty: Helping to End the Global Book Famine, https:// www.wipo.int/edocs/pubdocs/en/wipo_pub_marrakesh_overview.pdf (2016) (accessed June 19, 2019); Krista L. Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook on Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (providing an extensive discussion of the Marrakesh Treaty and its importance to promoting the social utility and social justice objectives of the copyright law).

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

Libraries, Copyright Exceptions, and Social Justice

379

to books, magazines, and other printed materials for people with print disabilities. It aims to achieve this by making it easier for accessible copies to be created and shared across international borders.”103 It requires all signatories to create exceptions to copyright that clearly permit the creation and cross-border sharing of accessible texts for the benefit of the print disabled. To ensure compliance with the Marrakesh Treaty, Congress added a new Section 121A to Title 17 of the U.S. Code. Under that section, it is lawful for an authorized entity to export accessible texts to authorized entities or eligible persons in other Marrakesh Treaty signatory countries. It is also lawful for authorized entities to import copies (or phonorecords, in the case of sound recordings) of a previously published literary work or of a previously published musical work that has been fixed in the form of text or notation in accessible formats. This sharing is permitted subject to the requirement that authorized entities establish and follow practices to achieve a laundry list of objectives, including ensuring the person being served is eligible, limit distribution of copies only to eligible persons or authorized entities, and discouraging reproduction and distribution of unauthorized copies. So, while Section 121A provides a clear right to share accessible texts across borders, it requires authorized entities to do some work developing policy. Moreover, it applies to the sharing of only certain kinds of works with specific countries. Fortunately, thanks to the savings clause at Section 121A(e), libraries can also rely on fair use for cross-border sharing of accessible texts in cases where Section 121A might not apply (principally, in dealing with countries who are not signatories to the Marrakesh Treaty). Section 602(a) bars exportation without permission where the copy at issue is infringing. Section 107, however, provides that fair use “is not an infringement of copyright.” Because the provision of accessible texts to qualified persons constitutes a fair use, exportation does not violate Section 602. Likewise, U.S. libraries can rely on fair use to justify the importation of accessible materials from foreign countries, without regard for the restrictions (to published literary and musical works only) incorporated in Section 121A.

conclusion The Supreme Court has observed on multiple occasions that copyright is meant to serve the public interest, and that the incentives that copyright law grants to rights holders are a means to the end of cultural flourishing. In many cases, markets work as this basic scheme envisions, providing incentives for creation and distribution of knowledge and culture. When the market fails, however, and the law’s exclusive rights become a mechanism for injustice, libraries are among copyright’s most important social justice safety valves. Libraries ensure that the lifechanging power of access to information is not unduly limited by wealth, physical or mental impairment, or the other exigencies of life. Libraries thus make manifest the interdependent relationship between IP social utility and IP social justice by ensuring that everyone has access to knowledge through which they can they take ownership of their inclusion in and empowerment through civil society. The vital limitations and exceptions described in this chapter that support libraries and their critical role in society exemplify the sort of balancing of interests that IP-SJ seeks to advance.

103

Id.

https://doi.org/10.1017/9781108697613.024 Published online by Cambridge University Press

18 An Intellectual Property Social Justice Perspective on Intellectual Property Protection for Artificial Intelligence Programs Steven D. Jamar

I.

An Artificial Intelligence Primer A. AI Is Everywhere B. What AI Is and Is Not C. Types of Machine Learning Algorithms D. Limitations and Weaknesses of AI E. AI’s Impacts II. Implications of Intellectual Property Social Justice for IP Protection for AI Programs A. Patents B. Copyrights C. Trade secrets III. Recommendations Conclusion

page 382 382 383 385 388 392 393 395 396 398 398 400

[W]e now have the option for all humanity to “make it” successfully on this planet in this lifetime . . . Whether it is to be Utopia or Oblivion will be a touch-and-go relay race right up to the final moment. – R. Buckminster Fuller, Critical Path (1981)1

We are just at the beginning of the AI revolution and already it is transforming human society.2 In history, only four other technologies have transformed human life as profoundly as AI will: steam power that powered the industrial revolution; electricity that transformed everything; the development of antibiotics and medical understanding and treatment generally; and computers and pre-AI software creating the information age. As we move into the AI world, we face significant challenges with respect to shaping our world. A significant part of that shaping will

1 2

R. Buckminster Fuller, Introduction, in Critical Path xxxvi (1981). Many reports and perspective works exist. Four good works about the promise and threats of AI are: Algorithmic Justice League, Coded Bias (2020) (documentary on AI bias) https://www.ajl.org; Max Simkoff & Andy Mahdavi, AI Doesn’t Actually Exist Yet, Scientific American online, Nov. 12, 2019; Frontline: In the Age of AI (PBS Nov. 5, 2019); and Jeff Orlowski, Davis Coombe, & Vicki Curtis, The Social Dilemma (Netflix docudrama 2020). Each is limited by the perspective they are advancing, by their length and medium, and by the difficulty of addressing the complexity and breadth of what artificial intelligence affects for a lay audience. Nonetheless, with those caveats, they provide good background about what AI is, what it does, how it does it, some of what to watch for as AI increasingly affects our lives.

380 https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

381

be determined by how we collectively choose to reward and regulate AI implementations.3 And a part of that shaping will depend upon how we address intellectual property issues connected to artificial intelligence applications. This chapter sketches some of the concerns and suggests a path forward that directly responds to the challenge posed by Buckminster Fuller in this chapter’s framing epigraph. One of the most significant challenges presented by AI programs is their use in social media in ways that present existential threats not only to individual privacy, but that even present an Orwellian threat to democracy itself.4 This threat is unprecedented in its insidiousness.5 The concerns are legitimate and cannot be dismissed, but most serious potential consequences are still avoidable. This chapter advocates that as we shape our AI-mediated future we should frame decisions about IP protection for AI implementations through the lens of the intellectual property social justice theory advocated and illustrated throughout this book . This chapter in section I first presents a snapshot of what AI is in 2023 and what it is not, identifies some of the weaknesses inherent in it, and highlights a few of the ways in which it is already transforming our lives. That section sets up section II, which explains why traditional IP categories of patent, copyright, and trade secrets are an ill fit for providing protection for AI programs and how intellectual property social justice (IP-SJ) theory informs the contours of appropriate IP protection for AI programs in a way that serves social justice interests. Ultimately, this chapter in section III recommends that we ought to develop sui generis protection for AI programs because traditional IP forms of protection including patents,6 copyrights,7 and trade secrets8 simply cannot be adapted adequately to meet the unique challenges AI programs present or, to the extent such adaptation is attempted, the adaptations themselves present significant dangers in undermining the core purposes and the effectiveness of those areas of IP within their proper domains. In general, and especially for AI implementations in important fields like public health, medical diagnosis and treatment, autonomous vehicles, “killer” drones,9 environmental concerns such as impacts from activities like fracking, core civic functions like access to accurate information and voting (including voting machine software and such), matters affecting individual rights like speech and privacy or criminal law and procedure including bail, sentencing, and profiling, decisions about hiring and college admissions, and the like, traditional IP law, including in particular trade secret law, should be superseded by sui generis IP protection for

3 4

5

6

7

8

9

See Meredith Broussard, Artificial Unintelligence: How Computers Misunderstand the World (2018). Jaron Lanier, Ten Arguments for Deleting Your Social Media Accounts Right Now (2019); Cathy O’Neil, Weapons of Math Destruction: How Big Data Increases Inequality and Threatens Democracy (2017); Joe Toscano, Automating Humanity (2018); Shoshana Zuboff, The Age of Surveillance Capitalism: The Fight for a Human Future at the New Frontier of Power (2019). See Algorithmic Justice League, Coded Bias (2020) (documentary on AI bias) https://www.ajl.org; The Social Dilemma (2020) (Netflix film). See Mason Marks, People Are the Lifeblood of Innovation, ch. 4 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (addressing some IP-SJ issues in the patent context). See Lateef Mtima, Copyright and the Interdependent Relationship Between Social Utility and Social Justice, ch. 5 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (addressing some IP-SJ issues in the copyright context). See Steven D. Jamar, Trade Secrets from an Intellectual Property Social Justice Perspective, ch. 7 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (an overview sketching some IP-SJ issues in the trade secret context). See, e.g., Scott Simmie, Autonomous ‘Killer Drone’ Hunted Down Human Targets, May 30, 2021, https://dronedj.com/ 2021/05/30/autonomous-killer-drone-hunted-down-human-targets/.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

382

Steven D. Jamar

AI implementations.10 A sui generis approach can help preserve and enhance realization of social justice principles of access, inclusion, empowerment, and the protection of privacy through appropriate balancing of those interests with the benefits that flow from appropriate IP protection for AI programs. The cardinal recommendation is that a precondition to providing IP protection for AI programs in any area of significant public import is that the AI programs be XAI (eXplainable AI) compliant.11 The core premise of XAI is that through the use of sophisticated programming techniques, how an AI program arrives at its decisions, recommendations, or actions can be made sufficiently understandable by people so that we can make informed judgments about the degree to which the AI program conforms to our values and legal requirements such as avoiding racial and gender bias in important decisionmaking. At present, how AI programs reach their decisions is opaque.12 The transparency XAI brings is central to advancing the intellectual property social justice agenda of insuring that IP law and administration serves the interests of everyone, especially marginalized groups, in access, inclusion, and empowerment, as well as serving other cardinal social justice concerns including in particular privacy, people having control of their own lives and choices, and even communitarian13 and democratic ideals.

i. an artificial intelligence primer 14 A. AI Is Everywhere Artificial intelligence programs affect almost all technology being developed today. They also affect our lives socially, culturally, and economically in innumerable ways.15 AI programs 10

11

12 13

14

15

Perhaps trade secret protection could be permitted for noncritical implementations of AI, howsoever those may be defined. L. Karl Branting, Artificial Intelligence and the Law from a Research Perspective, 14 The SciTech Lawyer (2018), https://www.americanbar.org/groups/science_technology/publications/scitech_lawyer/2018/spring/artificial-intelli gence-and-law-a-research-perspective.html; David Gunning, Explainable Artificial Intelligence (XAI), 4 Science Robotics, Sept. 6, 2018, https://www.darpa.mil/program/explainable-artificial-intelligence; James Alford et al., GDPR and Artificial Intelligence, The Regulatory Review, May 9, 2020; General Data Protection Regulation, European Union, https://gdpr-info.eu/; Giovanni Sartor, The Impact of the General Data Protection Regulation (GDPR) on Artificial Intelligence, June 25, 2020, European Parliament Think Tank, https://www.europarl.europa .eu/thinktank/en/document.html?reference=EPRS_STU%282020%29641530; Lukas Feiler, Nikolaus Forgo, & Michaela Nebel, The EU General Data Protection Regulation (GDPR): a Commentary (2d ed. 2021). See infra in section II for a more complete explanation of XAI. See Amatai Etzioni, Happiness is the Wrong Metric: A Liberal Communitarian Response to Populism (2018), https://www.springer.com/gp/book/9783319696225. Section I is drawn primarily from a remarkable, short, entertaining book that provides an excellent introduction to AI. See Janelle Shane, You Look Like a Thing and I Love You: How Artificial Intelligence Works and Why It’s Making the World a Weirder Place (2019). The author has a Ph.D. in electrical engineering and a Master’s degree in physics. Shane’s book is supplemented by information drawn from various other sources, including in particular Broussard, supra note 3; Michael Wooldridge, A Brief History of Artificial Intelligence: What It Is, Where We Are, and Where We Are Going (2020); Toby Walsh, Machines That Think: The Future of Artificial Intelligence (2018); published articles and research papers, including in particular, Branting, supra note 11; Branting et al., Scalable and Explainable Legal Prediction, 29 Artifical Intell. & L. (2021), https://doi.org/10 .1007/s10506-020-09273-1; and many newspaper and magazine articles, even including two works of fiction that present possible futures based heavily on very powerful AI, namely Neal Stephenson, Fall: or Dodge in Hell (2019); and Hao Jingfang, Vagabonds (2016 (in Chinese), 2020 (English translation)). See generally Kai-Fu Lee, AI Superpowers: China, Silicon Valley, and the New World Order (2018); Greg Shaw, The Future Computed (2019) https://news.microsoft.com/futurecomputed/; Ameet V. Joshi, Machine Learning and Artificial Intelligence (2020). The Cambridge Handbook of the Law of Algorithms (Woodrow Barfield, editor, 2021).

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

383

underlie social media, search engines, text completion (for messages on cell phones or searches on Google, for example), partially self-driving cars,16 beating the best humans at the strategic board game Go (which had resisted all nonself-learning algorithms and programs),17 modern computer generated imagery (including deep fakes),18 facial recognition, speech recognition (like Siri and Alexa, which employ natural language programming techniques), and much, much more. AI programs are increasingly incorporated into products and used to provide services. Many of these sorts of programs are hybrids with significant amounts of traditional rule-based programming with AI techniques adding functionality not otherwise obtainable, such as tailoring the service to the particular user, e.g., Amazon product suggestions, and spotting correlations within the data that people may not have recognized and may not understand. B. What AI Is and Is Not The term “artificial intelligence” is used by people in various ways in various contexts.19 As the term is used today by programmers (in general), artificial intelligence refers to machine learning which encompasses a variety of computer programming techniques.20 “AI” as used in this chapter is limited to AI programming techniques that involve machine learning, and excludes rule-based computer programs that do not learn.21 Traditional software algorithms do not learn. They invariably follow the rules written in the program. They can be used to analyze data, but they can only search for the sorts of things the program has been told to look for. Nonmachinelearning, rule-based programs are often very powerful and can do amazing things like beating chess grandmasters22 and even playing Go at the level of a fair amateur. They can mimic certain forms of intelligence such as composing a new piece of music by applying a rule-based algorithm (which may include the ability to make random selections) to a fixed set of data, including key signatures, chords, rhythms, etc., and programmer-set parameters.23 David Cope’s 1997 computer-generated music did not use self-learning algorithms; instead, it used a sophisticated algorithm that was considered an AI program at the time and which is sometimes included in the terminology today. But that sort of rule-based program, as complex and sophisticated as it is, is not considered an AI program for purposes of this chapter, and since it did not use machine learning, it would not be considered to have been using AI techniques as the term is generally 16

17

18

19 20 21

22

23

MEGA, Self-Driving Cars to Test City Limits, Nov. 2019, https://www.scientificamerican.com/custom-media/pictet/ self-driving-cars-to-test-city-limits/; Are Autonomous Cars Really Safer Than Human Drivers, Feb. 2018, https://www .scientificamerican.com/article/are-autonomous-cars-really-safer-than-human-drivers/; Srikanth Saripalli, Before Hitting the Road, Self-Driving Cars Should Have to Pass a Driving Test, Feb. 2018, https://www.scientificamerican .com/article/before-hitting-the-road-self-driving-cars-should-have-to-pass-a-driving-test/. Go is a board game invented in China about 2,500 years ago. It has many more possible combinations of play than chess. Indeed, there are more possible combinations of play than there are atoms in the universe. The rules are simple, but the strategies are endlessly complex and subtle. Max Pumperla & Kevin Ferguson, Deep Learning and the Game of Go (2019). See also Joshi, supra note 15. Joseph Foley, 10 Deepfake Examples That Terrified and Amused the Internet, Creative Bloq, Mar. 23, 2020, https:// www.creativebloq.com/features/deepfake-examples. The creation of ChatGPT and DALL-E exacerbate the problems. Wooldridge, supra note 14, at chs. 1–5. Shane, supra note 14, at 8. For a short, lay person-accessible summary of earlier forms of AI (expert systems and other programs that do not use machine learning), see Michael Wooldridge, Artificial Intelligence (2018). AI is still used by many to refer to a variety of older sorts of expert systems that did not use machine learning. See Larry Greenemeier, 20 Years After Deep Blue: How AI Has Advanced Since Conquering Chess, Scientific American, June 2, 2017, https://www.scientificamerican.com/article/20-years-after-deep-blue-how-ai-has-advancedsince-conquering-chess/ Keith Muscutt & David Cope, Composing with Algorithms: An Interview with David Cope, 31 Computer Music J. 1022 (2007) https://www.jstor.org/stable/40072590

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

384

Steven D. Jamar

understood by AI programmers in 2023.24 Such rule-based programs without machine learning do not provide the leap forward that is happening from self-learning programs and do not present the sorts of IP, social, and economic challenges presented both by current AI programs and perforce future self-learning programs.25 Furthermore, such rule-based programs are inherently explainable (albeit complex algorithms are used) and knowable insofar as one can decipher how the program made the music. That is not true today for AI machine learning programs. Computer-assisted design and computer-assisted creativity have been available for a relatively long time.26 Until machine learning was developed, behind all such computer programs was a programmer who established all the rules and parameters the algorithm used.27 Those rule-based sorts of programs could not examine a database of images or of text, or arrays of data for patterns beyond what a programmer had instructed the program to search for. Those programs could search all text documents that had the words “autonomous & automobiles & driving,” but they could not search the resulting set of documents for commonalities and correlations for which the program had not been explicitly instructed to search. Rule-based programs without machine learning cannot make and test predictions or suggestions about some of the problems that have been encountered in trying to make self-driving cars.28 Artificial intelligence programs can do exactly that. An AI program may or may not do it well depending on the difficulty of the problem being addressed, the quality of the data on which the AI program was trained, the precision or narrowness of what it is asked to do, and the sufficiency of constraints on solutions, but it can do it.29 Traditional procedural or rule-based algorithms cannot. Because of the nature of AI programs, we do not and generally cannot yet know what AI programs are “thinking.”30 Because the AI program learns on its own and even modifies the program itself to perform the task it has been assigned to do, we do not know how it reaches the predictions and results it reaches.31 This severe limitation is a linchpin for understanding the intellectual property social justice implications for AI implementation and IP protection.32

24

25

26

27 28

29 30 31

32

According to Dr. Karl Branting addressing several software music programs: “EMI and SARA generate new compositions by combining musical elements from corpora of prior compositions, guided by a good bit of musical expertise represented computationally. It’s true that this approach is much more manual than, say, GPT-3, but the input-output behavior is broadly similar: you give it examples, and it produces new outputs similar to the examples. Neural networks have many advantages, but they have limitations as well, such as requiring much larger training sets and processing power. While they don’t require feature engineering, they require architecture design, which in 2020 is still largely a black art.” Comments made to the author regarding computer-generated music (Oct. 17, 2020). See Broussard, supra note 3; Larry Greenemeier, Intelligent to a Fault: When AI Screws Up, You Might Still Be to Blame, Scientific American, Mar. 15, 2018, https://www.scientificamerican.com/article/intelligent-to-a-fault-whenai-screws-up-you-might-still-be-to-blame1/. The history of CAD (computer assisted design) reaches back to 1957, but did not become more generally available as a practical tool util the 1980s and has continued to become an increasingly important tool for designers. Adam Beck, 60 Years of CAD Infographic: The History of CAD since 1957, https://partsolutions.com/60-years-of-cad-infographic-thehistory-of-cad-since-1957/. See, e.g., Muscutt and Cope, supra note 23. See, e.g., Hannah Knowles, Uber’s Self-Driving Cars Had a Major Flaw: They Weren’t Programmed to Stop for Jaywalkers, Wash. Post, Nov. 6, 2019, https://www.washingtonpost.com/transportation/2019/11/06/ubers-self-drivingcars-had-major-flaw-they-werent-programmed-stop-jaywalkers/?fbclid=IwAR2wDS0y%E2%80%A6. Shane, supra note 14, at ch. 3. Shane, supra note 14, at 24–28. Branting, supra note 11; April Glaser, These AI Bots Created Their Own Language to Talk to Each Other, https://www .vox.com/2017/3/23/14962182/ai-learning-language-open-ai-research, Mar. 23, 2017; Adrienne LaFrance, An Artificial Intelligence Developed Its Own Non-Human Language, https://www.theatlantic.com/technology/archive/2017/06/artifi cial-intelligence-develops-its-own-non-human-language/530436/, June 15, 2017. When Facebook designed chatbots to negotiate with one another, the bots made up their own way of communicating. David Gunning, supra note 11. See also Shane, supra note 14, at 5, 24–28, listing some pitfalls in AI programming.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

385

C. Types of Machine Learning Algorithms33 A variety of machine learning algorithms are used in AI programs. A superficial knowledge of them helps one understand the promise and pitfalls of using AI, why it is so different from what has existed before, some of the social and cultural implications of it, and why it should be treated differently under the law from other programs for IP purposes. The following description grossly simplifies what AI programs are and how they work, but hopefully it will serve to help provide a sense of how different they are. These AI techniques are often coupled with more standard rulebase programming and various types of AI techniques may be used in one program or for one AIcontrolled virtual agent. Furthermore, the field is not static; researchers are rapidly improving the techniques and are developing new and better AI methods that will avoid some of the major pitfalls of current AI.34 Neural Networks (NN). Some machine-learning algorithms, the heart of AI programs, were designed to mimic brains and are called neural networks (NN). NNs consist of arrays and layers of “cells” each of which evaluates whatever it is they are trained to observe such as text or images. NNs can be relatively simple (or shallow) with just a few layers of cells or complex (or deep – hence “deep learning”) with thousands of cells, layers, and interconnections among them. The NN is given a task or goal and then is trained on a large number of examples to learn to do that task. For example, if one wants a program to draw a credible life-like tulip, then the program is trained on a vast set of pictures of tulips.35 The AI program examines all of the pictures in the training database and then is tasked to draw a tulip. Early tries are likely to be essentially random blotches of color. The AI program then compares that attempt with the pictures in the database, finds it wanting, and tries again. The AI program itself can be trained to do the evaluation or a person can give the feedback or both. Eventually, the NN learns more and more about what a tulip looks like and eventually draws one that the AI program itself (and perhaps and ideally) a person cannot distinguish from the ones in the training database except for the fact that the tulip the AI program drew is not in the database. During this iterative process of doing (drawing a flower) and evaluating, the values and connections in the neural network cells are constantly changing. And no one really knows exactly what each cell is doing or how, in detail, the NN learned to draw a realistic flower or how it has learned what a flower is (it actually does not know what a flower is

33

34

35

The summaries in this section are based primarily on Shane, supra note 14, at chs. 3 & 4 and communications with L. Karl Branting, Ph.D., an AI researcher, lawyer, published scholar, composer, and renaissance person. http://www .karlbranting.net/vitae/vitae.pdf. Shane presents the most comprehensive and accessible explanation for lay audiences that I have found. Other sources I also relied on heavily for information include Pumperla & Ferguson, supra note 17; Joshi, supra note 15; Broussard, supra note 3; and Wooldridge, supra note 14. Joshi’s book provides a more comprehensive survey of AI techniques most of which are encompassed in Shane’s simpler typology and most of which involve variations on the simpler list included herein. Oftentimes techniques are combined or some features are added to an underlying technique to improve its performance for some particular task. Joshi’s book describes various techniques that can be applied in many different settings, like various forms of using probability techniques and weighting techniques in AI programs. See Joshi, supra note 15, at 73–89. See Steve Lohr, Is There a Smarter Path to Artificial Intelligence? Some Experts Hope So, N.Y. Times, June 20, 2018, ttps://www.nytimes.com/2018/06/20/technology/deep-learning-artificial-intelligence.html. http://annaridler.com/mosaic-virus/; Kelsey Campbell-Dollaghan, This AI Dreams in Tulips, Fast Company, Sept. 19, 2018, https://www.fastcompany.com/90237233/this-ai-dreams-in-tulips; Mosaic Virus artwork: AI-generated tulips, Sept. 25, 2020, http://www.futurescape.tv/featured/mosaic-virus-artwork-ai-generated-tulips/.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

386

Steven D. Jamar

other than “that thing I’m supposed to draw”). This particular opacity36 is common to all NNbased AI programs of any significant complexity.37 Markov Chains. Another sort of AI algorithm is a Markov chain. These are simpler than neural networks and are well suited for certain applications where quick response and program size are significant constraints and where accuracy may not be quite as important as in other settings. For example, predictive text apps like text messaging on a cell phone use Markov chains to finish a word or predict what word you are typing. An AI application keeps learning and updates the Markov chain, which is how they adapt to a particular user. For example, my dog’s name is Kaeli. The Markov chain for my phone text messaging app now capitalizes the name and when I type “Ka” the program “knows” the rest of the word is highly likely to be my dog’s name and so inserts that in the message. Like neural networks (and all AI models as used in this chapter), programs using Markov chains examine past examples and predict what will happen next. And they keep learning and improving the Markov chain. But as the demand that the AI program remember past things (like words that capture a plot for a story) increases, the “Markov chain gets exponentially more unwieldy”;38 it learns quickly, but does not remember well. Like all AI programs trained on data (which means all AI machine learning programs or just all AI programs as that term is used in this chapter), it is subject to weaknesses in what it learns from bad data.39 Random Forests. A type of machine learning algorithm that may be more familiar conceptually is the random forest algorithm. A random forest algorithm uses decision trees much like those used by programmers in rule-based algorithms from almost the very beginning of computer programming. Decision trees for rule-based algorithms work well where each decision at each step of the process reflected in the branching tree yields a “yes” or “no” answer to allow a clear decision as to which branch of the tree to follow. Programmers also developed more sophisticated sorts of decision trees which included probabilistic assessments (not merely either/ or) in making decisions.40 However simple or complex the decision tree is, in rule-based algorithms the algorithm itself is neither growing the tree nor trimming its branches. Decision trees can become extremely complex and long. In contrast, the random forest algorithms used in AI programs use the decision tree idea differently. Rather than building a single, complex tree, the random forest algorithm tends to have many small trees, each of which assesses a part of the text or picture or whatever it is being asked to do.41 From the inputs from the many trees, the random forest algorithm makes its decision or prediction. The program itself generates and tries various trees in the forest, or builds the forest, and over time gets a set of trees that give it useful results in accordance with the 36

37

38 39

40 41

The opacity problem is the subject of research with new products being developed to address it including Attention Networks which are designed to highlight the portion of the input that is most important to the output. Kim Buomsoo, Attention Mechanism in Neural Networks - 1. Introduction, Jan. 1, 2020, https://buomsoo-kim.github.io/attention/2020/ 01/01/Attention-mechanism-1.md/. Self-learning programs, especially NNs and their relatives, are the core techniques used by social media in manipulating users as to what to read or watch or even think. O’Neil, supra note 4. Shane, supra note 14, at 83. Markov chains are used in very important settings including, in particular, risk assessment. If the data the AI program was trained upon or the data it is reviewing for risk assessment is flawed, serious consequences could ensue. See Le NgocDoan & B. Hoang, Security Threat Probability Computation Using Markov Chain and Common Vulnerability Scoring System, paper presented at the 28th International Telecommunication Networks and Application Conference (ITNAC Nov. 2018), https://www.researchgate.net/publication/329183104_Security_threat_probability_computation_ using_Markov_Chain_and_Common_Vulnerability_Scoring_System. Joshi, supra note 15, at 73–89. Shane, supra note 14, at 89–90.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

387

question asked and the data set trained upon. As with all self-learning programs, the AI program is doing the work of building the forest, and, for any sufficiently complex problem, exactly what the AI program is doing internally is unknown. Only the inputs, the query, the basic structure of the program, and the resulting prediction are known. Evolutionary and Genetic Algorithms. Another type of AI is based on evolutionary or genetic algorithms. As with the other types, these self-learn from large amounts of data from which the evolutionary algorithm extracts correlations and makes assessments or predictions based on its study of and spotting of correlations among the various bits of data on which it learned. That much is true for all AI. In an evolutionary program the algorithm mutates and compares the new, mutated version, with the former version. These sorts of programs have a “fitness function” that determines the probability of survival and reproduction of any given combination of inheritance traits. It discards the old and keeps the new, or keeps the effective traits and discards less effective ones, and tries another mutation.42 Hence, the terms “genetic” or “evolutionary” algorithm. As with other types of AI algorithms, it learns, predicts, evaluates the quality of the prediction, and then makes a change in the program and tries again. As is true for each type of machine learning algorithm, evolutionary and genetic AI techniques are better suited to certain types of problems than to others. Generative Adversarial Network (GAN). A fairly recent variation on the neural network type of AI is the generative adversarial network, or GAN. A GAN is a type of neural network with a sort of division of labor with two complementary and competing AI programs. One AI program, the generator, tries to generate an image or text and the other, the discriminator, tries to determine whether that image is an imitation or a picture of a real thing.43 If the discriminator can distinguish the real from the fake, then the generator tries again. GANs have been successful at generating realistic pictures of tulips,44 faces,45 and other images. Many programs use multiple AI techniques of various types to do their work. For example, the program may use one AI technique to handle speech recognition while it might use another AI technique to develop a response while a third technique might be used to communicate that result orally to the user. Three AI algorithms were used to create a program to play the computer game Doom.46 One part of the program would see what was happening on the screen while another would predict what would happen next and a third would decide what to do. The first might detect a fireball, the second sees it growing larger (meaning it is coming toward the avatar), and the third decides what to do about it (e.g., use a shield, dodge, or deploy antifireball magic). A quick note about the type of AI program that does not exist: artificial general intelligence. There is no C3PO from the Star Wars universe or Data from Star Trek running around and there will not be for some time yet.47 It turns out that AI programming in its current state of development can be quite effective at certain narrow tasks, but is dismal or at least inadequately strong whenever common sense or general knowledge and intelligence are needed to solve a

42 43 44 45

46 47

L. Karl Branting, from comments to the author (Oct. 17, 2020). Shane, supra note 14, at 102. Mosaic Virus artwork, supra note 36. Drew Harwell, Dating Apps Need Women. Advertisers Need Diversity. AI Companies Offer a Solution: Fake People, Wash. Post, Jan. 7, 2020, https://www.washingtonpost.com/technology/2020/01/07/dating-apps-need-women-adver tisers-need-diversity-ai-companies-offer-solution-fake-people/ Shane, supra note 14, at 107. Shane, supra note 14, at 41–43.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

388

Steven D. Jamar

problem effectively.48 AI programs are not good at unexpected risks. For example, Volvo’s autonomous car program had never been trained on kangaroos and so did not recognize them as a possible driving hazard.49 The AI program did not have a generic concept of “animals” that included ones that hopped like kangaroos. The weakness of current AI programs is a major reason self-driving cars that are fully autonomous in all real world situations are still quite far off.50 But the programs keep learning.51 D. Limitations and Weaknesses of AI As powerful as artificial intelligence has proven to be in certain narrow areas such as mastering the game of Go (which rule-based programs had not been able to play at a professional level),52 it is still very poor at certain real world problems. Most weaknesses of AI programs arise from three sources: problems in training; difficulty understanding the task it has been asked to do; and what might be considered inherent limitations in how AI programs work.53 Problems with respect to training the AI models arise from data problems, limits of training in simulated settings, asking the right questions correctly, setting the necessary parameters, among others.54 Problems with respect to training data include bias in the data, limited amounts of data to train on, and other flaws in the data which may be missed by the programmers selecting or creating the database for the training.55 Data Problems. Artificial intelligence programs learn from examining data.56 If there is not enough data for the AI program to learn from, it will not learn much. If the data has flaws in it, the AI program’s decisions, predictions, and actions will incorporate those flaws. In one example a researcher was trying to train a program using a recursive neural network57 to distinguish

48

49

50

51

52 53 54 55

56

57

Broussard, supra note 3 (explaining what many of the inherent limitations of computers and software are and why they are not likely to be overcome any time soon). Naaman Zhou, Volvo Admits Its Self-Driving Cars Are Confused by Kangaroos, The Guardian, June 30, 2017, https:// www.theguardian.com/technology/2017/jul/01/volvo-admits-its-self-driving-cars-are-confused-by-kangaroos. Shane, supra note 14, at 56–60; Rodney Brooks, The Big Problem With Self-Driving Cars Is People, IEEE Spectrum, July 27, 2017, https://spectrum.ieee.org/transportation/self-driving/the-big-problem-with-selfdriving-cars-is-people; Saripalli, supra note 16; Andrew J. Hawkings, Inside Waymo’s Strategy to Grow the Best Brains for Self-Driving Cars, The Verge, May 9, 2018, https://www.theverge.com/2018/5/9/17307156/google-waymo-driverless-cars-deep-learn ing-neural-net-interview; Andrew J. Hawkins, Waymo’s Robot Minivans Are Ready to Roll in the Bay Area for the First Time Since COVID-19 Outbreak, The Verge, May 30, 2020, https://www.theverge.com/2020/5/30/21275441/waymoself-driving-car-delivery-bay-area-resume-covid. Dalvin Brown, Self-Driving Cars Confront a Daunting New Challenge: New York City Streets, Wash. Post, July 22, 2021 https://www.washingtonpost.com/technology/2021/07/22/intel-autonomous-cars-mobileeye/. Pumperla & Ferguson, Deep Learning and the Game of Go. Shane, supra note 14, at 19–28,. Id. Karen Hao, AI Is Sending People to Jail and Getting It Wrong, MIT Tech. Rev. (2019, https://www.technologyreview .com/2019/01/21/137783/algorithms-criminal-justice-ai/ (“Using historical data to train risk assessment tools could mean that machines are copying the mistakes of the past”). The need for data to learn from is true even if the program is given very little data before it is let loose on its task. For example, the strongest Go-playing program in the world in 2020, AlphaGo Zero, was taught only the rules and then set loose to discover the game itself. After millions of iterations of it playing itself (that is how it acquired the needed data), it was stronger than AlphaGo, which had been taught on a vast library of human games. See Wooldridge, supra note 14, at 126–29. Similarly, the simple Atari video game Breakout was mastered by a computer program that was just given the basic confines of the game with no pre-loaded tactics or strategies. Id. at 124–26. These programs and others set loose to explore the world on their own acquire data from experience as opposed to from pre-loaded data sets, but they still require massive amounts of data to learn. See supra, pp. 5–6 for a discussion of RNNs; and Shane, supra note 14, at 62–82.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

389

normal skin growths like age spots and moles from cancerous ones.58 The AI program examined many pictures of cancerous cells (as diagnosed by humans) and many pictures of benign skin conditions. When the AI program was shown new pictures, pictures that were not in the database, it was not able to spot cancers unless there was a ruler next to the cancer cell to show its size. When the researchers examined the training data, sure enough, all of the cancer cells used in the training data had been photographed with rulers next to them to show their size. The researchers had inadvertently trained a ruler detector.59 This example also shows how AI programs will always “take the easy way out”60 and may not do what you want them to do. Machine learning programs “learn from whatever regularities are present in the training data, including artifacts unrelated to the actual phenomenon of interest. A machine learning model is only as good as the data that it is trained on.”61 Not all of the errors will be as easy to diagnose and fix (and in the future avoid) as the “ruler detector.” And such undetected errors can cause the AI programs to not perform properly, i.e., as people want and expect them to perform, in the real world. There are many examples of problems with AI programs resulting from training data limitations. Many of them are humorous and concern matters of little importance in themselves. Some problems can be discovered and addressed before the AI program is placed into service in the real world. For example, an AI program was trained to identify sheep.62 But when shown pictures of empty pastures, it said there were sheep there. The pictures it trained on all showed sheep in pastures. It was retrained and did better, but it could not identify sheep that were out-ofplace. It would misidentify a sheep in a car as a dog and a sheep in a kitchen as a cat. These examples illustrate that the AI program may not be learning what we want it to learn and we do not know exactly what it is learning from looking at many pictures. Omissions or weaknesses in training can have and have had serious consequences. A selfdriving Uber car killed a person walking her bike across a street because the AI could not recognize or “see” a pedestrian unless the pedestrian was near a crosswalk.63 AI programs are generally less effective at recognizing or even seeing darker-skinned people.64 The problems this presents for self-driving AI programs are obvious. Getting AI programs to handle rare events well is difficult due to what AI experts call “class imbalance,” which basically refers an imbalance in the data such that some things are rarely included in the data set.65 If you try to train an AI program to spot giraffes in photographs, you 58

59

60 61 62 63

64

65

Neal Patel, Why Doctors Aren’t Afraid of Better, More Efficient AI Diagnosing Cancer, The Daily Beast, Dec. 22, 2017, https://www.thedailybeast.com/why-doctors-arent-afraid-of-better-more-efficient-ai-diagnosing-cancer; In the past few years, AI image detectors have been outperforming human physicians in cancer detection. See Steven Zeitchik, Is Artificial Intelligence About to Transform The Mammogram?, Wash. Post, Dec. 21, 2021, https://www .washingtonpost.com/technology/2021/12/21/mammogram-artificial-intelligence-cancer-prediction/; James Thorne, Google Says Its AI Can Spot Early-Stage Lung Cancer, in Some Cases Better Than Doctors Can, GeekWire, May 7, 2019, https://www.geekwire.com/2019/google-says-ai-can-spot-early-stage-lung-cancer-cases-better-doctors-can/; Sandip Kumar Patel, Bhawana George, & Vineeta Rai, Artificial Intelligence to Decode Cancer Mechanism: Beyond Patient Stratification for Precision Oncology, Front. Pharmacol., Aug. 12, 2020, https://www.frontiersin.org/ articles/10.3389/fphar.2020.01177/full. Shane, supra note 14, at 26–27. Branting, supra note 46. Shane, supra note 14, at 22–23. Editorial: Slam the Brakes on Tesla’s Self-Driving Madness, L.A. Times, Dec. 20, 2021, https://www.latimes.com/ opinion/story/2021-12-20/editorial-slam-the-breaks-on-teslas-self-driving-madness; Knowles, supra note 28 (reporting on National Transportation Safety Board findings about its investigation of the fatal accident). Kea Wilson, Study: AVs May Not Detect Darker-Skinned Pedestrians as Often as Lighter Ones, StreetBlog USA, June 17, 2020, https://usa.streetsblog.org/2020/06/17/study-avs-may-not-detect-darker-skinned-pedestrians-as-often-aslighter-ones/. Shane, supra note 14, at 75–76, 168–69.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

390

Steven D. Jamar

can run into a problem of the data set not having enough pictures of giraffes for the AI to learn to spot them effectively. A data set of tourist’s pictures from safaris in Africa may have few giraffes and leopards but many, many zebras and elephants. If you train an AI program to spot giraffes from such a data set, the AI program may choose to report that every picture it sees later on will not have giraffes in it because it will be accurate probably 99 percent of the time and that is what it “wants” to do – make few mistakes. To counter this problem, an AI was trained in a different way that resulted in it seeing them too often; most pictures do not have giraffes in them – giraffes are rare. In training an AI program to spot giraffes in pictures, the data set included pictures and queries about those pictures.66 The queries had been crowd sourced. Normal people only ask if there are giraffes in a picture if there are in fact giraffes in the picture. So the AI program learned that if someone asked whether there was a giraffe in the picture the answer was almost always “yes.” So if a user later on asked the AI program if there was a giraffe in a picture of a barren terrain strewn with boulders, the AI program, keying on the query (not on what was actually in the picture) would invariably, and incorrectly, say “yes.” This result exemplifies the class imbalance problem created by the way people ask questions about pictures; the imbalance was in the queries, not in the photos themselves per se. These sorts of training problems, and more, arise from problems with the data sets on which the AI model is trained. We are not able to create the perfect data set in part because we cannot know just what the AI model will choose to “see,” i.e., just exactly what patterns and correlations it will find. A more fundamental problem with training data sets arises from the need to have labeled data. As explained by Karl Branting: [M]ost learning problems are “supervised,” meaning that they require labeled data, and labeling data at the scale required for NNs, for example, is very expensive. Much of the ingenuity in this field now consists of identifying naturally occurring data that can be manipulated into suitable training sets. Unsupervised learning doesn’t have this problem, but it’s not suitable for all applications.67

A researcher was developing an AI program on a hospital data set.68 After training on the data, the AI program developed a rule that when pneumonia patients who had a history of asthma were brought to the hospital, they were at lower risk of dying from pneumonia than nonasthmatics. The data actually showed that the hospital staff knew that asthmatics were at greater risk and so the policy of aggressive intervention for that class of patients was very effective. But the program that was trained on that data learned the wrong lesson by focusing on correlations between two things (history of asthma and lower risk of dying) without understanding why the one attribute (history of asthma) led to the more positive outcome. Biased data makes for biased AI program predictions.69 If the AI program trains on data that includes racial or gender bias, it will incorporate that into its recommendations.70 This effect is 66 67 68

69

70

Id. at 127–28. Branting, supra note 46. Rich Caruana et al., Intelligible Models for HealthCare: Predicting Pneumonia Risk and Hospital 30-Day Readmission, Aug. 10–13, 2015, 21st ACM SIGKDD Conference on Knowledge Discovery and Data Mining, Sydney, Australia, http://people.dbmi.columbia.edu/noemie/papers/15kdd.pdf. Hengtee Lim, 7 Types of Data Bias in Machine Learning, Lionbridge, July 20, 2020, https://lionbridge.ai/articles/7types-of-data-bias-in-machine-learning/; Margaret Mitchell, Lecture 19, Bias in AI, Stanford CS224N: NLP with Deep Learning, Winter 2019, https://www.youtube.com/watch?v=XR8YSRcuVLE&feature=emb_imp_woyt; Margaret Mitchell, How We Can Build AI to Help Humans, Not Hurt Us, TED Talk, Feb. 2018, https://www.ted.com/talks/ margaret_mitchell_how_we_can_build_ai_to_help_humans_not_hurt_us. Shane, supra note 14, 25–28, 35, 173–84.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

391

also the effect of AI programs generally being designed to get the same result that humans would get. If the people are biased in decisionmaking and they are trying to get the AI program to replicate what people do, the AI program may well do exactly that, bias and all. As Janelle Shane puts it: After all, many AIs learn from copying humans. The question they’re answering is not “What is the best solution?” but “What would the humans have done?”71

The justice system has historically been racially biased in sentencing, parole, and setting bail.72 Training the AI program on that biased data will continue to give recommendations that include those same biases. Scrubbing the data or the recommendations of the AI program to be free of this sort of bias is inherently difficult, especially given the nature of the data being available, and may not be fully realizable, although people are working on doing just that.73 The same sorts of bias are built into employment decisions based on resumes scanned by an AI program and on the use of AI programs to evaluate people based on body posture, gestures, and facial responses.74 An AI model trained on faces from just one culture will learn about those types of facial features and cultural facial responses and cues and will consequently be biased against people whose complexion or facial features are different or whose facial responses are different from the norms of those on whom the program was trained.75 One must add to those concerns problems with respect to the extent to which such recognition of nuance is possible or reliable and the extent to which it creates a proper, valid profile of the person such that it should be used to make such important decisions. Limits of Training in Simulated Settings. AI programs are often trained in simulated environments for reasons of cost and sometimes danger – you do not want cars learning to self-drive from scratch literally by hit-and-miss on real streets. All simulations have one essential weakness insofar as it is not possible to create a perfect Matrix-like simulation of what the AI programs will encounter in the real world.76 AI programs will take advantage of whatever environment they are in. So if surfaces in the “Matrix” are frictionless, AI programs will take advantage of that in having things move in that environment accordingly.77 Or if the limits in the program are not proper, the virtual players in a virtual soccer game may hold the soccer ball and add energy to it with each kick and then release it at the speed of light toward the goal.78 The transition from a simulated world to the real world will always include some sort of disconnect because of this sort of limitation.

71 72

73

74

75

76 77 78

Id. at 24. Karen Hao, AI Is Sending People to Jail—and Getting It Wrong, MIT Tech. Rev., Jan. 21, 2019, https://www .technologyreview.com/s/612775/algorithms-criminal-justice-ai/; Rebecca Heilweil, Why Algorithms Can Be Racist and Sexist, Vox, Feb 18, 2020, https://www.vox.com/recode/2020/2/18/21121286/algorithms-bias-discrimination-facialrecognition-transparency. Shane, supra note 14, at 181–84; Joel Lehman et al., The Surprising Creativity of Digital Evolution: A Collection of Anecdotes from the Evolutionary Computation and Artificial Life Research Communities, 26 Artificial Life 274–306 (2020). Drew Harwell, A Face-Scanning Algorithm Increasingly Decides Whether You Deserve the Job, Wash. Post, Nov. 6, 2019, https://www.washingtonpost.com/technology/2019/10/22/ai-hiring-face-scanning-algorithm-increasingly-decideswhether-you-deserve-job/. Amy Harmon, As Cameras Track Detroit’s Residents, a Debate Ensues Over Racial Bias, N.Y. Times, July 8, 2019, https://www.nytimes.com/2019/07/08/us/detroit-facial-recognition-cameras.html?te=1&nl=morning-briefing&emc= edit_NN_p_20190709§ion=longRead?c%E2%80%A6. Shane, supra note 14, at 161–67. Id. at 172–73. Id. at 161, quoting Doug Blank (@DougBlank), Twitter, Mar. 15, 2018, https://twitter.com/DougBlank/status/ 974244645214588930.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

392

Steven D. Jamar

Another limitation from simulations is the inability fully to simulate all the variability that the AI programs may encounter. Kangaroos were invisible to an AI program because it had not been taught that hopping like kangaroos do was a thing so animals doing that simply did not register.79 The generalized idea of an obstruction is very hard to teach an AI algorithm. Other Limits of AI Algorithms. AI techniques used in a program can be powerful for narrow problems, but AI modeling is not strong at handling matters that require common sense or general intelligence, at least not yet, and barring some major breakthroughs, not for some time yet.80 An AI program needs to be asked precise questions and be provided with all necessary contextual information.81 AI programs will take shortcuts allowed by the algorithm based on the questions asked or limits of the simulation environment.82 AI programs are not very good at handling rare events. This weakness is due in large part to the training problems inherent in what AI researchers call the “class imbalance” problem noted above.83 AI programs basically work by making predictions of the likelihood that something is so or that something will happen. For rare events, the AI program will be correct most of the time if it predicts that the rare event will not happen.84 A program that was supposed to identify solar flares would be right almost all the time by never identifying a photograph as containing a solar flare because they are such rare events.85 Other Limitations on AI Implementations. People tend to place faith in technology and especially in math in part because we have had such amazingly positive (mostly) experiences (in net) with social media, with computers, cell phones, and so on.86 AI programs are qualitatively different from other technologies. As AI modeling moves into more increasingly complex matters, displacing judgments made by people, concerns regarding privacy, bias, and AI programs’ lack of common sense become more significant.87 The use of AI techniques in social media to not only respond to the needs and wants of users (who are merely resources to the AI programs), but also to manipulate the users’ desires and even beliefs suggests that there are some limits that we may want to place on the use of AI programs based upon values and social and cultural structuring.88 Obviously, the consequences of using an AI program that would have this sort of flaw when detecting cancer cells could literally be life-threatening.89 E. AI’s Impacts AI implementations present myriad social, economic, cultural, and legal issues because they are being applied through computer programming to every area of human endeavor. As AI 79 80 81 82 83 84 85

86

87 88 89

Shane, supra note 14, at 58; Naaman Zhou, supra note 54. Shane, supra note 14, at 213. Id. at 24–27. Id. at 164–67. Id. at 75–76, 168–69, 197. Id. at 75–76, 137, 168–69, 197. Sean McGregor et al., FlareNet: A Deep Learning Framework for Solar Phenomena Prediction, paper presented at the 31st Conference on Neural Information Processing Systems, Long Beach, CA, Dec. 8, 2017, https:// dl4physicalsciences.github.io/files/nips_dlps_2017_5.pdf. Meredith Broussard aptly labels “the belief that technology is always the solution” as “technochauvinism.” See Broussard, supra note 3, at 7–9. Shane, supra note 14, at 234–35. See O’Neil, supra note 4; Toscano, supra note 4; Zuboff, supra note 4. Properly trained AI programs that accurately detect cancer cells can be a great boon to diagnosis. But one must still take care with respect to over-reliance on the AI program, especially until XAI is implemented such that the internal workings of the AI program are reviewable by people.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

393

techniques are applied to programs designed to address critical matters such as self-driving cars, medical diagnosis, decisionmaking for entitlements, judging disputes, and assessing sanctions (including sentencing or denying bail), important principles and human values are at stake, including transparency of decisionmaking. Perhaps the biggest and arguably most disturbing impact of the application of AI programs is with respect to social media where they are used not only to sell us products, but also to control our social experiences online, to affect our moods, and even to shape our ideas in ways that are far from obvious.90 While we should not travel the path of Dune and prohibit the making of any “machine in the likeness of a human mind,”91 we should take great care in granting AI programs significant roles in discretionary decisionmaking.92 If we do not understand how an AI program is making decisions, we cannot cross examine it. If we do not understand how the AI program works inside, we cannot be sure that it is not missing something very important. AI techniques should be used as a tool and an aid to create sophisticated, effective programs, but the impacts on society, culture, and humanity itself through its use in robotics and in important decisionmaking models, and in programs that have broad impacts in social media need to be managed. We can collectively manage AI programs only if we appreciate both their power and the limits of AI techniques so that we can design appropriate legal structures to fit the wide deployment of AI techniques both as used today and as will be used in the future.

ii. implications of intellectual property social justice for ip protection for ai programs AI programs are different from other technologies insofar as they are broadly transformative and widely and deeply intrusive into human interactions and activities in ways unmatched by previous technologies. Traditional categories of IP and approaches to protecting IP are not up to the task of protecting both the creators of the AI intellectual property and protecting the interests of users and the public more generally. Consequently, special care needs to be taken with respect to providing IP protection to AI programs and implementations of those programs in myriad settings now being subjected to AI programs. Applying IP social justice (IP-SJ) to issues concerning intellectual property protection for AI programs demonstrates that the nature of AI, as used in this chapter to refer to self-learning or machine learning algorithms, strongly suggests that sui generis IP protection for AI programs would provide the best means to serve the public with respect to IP for AI. Furthermore, application of IP-SJ principles would require that no IP protection be given for AI programs unless they meet explainable AI (XAI)93 standards so as to render them sufficiently transparent as to be subject to meaningful examination and control.94 Meaningful examination is necessary 90 91 92

93 94

Social Dilemma, Netflix film, 2020; Lanier, supra note 4. Frank Herbert, Dune (1965). Further exploration of this principle is beyond the scope of this chapter insofar as this chapter focuses on IP protection for AI implementations, not on whether certain sorts of uses should be off-limits for AI implementations more generally, e.g., predictive policing or setting bail. Julia Angwin et al., Machine Bias, May 23, 2016, https://www .propublica.org/article/machine-bias-risk-assessments-in-criminal-sentencing. COMPAS, the subject of the ProPublica study, has been studied, debated, and modified repeatedly in the succeeding years since the publication in 2016. Engaging in the merits of that debate is not within the scope of this chapter. See Branting, supra note 11; Cliff Kuang, Can AI Be Taught to Explain Itself, N.Y. Times, Nov. 21, 2017. Perhaps there is a subset of programs that use AI where general copyright or trade secret protection would be acceptable, e.g., video games or other low-risk or low impact settings (although any such interactive setting can be

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

394

Steven D. Jamar

both for control of dangerous consequences and for teaching new techniques and to reveal to human understanding new information AI programs may have learned. The nature of and value of XAI has been explained by AI expert L. Karl Branting as follows: [An AI] algorithm doesn’t become explainable when an engineer declares that it’s inner workings are now visible, but rather when users show that they actually understand the output in terms of their objectives. XAI is more a human factors issue than an engineering issue, at least in decision-support applications. An amazing amount of ingenuity has gone into to making AI computations more transparent. One approach is “attention networks,” NNs [neural networks] that can display the relative importance of inputs or of intermediate features. For example, such a network could explain a “cat” classification by highlighting ears and whiskers in the input image. Another approach is to concurrently train transparent and opaque models in order to maximize some combination of accuracy and transparency. Another is to create a comprehensible local approximation of the actual incomprehensible model. My own view is that we don’t need to know exactly what is going on in a human expert’s nervous system that enables them to reach an answer as long as they can justify their judgment in terms that can guide our choices and understanding of our situation. Similarly, exactly what steps an algorithm takes are often unimportant as long as the conclusion can be justified in terms that are institutionally valid or that are useful to the user. Of course, this position is appropriate for decision support applications – my current interest – not, say, aircraft control systems.95

Under IP-SJ, the decision as to whether to grant protection to certain types of creative intellectual endeavor requires balancing the interests of those who do not own the property (including users, others who benefit from the intellectual property, and the public generally, for example with respect to reliable information and voting systems) with the interests of the owners of the intellectual creations.96 The balance advanced by IP-SJ originates in the Constitution’s grant of power to Congress to provide inventors and authors with patents and copyrights, “To promote the Progress of Science and useful Arts.” Recognizing the value of such rights, the Constitution limits the power of Congress to grant these rights by requiring that any patents or copyrights be for “limited times.” If “we the people” are to benefit from the fruits of intellectual property, then access, inclusion, and empowerment, especially for historically and currently marginalized communities, must be woven into the fabric of the intellectual property law and administration. Nonowners must have access to the intellectual property on fair and equitable terms, must be included in the calculus of granting rights without inequitable barriers to inclusion, and must be empowered to exploit their “writings and inventions” as well as to exploit, on fair, reasonable, and equitable terms, the IP owned by others. These concerns apply to all IP including AI IP. As explained immediately below, AI programs do not fit well within traditional intellectual property protection categories because the nature of what AI programs do and how they do it was not what traditional IP was developed to handle.97 When applied to AI programs, traditional IP

95 96

97

designed (and indeed is designed) to affect the user’s behavior if only to keep the person’s attention to keep playing the game), but a properly created uniform sui generis IP would account for the broad range of implementations adequately to avoid the use of any other IP protection. Quote from L. Karl Branting, Facebook, Feb. 29, 2020. Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Daryl Lim, AI & IP: Innovation & Creativity in an Age of Accelerated Change, 52 Akron L. Rev. 813 (2018), https:// papers.ssrn.com/sol3/papers.cfm?abstract_id=3369200 (highlighting problems with applying existing IP law to AI programs and suggesting solutions).

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

395

favors interests that run counter to social justice concerns of privacy, access, inclusion, and empowerment especially with respect to critical matters like medical decisionmaking; access to accurate information; equal, nonbiased, nondiscriminatory treatment for a wide range of activities; and more.98 A. Patents Patents are granted to novel, nonobvious, useful inventions or discoveries of many types including machines, manufactures, compositions of matter (e.g. drugs), and certain processes (e.g., how to cure rubber, but not ordinary recipes or formulas like how to bake chocolate chip cookies).99 Software is patent eligible under United States law provided certain fairly strict requirements are met. Software can often fall under what in United States Patent and Trademark Office (USPTO) parlance are called “judicial exceptions,” which essentially means abstract ideas, laws of nature, and natural phenomena which are “the basic tools of scientific and technological work.”100 But software used in some implementation may be patented as part of that use. As described by the USPTO in the Manual of Patent Examining Procedure (MPEP): The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself, or a patent-eligible application of the judicial exception. See Alice Corp., 573 U.S. at 217–18, 110 USPQ2d at 1981 [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014)] (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961 [Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)]) . . . The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). Id. If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. Id. citing Mayo, 566 U.S. at 72–73, 101 USPQ2d at 1966). The Supreme Court has described the second part of the test as the “search for an ‘inventive concept.’” Alice Corp., 573 U.S. at 217–18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72–73, 101 USPQ2d at 1966).101

A computer program that employs AI techniques in software being used in a way that meets the Mayo/Alice test may qualify as a novel and useful work and qualify for patentability under 98

99

100

101

For a more general examination of broader legal problems posed by AI, see Richard Kemp, Legal Aspects of Artificial Intelligence (Sept. 2018), http://www.kempitlaw.com/wp-content/uploads/2018/09/Legal-Aspects-of-AI-Kemp-IT-Lawv2.0-Sep-2018.pdf; Corrine Cath, Governing Artificial Intelligence: Ethical, Legal and Technical Opportunities and Challenges, Nov. 28, 2018, https://www.ncbi.nlm.nih.gov/pmc/articles/PMC6191666/; and the ongoing dialogue in the blog devoted to AI & the law, Law and AI: A Blog Devoted to Examining the Law of Artificial Intelligence, AI in Law, and AI Policy, http://www.lawandai.com/. See generally, The Cambridge Handbook of the Law of Algorithms (Woodrow Barfield, editor, 2021). 35 U.S.C. § 101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Lateef Mtima, What Is Intellectual Property (And Why Should You Care About It Anyway?) – A Layperson’s Guide to Intellectual Property Law, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). USPTO Manual of Patent Examining Procedure (9th rev. ed. 2020) § 2106, https://www.uspto.gov/web/offices/pac/ mpep/s2106.html. Id.; Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 101 USPQ 2d 1961, 1965 (2012); Jason Tashea, Are Software Patents About to Make a Comeback? Revised Guidance May Do Just That, ABA J., Jan. 11, 2019, https://www.abajournal.com/news/article/are-softwarepatents-about-to-make-a-comeback-uspto-proposes-rule-change-that-may-do-just-that. For an older work providing some useful perspective, see Julie E. Cohen & Mark A. Lemley, Patent Scope and Innovation in the Software Industry, 89 Cal. L. Rev. 1 (2001).

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

396

Steven D. Jamar

§ 101. However, even if an AI program is patent eligible under § 101 and the Mayo/Alice test, a patent will not be granted unless the application for the patent meets the Patent Act’s §112 requirement of enablement.102 The enablement requirement is met when the invention specification (explaining what the invention is and what the patent is seeking to cover) in the patent application describes the invention and the “manner and process of making and using it” such that a “person skilled in the art” will know how to make and use the invention.103 The enablement or disclosure requirement is how the central bargain of patent law is effectuated: The federal patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years.104

Exactly how to meet the enablement requirement with respect to an AI program is problematic because for any sophisticated self-learning AI program, just how it makes its decisions or predictions that enable the AI programs to identify a face or recommend bail or parole or employment is often not known or even knowable.105 Thus, a core aspect of the patent regime, that the invention is taught and shared with the public in exchange for the grant of exclusive exploitive rights for 20 years, would seem to fail. Merely describing the AI techniques used would not pass the Mayo/Alice test. Diving deeply into the program’s processes possibly would, but for a self-learning program that actually modifies how it works, as any sophisticated RNN or GAN does, the enablement requirement presents serious problems. Consequently, a sophisticated AI program that is not XAI (explainable AI) compliant should not be patented for lack of compliance with the enablement requirement even if it otherwise passes the subject matter test for software patents generally. Or put another way, patent enablement should be interpreted to require XAI programs for any AI implementation. If the program is a simple Markov chain, then perhaps it is already XAI compliant, but for RNN or GAN and other sophisticated and complex AI programs, more would be required. Taking into account the complexity of AI programs generally, their ubiquity, and their potentially serious impacts, plus the difficulty of obtaining a patent for software, a sui generis regime of protection for AI programs is warranted. IP-SJ ideas support this conclusion and a general skepticism about patent protection for AI programs because, absent full enablement, access and empowerment interests are not met. Granting a relatively few powerful AI programs patent protection could cement current power arrangements or make them even more permanent because even after today’s AI program patent expires, the companies will have moved on to improvements and later, better ones. B. Copyrights The United States and the rest of the world made a mistake half a century ago when, instead of creating sui generis IP protection for software (as was done for mask works106) because of its 102

103 104 105 106

35 U.S.C. § 112. The USPTO has addressed the problem of patenting AI programs. See https://www.uspto.gov/ initiatives/artificial-intelligence and USPTO, Public Views on Artificial Intelligence and Intellectual Property, USPTO, Oct. 2020, https://www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-05.pdf; in January 2019, the USPTO held an AI IP policy conference. The full recordings of the conference may be viewed at https://www.uspto.gov/about-us/events/artificial-intelligence-intellectual-property-policy-considerations. Id. Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 150–51 (1989). Shane, supra note 14, at ch. 3. 17 U.S.C. ch.9.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

397

dissimilarity to typical copyrighted works like physical books, films, pictures, and music,107 software was treated as copyrightable subject matter. Software is inherently functional and unlike all other types of copyrighted works cannot be read or otherwise experienced in itself. Thus, unlike a book or film or music which instructs by accessing the thing itself, software does not. Furthermore, software is fundamentally utilitarian and functional, unlike most forms of copyrighted works. As explained by Professor Lateef Mtima: As numerous commentators have observed, the “uneasy fit” of computer software programs into the copyright regime is rooted in the very nature of software programs as a socially useful form of intellectual property. Unlike the artistic works traditionally protected by the copyright law, such as novels and songs, software programs are primarily utilitarian in nature, meaning that the salient purpose of a software program is to undertake a task as opposed to expressing aesthetic ideas. Thus, the social policy goals of the copyright law–the stimulation of aesthetic interpretation, expression, and cultural advancement and enlightenment–are not immediately compatible with the utilitarian nature of and concomitant benefits presented by computer software programs. Further, the innately digital format of software programs is directly antagonistic to the specific author incentive mechanism employed by the copyright regime. The secular incentives provided to copyright holders under the copyright law are embodied within the enumerated exclusive rights–that is, the express reservation of specific uses of a copyrighted work to the copyright holder. These exclusive rights include the right to reproduce and/or distribute the copyrighted work, as well as the right to create derivative versions of the work. Because works in digital format are easily duplicated, distributed, and/or revised, however, it is extremely difficult to enforce even the most fundamental exclusive rights and protections afforded to software developers under the copyright law.108

As with sculptural works with functional aspects and architectural works, the utilitarian, functional nature of software has led to many problems in the case law and led to special limitations with respect to copyrights in software that to a degree address the functional concerns.109 However, unlike three dimensional works and architecture which have visible and palpable aesthetic or expressive features, software does not. The output from a program might, but the software itself does not. An AI program is, of course, software and suffers from the same copyright misfitting – only worse. For software that is rule-based, at least it is fixed.110 That is not true for machine learning AI programs. AI programs change as they learn or gain more experience. While an analogy can be made to the loosened fixation requirement for video games,111 AI programs are utilitarian in purpose even when used to play games and unlike those rule-based programs for earlier video games, AI programs are not static – they change in response to what they learn as people play the games. All self-learning algorithms and programs should be excluded from copyright for these technical reasons. But even if they are not, their difference from other programs and technologies should be handled through sui generis protection, not through yet another inappropriate and damaging squeeze of ill-fitting utilitarian technology into copyright. 107

Stephen Breyer, The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies, and Computer Programs, 84 Harv. L. Rev. 281 (1970); Pamela Samuelson, The Uneasy Case for Software Copyrights Revisited, 79 G. W. L. Rev. 1746 (2011). 108 Lateef Mtima, So Dark the CON(TU) of Man: The Quest for a Derivative Work Right in Section 117, 70 U. Pitt. L. Rev. 1 (2008). 109 17 U.S.C. § 117 (authorizes owners of a copy of a software program to maintain or repair it or to make what amounts to derivative works to adapt the program to fit the owner’s particular needs). 110 17 U.S.C. §§ 101, 102 (copyright fixation requirement). 111 See Williams Electronics., Inc. v. Artic Int’l, Inc., 685 F.2d 870 (3d Cir. 1982).

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

398

Steven D. Jamar

C. Trade secrets Trade secret protection is currently the IP of choice for AI programs for obvious reasons. In a way this harks back to the first decades of computers and software during which much of the protection was done through trade secrets and limiting physical access especially in the time before computers were networked through the Internet.112 That seems to be where we are now with AI programs. The IP-SJ based policy reasons for not granting trade secret protection to AI programs are strong.113 AI programs incorporate the biases inherent in the data on which they were trained. Bias is often illegal and even when it is not, for weighty matters such as employment, bail, sentencing, parole,114 medical treatment, education, financial support such as loans, and more, racial, ethnic, gender, religious, national origin, skin color, etc., bias should not be enabled by AI programs. If we cannot know what the AI program is doing, if it is not transparent and explainable, then bias can exist even when the data is attempted to be scrubbed of bias.115 Transparency concerns extend beyond bias. Some critical matters, such a medical diagnosis and treatment, simply cannot be left to machines, even artificially intelligent ones, unless we understand what they are doing. The potential for error may be high even if the AI program is just used as an aid. Self-driving cars depend on AI programs. But the AI programs are not good enough in the real world where the stakes are so high. To get the societal benefits of AI programs, which promise to be considerable, and to insure that everyone benefits from AI programs, AI programs cannot be allowed to be controlled by a few who exploit it and protect it under trade secret law. This does not mean that AI programs should not receive some sort of intellectual property protection. It simply means that any protection given must take into account the unique nature of AI programs and the strong society and social justice interest in regulating this field. We need IP designed specifically for the challenges presented by AI programs.

iii. recommendations IP regulation for AI programs should be done at the federal level and should be sui generis.116 A sui generis AI programs IP protection scheme should preempt all state law and supersede all federal law with respect to intellectual property protection for AI programs. While delineating

112

113

114

115

116

See Peter S. Menell, Envisioning Copyright Law’s Digital Future, 46 N.Y.L. Sch. L. Rev. 63,74 (2002–03); Greg R. Vetter, The Collaborative Integrity of Open Source Software, 2004 Utah L. Rev. 563 (2004). Taylor R. Moore, Trade Secrets and Algorithms as Barriers to Social Justice, Center for Democracy & Technology, Aug. 3, 2017, https://cdt.org/insights/trade-secrets-and-algorithms-as-barriers-to-social-justice/; see also Jamar, supra note 8, (sketching some IP-SJ issues in the trade secret context). I. Andrew Lee Park, Injustice Ex Machina: Predictive Algorithms in Criminal Sentencing, Law Meets World, Feb. 19, 2019, https://www.uclalawreview.org/injustice-ex-machina-predictive-algorithms-in-criminal-sentencing/. Dan Robitzskid, A New Algorithm Trains AI to Erase Its Biases, Futurism, Jan. 29, 2019, , https://futurism.com/ algorithm-trains-ai-to-erase-biases. The National Institute of Standards and Technology (NIST) is developing a Congressionally mandated AI Risk Management Framework which is designed to provide guidelines on best practices for AI implementations. The process has resulted in NIST publishing an AI Risk Management Framework concept paper on which NIST is accepting input leading to workshops on the framework scheduled in 2022. See https://www.nist.gov/itl/ai-risk-management-framework. See generally Amanda Levendowski, How Copyright Law Can Fix Artificial Intelligence’s Implicit Bias Problem, https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3024938; Lateef Mtima, Digital Tools and Copyright Clay: Restoring Artist/Audience Symbiosis, 28 Whittier L. Rev. 104–29 (2018).

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

Social Justice Perspective on IP Protection for AI Programs

399

the full contours of such protection is beyond the reach of this chapter (and this author), IP-SJ informs some of the contours of it. IP protection should not be extended to AI programs doing dangerous or very important work such as medical diagnosis,117 facial recognition, or driving a car unless the AI program is fully transparent or XAI compliant. Even in nonintrinsically important matters such as online shopping, online searching, social media interactions, and other settings, important privacy concerns arise from the use of AI programs gobbling up the data points from each interaction. The acquisition, accumulation, or use of user data by the AI programs in such settings should not be afforded IP protection unless they are XAI compliant such that users and regulators can effectively understand and make judgments about which sorts of intrusions should be allowed or which should be limited. The social justice interests in privacy with its attendant effects on access, inclusion, and empowerment through control of information and communication are simply too important to allow them to be unchecked and unregulated through the everexpanding uses of this new, powerful technology. For AI programs doing less important things, such as playing Go, suggesting words in text messages, completing search terms, or recognizing sheep in photos, XAI may not need to be required as a condition of granting whatever sui generis IP protection is developed provided clear demarcations of software functions are possible and provided appropriate disclosures and limitations are included in the overall regime.118 Some restrictions on AI programs should be adopted to protect user privacy regardless of IP protected status.119 Even if IP protection is granted, trade secret protection should be removed to protect privacy and to help protect against encoding bias in AI applications. As with privacy, transparency as to training data, use of data, and results of use should be required to guard against bias (and worse), regardless of IP status of the AI program. These sorts of regulations should both be a condition of obtaining IP protection and for regulating AI applications even if IP protection is not sought or obtained. A Federal AI Registration, Privacy, and Intellectual Property Protection Act (FAIRPIPPA) should include the following attributes: 1. Federal preemption of all state and local IP with respect to AI programs; 2. Limited time period for protection (10 years); 3. The program must be explainable AI (XAI) compliant (the legal demands of what constitutes XAI compliance may vary with the nature of what the program is doing); 4. Exclusion of any AI program or any AI-dependent program from state and federal copyright, patent, trade secret or any other sort of federal or state IP protection; 5. Registration, disclosure, and deposit of the program in source and object code (with some provisions for AI programs themselves changing as they learn); 6. Disclosure of the AI techniques used; 7. Disclosure of data used to train the AI model; 117

118

119

See Zeitchik, supra note 64. This program may be XAI compliant if we know the training data set, know generally what is being seen (some patterns not visible to humans), and can verify its degree of accuracy so that it can be used by people in making the actual decisions going forward. For very discrete applications with narrow goals, XAI may be relatively easy to achieve. For AI in social media platforms the problem may be much greater. But even if that is achievable, we would be better served by a sui generis approach that takes all the interests into account than providing current IP protections to this world-changing technology. I doubt that such clear demarcations can be made. If a clear demarcation between the important-function AI programs and other AI programs cannot be developed, then no IP protection should be granted to any non-XAI compliant program. See California Consumer Privacy Act of 2018, Cal. Civ. Code, §§ 1798.100–1798.199.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

400

Steven D. Jamar

8. Representations that the AI program is free from bias on the basis of gender, race, ethnicity, color, national origin, personal appearance, gender identity, sexual orientation, religion, and such other personal attributes that AI may detect or otherwise use. To be protected under the FAIRPIPPA, the foregoing representations must be made whenever the AI program is used for certain functions including: a. Entitlement to public and private benefits such as pensions, social security, Medicare, Medicaid, etc.; b. Healthcare; c. Actions that can result in sanctions or limitations of liberty, especially with respect to criminal law such as bail, sentencing, assignment to prison, and with respect to travel such as screening for access to common carriers such as airlines, ships, trains, public transportation, and other ground transportation; d. Employment; e. Education; f. Credit; g. Housing; h. Voting and other civic activities such as holding office; i. Insurance; and j. Other benefits or screenings for public or private purposes.

conclusion Using AI techniques, a computer program can be very valuable in almost any setting, including those with high stakes like medical diagnosis, autonomous (including partially autonomous) vehicles, bail, sentencing, employment, security screening, and more. But leaving AI as a decider unmediated by human decisionmakers is a significant problem for all the reasons noted above. Granting or withholding IP protection, even sui generis protection, should be conditioned on transparency and XAI compliance for all AI programs used in settings affecting liberty, privacy, equality, equitable access, inclusion, and broad-based empowerment of members of society. As this next disruptive force, application of AI programs in innumerable settings, permeates our culture, an exclusive federal sui generis IP protection scheme for AI applications should be developed and implemented to balance the values served by granting property rights in intellectual property with other interests of the public in the effects of that property and all stakeholders including users and those otherwise affected by it with a particular eye to insure equitable access, inclusion, and empowerment for all.

https://doi.org/10.1017/9781108697613.025 Published online by Cambridge University Press

part vi

Intellectual Property Social Justice in Global Perspective: Issues in Gender and Development Disparity

https://doi.org/10.1017/9781108697613.026 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.026 Published online by Cambridge University Press

19 Intellectual Property Social Justice on the International Plane Zehra Betul Ayranci

I.

Major Institutions A. United Nations Development Programme (UNDP) B. World Trade Organization (WTO) C. World Intellectual Property Office (WIPO) D. The United Nations Educational, Scientific and Cultural Organization (UNESCO) E. The European Union II. Major Legal Instruments A. The Vienna Convention on the Law of Treaties (VCLT) B. Legal Instruments Concerning Human Rights, Culture, and Identity C. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) D. Major International Legal Instruments Specifically Addressing Copyrights, Patents, and Trademarks III. Key IP-SJ Challenges Under the International Status Quo A. Consensus Among Countries B. Interpretation of International Norms and Discretion in Domestic Policymaking C. Tracing the Application of International Norms and Their Impact on Economic Performance D. Impact Assessment: Tracking Compliance and Noncompliance by Country Conclusion

page 406 406 407 411 412 413 415 415 417 418 419 427 428 429 430 431 434

Geography is destiny. – Unknown

Statements tying geography to destiny reflect a deterministic idea of politics arising from early theories of geopolitics. “Geography is destiny” captures the idea that certain geographical regions have strategic, economic, and political advantages. The epigraph also extends beyond states to the truism that not all individuals and communities have the same opportunity to have

403 https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

404

Zehra Betul Ayranci

access to resources,1 to contribute to the global economy of innovation,2 and to benefit from the global cumulative wealth. In some areas, it is more self-evident that the benefit-sharing systems are “a kind of lottery where the luckiest individuals and populations participate and win a portion of the benefits and others, also in great need but without similar resources, are left out of the process completely.”3 Times of challenge, such as the global COVID-19 pandemic, reveal the striking disparity among countries and nations,4 as well as within geographical regions in one country and groups in one nation. In a world with wide disparities, social justice demands reorientation of the predominant policy and legal instruments toward more equitable access and benefit sharing mechanisms on a universal level.5 Such demands for social justice are no less relevant to the intellectual property regime than any other areas of law. In other words, the disparities arising from certain members of global society enjoying a “head start”6 in acting upon ideas requires, at a minimum, a mechanism to guarantee the disadvantaged members access to the materials and tools essential to participation in the intellectual property system. Such a system could be effective and sustainable if designed and enforced as using access, inclusion, and empowerment

1

2

3

4

5

6

UNDP Human Development reports are useful resources to see the disparities at the global, regional, national, and subnational levels over the years, giving a preview of trends over the years and showing the progress made in eradicating poverty in its various forms. See, e.g., Global Multidimensional Poverty Index 2019: Illuminating Inequalities, http://hdr .undp.org/sites/default/files/mpi_2019_publication.pdf (finding that 1.3 billion people across 101 countries are “multidimensionally poor” lacking housing, electricity, drinking water, sanitation, cooking fuel, education, nutrition and health, at all or at sufficient levels. The report further demonstrates the trends, e.g., that of India lifting 271 million people out of poverty in a decade, while in Bangladesh, the number is 19 million). One obvious takeaway is the need to diversify the poverty measures to assess the issues properly. Consequently, refocusing policies, readjusting the expectations and enhancing the cooperation among countries in implementing the development programs would help. World Intellectual Property Report (WIPR) 2019: The Geography of Innovation: Local Hotspots, Global Networks, https://www.wipo.int/edocs/pubdocs/en/wipo_pub_944_2019.pdf (examining the evolution of the geography of innovation over the past few decades, demonstrating that “innovation is increasingly global and intertwined,” and presenting case studies in autonomous vehicles and agricultural biotechnology as rapidly changing technological fields that complement the macro analysis of global trends). See generally McKinsey Global Institute, Globalization in Transition: The Future of Trade and Value Chains, Jan. 2019, https://www.mckinsey.com/~/media/mckinsey/featured%20insights/ innovation/globalization%20in%20transition%20the%20future%20of%20trade%20and%20value%20chains/mgi-global ization%20in%20transition-the-future-of-trade-and-value-chains-full-report.ashx. Louise Bernier, Justice in Genetics: Intellectual Property and Human Rights from a Cosmopolitan Liberal Perspective 13 (2010). See, e.g., World Bank, Poverty and Distributional Impacts of COVID-19: Potential Channels of Impact and Mitigating Policies, Apr. 16, 2020, https://www.worldbank.org/en/topic/poverty/brief/poverty-and-distributional-impacts-of-covid-19potential-channels-of-impact-and-mitigating-policies; Martin Wolf, Covid-19 Will Hit Developing Countries Hard, Financial Times, June 9, 2020, https://www.ft.com/content/31eb2686-a982-11ea-a766-7c300513fe47; Don Bambino et al., The Disproportionate Impact of COVID-19 on Racial and Ethnic Minorities in the United States, 72 Clin. Infect. Dis. 703 (2020), https://doi.org/10.1093/cid/ciaa815; Maria Godoy & Daniel Wood, What Do Coronavirus Racial Disparities Look Like State By State?, NPR, May 30, 2020, https://www.npr.org/sections/health-shots/2020/05/30/ 865413079/what-do-coronavirus-racial-disparities-look-like-state-by-state. See Charles R. Beitz, Social and Cosmopolitan Liberalism, 75 Int’l Aff. 515 (1999) (stating that social justice at a base level means protecting the neediest and most vulnerable, regardless of their geographical placement). Paul Belleflamme & Martin Peitz, Digital Piracy: Theory, in Oxford Handbook of the Digital Economy 489, 490–91 (Martin Peitz & Joel Waldfogel eds., 2012). See also Lateef Mtima, The Idea Exclusions in Intellectual Property Law, 28 Texas Intell. Prop. L. J. 343, 380, 384 (2020) (discussing how the judicial exceptions which preclude IP protection for the ideas embodied within IP works preserve opportunities for marginalized creatives, who typically lack the resources to win the first-to-publish “professionalization race,” to undertake their own “follow on” expressive development of those ideas and thus produce additional works for society’s ultimate benefit). See generally Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

405

as pillars to fulfill the intellectual property social justice values to which any legitimate intellectual property regime inherently aspires.7 The first known reference to a sort of intellectual property rights occurred about 2,500 years ago, when chefs in the Greek colony of Sybaris were granted one year of monopolized profit for a unique dish that they had created.8 While that was primarily an after-the-fact reward and certainly anomalous in the development of intellectual property law, the birth of intellectual property protection proper in Europe several hundred years ago echoes that economic rationale and focus insofar as it has been perceived to be and often rationalized as a rational incentive for innovation and creation, and hence, presumably, for development.9 As the “appreciation of the value of IP rights in creativity . . . is fast-evolving and there is now widespread realization at the level of government that mechanisms need to be put in place to spur the use of IP rights,” the incentive function of IP is generally praised and finds proponents in developing countries, such as Kenya.10 The rising awareness of how intellectual property regimes and mechanisms could be valuable to foster creativity and innovation has fueled the demand for development and the search for the means thereto.11 As trade and economic activities, and also the intellectual property regime, evolve from local to international scope, the corresponding concerns have emerged to have equitable access to global IP and other opportunities, and inclusion in the accumulation of global wealth 7 8

9

10

11

Bruce Bugbee, Genesis of American Patent and Copyright Law 166 (1967). See Robert Cooter et al., The Importance of Law in Promoting Innovation and Growth, in Kaufman Taskforce on Law, Innovation and Growth, Rules for Growth: Promoting Innovation and Growth Through Legal Reform 3–4 (2011) (arguing innovation and creation as a main factor in development.) See also Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on Intellectual Property, Innovation, and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies ( 2012) (arguing in depth that innovation alone is not sufficient but effective exploitation of innovations in the marketplace is required for development). One of the major challenges is whether the incentive is a higher income, direct financial reward or monopoly over the rights pertaining to the product of creative or innovative labor. The answer could be guided and informed by individual circumstances. See, e.g., Speranta Dumitru, Are Rawlsians Entitled to Monopoly Rights?, in Intellectual Property and Theories of Justice 62–63, (Axel Gosseries et al. eds., 2008) (arguing that the Rawlsian theory of justice fails to compare the various forms of incentives and lacks “the appropriate tools to take into account the nature of intellectual products, the type of inequality implied by monopoly rights and the kind of competition talented people are engaged in”); but cf. Justin Hughes & Robert P. Merges, Copyright and Distributive Justice, 92 Notre Dame L. Rev. 516 (“[W]e believe that the available empirical evidence points toward copyright being an institution that does serve Rawlsian distributive justice. The case is not perfect, and there is . . . much room for improvement. But overall, we think when contemporary copyright is subjected to the thorough standard of Rawlsian fairness, it passes muster”); Robert P. Merges, Justifying Intellectual Property (2011). The grant of monopolies was often based on maintaining power and rewarding those in favor with the monarch and was extended to matters not related to intellectual property, e.g., The East India Company from England. Amina C. Mohamed, Kenyan Cabinet Secretary for Sports, Culture and Heritage, Keynote Speech at the “International Conference on Intellectual Property and Development – How to Benefit from the IP System”, Committee on Development and Intellectual Property of the World Intellectual Property Office, May 20, 2019, Geneva, Switzerland. See Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on Intellectual Property, Innovation, and Entrepreneurship, in Entrepreneurship and Innovation in Evolving Economies: The Role of Law (Megan Carpenter ed., 2012). See also Steven D. Jamar, A Lawyering Approach to Law and Development, 27 N.C. J. Int’l L. & Com’l Reg. 31 (2001). See generally Lateef Mtima, From Swords to Ploughshares: Towards a Unified Theory of Intellectual Property Social Justice, in Intellectual Property, Entrepreneurship and Social Justice (2015) (noting at 265 that “[i]ntellectual property social justice provides a context through which to consider the role of intellectual property protection in the total political economy . . . intellectual property protection is but one function within a complex and organic social system designed to promote the well-being of the societal body as whole”); Lateef Mtima, An Introduction to Intellectual Property Social Justice and Entrepreneurship: Civil Rights and Economic Empowerment for the 21st Century, in Intellectual Property, Entrepreneurship and Social Justice (2015) (defining “IP Empowerment” to encompass grassroots intellectual property education and social entrepreneurship as the 21st Century Civil Rights Economic Agenda).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

406

Zehra Betul Ayranci

through the equitable participation in the production and distribution of the resulting benefits to achieve intellectual property empowerment.12 This chapter explores the prospects for implementing the social justice precepts of equitable access, inclusion, and empowerment throughout the global IP ecosystem. An understanding of the principal international IP instruments, institutions, and processes is necessary in order to evaluate how they might be employed to promote social justice values and goals. This chapter seeks to provide (1) such an overview of the international agencies, treaties, and instruments which delineate the global IP regime, (2) a survey of the extent to which IP social justice (IP-SJ) principles are currently embodied in the most salient international instruments, institutions, and procedures, and (3) some indication as to how IP social justice principles and goals can be achieved by IP law and policymakers and social advocates on the IP operating on the international plane. Section I lists some of the major institutions on international and supranational level and explains their roles and current positions in the international set-up of intellectual property social justice. Section II evaluates from an IP social justice perspective some of the relevant international treaties including particular examples concerning copyright in the 1970s and 1980s and from 2010 to date. Section III uses examples from section II to summarize some of the basic, ongoing issues and demonstrates the current international community status with respect to its consensus, interpretation, discretion, compliance, and impact assessment regarding how IP social justice concerns play out in connection with some particular aspects of intellectual property. Section IV concludes by highlighting the need for inclusion of all voices in crafting the international IP regime and in establishing accountability for the extent to which that regime realizes IP-SJ values.

i. major institutions Intellectual property norms, with inherent public interest and social justice values, take effect through the diverse actors in the international, regional, local, and domestic intellectual property systems. These actors include creators, owners, and users of intellectual property, including legal, administrative, and enforcement bodies and instruments. This chapter focuses on the international plane, lists the major relevant institutions that create and enforce intellectual property standards, and attempts to explain their roles and where they stand in the IP-SJ firmament. The primary international institution is the United Nations. Most of the major actors, such as the World Intellectual Property Organization, are organs or agencies of the United Nations. Another major actor in this space, the World Trade Organization, is built around trade and is not part of the United Nations cluster of international bodies. Because of its importance, this chapter also includes discussion of the European Union (EU), a supranational regional organization. A. United Nations Development Programme (UNDP) The United Nations Development Programme (UNDP) is the United Nations’ global development network formed in 1965, with the mission to eradicate poverty, to reduce inequalities and exclusion, and to help countries to sustain development by developing policies, leadership skills, partnering abilities, institutional capabilities, and resilience.13 UNDP works in 170 countries and 12 13

United Nations Development Programme, http://www.undp.org/content/undp/en/home/about-us.html. See, e.g., UNDP, Strengthening Intellectual Property Area in Kazakhstan, Transparency Portal, Projects (2019), https://open.undp.org/projects/00124795 (the project being implemented by the government of Kazakhstan aims to draft a development concept for intellectual property area in the Republic of Kazakhstan and to draft an operational roadmap for the period from 2020 to 2025, and improving intellectual property competencies); Free Trade Agreements & Intellectual Property Rights: Thailand (Dec. 4, 2015), https://www.undp.org/content/undp/en/home/librarypage/hivaids/free-trade-agreements—intellectual-property-rights-medicines-access–thailand.html (the report of workshop on

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

407

territories. UNDP has authored a number of case studies and reports, and conducted projects concerning intellectual property and development.14 UNDP strives to enable civil society agents, especially through NGOs (nongovernmental organizations) and governmental actors to implement its goals of addressing inequalities and injustice. To that end, the UNDP issued its ambitious Millennium Development Goals (MDGs) Acceleration Framework as a major attempt in supporting disaggregation, including empowering local actors to use the MDGs to call attention to lagging targets and communities. Unfortunately, in general, achievement of the MDG’s goals has not been widespread.15 UNDP is not an institutional bureaucracy in a traditional sense, but rather is a network of people and organizations mapping the status quo, analyzing how intellectual property and trade policies affect disempowered or marginalized people, and developing strategies to be implemented by national governments to promote access, inclusion, and empowerment values in domestic law and administrative processes. In recent decades, intellectual property has been a significant part of its work. B. World Trade Organization (WTO) The changing economic and cooperative nature of global society has transformed the nature of international intellectual property laws, policies, institutions, and enforcement mechanisms.16

14

15

16

“Thailand National Technical Consultation on Free Trade Agreements and Intellectual Property Rights: Implications for Access to Medicines” held in Bangkok, Thailand in 2005), Intellectual Property Rights and Access to Affordable ARVs in China, Dec. 4, 2015, https://www.undp.org/content/undp/en/home/librarypage/hiv-aids/intellectual-propertyrights-and-access-to-affordable-arvs-in-ch.html (documenting the recent developments, opportunities and challenges in intellectual property rights and access to affordable medicines in China, mapping the epidemiological situations on HIV and Hepatitis B in China and the national response to the problem of access to antiretrovirals (ARVs), analyzing the situation of local production and exports of finished ARVs and active pharmaceutical ingredients (APIs), highlighting the importance of flexibilities allowed under the Agreement on Trade-Related Aspects of Intellectual Property Rights and analyzing these flexibilities in China’s intellectual property regime, and discussing the role of civil society in improving prevention and treatment of HIV and access to ARVs); Gender Dimensions of Intellectual Property and Traditional Medicinal Knowledge, Dec. 8, 2015, https://www.undp.org/content/undp/en/home/librarypage/envir onment-energy/ecosystems_and_biodiversity/gender-dimensions-of-intellectual-property-and-traditional-medicinalknowledge.html (outlining the debates on intellectual property protection vis-à-vis other systems for protecting the communal nature of traditional medicinal plant knowledge, using a gender lens to understand how intellectual property and trade policies affect disempowered people, particularly women and men whose livelihoods depend on the collection and harvesting of traditional medicines”). United Nations System Chief Executives Board for Coordination, Leaving No One Behind: Equality and NonDiscrimination at the Heart of Sustainable Development, A Shared United Nations System Framework for Action (2017), at 66, n.34, https://unsceb.org/sites/default/files/CEB%20equality%20framework-A4-web-rev3.pdf. See id. at 23 (acknowledging “the critique that, while important progress was achieved under the MDGs, too much attention was focused on statistical averages and national aggregates, obscuring the rise in inequalities and glossing over the persistence of structural discrimination. Where insufficient attention was paid to who was winning and who was losing from various types of development policies, efforts towards achieving MDGs often failed to address rising inequalities”). For an overview of the transformation of international IP law, see generally Peter Drahos & John Braithwaite, Information Feudalism: Who Owns the Knowledge Economy (2002); Keith E. Maskus, Intellectual Property Rights in the Global Economy (2000); Keith E. Maskus & Mohan Penubarti, How Trade-Related Are Intellectual Property Rights?, 39 J. Int’l Econ. 227–48 (1995); Susan K. Sell, Private Power, Public Law: The Globalization of Intellectual Property Rights (2003). The General Agreement on Tariffs and Trade (GATT) was the foundational international trade agreement from 1948 to 1995 when it was replaced by the WTO. See General Agreement on Tariffs and Trade, Oct. 30, 1947, 61 Stat. A-Il, T.I.A.S. 1700, 55 U.N.T.S. 194. See generally Debi Barker & Jerry Mander, The Invisible Government: The World Trade Organization: Global Government for the New Millennium? A Primer, in The International Forum on Globalization (1999); Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis (2d ed. 2003); 4 The GATT Uruguay Round: A Negotiating History (1986–1994) (Terence P. Stewart ed., 1999); Richard A. Posner, Intellectual Property: The Law and Economics Approach, 19 J. Econ. Persp. 57 (2005).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

408

Zehra Betul Ayranci

About a quarter of a century ago, intellectual property rights were first included in multilateral trade negotiations. These negotiations resulted in the adoption of the Agreement Establishing the World Trade Organization and its annex, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).17 The WTO is not formally part of the United Nations System nor a member of the United Nations Economic and Social Council (ECOSOC).18 However, WTO does have seats on the United Nations System Chief Executives’ Board for Coordination (CEB) that meets twice a year under the chairmanship of the United Nations Secretary-General, and reports to the ECOSOC.19 Therefore, the WTO has a say in the CEB agendas and the frameworks developed by the CEB for the United Nations System. Some of the items on the 2030 agenda20 and frameworks are relevant to implementation of the core values of IP-SJ.21 The 2030 Development Agenda places “[t]he special emphasis on those left furthest behind and the most excluded” in particular, “women and girls, children, youth, persons with disabilities, persons living with HIV/ AIDS, older persons, indigenous peoples, refugees, internally displaced persons and migrants, among others.” Among its global policy goals are to “[r]einforce national policy space to promote inequality-reducing measures[;] to correct policy incoherence between intellectual property and trade rules, public health, and human rights, including by implementing Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement on Public Health[;]” and to “[c]ooperate in technology transfer to promote greater equality.”22 While acknowledging that many of these

17

18

19

20

21 22

The United Nations Economic and Social Council (ECOSOC) is one of the six principal organs of the United Nations responsible for coordinating the economic and social fields of the organization. ECOSOC coordinates 15 specialized agencies, including the World Intellectual Property Office (WIPO), eight functional commissions and five regional commissions under its jurisdiction. See The World Trade Organization and the United Nations, https:// www.wto.org/english/thewto_e/coher_e/wto_un_e.htm (also stating that the WTO–UN relations are governed by the “Arrangements for Effective Cooperation with other Intergovernmental Organizations – Relations Between the WTO and the United Nations” signed on Nov. 15, 1995. The referred agreement is available at https://docs.wto.org/dol2fe/ Pages/SS/directdoc.aspx? filename=q:/WT/GC/W10.pdf &Open=True). The World Trade Organization and the United Nations, https://www.wto.org/english/thewto_e/coher_e/wto_un_e .htm (also stating that CEB is the designated authority for promoting coherence within the UN system and wider, and serves as the main instrument for executive heads to coordinate their actions and policies). G.A. Res. 70/1: Transforming Our World: The 2030 Agenda for Sustainable Development, U.N. Doc. A/Res/701/ (Oct. 21, 2015), https://www.un.org/en/development/desa/population/migration/generalassembly/docs/globalcompact/ A_RES_70_1_E.pdf. See also CEB, Leaving No One Behind: Equality and Non-Discrimination at the Heart of Sustainable Development, A Shared United Nations System Framework for Action 26 (2017) (stating that the 2030 Agenda “reaffirms the Doha Declaration on the TRIPS Agreement and Public Health, and affirms the right of developing countries to make use of flexibilities to protect public health and provide access to medicines for their populations. In addition, targets are set to encourage official development assistance (ODA) and financial flows, including foreign direct investment, to States where the need is greatest, in particular least developed countries, African countries, Small Island Developing States, and landlocked developing countries. Others will ensure enhanced representation and voice for developing countries in decision-making in global international economic and financial institutions”). Id. at vii (further stating that Member States have recognized that “rising inequalities within and among countries” and “enormous disparities of opportunity, wealth and power” as well as persistent “gender inequality” are “immense challenges” confronting the world today. In response, and building on the lessons of the Millennium Development Goals (MDGs), the 2030 Agenda puts at its heart the commitments to leave no one behind and to reach the furthest behind first. It aims not only to end poverty and hunger, but also “to combat inequalities within and among countries; to build peaceful, just and inclusive societies; [and] to protect human rights and promote gender equality and the empowerment of women and girls” and “to ensure that all human beings can fulfil their potential in dignity and equality and in a healthy environment”). Id. at 43. Id. at 44.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

409

areas are already a part of the policy and program support of various United Nations entities, the CEB asserts that it “can play a role in reviewing the overall package of support that the United Nations system is delivering.”23 Views and goals of the CEB’s framework can be considered as the WTO’s position, in order to keep the WTO accountable together with the CEB, on three grounds: First, the WTO has a say in the CEB meetings, therefore the outcome of the CEB meetings presumably reflects the WTO’s position unless the WTO explicitly dissents. Second, the particular CEB framework sets the TRIPS Agreement-related policies, which would require the WTO’s support and involvement. Finally, the “overall package of support” of the United Nations system could not exclude the WTO, the “only global international organization dealing with the rules of trade between nations,”24 categorized as one of the “related organizations”25 by the United Nations system. Skeptics validly view the WTO-governed “[e]conomic globalization”26 as more likely a threat than an opportunity, arguing that the widening gap between rich and poor is at least exacerbated by the global trading system.27 However, if studied regionally, international trade also appears to have been a strong engine of development for many countries, for example, in Asia.28 Further, the standardization that comes with the global trading system also provides opportunity to less developed countries to set safer working conditions, fair wage and payment levels, and technical and environmental standards. The WTO mechanisms can also be used to facilitate social justice values in international trade and in trade-related intellectual property protection. For instance, any WTO member country29 can challenge the rules or laws of another country as “trade barriers,”30 and the WTO has the authority to impose fines against offenders.31 This mechanism

23

24 25

26

27

28

29

30 31

United Nations System, Chief Executives Board for Coordination, World Trade Organization, https://www.unsceb .org/content/wto. Id. Barker & Mander, supra note 16, at 13; Lori Wallach & Michelle Sforza, Whose Trade Organization?: Corporate Globalization and the Erosion of Democracy (2000). See generally Marjorie Cohn, The World Trade Organization: Elevating Property Interests Above Human Rights, 29 Ga. J. Int’l & Comp. L. 427, 428 (2001) (further stating “the global transfer of economic and political power from national governments to multinational corporations is a disaster for human rights, the environment, social welfare, agriculture, food safety, workers’ rights, national sovereignty, and democracy” and analyzing a number of the WTO, decisions conflicting with “the WTO’s myth that everyone’s interests will be protected if trade is allowed to flourish unfettered” and the reasoning of the WTO decisions that have elevated intellectual property rights over the struck down protections for labor, the environment, food safety, and human rights as “trade barriers”). UNDP Human Development Report 2016, Human Development for Everyone 148 (2016), http://hdr.undp.org/en/ content/human-development-report-2016 (also acknowledging, however, that “trade rules – including their extension to intellectual property rights and investment protection treaties – tend to favour developed countries”). See the list of 164 members and 25 nonmember observers of the World Trade Organization, https://www.wto.org/ english/thewto_e/whatis_e/tif_e/org6_e.htm. In comparison, see the list of 195 member states of the United Nations, https://www.un.org/en/member-states/index.html and two nonmember observers of the United Nations, https://www .un.org/en/sections/member-states/non-member-states/index.html. WTO Agreement on Technical Barriers to Trade, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IA, The Results of the Uruguay Round of Multilateral Trade Negotiations: The Legal Texts 1 (1994), 33 I.L.M. 1226. See Understanding the WTO: Settling Disputes, https://www.wto.org/english/thewto_e/whatis_e/tif_e/disp1_e.htm. See supra note 28. One caveat is that some of the disempowered, developing or the least developed countries are not members but the observers of the World Trade Organization, including Algeria, Andorra, Azerbaijan, Bahamas, Belarus, Bhutan, Bosnia and Herzegovina, Comoros, Curaçao, Equatorial Guinea, Ethiopia, Iran, Iraq, Lebanese Republic, Libya, Sao Tomé and Principe, Serbia, Somalia, South Sudan, Syrian Arab Republic, Timor-Leste, Turkmenistan, and Uzbekistan. See generally Jayashree Watal, Intellectual Property Rights in the WTO and Developing Countries (3d ed. 2001) (providing a detailed understanding of how the WTO dispute settlement process has worked in matters involving the TRIPS Agreement and how it is likely to deal with new issues to arise).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

410

Zehra Betul Ayranci

could be used by the countries to gain access to the international trade, on fairer terms, and inclusion in the global wealth.32 The WTO is a complex organization and the rules it administers, including TRIPS, often provide special accommodations to developing countries, but more needs to be done. Proponent or skeptic, there is very little ground to deny the unavoidability of international trade in the age of information. In the days of the Internet and blurring borders, the fitting solution that a globalized economy and global community should aspire to achieve is the fairness, effectiveness and efficiency of international actors. With respect to the role of intellectual property in international trade, these goals can be achieved by assessing that role through the lens of IP-SJ. Such a perspective would help ensure the beneficial impact of intellectual property trade on development. As the United Nations acknowledges, “for developing countries, one of the most important global public goods would be a fair and well-functioning World Trade Organization.”33 With developing countries gaining negotiating power, “multilateral agreements can, despite their limitations, become a tool for fairer trade.”34 While aspiring to achieve fairer trade, trade-related intellectual property rights could and should be simultaneously taken into consideration. In this respect, the TRIPS Agreement urges the WTO and the WIPO to form a mutually supportive relationship, cognizant of the social justice obligations of the global intellectual property regime. The cooperation agreement between WTO and WIPO, dated 1996, provides for WIPO to assist the WTO members, and especially the developing country members, in the implementation of the TRIPS Agreement. The WTO–WIPO agreement articulates three substantive areas of cooperation: (i) laws and regulations, (ii) implementation of article 6ter of the Paris Convention, which protects the flags and emblems of states that are party to the Paris Convention, as well as the names and emblems of international intergovernmental organizations against unauthorized registration and use as trademarks,35 and (iii) legal-technical assistance to developing countries. If the international 32 33 34

35

See supra note 27, at 148. Id. Paris Convention for the Protection of Industrial Property, https://www.wipo.int/treaties/en/text.jsp?file_id=288514 (including article 6ter titled “Marks: Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations”). See also WTO Procedures for Notifying and Sharing Information: State Emblems, https://www.wto.org/english/tratop_e/trips_e/trips_notif7_sixter_e.htm. Convention Establishing the World Intellectual Property Organization (as amended on Sept. 28, 1979), https:// wipolex.wipo.int/en/text/283833. See WIPO Member States, https://www.wipo.int/members/en/. Interestingly, the Convention Establishing the WIPO includes “scientific discoveries” in the definition of “intellectual property” which is an area that does not seemingly belong to any of the usual categories of intellectual property protection. Scientific discoveries are defined as “the identification of phenomena, properties or laws of the material universe, not hitherto recognized and capable of verification” by the Geneva Treaty on the International Registration of Scientific Discoveries of 1978, article 1 paragraph (1)(i), https://www.wipo.int/edocs/pubdocs/en/wipo_pub_279.pdf. This treaty establishes a system for the international recording of scientific discoveries, that “(i) provides for the widest possible access to the recorded scientific discoveries, (ii) does not affect the free use of the ideas contained in recorded scientific discoveries, (iii) does not affect the freedom of the Contracting States to grant or not to grant rights to discoverers of recorded scientific discoveries and, where any Contracting State grants such rights, the freedom of such State to fix the conditions for and the contents of such rights.” The treaty does not address the practicality of this system, or how it will play out with the existing systems and methods such as subject matters of patents, designs and trade secrets. This treaty is not yet in force, as it has not yet reached the sufficient number of signatories. Article 17 of the treaty sets forth that initial entry into force is subject to 10 states having deposited their instruments of ratification or accession. So far, this prerequisite has not yet satisfied as the only countries that have signed, accessioned and/or ratified this treaty are Bulgaria, Cameroon, (former) Czechoslovakia, Hungary, Morocco, and (former) Soviet Union. A complete list of signatories is available at https://www.wipo.int/export/sites/www/treaties/en/documents/other_treat ies/gsd-parties.pdfhttps://www.wipo.int/export/sites/www/treaties/en/documents/other_treaties/gsd-parties.pdf.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

411

actors take particular care with respect to delivering on the latter in an accountable manner, international trade could see a fairer future, where the trade-related intellectual property rights enjoy fulfilling the inherent social justice values in practice. C. World Intellectual Property Office (WIPO) The World Intellectual Property Organization (WIPO) is the highest level international actor in the international intellectual property space, working, cooperating, and collaborating with the WTO and other international organizations to promote and coordinate intellectual property protection in the world. The WIPO, founded in 1967, is one of the 15 specialized agencies of the United Nations.36 The objectives of WIPO are twofold: (i) to promote intellectual property protection in the world through the cooperation among states, in collaboration, where appropriate, with any other international organizations; (ii) to ensure the administrative cooperation between the signatories to the WIPO-administered international treaties.37 With regard to each substantive area of intellectual property, WIPO functions through its committees that administer the relevant treaties. In the field of copyright and related rights, the Standing Committee on Copyright and Related Rights (SCCR) was established to examine matters of substantive law and harmonization of provisions among countries.38 Current matters of attention for the SCCR are the discussions on limitations on and exceptions to enforcement of copyrights, and broadcasting organizations. In the field of patents, the Standing Committee on the Law of Patents (SCP) was formed “to serve as a forum to discuss issues, facilitate coordination and provide guidance concerning the progressive international development of patent law.”39 Since 2011, the SCP has been discussing five substantive topics: (i) Exceptions and limitations to patent rights; (ii) Technology transfer; (iii) Quality of patents, including opposition systems; (iv) Confidentiality of communications between patent advisors and their clients; (v) Patents and health. In the field of trademarks, industrial designs and geographical indications, the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) is the relevant forum.40 36

37

38

39

40

Convention Establishing the World Intellectual Property Organization (as amended on Sept. 28, 1979) art. 3, https:// wipolex.wipo.int/en/text/283833. Standing Committee on Copyright and Related Rights (SCCR), https://www.wipo.int/policy/en/sccr/ (detailing that the SCCR “is composed of all member states of WIPO and/or of the Berne Union; and, as observers, certain member states of the United Nations (UN) which are non-members of WIPO and/or the Berne Union, as well as a number of intergovernmental and non-governmental organizations”). Standing Committee on the Law of Patents (SCP), https://www.wipo.int/policy/en/scp/ (stating that “[b]y dealing with clusters of interlocking issues rather than working in isolation on single issues, it is intended to provide member states with an effective mechanism for setting priorities and allocating resources, and ensure the coordination and continuity of interrelated, ongoing work. The [SCP] is composed of all member states of WIPO and/or of the Paris Union. As observers, certain member states of the UN, who are not members of WIPO and/or the Paris Union, as well as a number of accredited intergovernmental and non-governmental organizations also participate in the SCP”). Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), https:// www.wipo.int/policy/en/sct/ (explaining the SCT “was created in 1998 to serve as a forum to discuss issues, facilitate coordination and provide guidance on the progressive development of international law on trademarks, industrial designs and geographical indications, including the harmonization of national laws and procedures. Participation in the SCT is open to all member states of WIPO or the Paris Union for the Protection of Industrial Property as members. A special rule of procedure extends membership without the right to vote to the European Union. In addition, member states of the United Nations that are not members of WIPO or the Paris Union, intergovernmental organizations, and non-governmental organizations accredited with observer status at WIPO may participate in the Committee in an observer capacity”). The Institute for Intellectual Property and Social Justice, Inc. is one such organization. The founders and directors of IIPSJ are the editors of this book.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

412

Zehra Betul Ayranci

WIPO collaborates, cooperates, and coordinates with other actors within the United Nations system, with the WTO, with member states, and with various intergovernmental and nongovernmental organizations.41 As the highest level international actor in the international intellectual property space, WIPO can play a major role in helping to shape and implement a global IP-SJ agenda. WIPO can develop and undertake IP social justice awareness education, promote socially responsible interpretation, enforcement, and amendment of international IP treaties and instruments, facilitate technology transfer to developing nations in accordance with the TRIPS Agreement, and lead, sponsor, or support IP social justice-oriented initiatives, including public–private partnerships, such as the Accessible Books Consortium (ABC),42 the Access to Research for Development and Innovation (ARDI) program43 and the Patent Information Initiative for Medicines (Pat-INFORMED).44 Through such leadership, WIPO can help national governments to develop and implement national and international IP policies that serve the social justice obligations endemic to IP protection.45 D. The United Nations Educational, Scientific and Cultural Organization (UNESCO) The United Nations Educational, Scientific and Cultural Organization (UNESCO) is one of the specialized agencies of the United Nations, established in 1946, with the purpose “to contribute to peace and security by promoting international collaboration through education, science, and culture in order to propagate further universal respect for justice, the rule of law, and the human rights and fundamental freedoms.”46 UNESCO has a number of projects, case studies and reports at the intersection of intellectual property and international human rights,47 41

42

43

44

45

46

47

The Accessible Books Consortium, https://www.accessiblebooksconsortium.org/portal/en/ (stating that the ABC “includes organizations that represent people with print disabilities, such as the World Blind Union (WBU); libraries for the blind; standards bodies; and organizations representing authors, publishers and collective management organizations”). ARDI – Research for Innovation, https://www.wipo.int/ardi/en/ (explaining that the Access to Research for Development and Innovation (ARDI) program, coordinated by WIPO together with its partners in the publishing industry, aims to increase the availability of scientific and technical information in developing countries, and improve access to scholarly literature from diverse fields of science and technology). Pat-INFORMED – The Gateway to Medicine Patent Information, https://www.wipo.int/pat-informed/en/ (facilitating easy access to medicine patent information, by the global health community, particularly those involved in procurement of medicines. “The data is provided directly by the biopharmaceutical companies and hosted by WIPO”). See also How Better Access to Patent Information Can Facilitate Medicines Procurement, International Federation of Pharmaceutical Manufacturers & Associations (Geneva, 2019), https://www.ifpma.org/events-2/ifpma-roundtable-howbetter-access-to-patent-information-can-facilitate-medicines-procurement/. In fact, WIPO has recently promulgated a number of initiatives to address various problems of IP social injustice throughout the global IP regime. See, e.g., WIPO Development Agenda at https://www.wipo.int/ip-development/en/ agenda/; https://www.wipo.int/pct/en/news/2021/news_0043.html. These initiatives have been formulated to address specific problems of inequity, such as the gender imbalance in the IP ecosystem. See, e.g., Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries, ch. 23 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Constitution of the United Nations Educational, Scientific and Cultural Organization art.1, http://portal.unesco.org/ en/ev.php-URL_ID=15244&URL_DO=DO_TOPIC&URL_SECTION=201.html. See, e.g., UNESCO Projects as last updated in December 2019, UNESCO Transparency Portal, https://opendata .unesco.org/projects?activity_status=2; Memory of the World Register, and full list of the Memory of the World projects, http://www.unesco.org/new/en/communication-and-information/memory-of-the-world/projects/full-list-ofprojects/; the Lists of Intangible Cultural Heritage and the Register of Good Safeguarding Practices, including 549 elements of culture documented in 127 countries, https://ich.unesco.org/en/lists. See, e.g., J. Janewa Osei-Tutu, Intellectual Property, Social Justice, and Human Development: Empowering Female Entrepreneurs Through Trademark Law, ch. 20 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (exploring how the IP regime can be used toward the socio-economic empowerment of women in developing nations).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

413

with particular focus on educational, scientific and cultural policies. Indigenous communities, traditional knowledge and cultural expressions, and other areas of IP-SJ values appear as the principal focal points of UNESCO projects. UNESCO can play an important role in ensuring that the global IP regime functions in a manner consistent with the principles of equitable access, inclusion, and empowerment by compiling reports and preparing educational materials which instruct developing nations on the benefits of participation in the IP system and which inform developed nations as to the benefits of equitably inclusive IP policies which recognize and respect the interests of indigenous and marginalized groups and communities.48 UNESCO can and should be seen as a key actor, together with the WTO, WIPO, and other institutions overseeing human rights, intellectual property, and international trade policies, in order to achieve a holistic outlook on implementation and furtherance of the IP-SJ values. E. The European Union The European Union (EU) is not an international organization but a transnational one. Founded in 1993 when the Maastricht Treaty came into force, the modern EU has 27 Member States. With regard to norm-setting and enforcement power, individual European states, before the modern EU, once focused on national sovereignty and jurisdiction, and worried about being overwhelmed if they accepted another enforcement power, such as the United States’ power in regulating foreign behavior that has effects in the United States market. However, today the EU has no such concern.49 To the contrary, the EU is actively interested in regulating foreign behavior that has effects in the EU market and adopts legal instruments that have extraterritorial50 enforceability, such as the General Data Protection Regulation (GDPR)51 on data protection and privacy in the EU. The GDPR provides an international dimension of protection and enforcement which addresses the transfer of personal data generated inside the EU to others outside the EU. In addition, the EU Copyright Directive52 affects the liability of online service providers outside the EU. Another sort of transnational impact of an EU regulation arises from the Audiovisual Media Services Directive (AVMSD),53 which requires that 48

49

50

51

52

53

See generally Kal Raustiala, Does the Constitution Follow the Flag? 111–16 (2009); Alexander Layton & Angharad M. Parry, Extraterritorial Jurisdiction: European Responses, 26 Hous. J. Int’l L. 309 (2004) (noting at 322 that “the E.U. approach to extraterritoriality appears to be converging with that of [the] United States.” Id. at 319–20 observing that over time, the European Union embraced an implementation test, which is very similar to the effects test of the United States). See generally 46 Michael Akehurst, Jurisdiction in International Law, British Yearbook of International Law (1972–1973); Developments in the Law, Extraterritoriality, 124 Harv. L. Rev., 1226 (2010–2011). Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation) (Text with EEA relevance), OJ L119/1 (May 4, 2016), https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32016R0679&from=EN. Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (Text with EEA relevance). PE/ 51/2019/REV/1, OJ L 130, 17.5.2019, p. 92–125, https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri= CELEX:32019L0790&from=EN. Directive (EU) 2018/1808 of the European Parliament and of the Council of 14 November 2018 amending Directive 2010/13/EU on the coordination of certain provisions laid down by law, regulation or administrative action in Member States concerning the provision of audiovisual media services (Audiovisual Media Services Directive) in view of changing market realities, PE/33/2018/REV/1, OJ L303 (Nov. 28, 2018) at 69–92, https://eur-lex.europa.eu/eli/dir/2018/ 1808/oj. For these concepts, see, e.g., William J. Talbott, Consequentialism and Human Rights, 8 Phil. Compass 1030, (2013); William J. Talbott, Which Rights Should Be Universal? (2005).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

414

Zehra Betul Ayranci

video on demand services which operate in the EU dedicate 30 percent of their catalogue to European works. The EU rules that are extraterritorial either in their nature or by their implementation, mainly use as their underlying conceptual bases the protective principle, the principle of universality, and consequentialism.54 The protective principle determines jurisdiction by reference to the national interest injured by the violation of law.55 The principle of universality determines jurisdiction by reference to the custody of the person committing the violation, as a matter of international public policy.56 Internationally, although the principle of universality finds common and frequent application in criminal law to allow jurisdiction over criminal acts of nonnationals,57 it can also be interpreted textually. The textual interpretation renders it possible to apply the principle of universality to violations of universal laws, and to allow jurisdiction over nonnationals where their act, including the nature of the violating act, justifies the repression of some types of violating act as a matter of international public policy. This could be a mechanism to ensure that the universal values of international public policy are protected, and the social justice promises of international institutions are delivered. In a way, it currently is being used as an enforcement mechanism, for example, in matters such as antitrust, privacy, data protection and data transfer across borders. This is to say, it could be utilized well beyond these areas and indeed extended to justify sanctioning foreign nationals for municipal IP-SJ violations. The EU could undertake to develop IP enforcement policies which directly address the continuing legacy of European colonialism. Among other things, EU leadership can support the adoption of limitations and exceptions to IP enforcement rights, in order to support the contemporary development goals of previously subject and now independent nation states. In this way, the EU can work to fulfill the unique obligations of its member states to transform the IP regime from a tool in support of colonial domination into a global IP system which fosters equitable access, inclusion, and empowerment for all nations, especially those whose development had been impeded by colonial rule.58 54

55 56

57

58

See generally Ian Brownlie, Principles of Public International Law (7th ed. 2008) (noting that nearly all states assume jurisdiction over aliens for acts done abroad that affect the security of the state (Nusselein v Belgian State, ILR 17 (1950)). Id. at 305. Id. (reporting the universality principle as first recognized in the Eichmann case, in which “Israel established jurisdiction to try Eichmann, formerly a German military officer, based on the law of nations. The court held that ‘[t]he State of Israel’s right to punish the Accused derives . . . from two cumulative sources: a universal source (pertaining to the whole of mankind) which vests the right to prosecute and punish crimes of this order in every state within the family of nations; and a specific or national source which gives the victim nation the right to try any who assault its existence.’” See Attorney General of the Government of Israel v Eichmann (1961) 36 I.L.R. 5 District Court of Jerusalem, at paras. 30–31. Of course, the former colonial powers can also apply their leverage to take advantage of the lesser bargaining power of developing nations. See, e.g., Marcela Palacio Puerta, The Role of Nonrightsholder Advocates and Academics in Achieving Social Justice Balance in Copyright: The Case of Colombia, ch. 22 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (discussing the US– Colombia bilateral Free Trade Agreement). See, e.g., Universal Declaration of Human Rights art. 27, G.A. Res. 217A, at 71, U.N. GAOR, 3d Sess., U.N. Doc A/810 (Dec. 12, 1948), (expressing: “[e]veryone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits,” and that “[e]veryone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author”). For the developing literature on the interrelation among human rights, international trade, intellectual property and international lawmaking, see generally, Peter Drahos, Intellectual Property and Human Rights, 3 Intell. Prop. Q. 349 (1999) (analyzing in depth Universal Declaration of Human Rights arts. 27. 1 & 27.2, International Covenant on Civil and Political Rights of 1966 (ICCPR), and International Covenant on Economic,

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

415

ii. major legal instruments This section summarizes positive international law, particularly some of the major international treaties which can provide intellectual property frameworks which implement inherent social justice values. Among the major treaties considered are the WTO and WIPO treaties. Complementary to the WTO and WIPO treaties, this chapter also addresses some aspects of international human rights treaties59 that directly address intellectual property and social justice norms. This section includes an explanation of the extent of compliance and noncompliance by states with various relevant treaties through a few concrete examples from the 1970s to 1980s and 2010s to 2020s. A. The Vienna Convention on the Law of Treaties (VCLT) Before diving into the substantive law, a few comments about interpretation of international intellectual property treaties. Interpretation of treaties is an overarching issue because the rules of international treaty interpretation can, and in fact do, support an approach to international norms of intellectual property that is conscious of the inherent public interest goals.60 The foundational rules of interpretation of treaties are the subject of the Vienna Convention on the Law of Treaties (VCLT),61 which essentially codified the customary public international law on interpretation of international treaties.62 Article 31 sets forth the general means of

59

60

61

62

Social and Cultural Rights of 1966 (ICESCR)); Winston P. Nagan, International Intellectual Property, Access to Health Care, and Human Rights: South Africa v. United States, 14 Fla. J. Int’l L. 155 (2002); Ernst-Ulrich Petersmann, Theories of Justice, Human Rights, and the Constitution of the International Markets, 37 Loyola L.A. L. Rev. 407 (2003); Laurence R. Helfer, Regime Shifting: The TRIPs Agreement and New Dynamics of International Intellectual Property Lawmaking, 29 Yale J. Int’l L. 1 (2004). International Human Rights Treaties increasingly provide the basis for effective IP-SJ activism and advocacy. See Krista L. Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook on Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (discussing the international efforts which successfully led to the adoption of the Treaty of Marrakesh). See generally Susy Frankel, The Object and Purpose of Intellectual Property (2019) (analyzing the object and purpose of international intellectual property law, and the relationship between intellectual property law, development goals and cultural objectives); Daniel J. Gervais and Susy Frankel, Plain Packaging and the Interpretation of the TRIPS Agreement, 46 Vand. J. Transnat’l L. 1149 (2013) (arguing that, in the trademark context, the fact that the principal rights of trademark owners under the TRIPS Agreement are rights to exclude others from using their mark (or “negative rights”) is not determinative of the issue but rather should inform the interpretation in light of the TRIPS Agreement’s object and purpose). Vienna Convention on the Law of Treaties arts. 31–32, May 23, 1969, 1115 U.N.T.S. 331, https://treaties.un.org/doc/ publication/unts/volume%201155/volume-1155-i-18232-english.pdf. WIPO Study on Limitations and Exceptions of Copyright and Related Rights in the Digital Environment, Standing Committee on Copyright and Related Rights Ninth Session (Geneva, 2003), at 5, https://www.wipo.int/edocs/mdocs/ copyright/en/sccr_9/sccr_9_7.pdf. Vienna Convention on the Law of Treaties arts. 31–32, May 23, 1969, 1115 U.N.T.S. 331, https://treaties.un.org/doc/ publication/unts/volume%201155/volume-1155-i-18232-english.pdf. Article 31 titled General Rule of Interpretation reads as follows: (1) A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose. (2) The context for the purpose of the interpretation of a treaty shall comprise, in addition to the text, including its preamble and annexes: (a) any agreement relating to the treaty which was made between all the parties in connection with the conclusion of the treaty; (b) any instrument which was made by one or more parties in connection with the conclusion of the treaty and accepted by the other parties as an instrument related to the treaty. (3) There shall be taken into account together with the context: (a) any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions; (b) any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation; (c) any relevant rules of international law applicable in the relations between the parties.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

416

Zehra Betul Ayranci

interpretation,63 and article 32 details the supplementary means of interpretation,64 focusing on the importance of object and purpose of the instrument when interpreting the treaties. Considering the objectives of various international legal instruments mapped in this section II, it is evident that their objectives and principles often acknowledge the inherent nature of social justice values in the field that they regulate, whether it is facilitating access to medicine, preserving and promoting cultural heritage and diversity, or other important social objectives. Because the VCLT guides to interpretation of all international agreements, it applies to treaties adopted under the auspices of WIPO.65 The VCLT also applies to interpretation of WTO agreements which expressly have adopted the VCLT rules for its dispute settlement process.66 Furthermore, WTO’s Doha Declaration expressly reiterated the importance of considering the object and purpose of a provision when interpreting the TRIPS Agreement.67 Interpretation method is a game-changer68 in that it can be used to honor the purview of the norm as well as to reach a result that balances the interests of the parties or favors one disputant over another as intended by the norm. It is also crucial for the stability, predictability and foreseeability of the international intellectual property norms and the international trading system.69 Therefore, 63

64

65

66

67

68

69

Id. Article 32 titled Supplementary Means of Interpretation states: (1) Recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, in order to confirm the meaning resulting from the application of article 31, or to determine the meaning when the interpretation according to article 31: (a) Leaves the meaning ambiguous or obscure; or (b) Leads to a result which is manifestly absurd or unreasonable. This is the case for both of the WIPO treaties that are incorporated in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), as well as for any WIPO treaties that are not incorporated in the TRIPS Agreement. The main WIPO treaties incorporated into the TRIPS Agreement are the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. Understanding on Rules and Procedures Governing the Settlement of Disputes, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 2, 1869 U.N.T.S. 401, 33 I.L.M. 1226 (1994). See also Susy Frankel, The WTO’s Application of “the Customary Rules of Interpretation of Public International Law” to Intellectual Property, 46 Va. J. Int’l L. (2006); Bryan Mercurio & Mitali Tyagi, Treaty Interpretation in WTO Dispute Settlement: The Outstanding Question of the Legality of Local Working Requirements, 19 Minnesota J. Int’l. L. 275, (2010). Doha Declaration on the TRIPS Agreement and Public Health, WT/MIN(01)/DEC/W/2, (2001), https://www.who .int/medicines/areas/policy/tripshealth.pdf?ua=1 (stating in paragraph 5(a) that: “In applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles”). See, e.g., Jan Klabbers, On Rationalism in Politics: Interpretation of Treaties and the World Trade Organization, 74 Nord J. Int’l L. (2005) (noting that “[t]he meaning of a treaty is not carved in stone at the moment of its conclusion instead, debates continue, albeit no longer on what words to use in the treaty, but how to give meaning to the words that are used. Whoever controls this process controls the meaning of the treaty, and therewith controls whether or not the obligations . . . are bearable or onerous, and controls whether the acts of States are faithful implementations of a text, or amount to breaches of that same text”). See also Daniel J. Gervais & Susy Frankel, Plain Packaging and the Interpretation of the TRIPS Agreement, 46 Vand. J. Transnat’l. L. 1149 (2013) (predicting that the interpretation of the TRIPS Agreement in the cases filed in 2012 against Australia by developing countries following the Australian legislation on the plain packaging of cigarettes is likely to impact future cases involving the TRIPS Agreement and specifically the method and approach to be used to interpret it; consequently the cases will likely impact other public health issues beyond tobacco use and the interpretation of the TRIPS Agreement in other contexts). See, e.g., Daniel J. Gervais & Susy Frankel, Plain Packaging and the Interpretation of the TRIPS Agreement, 46 Vand. J. Transnat’l. L. 1149 (2013) (noting that “[t]he rules of international treaty interpretation are important. They provide a degree of consistency so that those who are part of that rules-based system can use interpretation to predict outcomes not only of potential and existing disputes but also as a guide to the boundaries that international agreements place on the formulation and interpretation of WTO members’ laws. The principles of interpretation are thus important for the integrity of the international intellectual property regime”). For the scholarship that consider human rights approach to intellectual property rights, see generally Laurence R. Helfer, Toward a Human Rights Framework for Intellectual Property, 40 U.C. Davis L. Rev. 971 (2007); Audrey R. Chapman, Approaching Intellectual Property as a Human Right, , 35 Copyright Bulletin (2001), https://unesdoc .unesco.org/ark:/48223/pf0000125509 (originally prepared by the author at the request of the Committee on Economic, Social and Cultural Rights as a background resource for its Nov. 27, 2000 Day of General Discussion

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

417

one pathway to supporting social justice values found in any legitimate intellectual property regime is to interpret and implement international obligations in light of their objective and purpose. The object and purpose of such international obligations includes considerations of social justice and the public good. Pursuant to the foregoing rules of interpretation, international IP treaties should be interpreted in accordance not only with respect to specific text, but also with regard to underlining purposes and objectives of the treaties which include social justice and public interest obligations as well as more narrowly conceived property rights. B. Legal Instruments Concerning Human Rights, Culture, and Identity Utilizing the VCLT and customary international law of treaty interpretation, the objectives and purposes of many, if not all, of the international organization and international legal instruments reveal a clear interrelation between the concepts of human rights, culture, identity, creation, innovation, commercialization and intellectual property protection. The bond in such interrelations is being human and interacting with other humans. Therefore, the legal instruments concerning human rights, culture or identity should be taken into consideration, at all times, as overarching principles applicable and inherent to intellectual property norms.70 Some of the major instruments of relevance are (i) the Universal Declaration of Human Rights (1948),71 (ii) International Covenant on Economic, Social and Cultural Rights (1966),72 (iii) International Covenant on Civil and Political Rights (1966),73 (iv) Convention for the Protection of the World Cultural and Natural Heritage (1972),74 (v) Recommendation on the Safeguarding of Traditional Culture and Folklore (1989),75 (vi) UNESCO Universal Declaration on Cultural Diversity (2001),76 (vii) Istanbul Declaration (2002),77 (viii) Convention for the Safeguarding of the Intangible Cultural Heritage (2003),78 (ix) Convention on the Protection and Promotion of

70 71

72 73 74

75

76

77

78

on “The right of everyone to benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author (article 15.1(c) of the Covenant. E/C.12/2000/12); High Commissioner for Human Rights, The Impact of the Agreement on Trade-Related Aspects of Intellectual Property Rights on Human Rights, U.N. Doc. E/CN.4/Sub.2/2001/13 (2001); Saleh Al-Sharieh, Toward a Human Rights Method for Measuring International Copyright Law’s Compliance with International Human Rights Law, 32 Utrecht J. Int’l & Eur. L. 5 (2016). Universal Declaration of Human Rights, https://www.un.org/en/universal-declaration-human-rights/. International Covenant on Economic, Social and Cultural Rights, https://www.ohchr.org/en/professionalinterest/ pages/cescr.aspx. International Covenant on Civil and Political Rights, https://www.ohchr.org/en/professionalinterest/pages/ccpr.aspx. Convention for the Protection of the World Cultural and Natural Heritage, https://whc.unesco.org/en/conventiontext/. Recommendation on the Safeguarding of Traditional Culture and Folklore, http://portal.unesco.org/en/ev.php-URL_ ID=13141&URL_DO=DO_TOPIC&URL_SECTION=201.html. UNESCO Universal Declaration on Cultural Diversity, http://portal.unesco.org/en/ev.php-URL_ID=13179&URL_ DO=DO_TOPIC&URL_SECTION=201.html. Istanbul Declaration, Third Round Table of Ministers of Culture, Intangible Cultural Heritage, Mirror of Cultural Diversity, http://www.lacult.unesco.org/lacult_en/docc/InstanbulDeclaration.doc. Convention for the Safeguarding of the Intangible Cultural Heritage, http://portal.unesco.org/en/ev.php-URL_ID= 17716&URL_DO=DO_TOPIC&URL_SECTION=201.html. Convention on the Protection and Promotion of the Diversity of Cultural Expressions (2005), http://portal.unesco.org/ en/ev.php-URL_ID=31038&URL_DO=DO_TOPIC&URL_SECTION=201.html.GOT.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

418

Zehra Betul Ayranci

the Diversity of Cultural Expressions (2005),79 and (x) United Nations Convention on the Rights of Persons with Disabilities (2006) (UN CRPD).80 C. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) Binding on all WTO members, the TRIPS Agreement81 is a core international legal instrument with respect to the internationalization of intellectual property law and administration. Its impact extends beyond trade into domestic substantive IP law. Whereas a nation’s IP laws and the protections provided for thereunder are effective only within that nation’s borders, under the TRIPS Agreement, all WTO members must enforce the IP laws of other members within their own states in order to enjoy access to global trade markets. The TRIPS Agreement thus effectively restructured the global IP relationship between First World powers and the Developing World, as it gives First World powers the ability to condition access to their trade markets on compliance with their domestic IP laws. Consequently, Developing World nations which depend upon access to First World trade markets must protect the IP interests of the First World nations when their IP commodities find their way into Developing World countries. Depending primarily upon their levels of economic development, WTO member states were given various periods of time to comply with the TRIPS Agreement. The default period was one year. However, the specific circumstances of various categories of countries were taken into consideration in establishing the time for compliance.82 At the procedural level, for instance, (i) “developing countries in the process of transformation into a market, free-enterprise economy, of structural reform of intellectual property systems, and facing special problems” had five years, (ii) “developing countries obliged by the [WTO] Agreement to extend product patent protection to types of products not previously patentable in those countries” were given 10 years to do so, and (iii) least-developed countries were allowed “eleven years” which is “extendable upon duly motivated request.”83 This regime was adopted to ensure full inclusion of and compliance by all member states regardless of, but taking into consideration, their varying economic and infrastructural status quo. Article 67 of the TRIPS Agreement imposes obligations on developed country members to provide technical and financial cooperation in favor of the developing and least-developed country members on their request and on mutually agreed terms and conditions. The assistance contemplated extends to the preparation and execution of laws including structural aspects and administrative aspects such as establishment or reinforcement of domestic offices and agencies and training of personnel.84 79

80

81

82 83

84

United Nations Convention on the Rights of Persons with Disabilities, https://www.un.org/development/desa/disabil ities/convention-on-the-rights-of-persons-with-disabilities.html (stating that persons with disabilities “include those who have long-term physical, mental, intellectual or sensory impairments which in interaction with various barriers may hinder their full and effective participation in society on an equal basis with others”). Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), https://www.wto.org/english/docs_e/ legal_e/31bis_trips_01_e.htm. Id. at art. 65 titled “Transitional Arrangements and Technical Cooperation,” https://www.wto.org/english/docs_e/ legal_e/31bis_trips_08_e.htm. See generally Graeme B. Dinwoodie & Rochelle C. Dreyfuss, TRIPS and the Dynamics of Intellectual Property Lawmaking, 36 Case W. Res. J. Int’l L. (2004) (exploring the dynamics of lawmaking in the intellectual property context and focusing on the effect that the TRIPS Agreement has on domestic lawmaking). See supra note 76 at art. 67. See id. at art. 65 titled “Transitional Arrangements and Technical Cooperation”, https://www.wto.org/english/docs_e/ legal_e/31bis_trips_08_e.htm. See supra note 62. See, e.g., Pedro Roffe et al, Intellectual Property Rights in Free Trade Agreements: Moving Beyond TRIPS Minimum Standards, in Research Handbook on the Protection of Intellectual Property Under WTO Rules (Carlos M. Correa ed., 2010).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

419

At the substantive level, the TRIPS Agreement promotes intellectual property flexibilities which were reaffirmed in the Doha Declaration.85 The Doha Declaration is of particular importance for advancing IP-SJ principles of inclusion insofar as the Declaration recognized the ineffectiveness of some mechanisms, such as compulsory licensing, for countries with limited or no manufacturing capacity. The Doha Declaration led to the amendment of the TRIPS Agreement by adding article 31bis which enables countries with limited or no manufacturing capacity to import generic pharmaceuticals from other, often more developed, countries, hence promoting access to more affordable medicine.86 These provisions embody a specific intent to acknowledge social justice obligations as an essential component of the body of law which governs the IP related aspects of internal trade. D. Major International Legal Instruments Specifically Addressing Copyrights, Patents, and Trademarks This section first identifies the major IP treaties by subject matter and then highlights particular provisions of relevance for IP-SJ. Notable copyright-related treaties administered by WIPO, listed alphabetically, are (i) Beijing Treaty on Audiovisual Performances,87 (ii) Berne Convention for the Protection of Literary and Artistic Works,88 (iii) Brussels Convention Relating to the Distribution of Program-Carrying Signals Transmitted by Satellite,89 (iv) Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms,90 (v) Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled,91 (vi) Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations,92

85 86

87 88

89

90

91

92

See supra note 76, at art. 31bis, https://www.wto.org/english/res_e/publications_e/ai17_e/trips_art31_bis_oth.pdf. Beijing Treaty on Audiovisual Performances, https://wipolex.wipo.int/en/text/295838. See generally Aaron X. Fellmeth, Introductory Note to the Beijing Treaty on Audiovisual Performances, 51 I.L.M. (2012) (providing the overview on the Beijing Treaty that is adopted after long considerations and failed attempts by WIPO since 2000, providing performers in audiovisual works exclusive moral and economic rights over their performances, including the rights of attribution, integrity, reproduction, and distribution). Berne Convention for the Protection of Literary and Artistic Works, https://wipolex.wipo.int/en/text/283693. Convention Relating to the Distribution of Program-Carrying Signals Transmitted by Satellite, https://wipolex.wipo .int/en/text/283792 (providing the recognition and international protection of the rights of performers, producers of phonograms and broadcasting organizations, in conjunction with copyright. This contributes to the development of nations, together with the Rome Convention). Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, https://wipolex.wipo.int/en/text/288579. Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled, https://wipolex.wipo.int/en/text/301019. International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, https://wipolex.wipo.int/en/text/289757 (allowing for certain limitations of the rights granted regarding the performers. “Any Contracting State may provide for exceptions as regards private use, use of short excerpts in connection with reporting current events, ephemeral fixation by a broadcasting organization by means of its own facilities and for its own broadcasts, and for all kinds of use solely for the purpose of teaching or scientific research” states article 15(1). This may be beneficial to developing countries). WIPO Copyright Treaty, https://wipolex.wipo.int/en/text/295157.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Zehra Betul Ayranci

420

(vii) (viii) (ix) (x) (xi) 93 94

95

96

97

WIPO WIPO WIPO WIPO WIPO

Copyright Treaty (WCT),93 Performances and Phonograms Treaty (WPPT),94 efforts on the Broadcasting Treaty,95 efforts to protect Traditional Cultural Expressions,96 studies on Limitations and Exceptions for Libraries and Archives,97 and

WIPO Performances and Phonograms Treaty, https://wipolex.wipo.int/en/text/295477. See Non-paper on the WIPO Treaty on the Protection of Broadcasting Organizations, WIPO, April 20, 2007, https://www .wipo.int/edocs/mdocs/copyright/en/sccr_s2/sccr_s2_paper1.pdf (building on the deliberations of WIPO since 2004 on a prospective Broadcasting Treaty, explaining that the treaty was originally an attempt to update the 1961 Rome Convention but also added technologies that did not previously exist, that the treaty would afford broadcasters economic rights, akin to copyright protection, in their broadcasts for up to 50 years, that the treaty would allow broadcasters to claim rights in their signals; also pointing to the lack of consensus among countries and stating the complexity of the task to prepare the nonpaper “because the opinions and comments expressed by the delegations diverge greatly, and in many cases point to opposite directions”). Agreement on text has not been reached at the of writing this chapter. See The Protection of Traditional Cultural Expressions: Updated Draft Gap Analysis (Geneva, 2018), https://www .wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_37/wipo_grtkf_ic_37_7.pdf (demonstrating that WIPO increased its efforts since 2001 to protect Traditional Culture Expressions, created the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) tasked with providing intellectual property protection for traditional cultural expressions where the protection of works does not readily fall within the scope of the existing intellectual property norms. Further, WIPO Creative Heritage Project launched in 2008 to develop best practices and guidelines for managing intellectual property issues when recording, digitizing, and disseminating cultural heritage). See, e.g., Eliamani Laltaika, Effects of WIPO’s Creative Heritage Project on the Welfare of the Maasai Community (2011), https://www.wipo.int/meetings/en/doc_details.jsp?doc_id=189825. See, in a music context, Kevin J. Greene, Copyright, Culture, and Black Music: A Legacy of Unequal Protection, 21 Hastings Comm. & Ent. L. J. 339 (1999); Steven Jamar & Lateef Mtima, Intellectual Property Social Justice in the Folk Music and Traditional Cultural Expression Context, in The Oxford Handbook of Music Law and Policy (Sean O’Connor ed., 2021); Jane Anderson, Law, Knowledge, Culture: The Production of Indigenous Knowledge in Intellectual Property Law (2009); in a film context, Zehra Betül Ayranci, The Fear of Hollywoodzilla, Future Cultural Heritage, International Law and Call For Duty to Preserve Diversity in the Global Film Industry (on file with the author, 2016), https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3697895 (looking at links between conserving future intangible cultural heritage by maintaining cultural diversity and enforcing identity and culture as a human right with specific focus on the film industry, looking at the examples from various developing countries, questioning the notion of culture itself being hegemonic or colonial, attempting to deconstruct existing paradigms to push for legally enforceable protection to diversity and criticizing the unequal valuation in the name of culture, embracing precarity introducing a prudential viewpoint towards constructing future heritage from today by preserving cultural components, interrogating whether international community has a legal and ethical responsibility to protect diversity, ultimately calling sovereigns and global society for a pro-polycultural intervention). Studies on Limitations and Exceptions for Libraries and Archives, https://www.wipo.int/copyright/en/limitations/ libraries_and_archives.html. See also WIPO Standing Committee on Copyright and Related Rights, Twenty-third Session Report (Geneva, 2011), https://www.wipo.int/edocs/mdocs/copyright/en/sccr_23/sccr_23_10.pdf (noting the formation of theme clusters in 2011 for preservation, the right of reproduction, legal deposit, library lending, parallel importation, cross-border uses, orphan works, liability, technological protection measures, and contracts, and including the Case for a Treaty on Exceptions and Limitations for Libraries and Archives: Background Paper by IFLA ICA EIFL and INNOVARTE). See WIPO Standing Committee on Copyright and Related Rights, Study on Limitations and Exceptions Regarding Education, prepared by Professor Daniel Seng, https://www.wipo.int/edocs/mdocs/copyright/en/sccr_33/sccr_33_6.pdf (documenting the limitations and exceptions to national legislations in 189 member states of WIPO that deal with educational activities, to better understand how national legislatures have balanced the public interest in advancing education with the interests of authors and artists in their intellectual creations). See also Standing Committee on Copyright and Related Rights, Draft WIPO Treaty on Exceptions and Limitations for the Persons with Disabilities, Educational and Research Institutions, Libraries and Archives (Proposal by the African Group), WIPO Doc. SCCR/ 22/12 (2011), http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=169397); Standing Committee on Copyright and Related Rights, Draft Consensus Instrument (Proposal by the Delegation of the United States of America), WIPO Doc. SCCR/20/10 (2010), http://www.wipo.int/edocs/mdocs/copyright/en/sccr_20/sccr_20_10.pdf; Standing Committee on Copyright and Related Rights, Draft Joint Recommendation Concerning the Improved Access to Works Protected by Copyright for Persons with a Print Disability (Proposal by the Delegation of the European Union) WIPO Doc. SCCR/20/12 (2010), http://www.wipo.int/edocs/mdocs/copyright/en/sccr_20/sccr_20_12.pdf (demonstrating the pre-existing desire in this field by detailing the proposals, draft articles, thematic clusters and provisional

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

421

(xii) WIPO study on Limitations and Exceptions Regarding Education.98 Patent-related treaties administered by WIPO can be examined in three categories: (i) treaties setting general standards of patent protection, which are the Paris Convention99 and the Patent Law Treaty,100 (ii) treaties establishing international systems for filing and deposits, which are the Patent Cooperation Treaty101 and the Budapest Treaty,102 and (iii) treaties prescribing and regularly updating the international classification for inventions in patent applications, which is the Strasbourg Agreement Concerning the International Patent Classification.103 WIPO-administered treaties relevant to the work of the Standing Committee on Trademarks (SCT) include the Paris Convention,104 the Singapore Treaty,105 the Trademark Law Treaty,106 the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods,107 and the Nairobi Treaty.108 Trademark-related treaties are signed or ratified by approximately 50 countries,109 which demonstrate the insufficient worldwide consensus on trademark rights. The following subsections focus on a few select examples in the field of copyrights to demonstrate the current position of international actors on matters related to the application of these treaties that intersect with social justice values as well as the current state of compliance by various countries. 1. The Berne Convention for the Protection of Literary and Artistic Works (The Berne Convention) and the 1971 Paris Act The Berne Convention,110 which sets substantive standards for copyright protection and the various rights attendant to such protection, also limits copyright owner economic rights in certain instances in which protected works may be used without the authorization of the owner of the copyright and without payment of compensation. These limitations in the Berne Convention are based on three basic principles and contain a series of provisions determining the minimum protection to be granted, as well as special provisions available to developing

98 99 100 101

102 103 104 105 106

107 108

109 110

working documents submitted prior to the WIPO SCCR meeting in July 2012 by Ecuador, Peru, Uruguay, Brazil, Africa Group, the United States, European Union and WIPO Secretariat on limitations and exceptions for the benefit of educational, teaching, and research institutions, an international legal instrument on limitations and exceptions for persons with other disabilities containing comments and textual suggestions, as well as limitations and exceptions for persons who are visually impaired or otherwise print disabled, libraries and archives, and education). Paris Convention for the Protection of Industrial Property, https://wipolex.wipo.int/en/text/287556. Patent Law Treaty, https://wipolex.wipo.int/en/text/288773. Patent Cooperation Treaty, https://www.wipo.int/pct/en/texts/articles/atoc.html. Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, https://wipolex.wipo.int/en/text/28378. Strasbourg Agreement Concerning the International Patent Classification, https://wipolex.wipo.int/en/text/291784. See supra note 94. Singapore Treaty on the Law of Trademarks, https://wipolex.wipo.int/en/text/290013. Trademark Law Treaty, https://wipolex.wipo.int/en/text/294358. Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, https://wipolex.wipo .int/en/text/286776. Nairobi Treaty on the Protection of the Olympic Symbol, https://wipolex.wipo.int/en/text/287413. It is with the exception of the Paris Convention, which is signed or ratified by 177 countries. See Summary Table of Membership of the World Intellectual Property Organization (WIPO) and the Treaties Administered by WIPO, plus UPOV, WTO and UN, WIPO, https://www.wipo.int/treaties/en/summary.jsp. See supra note 83. Id. at art. 9(2) (stating that “[i]t shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author”).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

422

Zehra Betul Ayranci

countries that want to make use of them. The Berne Convention’s three-step test111 operates as a ceiling on member state statutory exceptions and exemptions, which are commonly collectively referred to as “free uses” or “fair uses”112 of protected works. The three-step test is, however, considered troubling to developing countries because “inclusion of a rigid three-step test requirement would neuter the purpose and objectives of the treaty by reading into the treaty the built-in constraint on state discretion in enacting more broadly conceived and constructed domestic limitations and exceptions for the benefit of users.” Furthermore, developing countries need to ensure a wide dissemination of works for teaching, scholarship, and research purposes in order to develop and may not be able to pay what is demanded by copyright owners. In order to address the issue and the preoccupations of developing countries, developing countries are allowed to issue compulsory licenses for translating and/or reproducing foreign works into languages of general use in their territories, by way of the 1971 Paris Act revising the Berne Convention.113 The 1971 Paris Act prescribes that the nonexclusive and nontransferable compulsory licenses can be granted, after certain time periods and upon compliance with certain procedures, by the competent authority of the developing countries, in respect of (i) translation for the purpose of teaching, scholarship or research, and (ii) reproduction for use in connection with systematic instructional activities, of works protected under Berne Convention. Such licenses are not free, however. The compensation to be made by the compulsory licensee must be just and similar to the royalties that would normally apply should the licenses at hand be freely negotiated.114 The 1971 Paris Act further introduces a special right for the developing countries, an international protection for unpublished works, through WIPO.115 This is in line with the continued desire by countries and international actors, such as UNESCO, to acknowledge and provide international protection to cultural heritage, especially of the developing countries and historically marginalized groups whose cultural and other creative works tend to be (mis)appropriated and commercialized by third parties without permission. Overall, WIPO, acting in accordance with the Paris Act, attempts to take into consideration the specific needs of developing countries, including the unpublished works of developing

111

112

113 114 115

For a brief overview and history of the international treatment of “fair use” or a general summary of the treaty obligations and national law exceptions to the exclusive rights of authors and owners of copyrights, see Eric Schwartz, An Overview of the International Treatment of Exceptions, PIJIP Research Paper No. 2014-02, Am. Univ. Wash. College of Law, Wash., D.C. (2014). See also Barton Beebe, An Empirical Study on U.S. Copyright Fair Use Opinions, 1978–2005, 156 U. Pa. L. Rev. 549, 617–20 (2008); Jeanne C. Fromer, Market Effects Bearing on Fair Use, 90 Wash. L. Rev. 615, 649 (2015). Paris Act relating to the Berne Convention for the Protection of Literary and Artistic Works of the Berne Convention, https://treaties.un.org/doc/Publication/UNTS/Volume%201161/volume-1161-I-18338-English.pdf. Some scholars criticize the appendix for being unrealistic and far from meeting the needs of developing countries. See, e.g., Alberto Cerda Silva, Beyond the Unrealistic Solution for Development Provided by the Appendix of the Berne Convention on Copyright. PIJIP Research Paper No. 2012-08, Am. Univ. Wash. College of Law, Wash., D.C. (2012) (stating that the Appendix has “relied on idiosyncratic solutions. Additionally, the instrument does not provide solutions for other needs, such as those of linguistic and cultural minorities” and proposing a new instrument that should be adopted to meet the needs of developing countries focusing on “extending the scope of beneficiaries, diversifying the legal mechanisms that provide flexibility, reducing and simplifying the bureaucratic requirements, embracing technology opportunities, allowing exports, and improving the capacity building of the competent international organization”). Id. Id. at art.5(4)(c) and art. 15(4)(a). WIPO, Monthly Review of the World Intellectual Property Organization, 12th Year, 7–8, Copyright 165–87, July– Aug. 1976), https://www.wipo.int/edocs/pubdocs/en/copyright/120/wipo_pub_120_1976_07-08.pdf.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

423

countries in the scope of international protection, and to facilitate access by the developing countries to foreign works protected by copyright. 2. Implementation of the International Rules on Copyright: The 1976 Tunis Model Law on Copyright for Developing Countries and 1982 Model Rules In order to provide guidance to the developing countries in conforming to the Berne Convention, the 1976 Tunis Model Law on Copyright for Developing Countries116 was adopted. The product of the Tunisian government with the assistance of WIPO and UNESCO, the Tunis Model Law provides specific protection for works of national folklore. Echoing the protection provided by the Paris Act to unpublished works, the Tunis Model Law does not require the works to be fixed in material form in order to receive protection. It is striking that such protection has no time limitation. The Tunis Model Law is a pioneering approach to spur concrete action on international and national levels. On the international level, it led to the adoption of Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions which solidifies the years-long collaborative efforts by the WIPO and UNESCO committees that demonstrated a desire for legal protection of national folklore, heritage and traditional cultural expressions, on national and international level, against improper utilization and exploitation. The secretariats of UNESCO and WIPO acknowledge: During the last decade or two, however, it became obvious that – in order to foster folklore as a source of creative expressions – special legal solutions must be found both nationally and at the international level for the protection of folklore. Such protection should be against any improper utilization of expressions of folklore, including the general practice of making profit by commercially exploiting such expressions outside their originating communities without any recompense to such communities.117

Third party improper utilization and commercial exploitation of cultural heritage particularly impacts the developing countries, as they take folklore as a “basis of their cultural identity and as a most important means of self-expression of their peoples both within their own communities and in their relationship to the world around them . . . Particularly in developing countries, folklore is a living, functional tradition, rather than a mere souvenir of the past.”118 Therefore international instruments must address this widely known issue, and provide protection of folklore, on both international and national levels.

116

117

118

Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions, https://www.wipo.int/edocs/lexdocs/laws/en/unesco/unesco001en.pdf (further acknowledging at Preamble the rapid technological developments and their impact on the sphere of cultural heritage as follows: “The accelerating development of technology, especially in the fields of sound and audiovisual recording, broadcasting, cable television and cinematography may lead to improper exploitation of the cultural heritage of the nation. Expressions of folklore are being commercialized by such means on a world-wide scale without due respect for the cultural or economic interests of the communities in which they originate and without conceding any share in the returns from such exploitations of folklore to the peoples who are the authors of their folklore. In connection with their commercialization, expressions of folklore are often distorted in order to correspond to what is believed to be better for marketing them”). Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions, https://www.wipo.int/edocs/lexdocs/laws/en/unesco/unesco001en.pdf. Id.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

424

Zehra Betul Ayranci

To that end, the 1982 Model Rules119 intend to be supplementary to the existing national copyright and related rights legislations in a particular country, and to pave the way for local, regional, national, and international protection of creations of folklore from various forms of illicit exploitation and prejudicial actions. On the national level, based upon the Tunis Model Law of 1976 or the Model Provisions of 1982, a number of states including Burkina Faso, Ghana, Kenya, Mexico, Mozambique, Namibia, Nigeria, Senegal, Sri Lanka, Togo, the United Republic of Tanzania, and Viet Nam added to their national copyright legislations specific provisions concerning traditional cultural expressions.120 Some countries, such as Barbados, Côte d’Ivoire, Indonesia and the Islamic Republic of Iran, on the other hand, provide the same treatment to expressions of culture, referring to them as a form of copyrightable work.121 3. The Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (Marrakesh Treaty) Building on preexisting WIPO programs,122 the Marrakesh Treaty addresses the needs of a specific group of the blind, visually impaired, and otherwise print disabled, who are historically and critically underserved123 within the global copyright space. In shifting the focus from protecting the rights of copyright owners to addressing the public interest aspect of copyright, the Marrakesh Treaty has a specific purpose of increasing access to information for the public in general, and the blind, visually impaired, and otherwise print disabled, in particular. To fulfill this purpose, it imposes four substantive obligations on signatory countries: (1) to adopt limitations and exceptions in national copyright laws that provide the right to reproduce, distribute, and make available works in accessible formats for beneficiary persons;124 (2) to provide for export

119

120

121

122

123 124

WIPO, Traditional Knowledge, Traditional Cultural Expressions & Genetic Resources Laws database, https://www .wipo.int/tk/en/databases/tklaws/search_result.jsp?searchPage=2&subject=tce. See, e.g., Gertrude Torkornoo, Creating Capital from Culture{ Re-thinking the Provisions on Expressions of Folklore in Ghana’s Copyright Law, 18 Int’l & Comp. L. (2012); Enyinna S. Nwauche, The Protection of Traditional Cultural Expressions in Africa (2017); Elizabeth Barad & Jason Spears, Legal Frameworks for Protecting Traditional Cultural Expressions in West Africa (2016), https://www2.nycbar.org/pdf/report/uploads/20073038ProtectingTraditionalCulturalExpressionsinWAfricaAFRICAN2222016.pdf. WIPO, supra note 118. See, e.g., Daphne Zografos, Intellectual Property and Traditional Cultural Expressions (2010); Christoph Antons, Intellectual Property Law in Indonesia (2000), R. Diah Imaningrum Susanti et al., The Problem of Copyright for Traditional Cultural Expression in Indonesia: The Example of the “Malang Masks,” 29 J. L., Pol’y and Globalization (2014); Peter Jaszi, Legal Protection for Indonesian Traditional Arts in Transition, in Diversity In Intellectual Property: Identities, Interests, and Intersections 494–524 (Irene Calboli & Srividhya Ragavan eds., 2015). The Standing Committee on Copyright and Related Rights (SCCR) of the World Intellectual Property Organization (WIPO) has had disability-related limitation and exception on its agenda since 2003. See WIPO Study on Limitations and Exceptions of Copyright and Related Rights in the Digital Environment, Standing Committee on Copyright and Related Rights Ninth Session Geneva, June 23–27, 2003. See Caroline B. Ncube, Blake E. Reid, & Desmond O. Oriakhogba, Beyond the Marrakesh VIP Treaty: Typology of Copyright Access-Enabling Provisions for Persons with Disabilities, J. World Intellect. Prop. 1 (2020), https://doi .org/10.1111/jwip.12144, available at https://scholar.law.colorado.edu/articles/1263/ (building upon the evidence drawn from a scoping study on access to copyright works by persons with disabilities, identifying and analyzing specific access-enabling technologies for persons with various disabilities and how they are affected by the exercise of exclusive rights, examining patterns and trends of accessible format-enabling provisions in the copyright laws of WIPO, and showing the ways and extent to which the ratification of Marrakesh Treaty by various states enable the making of accessible format of copyright works for persons with disabilities). See supra note 86, at art. 4(1). Id. at art. 5(1).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

425

of an accessible format copy;125 (3) to permit import of an accessible format copy;126 and (4) to ensure that legal remedies against circumvention of effective technological protection measures do not prevent beneficiary persons from enjoying the limitations and exceptions provided for in the treaty.127 These obligations are unique insofar as they expressly recognize international minimum standards for limitations and exceptions to the otherwise positive obligations in copyright treaties that have universally benefited rights holders. The Marrakesh Treaty is especially remarkable as it represents a changing of the viewpoint of the international actors, such as the WIPO, as well as the international norm-setting culture, toward including, or at the very least, taking into consideration of, the rights of users, more specifically of the excluded and disadvantaged.128 4. The 2019 European Accessibility Act’s Implementation of the Marrakesh Treaty, the UN Convention on the Rights of Persons with Disabilities (CRPD), and Social Justice Values One of the most recent legislative endeavors to facilitate and enforce the ideals of accessibility on regional level is the adoption of the European Accessibility Act. To implement and comply with the Marrakesh Treaty129 and the UN CRPD,130 the European Accessibility Act addresses the particular needs of persons with disabilities, as well as those “who experience functional limitations, such as elderly persons, pregnant women . . . persons who have any physical, mental, 125 126 127

128

129

130

Id. at art. 6. Id. at art. 7. Danielle Conway, The Miracle at Marrakesh: Doing Justice for the Blind and Visually Impaired While Changing the Culture of Norm Setting at WIPO, in Diversity in Intellectual Property 35, 50 (Irene Calboli & Srividhya Ragavan eds., 2015) (praising the Marrakesh Treaty as “a watershed moment in the history of the protection of copyright globally because it is the first time that an intellectual property-focused treaty has expressly addressed the needs of the public interest through the sharper lens of human rights”). See also Catherine Saez, Vibrant Lauding of “Historic” Marrakesh Treaty for the Blind at WIPO, Intell. Prop. Watch, Oct. 6, 2016, http://www.ipwatch.org/ 2016/10/06/vibrant-lauding-of-historic-marrakesh-treaty-for-the-blind-at-wipo/; Paul Harpur & Nicolas Suzor, Copyright Protections and Disability Rights: Turning the Page to a New International Paradigm, 36 UNSW L. J. 745, (2013); WBU, The Treaty of Marrakesh Explained, http://www.worldblindunion.org/English/news/Pages/ The-Treaty-of-Marrakesh.aspx (foreseeing a huge impact, with a concerted effort for widespread ratification and implementation of the Marrakesh Treaty, on accessibility for people with print disabilities, predicting it to promote the domestic production of accessible materials in each country, as well as provide access to books produced elsewhere, expecting “to especially serve for countries that have not traditionally had robust services for people with disabilities; and the less wealthy countries are foreseen to greatly benefit from access to the extensive collections developed in wealthier countries”); Jingyi Li & Niloufer Selvadurai, Reconciling the Enforcement of Copyright with the Upholding of Human Rights: A Consideration of the Marrakesh Treaty to Facilitate Access to Published Works for the Blind, Visually Impaired and Print Disabled, 36 Eur. Intell. Prop. Rev. 653 (2014). Catherine Saez, New European Directive Adds Impetus to International Efforts to Promote Accessibility (WIPO Magazine, June 2020, https://www.wipo.int/wipo_magazine/en/2020/02/article_0007.html. Directive (EU) 2019/882 of the European Parliament and of the Council of 17 April 2019 on the accessibility requirements for products and services (Text with EEA relevance), PE/81/2018/REV/1, OJ L151, June 7, 2019, 70–115, https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32019L0882. Id. preamble paras. 12, 15, 16 (stating: “Since the [European] Union became a Party to the UN CRPD, its provisions have become an integral part of the [European] Union legal order and are binding upon the institutions of the [European] Union and on its Member States . . . The entry into force of the UN CRPD in the [European Union] Member States’ legal orders entails the need to adopt additional national provisions on accessibility of products and services. Without [European] Union action, those provisions would further increase disparities between the laws, regulations and administrative provisions of the Member States . . . It is therefore necessary to facilitate the implementation in the [European] Union of the UN CRPD by providing common [European] Union rules”). Id. at art. 2 (including specifically the products placed on the market and the services provided to customers after June 28, 2025).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

426

Zehra Betul Ayranci

intellectual or sensory impairments, age related impairments, or other human body performance related causes, permanent or temporary, which, in interaction with various barriers, result in their reduced access to products and services, leading to a situation that requires those products and services to be adapted to their particular needs.” Among the main products and services that fall within the scope of this Directive are computers, operating systems, smart phones, TV sets, set-top boxes, e-readers, self-service terminals, (e.g. ATMs, payment terminals, ticketing machines, check-in machines, etc.), access to audio-visual media services, telecommunications, consumer banking, e-commerce, e-books and dedicated software services.131 The Directive “promotes full and effective equal participation by improving access to mainstream products and services that, through their initial design or subsequent adaptation. . .”132 This is a proactive step to ensure the accessibility of products by design, such as mandating new e-books, at the time of creation, to include accessibility features for the marginalized and underserved groups of consumers and customers. The EU, acknowledging “disparities between the laws, regulations and administrative provisions of [the EU] Member States” supports, with this Directive, its 28 members “in their efforts to fulfil their national commitments, as well as their obligations under the UN CRPD regarding accessibility in a harmonized manner.”133 5. Implementation of Cultural Diversity: The Audiovisual Media Services Directive of the European Union (AVMSD) Another recent act of legislation by the EU, with reference to a pre-existing international instrument that intersects with IP-SJ values, is the revised Audiovisual Media Services Directive (AVMSD).134 Key policy objectives of the AVMSD focus on “promoting cross-border circulation and diversity of European audiovisual works, promoting diversity and enhancing access to cultural content online and ensuring the protection of cultural heritage of European significance,” while also ensuring fundamental rights such as freedom of speech, access to information, protection of minors and prohibition of incitation to hatred.135 With these objectives, the AVMSD is an interesting instrument balancing various interests in the media industry, with reference to a UNESCO Convention, that has been traditionally viewed as belonging in the human rights sphere: “Any measure taken by [the EU] Member States under [this] 131

132

133 134

135

Directive (EU) 2019/882 of the European Parliament and of the Council of 17 April 2019 on the accessibility requirements for products and services (Text with EEA relevance), PE/81/2018/REV/1, OJ L 151, 70–115, June 7, 2019, https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32019L0882. Id. at para. 16. See also id. at art. 31 (prescribing the deadline for the European Union member states to transpose the provisions of the Directive into their national law as June 28, 2022, and to apply the measures as of June 28, 2025). See supra note 49. The initial AVMSD of 2010 had specific provisions to allow for cross-border promotion of European works in television and on-demand services, thereby enhancing diversity of cultural expressions, that impose on EU broadcasters the obligation to transmit a majority proportion of European programs and 10 percent of independent European works or, alternatively, to finance independent audiovisual works for an amount equivalent to 10 percent of their programming budget. On-demand services had also to promote the production of and access to European works. See Directive 2010/13/EU of the European Parliament and of the Council of 10 March 2010 on the coordination of certain provisions laid down by law, regulation or administrative action in Member States concerning the provision of audiovisual media services (Audiovisual Media Services Directive) (Text with EEA relevance), OJ L95 (Apr. 15 2010), at 1–24, https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32010L0013&from=EN. See also Shaping Europe’s Digital Future, arts 16 and 17 of the Audiovisual Media Services Directive in Practice (2011–2012), May 10, 2017, https://ec.europa.eu/digital-single-market/en/news/articles-16-and-17-audiovisual-media-ser vices-directive-practice-2011-2012. See supra note 49, preamble para. 61.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

427

Directive . . . is to respect . . . cultural and linguistic diversity, in accordance with the UNESCO Convention on the Protection and Promotion of the Diversity of Cultural Expressions.”136 The AVMSD mandates the EU member states to “ensure that media service providers of ondemand audiovisual media services under their jurisdiction secure at least a 30% share of European works in their catalogues and ensure prominence of those works.”137 This requirement is designed to effectively increase the amount of European content within the catalogue of on-demand service providers, ensure the prominence of the content, and mandate cultural diversity, albeit limited to the European identity, of the content offered in the European market. Further, the AVMSD prescribes: Where Member States require media service providers under their jurisdiction to contribute financially to the production of European works, including via direct investment in content and contribution to national funds, they may also require media service providers targeting audiences in their territories, but established in other Member States to make such financial contributions, which shall be proportionate and nondiscriminatory.138

The financial contribution requirement imposed on media service providers by European sovereigns at their discretion, yet on a nondiscriminatory basis, would function as an effective mechanism to empower the producers of European content, which would potentially lead to creation of more or higher quality content in European markets. The AVMSD appears as a legal framework that aims to enhance and sustain the cultural diversity and the notion of identity in the digital age. Attempting to achieve a balance of the interests of local producers and international media service providers, the EU makes a difficult choice fine-tuning the power dynamics in a competitive market, of which the consequences are to be monitored.

iii. key ip-sj challenges under the international status quo Preambles, the express purposes and purview of international legal instruments, as well as the stated intentions and purposes of international and regional actors, undeniably mandate a holistic outlook to human-related issues in IP regulation. Hard law as expressed in many instruments, including treaties on human rights, intellectual property, and international trade, 136

137 138

See id. art. 13(1). See also Guidelines pursuant to art. 13(7) of the Audiovisual Media Services Directive on the calculation of the share of European works in on-demand catalogues and on the definition of low audience and low turnover (2020/C 223/03), Communication from the Commission of July 7, 2020, https://eur-lex.europa.eu/legalcontent/EN/TXT/HTML/?uri=OJ:JOC_2020_223_R_0003&from=EN (explaining (i) the criteria to be considered as a video-sharing platform and (ii) the calculation of the 30 percent share of European works – that is by titles, not by transmission time; no minimum running time is stipulated for a title but one season of a series is to be calculated as one title. Video on demand services with a market share below 1 percent as well as linear audiovisual media services with a market share below 2 percent are excluded from the 30 percent obligation. See supra note 49 at art. 13(2). See Margaret Chon, Intellectual Property and the Development Divide, 27 Cardozo L. Rev. 2821 (2006) (advocating that human rights treaties and the soft law mechanisms “can be viewed as additional evidence of substantive equality norms that should be incorporated into the intellectual property calculus through the language of development”). See also Margot E. Kaminski & Schlomit Yanisky Ravid, The Marrakesh Treaty for Visually Impaired Persons: Why a Treaty Was Preferable to Soft Law, 75 U. Pitt. L. Rev. 255 (2014) (providing insight on the choice of hard law over soft law, focusing on the case of the Marrakesh Treaty); Aaron Scheinwald, Who Could Possibly Be Against a Treaty for the Blind?, 22 Fordham Intell. Prop. Media & Ent. L.J. 445 (2012); Lior Zemer & Aviv Gaon, Copyright, Disability and Social Inclusion: The Marrakesh Treaty and the Role of Non-Signatories, 10 J. Intell. Prop. L. & Prac. 836, 840 (2015) (providing an in-depth understanding on the role of nonsignatories in realizing the goals of the Marrakesh Treaty).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

428

Zehra Betul Ayranci

and the soft law mechanisms,139 can and should be used together to remember and enforce the inherent public interest and social justice characteristics of the intellectual property norms. Success in realizing the IP-SJ purposes both on the international plane and worldwide on the ground can only be attained by achieving consensus among the countries in setting the norms, by their will to be bound by, to abide by, and to implement those norms. It further requires ongoing assessment of the impact of the norms, with a willingness to adjust the norms where needed, and common intention and action to solve the basic issues in cooperation, coordination, and collaboration. Moreover, effective means of holding noncompliant actors accountable both in tangible ways including appropriate sanctions and in less tangible but arguably equally important means such as general criticism of those countries that undermine the collective social justice interests of the global IP community. This section summarizes key challenges to full realization, such as lack of full consensus among countries, diverse interpretation of international norms and wide discretion in domestic policymaking, varying levels of tracking compliance and noncompliance by country and assessing the application of norms and their impact on economic performance. Success will require exploration of the reasons for noncompliance and approaches to providing the basic tools and incentives needed to ensure compliance. A. Consensus Among Countries A preliminary challenge is the varying extent of consensus among countries on basic matters, therefore the lack of unity in acceding to or ratifying the international norms. The Berne Gap, for example, refers to this challenge to an extent, coined to address the countries that are not parties to the Berne Convention, the TRIPS Agreement, or the WIPO Copyright Treaty (WCT).140 The Berne Gap, and the interpretation and application of the three-step test,141 appear to be major issues, in large part because of the tendency to “view. . . them from ideological perspectives, [that] plague. . . all of the stakeholders.”142 With regard to execution, ratification, and adoption of the international norms by countries, the Summary Table of Membership of the WIPO and the Treaties Administered by WIPO

139

140

141

142

Catherine Saez, WIPO Negotiators Reach Breakthrough on “3-Step Test” in Treaty for Blind, Intell. Prop. Watch, Jun. 24, 2013, https://www.ip-watch.org/2013/06/24/wipo-negotiators-reach-breakthrough-on-3-step-test-in-treaty-forblind/. See supra note 106; see also supra note 123 at 53 (noting that the Berne Gap is often seen as “a challenge to stakeholders in developed countries because developing countries urging passage of the treaty were not themselves bound by the contours of the three-step test to which member states would otherwise be obliged to adhere in their national laws with respect to provision of limitations or exceptions to the various exclusive rights of copyright holders”). See supra note 123 at 53 (also acknowledging “more than thirty-seven unresolved issues at the beginning of the WIPO Diplomatic Conference leading to the treaty”). Summary Table of Membership of the World Intellectual Property Organization (WIPO) and the Treaties Administered by WIPO, plus UPOV, WTO and UN, WIPO, https://www.wipo.int/treaties/en/summary.jsp. For example, the number of countries party to the Paris Convention is 177, Berne Convention is 179, Patent Cooperation Treaty is 153, Patent Law Treaty is 42, Madrid Agreement pertaining to Indication of Source is 36, Madrid Agreement pertaining to Marks is 55, Madrid Protocol is 106, Hague Agreement is 74, Geneva Act of Hague is 65, Nice Agreement is 88, Lisbon Agreement is 30, Rome Agreement is 95, Locarno Agreement is 59, Strasbourg Agreement is 63, Phonograms Convention is 80, Vienna Agreement is 35, Budapest Treaty is 82, Brussels Convention is 38, Nairobi Treaty is 52, Trademark Law Treaty is 56, WIPO Copyright Treaty is 107, WIPO Performances and Phonograms Treaty is 106, Beijing Treaty on Audiovisual Performances is 34, Washington Treaty is 3, Singapore Treaty is 51, Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled is 71.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

429

indicate that the number of countries party to the WIPO Convention is 193; however, the number of countries party to the WIPO Copyright Treaty, for example, is 107.143 It displays the differing degrees of consensus among the WIPO member countries in acknowledging and adopting the major legal instruments in procedural and substantial regulation of intellectual property on the international plane. The fact that countries agree to promote intellectual property protection in cooperation and collaboration, by joining the WIPO Convention, does not necessarily mean nor result in agreeing to the product prescribing the procedure or substantive rules on a particular intellectual property right, such as becoming a party to the WCT. Furthermore, too frequently even countries that sign a treaty do not necessarily proceed with the ratification. For example the WIPO Beijing Treaty was signed by 72 countries, but ratified by only two (Botswana and the Syrian Arab Republic.)144 This disconnect between signing and ratifying is a major issue because treaties require that before they come into effect, a minimum number of countries have to ratify the treaty. In the case of the Beijing Treaty, 30 ratifications are required before it will enter into force.145 Until and unless this minimum number of ratifications is reached, the treaty remains ineffective. In order to fulfill the social justice obligations of the international IP regime it will be necessary to reach some level of consensus as to what those obligations are. As much as there may be disagreement as to various structural questions of international IP policy, the nations of the global IP community share a common interest in a broadly inclusive IP ecosystem in which all nations participate and from which all nations benefit. This interdependent relationship between IP social justice and IP social utility provides a foundation upon which an international consensus of IP-SJ values and goals can be built. Pursuing such consensus among nations, therefore, is the first prerequisite to fostering IP social justice values in an effective, enforceable, and accountable manner in the international norm-setting sphere. B. Interpretation of International Norms and Discretion in Domestic Policymaking Once there is consensus among the sovereign nations to accede to and ratify an international legal instrument, the issue becomes the interpretation and implementation of the standards and norms prescribed by the treaties. International legal instruments often create a regulatory floor of minimum protection that must be afforded to intellectual property by all contracting parties.146 143 144 145

146

Id. See supra note 82 at art. 26. See,. e.g., TRIPS Agreement, art. 1(1), stating: “Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.” TRIPS sets the minimum standards concerning the availability, scope, and use of intellectual property rights, specifically copyright and related rights, trademarks, geographical indications, industrial designs, patents, layout designs of integrated circuits, and protection of undisclosed information. The standards concerning the control of anti-competitive practices in contractual licenses are also mentioned but left outside the scope of intellectual property definition. See, e.g., Lateef Mtima, Copyright and Social Justice in the Digital Information Society: “Three Steps” Toward Intellectual Property Social Justice, 53 Hous. L. Rev. 459 (2015) (proposing a “social justice assessment” in the interpretation and application of the TRIPS Three Steps test for providing limitations and exceptions to IP rights). The Marrakesh Treaty also creates minimum standards for the provision of limitations and exceptions to national copyright laws; prescribes that these limitations and exceptions are not to extend past the obligations under the Berne three-step test; and leaves it in the hands of the contracting parties to determine the appropriate method of implementing the treaty’s provisions, instead of dictating how a contracting party should comply with its obligations. The Berne Convention bestows on signatories broad discretion and “flexibilities” in selecting the method(s) by which to implement the obligations of the Berne Convention, as well as to develop limitations and exceptions thereof. Elsewhere in this volume, Marcela Palacio Puerta provides a discussion of how the bilateral treaty option can be used to support or undermine global IP-SJ values or other international norms. Powerful First World nations can

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

430

Zehra Betul Ayranci

Sovereign nations, then, are permitted to seek varying levels of protection in their national laws and bilateral treaties that they negotiate with other countries, at their discretion, as long as they accommodate the minimum level of protection prescribed by the international treaties. Such discretion is used by the national sovereigns in varying degrees, as to methods and details of implementation, which creates lack of harmonization and inconsistency with the design of international law mechanisms.147 Sovereign nations are trusted with the power to either strengthen or weaken the treaties’ purposes and objectives. Genuine buy-in with full commitment is not easy. Even if there is a general commitment to the purposes of a treaty, there remain various approaches to treaty interpretation which are used to allow the sovereigns to take a more progressive or more conservative approach to implementing the treaty including the adoption of domestic limitations and exceptions in their national laws. The issue, then, becomes how to integrate the international intellectual property norms into national policies.148 International instruments set limitations when setting norms, but also allow flexibilities to mitigate the effect on countries of varying development stages. Ideally, each country would objectively study its unique economic and social situation, identify prospects in different industries and sectors, analyze the implications of the intellectual property norms, limitations and flexibilities, then adopt on that basis its domestic policies. Such policies should be rational, balancing promotion of innovation and creation and access to the progress it creates as an outcome, which is in line with the objectives, purposes and purviews, including IP-SJ values and goals, stated by the international intellectual property norms.149 C. Tracing the Application of International Norms and Their Impact on Economic Performance Once the international norms are enacted into domestic laws of countries, enforcement of them and tracking the enforcement is crucial to insuring success of the international norms and most especially for effectuating the social justice and public interest protections. Statistical data on the filings of patents, utility models, trademarks, and industrial designs in each signatory state,150 for

147

148 149

150

“encourage” developing countries to enter into bilateral agreements which concede to First World powers greater rights than those afforded under international treaties. See Puerta, supra note 58. See generally Watal, supra note 32 (mapping how various countries have implemented the TRIPS Agreement and providing guidance on domestic enforcement under the TRIPS Agreement and how developing countries can interpret the TRIPS Agreement to their best advantage, and how to ensure that the “constructive ambiguity” that characterizes the TRIPS Agreement remains flexible). See also the Digital Millennium Copyright Act of 1998, U.S. Copyright Office Summary (2018), https://www.copyright.gov/legislation/dmca.pdf (explaining the United States Digital Millennium Copyright Act of 1998 (DMCA) that came into effect, after the Senate gave its assent to United States ratification of the WIPO Copyright Treaty on October 21, 1998, to implement the changes in U.S. copyright law required by ratification of the WIPO Copyright Treaty, as well as for other purposes, including clarification of the United States copyright law in digital environment). See Puerta, supra note 58. Intellectual Property by Country, United Nations System, Chief Executives Board for Coordination, June 15, 2016, https://www.unsystem.org/content/intellectual-property-country, directing to WIPO Statistics https://www.wipo.int/ ipstats/en/statistics/country_profile/ (covering different dimensions of intellectual property (IP) activity, including incoming and outgoing filings, the share of filings in different technological fields, total patents in force, and the use of international IP systems by applicants). See also World Intellectual Property Indicators 2019, WIPO, Geneva: World Intellectual Property Organization, https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2019.pdf (demonstrating the total number of applications worldwide for patents, utility models, trademarks, industrial designs and plant varieties in 2017 and 2018, and that China is the leader in all categories. The report further maps the current state of creative economy by country and globally). Case Studies on Intellectual Property (IP Advantage), WIPO, https://www.wipo.int/ipadvantage/en/search.jsp?ip_ right_id=&focus_id=. The industries that case studies concern include beverages, chemicals, clothing, accessories,

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

431

example, could be a useful resource to track the enforcement, application, and use of the intellectual property norms and activities, including IP-SJ values and objectives, by country and on a global level. Analyzing the activity, such as mapping a country’s total intellectual property filings by residents and foreign filings, and comparing it to the gross domestic product (GDP) of that country, could give an overview on the countries’ economic performance. In addition to the data on the application of procedural norms on the administration of intellectual property rights, case studies give interesting insights on how the substantive norms are used to foster economic, social, and cultural development in developed, developing, and the least developed countries. The WIPO database, in this respect, is home to at least 225 case studies, from Algeria to Zimbabwe, in a wide variety of industries,151 showcasing how the applications of copyright and related rights, geographical indications and appellations of origin, industrial designs, integrated circuits, patents, plant breeders’ rights, trade secrets, trademarks and utility models unfold in auditing intellectual property assets, branding, commercialization, financing, franchising, intellectual property dispute resolution, intellectual property enforcement/infringement, intellectual property management, intellectual property valuation, licensing, partnerships, patent information, research and development and women and intellectual property. A WIPO database search on the keywords “social justice” returns 75152 case studies on intellectual property, including “Branding, Business Ethics and Success”153 concerning Mozambique, “Empowering Rural Communities in the Pacific”154 concerning Fiji, and “Licensing to Save Lives”155 concerning India.156 D. Impact Assessment: Tracking Compliance and Noncompliance by Country In addition to tracking implementation of and the effect of following general international norms, tracking of the extent of adherence to ratified treaties and the attendant IP-SJ obligation is required. Various international actors monitor various diverse aspects of compliance with international norms including treaties. For example, the WTO monitors the countries to ensure compliance with the TRIPS Agreement.157 With respect to the field of the diversity of cultural

151

152

153

154

155

156

157

footwear, farming, fishing, food products, durable and nondurable household products, personal products, pharmaceuticals, biotechnology, building materials, fixtures, leisure goods, restaurants and bars, containers and packaging, electronic and electrical equipment, healthcare equipment and services, industrial engineering, software and computer services, technology hardware equipment, financial services, retail, industrial transportation, oil and gas, utilities, media, travel and tourism. See https://www.wipo.int/ipadvantage/en/search_fulltext.jsp?keyword=social+justice/. For a collection of case studies highlighting how IP has been used to foster economic, social, and cultural development in Southeast Asian nations, See IP Successes in the ASEAN Region, WIPO, 2014, https://www.wipo.int/edocs/pubdocs/en/intproperty/asean_ studies/asean_region_ip_successes.pdf (presenting case studies from Brunei, Cambodia, Indonesia, Lao People’s Democratic Republic, Malaysia, Myanmar, Philippines, Singapore, Thailand and Viet Nam). Case study in the field of Copyright and Related Rights and Trademarks, in the Clothing and Accessories industry, last updated on May 7, 2013, https://www.wipo.int/ipadvantage/en/details.jsp?id=2679. Case study in the field of Trademarks, in personal products industry, last updated Sept. 21, 2015, https://www.wipo.int/ ipadvantage/en/details.jsp?id=3712. Case study in the field of Patents, in Pharmaceuticals and Biotechnology industry, last updated Sept. 16, 2015, https:// www.wipo.int/ipadvantage/en/details.jsp?id=2916. Additional information is available through more general online searches, but as with other general online searches results that are returned range from self-serving press releases, to credible news reports, to peer-reviewed academic studies. See generally Watal, supra note 32 (providing understanding of how the WTO monitors compliance with the TRIPS Agreement by countries). See, e.g., Reshaping Cultural Policies for the Promotion of Fundamental Freedoms and the Diversity of Cultural Expressions, UNESCO, 2018–22, https://en.unesco.org/creativity/activities/reshaping-cultural-policies-promotion-fun damental (detailing the monitoring and capacity development project with the support of Swedish International

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

432

Zehra Betul Ayranci

expressions, UNESCO is the main international actor responsible and accountable for tracking compliance with the international norms including relevant treaties within UNESCO’s book of business.158 In all instances, tracking country compliance would include tracking adherence to the principles of IP-SJ. Sometimes an international actor may be concerned with a more focused geographical area but addresses compliance with larger or more general policy fields of concern. For example, the EU could provide useful guidance about how one can track compliance with the international norms by countries and larger units like commercial trade zones, e.g., the EU or the U.S.– Mexico–Canada trade zone. The tracking done in the EU at present is based on the reporting obligations prescribed in the enforcement provisions of the EU directives and regulations.159 EU member countries are mandated to “communicate to the [European] Commission in due time all the information necessary for the [European] Commission to draw up . . . reports” that include certain detailed assessments of enforcement and that “conclude whether [the relevant EU] Directive has achieved its objectives” and whether it would be appropriate to expand or reduce its scope, and “shall identify, where possible, areas for burden reduction with a view to a possible revision of [the relevant EU] Directive.”160 Failure to report, or lack of compliance, leads to accountability and liability for the noncompliant country. A recent example is that the European Commission instigated, in November 2016, noncompliance proceedings against 17 European states for failing to report that they had implemented copyright provisions of the Marrakesh Treaty into their national law.161 Tracing the compliance with and assessing the impact of IP-SJ norms in practice would paint an informative picture of (i) whether the domestic laws fulfill their objectives, (ii) whether domestic laws accurately reflect the object, purpose, and purview of the international legal instruments that they are based on, (iii) whether international standards, norms, and flexibilities set by the international legal instruments fulfill their objectives, and (iv) whether there is a need for adjustment at national, regional, or international level in the objective, scope, obligations, enforcement mechanisms, or accountability mechanisms pertaining to the legal instruments or actors.162 The reasons for noncompliance and the basic needs to be fulfilled to ensure compliance must be also taken into consideration at each stage of assessment.

158

159 160

161

162

Development Cooperation Agency in Algeria, Bangladesh, Burkina Faso, Colombia, Ethiopia, Indonesia, Jamaica, Mali, Mauritius, Mongolia, Palestine, Peru, Senegal, Uganda, United Republic of Tanzania, and Zimbabwe). See, e.g., supra note 125 (obligating the European Commission “[b]y 28 June 2030, and every five years thereafter . . . [to] submit to the European Parliament, to the [European] Council, to the European Economic and Social Committee and to the Committee of the Regions a report on the application of this [European Accessibility] Directive”); see also supra note 49 at art. 13(4) “[The European Union] Member States shall report to the [European] Commission by 19 December 2021 and every two years thereafter on the implementation of paragraphs 1 and 2”). See supra notes 132 and 133 for paras. 1 and 2. Id. Mathilde Pavis, Marrakesh Treaty Is No Paper Tiger: EU Commission Sues 17 Countries for Non-Compliance, The IPKat, Nov. 28, 2018, https://ipkitten.blogspot.com/2018/11/marrakesh-treaty-is-no-paper-tiger-eu.html. See, e.g., Frankel, supra note 60 (examining the varying interpretation of international agreements in different jurisdictions, questioning whether intellectual property laws, and their application are achieving their intended objectives and purpose on a national and international scale). Technology and Innovation Support Centers (TISC) Progress and Needs Assessment Questionnaire 2019, Summary Report, the International Bureau of WIPO, 2020, at 18, https://www.wipo.int/export/sites/www/tisc/en/doc/tisc_ survey_2019.pdf (survey including Algeria, Angola, Azerbaijan, Botswana, Costa Rica, Democratic Republic of Congo, Egypt, Ethiopia, Honduras, Indonesia, Jordan, Kenya, Kyrgyzstan, Madagascar, Morocco, Mozambique, Myanmar, Namibia, Niger, Pakistan, Panama, Philippines, Russian Federation, South Africa and Uzbekistan, listing the answers to various questions including Question 13 “What are the main challenges faced by your institution in providing TISC services?”).

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

Intellectual Property Social Justice on the International Plane

433

One of the most overlooked issues relevant to serving IP-SJ is that many developing countries lack Internet access or reliable Internet.163 Because international programs aiming to support developing countries assume or require pre-existing Internet access and information technology infrastructure, this disconnect creates real problems.164 A striking example at the treaty level is the “Internet treaties,” which refers to the WIPO Copyright Treaty (WCT)165 and the WIPO Performances and Phonograms Treaty (WPPT),166 both of which originated in an effort167 to modernize the Berne Convention to fit the increasingly digital age built around the Internet. The WCT and the WPPT are also known as the Internet treaties because they both address the challenges posed by digital technologies with regard to copyrighted works.168 The Internet treaties are beneficial for the developed countries “that already have extensive use of digital networks,”169 but nearly useless for the developing countries with unreliable or no Internet access. However, interestingly, a majority of the countries that adopted these treaties are developing countries.170 It could be because of (i) national economy, and (ii) individual, creator or creation focused reasons. With regard to individual reasons, the Internet treaties promise to assist creators from all countries when their works and other subject matter are used in the digital form without their authorization. The national economy focus suggests that the implementation of the Internet treaties hopefully and presumably “encourages outside investment.”171 Tracking on a regular basis the state of outside investment relatable to this premise would be useful to assess the impact and see whether the Internet treaties indeed deliver on their IP-SJ promise.

163

164 165

166

167

168

169

170

171

One example is the WIPO Technology and Innovation Support Center (TISC) program that “provides innovators in developing countries with access to locally based, high quality technology information and related services, helping them to exploit their innovative potential and to create, protect, and manage their intellectual property rights” and whose aims, since 2009, are “fostering innovation and reducing the knowledge gap between developing and industrialized countries.” See Technology and Innovation Support Centers, WIPO, https://www.wipo.int/tisc/en/. See supra note 88. The WCT focuses on protection for authors of literary and artistic works. See supra note 89. The WPPT protects certain copyright-related rights of performers and producers of phonograms (i.e. sound recordings). These more recent WIPO efforts began in 1989, also known as the “Berne Protocol” process, conceived as a mechanism to modernize the Berne Convention through a protocol, with respect to the use of copyrighted works in digital environments. The process was split in 1992 into two phases, which resulted in two new intellectual property treaties: (i) the WCT as an update of copyright protection, and (ii) the WPPT concerning protection of the rights of performers and producers of phonograms. The Advantages of Adherence to the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), International Bureau of WIPO, at 2, https://www.wipo.int/export/sites/www/copyright/en/activities/ pdf/advantages_wct_wppt.pdf. The Advantages of Adherence to the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), International Bureau of WIPO, at 2, https://www.wipo.int/export/sites/www/copyright/en/activities/ pdf/advantages_wct_wppt.pdf. PCIPD/3/9: The Digital Agenda: Implementation of the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), International Bureau, Permanent Committee on Cooperation for Development Related to Intellectual Property, Third Session, Geneva, 2002, at 2, https://www.wipo.int/edocs/mdocs/ mdocs/en/pcipd_3/pcipd_3_9-main1.doc. The Advantages of Adherence to the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), International Bureau of WIPO, at 7, https://www.wipo.int/export/sites/www/copyright/en/activities/ pdf/advantages_wct_wppt.pdf. See also Edwin Mansfield, Intellectual Property Protection, Direct Investment, and Technology Transfer, Germany, Japan, and the United States, International Finance Corporation of the World Bank Discussion Paper 27, 1995 (the study of 14 developing countries finding that “in relatively high-technology industries . . . a country’s system of intellectual property protection often has a significant effect on the amount and kinds of technology transfer and direct investment to that country by Japanese and German, as well as U.S. firms”). Least Developed Country Category: Afghanistan Profile, United Nations, https://www.un.org/development/desa/ dpad/least-developed-country-afghanistan.html. The World Bank in Afghanistan, Overview, https://www.worldbank .org/en/country/afghanistan/overview.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

434

Zehra Betul Ayranci

Other basic needs widely reported by developing countries are the insufficiency of staff and experts to enforce the intellectual property norms and lack of awareness of intellectual property protection and processes. Afghanistan, one of the least developed countries in the world,172 for example, repeatedly states two major challenges faced in the implementation and enforcement of intellectual property norms as: “[i] Insufficiency of IP experts and Awareness and enforcing IP rules, [ii] and lack of Academic studies on IP information.” To remedy these deficits, the Afghanistan delegation has repeatedly requested, since 2013, that a WIPO Technology and Innovation Support Center be established at Kabul University;173 however; at the time of writing this chapter, there is no TISC established in Afghanistan,174 and no response nor reasoning as to why such requests were not responded to was found. A functioning system of tracking, assessment and accountability is a sine qua non to achieve a working and meaningful international legal system. Without consensus, compliance, assessment and accountability of and among all stakeholders, social justice is no more or near than a dream far away.

conclusion This chapter attempted to present a bird’s-eye view of the international status quo on the extent to which the IP social justice principles of equitable access, inclusion, and empowerment, particularly with respect to the rights and interests of marginalized groups, are taken into account in the positive law comprised of international instruments and initiatives concerning intellectual property as well as human rights, culture, and identity. Other chapters in this volume explore specific IP-SJ challenges in the global IP ecosystem, from gender inequity175 to IP endeavor as human development and empowerment.176 As a prerequisite to addressing these and other IP social justice deficiencies, it is necessary to map the major institutions on international and supranational levels, and explore their roles and current positions in the international set-up of IP-SJ, as well as some of the fundamental, ongoing and current issues with regard to consensus, interpretation, discretion, compliance and impact assessment at the national, regional and international level. In doing so, this chapter concludes that stressing the importance of consensus among stakeholders on key matters, accountability by the international and national actors in delivering the objectives prescribed by their founding documents, interpretation of international legal instruments in a holistic manner by taking into consideration their object and purpose, as well as other related instruments, tracking country compliance with respect to enacting the international norms in the national laws and enforcement of the same, a solution for basic IP-SJ needs can be found. Ultimately, to achieve a working and meaningful international IP legal system, the interests of all stakeholders should be comprehensively considered and appropriately addressed through existing and forthcoming instruments, with the support of dialogue and soft law mechanisms, by acknowledging the fundamental social justice obligations and effects of IP protection and adherence to the principles of equitable access, inclusion, and empowerment in the implementation of the global IP regime. 172

173

174 175

Speech of Afghan delegation at the 51th Assemblies of the Member States of WIPO, Geneva, 23 Sept.–Oct. 2, 2013, https://www.wipo.int/edocs/mdocs/govbody/en/a_51/a_51_afghanistan.pdf. See also Speech of Afghan delegation at the 54th Series of Meetings of the Assemblies of the Member States of WIPO, Geneva, Sept. 22, 2014, https://www .wipo.int/edocs/mdocs/govbody/en/a_54/a_54_afghanistan.pdf (repeating the same request as 2013). In 2020, at the time of writing this chapter, there was no TISC established in Afghanistan, despite multiple requests over the span of at least seven years. See the complete list of TISCs, Directory of Technology and Innovation Support Centers https://www.wipo.int/tisc/ en/search/list.jsp. See Potočnik, supra note 45. See Osei-Tutu, supra note 48.

https://doi.org/10.1017/9781108697613.027 Published online by Cambridge University Press

20 Intellectual Property, Social Justice, and Human Development Empowering Female Entrepreneurs Through Trademark Law J. Janewa Osei-Tutu

Introduction I. IP and Gender A. Gender and Human Development II. The Sustainable Development Goals III. IP and Human Development IV. Using Trademarks to Empower Women V. Geographical Indications and Collective Gendered Production Conclusion

page 435 437 438 439 441 442 444 447

introduction There is a growing literature on the relationship between gender and intellectual property (IP). This chapter contributes to the literature by exploring gender and IP in relation to human development. The existing literature mapping the relationships between IP and gender has identified some of the ways that women have been disadvantaged by the IP system and I recognize the importance of these contributions. In this chapter, however, I seek to explore how IP laws, and trademarks in particular, can be used to promote human development for women, in fulfillment of the mandates of IP social justice (IP-SJ). This chapter focuses on trademarks because they are essential to businesses, large and small, that seek to develop and maintain their brands. In the United States, for example, female-owned businesses make up approximately 40 percent of small businesses. Moreover, women of color comprise 50 percent of those female-owned businesses.1 However, female owned businesses account for less than 5 percent of national business revenues.2 Furthermore, even though minority women make up 50 percent of women business owners, nonminority owned businesses earned nearly three times as much as businesses owned by minority women in 2019.3 This data suggests that there are both gender and racial 1

2

3

The 2019 State of Women-Owned Businesses Report, https://www.nawbo.org/resources/women-business-ownerstatistics. Score, The Megaphone of Mainstreet: Women’s Entrepreneurship 2 (Spring 2018), https://www.score.org/resource/ megaphone-main-street-women-entrepreneurs. See also The 2019 State of Women-Owned Businesses Report 5, https:// www.nawbo.org/resources/women-business-owner-statistics. See id. In 2019, minority owned female businesses earned slightly under $66,000 in revenue, while nonminority female businesses earned an average of $218,800 in revenue.

435 https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

436

J. Janewa Osei-Tutu

disparities in the business context. In developing countries, the gaps between women and men may be even more significant. Trademarks could be strategically used to help narrow the gender wealth gap. As is well known, the value of Coca-Cola is primarily due to the value of the brand, rather than the sugary drink inside the bottle.4 The question here is whether women leaders and entrepreneurs are empowered to leverage their brands adequately. Consider, for instance, the Black Lives Matter movement, which was started by women.5 There is Black Lives Matter merchandise, but this coalition of activists has not strategically trademarked Black Lives Matter or BLM to monetize the Black Lives Matter branding. A related example is that of Aunt Jemima, who was depicted by a Black woman “mammy” on pancake mix boxes and syrup bottles. The branding was effective and lucrative. Following the massive protests over the brutal killing of George Floyd during the summer of 2020, some companies, including PepsiCo, the owner of the Aunt Jemima brand, decided to rebrand to remove offensive names or racially stereotypical depictions.6 Regrettably, the actual woman depicted on the pancake box did not profit from the use of her image on the pancake box.7 Her family expressed disappointment that she was being removed from the Aunt Jemima brand, even though she received limited compensation or recognition for her role.8 While her identity may be protected by a right of publicity interest rather than any trademark interest she has in the Aunt Jemima brand, it is an example of how knowledge about IP rights can have economic impacts. Her identity was incorporated into the trademark belonging to Pepsico, but the real life “Aunt Jemima” was not empowered to reap the benefits of that success. There are many factors that affect women’s ability to generate income from their businesses, and IP can play a significant role. This chapter suggests that trademarks could help advance women’s human development through strategic uses in the marketplace. Viewing IP through the lens of gender and human development aligns with the IP and social justice theory developed by Professors Mtima and Jamar. Their theory contemplates the achievement of human actualization through socially beneficial intellectual endeavor, which is the social function of IP protection. This chapter, similarly, takes a view of IP that recognizes its ability to promote human development in relation to economic well-being, gender equality, human rights, and human flourishing. Promoting gender equality and other human rights is not only consistent with but is in fact mandated by IP-SJ, which maintains that the social function of IP protection can only be

4

5

6

7 8

Deven R. Desai & Spencer Waller, Brands, Competition, and the Law, 210 B.Y.U.L. 1425, 1448 (2010); David D. Mouery, Trademark Law and the Bottom Line Coke Is It!, 2 Barry L. Rev. 107, 125 (2001). Herstory, Black Lives Matter, https://blacklivesmatter.com/herstory/ (“In 2013, three radical black organizers – Alicia Garza, Patrisse Cullors, and Opal Tometi – created a black-centered political will and movement building project called #BlackLivesMatter”). https://www.wbur.org/hereandnow/2020/06/29/aunt-jemima-quaker-oats-rebrand; Ben Kesslen, “Aunt Jemima brand to change name, remove image that Quaker says is ‘based on racial stereotype’” NBC News, June 17, 2020, https://www .nbcnews.com/news/us-news/aunt-jemima-brand-will-change-name-remove-image-quaker-says-n1231260. This would be more of a right of publicity claim than a pure trademark claim. Robin Young & Alison Hagan, Family of Woman Who Portrayed Aunt Jemima Speaks Out About Quaker Oats Rebranding Decision, Here & Now, June 29, 2020, https://www.wbur.org/hereandnow/2020/06/29/aunt-jemimaquaker-oats-rebrand; Tim Kenneally, Aunt Jemima’s Heirs $3 Billion Lawsuit Against Pepsi Quaker Oats Tossed by Judge, The Wrap, Feb. 18, 2015, https://www.thewrap.com/aunt-jemima-3-billion-lawsuit-against-pepsi-quaker-oatstossed-by-judge/.

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

IP, Social Justice and Human Development: Empowering Women

437

fully achieved through a system that adheres to the precepts of socially equitable access, inclusion, and empowerment for all. There is a legitimate critique of IP’s exclusionary effects on women and racial minorities throughout the global IP ecosystem and other commentators have made those arguments elsewhere.9 The goal here is not to highlight the deficiencies in the IP system, but to discuss how IP can be used to promote human development and human flourishing. For instance, female entrepreneurs who are well informed and advised can use trademarks and branding to develop and grow their businesses.10 Before explaining the relationship between human development and IP, the next section will provide a brief overview of some of the existing scholarship on IP and gender.

i. ip and gender A relatively small number of legal scholars have analyzed IP in relation to gender, often observing the gender disparities that exist in the IP system.11 In the realm of copyright, for instance, Ann Bartow analyzed the structure of copyright law, fair use, and the types of works that are able to obtain protection.12 Writing about gender and copyright, she contends that the structure of U.S. copyright laws benefits men.13 Although the law may appear to be neutral,14 copyright laws, Carys Craig argues, “were written by men to embody a male vision of the ways in which creativity and commerce should intersect.”15 Craig suggests that the author who enjoys a flash of genius is, “fundamentally patriarchal.”16 Creative fields and products traditionally perceived as female, such as food recipes or clothing design and manufacture, are largely not protected by IP rights.17 Fan fiction is another area where IP and gender intersect. Betsy Rosenblatt and Rebecca Tushnet underscore the importance of fair use and fair dealing doctrines in copyright law for fan

9

10

11 12

13

14 15 16 17

See Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries;; Deidré A. Keller & Anjali S. Vats, A Primer on Critical Race Intellectual Property; Zvi S. Rosen, Unequal Copyright in the Nineteenth Century; and Robert Brauneis, Copyright, Music, and Race: The Case of Mirror Cover Recordings, respectively chs. 23, 26, 11, and 9 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See generally Miriam Marcowitz-Bitton, Yotam Kaplan, & Emily M. Morris, Unregistered Patents & Gender Equality, 43 Harv. J. L. & Gender 47 (2020); Kara W. Swanson, Intellectual Property and Gender: Reflections on Accomplishments and Methodology, 24 Am. U. J. Gender, Soc. Pol’y, & L. 175 (2015). See Lateef Mtima, What Is Intellectual Property (And Why Should You Care About It Anyway?), Prolusion in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Swanson, supra note 9. Ann Bartow, Fair Use and the Fairer Sex: Gender, Feminism, and Copyright Law, 74 J. Gender, Soc. Pol’y & L. 551 (2006); Betsy Rosenblatt & Rebecca Tushnet, Transformative Works: Young Women’s Voices on Fandom and Fair Use, in eGirls, eCitizens: Putting Technology, Theory and Policy into Dialogue with Girls’ and Young Women’s Voices 385 (Jane Bailey & Valerie Steeves eds., 2015). Bartow, supra note 12, at 551; Carys J. Craig, Feminist Aesthetics and Copyright Law: Genius, Value, and Gendered Visions of the Creative Self, in 10 Protecting and Promoting Diversity with Intellectual Property Law 290 (2014). Bartow, supra note 12, at 555. Id. at 557. Craig, supra note 13, at 290. Id. at 283; Shelley Wright, A Feminist Exploration of the Legal Protection of Art, 7 Can. J. Women & L. 59, 80–81 (1994) (arguing that copyright law’s emphasis on authors as single entities rather than collaborative groups favors masculine approaches to creativity); Dan L. Burk, Copyright and Feminism in Digital Media, 14 Am. U. J. Gender Soc. Pol’y & L. 519 (2006); Sonia K. Katyal, Performance, Property, and Slashing of Gender in Fan Fiction, 14 Am. U. J. Gender Soc. Pol’y & L. 461 (2006).

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

438

J. Janewa Osei-Tutu

fiction.18 They explain that fair use is an important exception to copyright protection and fan works because such works, provided that they are transformative, may be legally permissible fair use of the copyrighted work. Fan works are popular among female creators and give them an opportunity for expression of their gender and cultural identities.19 IP laws are not neutral, it is argued, but have been used “to silence transgressive depictions of sexuality, sexual identity, and gender expression.”20 As it relates to patent law, another set of scholars observed that a small number of women are named inventors on patents as compared to men.21 There are a variety of explanations offered for this discrepancy, ranging from childcare obligations to the high costs of patenting.22 One suggestion put forth is to create a system of unregistered patents to make patents more accessible to female inventors.23 Whether such proposals could be adopted in light of the requirement for patentability goes beyond the scope of this chapter. However, it is worth noting, as these authors do, that U.S. law protects unregistered trademarks, which are also permissible under international law and in some other jurisdictions.24 While acknowledging that IP laws can have a discriminatory effect, this chapter contemplates how IP laws, and more specifically trademark law, can be used as a tool to advance women’s human development. As the next section explains, there a clear relationship between gender and human development. A. Gender and Human Development Traditionally, development was assessed primarily based on measures such as gross domestic product and other economic indicators of growth, but the concept of development has evolved over time to embrace a more holistic approach. As such, there is now a greater willingness to consider the combination of factors that affect human development rather than focusing primarily on economic development.25 Human development is closely associated with the work of economist Amartya Sen, and scholars such as Martha Nussbaum. Human development and the related concept of human flourishing are about enabling human beings to reach their fullest potential. Human 18

19

20

21 22 23

24

25

See Elizabeth L. Rosenblatt, User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks, ch. 16 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Rosenblatt & Tushnet, supra note 12 at 385–86. Rosenblatt & Tushnet, supra note 12, at 387 (“Through fan remix, young women learn that they can be makers, and that their expression is valuable because it is their own”); id. at 388 (“Fanworks also permit young women to explore issues of gender and sexuality”); id. at 389. Sonia K. Katyal, Slash/ing Gender and Intellectual Property: A View from Fan Fiction, in Diversity in Intellectual Property: Identities, Interests, and Intersections 315 (Irene Calboli & Srividhya Ragavan eds., 2015) (“[B]y creating a fictional ‘equal’ world that transgresses gender, it enables women from all walks of life to slash gender itself”). Id. at 327. Marcowitz-Bitton, Kaplan, & Morris, supra note 9, at 54–55. Id. Id. at 73–76 (“We propose a new approach for narrowing the gender gap. As a temporary measure, until such time that women no longer face such steep obstacles in obtaining access to patent protections, we propose implementing an unregistered patent rights regime as an alternative for women and other disadvantaged inventors to protect their inventions. The regime would be limited in scope and term but would provide women with a degree of protection regardless of registration”). Id. at 73–74. Agreement on Trade-Related Aspects of Intellectual Property Rights [hereinafter TRIPS Agreement], art. 16.1, Apr. 15 1994. U.N. Development Programme, Human Development Report 2020 (2020), http://hdr.undp.org/sites/default/files/ hdr2020.pdf.

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

IP, Social Justice and Human Development: Empowering Women

439

development achieved global recognition when the United Nations (UN) adopted it as a measure for national progress. The UN Human Development Index recognizes that economic progress alone is not an adequate measure of progress.26 It measures economic development, but also progress in relation to well-being, including health and education.27 As Amartya Sen has stated, human development is about the richness of human life. Gender is pertinent because women make up slightly more than half of the human population. Human development is affected by several things, including nutrition and education. Female children may not be given the same educational opportunities as male children, or they may not be given priority when it comes to food. Human development is also about the neglect of women in business and employment,28 because women may not have the same opportunities as men with regard to business or employment opportunities. Gender and human development are inextricably linked, and, as the next section outlines, there are sustainable development goals that implicate gender.

ii. the sustainable development goals The Sustainable Development Goals (SDGs) outline several ambitious goals that UN member states have agreed to strive towards. The SDGs are explained as a “call for action for all countries – poor, rich, middle-income, to promote prosperity while protecting the planet.”29 There are several SDGs that are relevant to IP and to women’s progress and flourishing. Among the most relevant SDGs are SDGs 1–5 as well as SDGs 9 and 10. The first two SDGs are to end poverty and hunger. Although they are about economic well-being, these SDGs also pertain to other aspects of human flourishing. Ending poverty and hunger affects the third SDG, which is good health and well-being. These first two SDGs, poverty and hunger, will be improved by increases in financial well-being. Increased financial capability also has the potential to improve health outcomes, which is the third SDG. The goal of eliminating poverty, while not specifically mentioning women, is particularly relevant for women because they suffer greater poverty impacts. Poverty affects both men and women. According to studies of people who are poor and living in a household in developing countries, women and girls are 50 percent of those affected by poverty. However, in European countries poverty is most significant among single mothers, as well as older women who live alone. Indeed, single women who are older are significantly more likely to be poor than similarly situated men. Further, married women who live in developing countries have less access to cash income than married men.30 Education is another area where there is a gender disparity. SDG 4 is “quality education.” Education has an impact on women’s earning power, as it does on the earning power of other individuals, but more educated women means there are better opportunities for the children in

26

27 28

29 30

The Human Development Index was created to emphasize that people and their capabilities should be the ultimate criteria for assessing the development of a country, not economic growth alone. Human Development Reports: Human Development Index, U.N. Dev. Programme, http://hdr.undp.org/en/content/human-development-index-hdi. Id. Dr. Amartya Sen, Women: Survival and Empowerment, lecture by Dr. Amartya Sen at the Jaya Lecture Series, Apr. 14, 2015 https://www.youtube.com/watch?v=y7Ptuzghxgg. The 17 Goals, United Nations Dep’t of Econ. & Soc. Affairs, https://sdgs.un.org/goals. The World’s Women 2015 Report, United Nations Dep’t of Econ. & Soc. Affairs, 194–95, https://unstats.un.org/ unsd/gender/downloads/WorldsWomen2015_report.pdf.

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

440

J. Janewa Osei-Tutu

the household.31 If the mother is educated it also means a higher income for the household because every reduced year of schooling leads to a reduction of between 10 and 20 percent in income.32 Education alone is not determinative of economic success, but it certainly helps girls and women to increase their opportunities as well as opportunities for their families. Studies have also found a correlation between maternal education and child health outcomes.33 If the mother is educated it results in less hunger and malnutrition for the children as well as greater ability to reduce damaging effects of cultural practices such as early childhood marriage or domestic abuse.34 Some of these gender disparities could be reduced if more women had more choices, including more opportunities to own successful small businesses. These small businesses create access to independent income, which can affect a woman’s ability to access healthcare and education. Gender equality is expressly addressed by SDG 5. More specifically, SDG 5 is to “achieve gender equality and empower all women and girls.”35 There are a number of sub-goals that are identified as targets under SDG goal 5. The first target is to end discrimination against girls and women everywhere. Other relevant targets include target 5.5, which is to ensure women’s effective participation and equal opportunities for leadership at all levels of decisionmaking in political economic and public life.36 Also pertinent is target 5.a, which is to “undertake reforms to give women equal rights to economic resources as well as access to ownership and control over land and other forms of property, financial services, inheritance and natural resources, in accordance with national laws.”37 As will be discussed below, this ownership and control of property can include intangible property such as trademarks or traditional indigenous knowledge. More specifically, IP rights can be linked to SDG 9, which is “industry, innovation, and infrastructure.” The SDGs embrace a human rights approach to development.38 Relevant human rights instruments include the Universal Declaration of Human Rights and its two covenants, the International Covenant on Economic, Social and Cultural Rights39 and the International Covenant on Civil and Political Rights.40 In addition, the Declaration on the Right to Development (the Development Declaration),41 which preceded the SDGs, offers a framework that supports the concept of using IP laws to 31

32 33

34 35 36 37 38

39

40 41

Global Campaign for Education, Girls Can’t Wait: Why Girls’ Education Matters and How to Make It Happen Now, 13 Reprod. Health Matters 19–22 (2005), http://www.jstor.org/stable/3776224. Id. Sonalde Desai & Soumya Alva, Maternal Education and Child Health: Is There a Strong Causal Relationship?, 35 Demography 71, 78 (1998) (noting that several studies have confirmed that there is a correlation, but the extent of the correlation is not clear). Global Campaign for Education, supra note 31. Goal 5, United Nations Dep’t of Econ. & Soc. Affairs, https://sdgs.un.org/goals/goal5. Id. Id. Office of the High Commissioner, United Nations Human Rights, Human Rights and the 2030 Agenda for Sustainable Development (“The SDGs are the result of the most consultative and inclusive process in the history of the United Nations. Grounded in international human rights law, the agenda offers critical opportunities to further advance the realization of human rights for all people everywhere, without discrimination.”), https://www.ohchr.org/ en/issues/SDGS/pages/the2030agenda.aspx. International Covenant on Economic, Social and Cultural Rights, opened for signature Dec. 16, 1966 (entered into force Jan. 3, 1976), https://www.ohchr.org/Documents/ProfessionalInterest/cescr.pdf. Id. Declaration on the Right to Development, adopted Dec. 4, 1986, https://www.ohchr.org/Documents/ ProfessionalInterest/rtd.pdf.

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

IP, Social Justice and Human Development: Empowering Women

441

empower women. The Development Declaration incorporates human rights law in its approach to development.42 The integration of human rights is evident from the preamble for the Development Declaration, as well as its provisions.43 For example, the first article of the Development Declaration characterizes the right to development as an inalienable human right “by virtue of which every human person and all peoples are entitled to participate in, contribute to, and enjoy economic, social and cultural development.”44 It also recognizes a people’s right to self-determination, which includes full sovereignty over their natural wealth and resources.45 This may have implications for the role of women in the production of traditional handicrafts or indigenous and traditional knowledge, for example. Finally, there are international human rights agreements that specifically address gender equality, such as the Convention on the Elimination of All Forms of Discrimination Against Women.46 Its preamble notes, for example, that in situations of poverty, women have “the least access to food, health, education, training and opportunities for employment and other needs.”47 Since the SDGs aim to eliminate poverty, hunger, and gender inequality, they further the objectives of the Convention on the Elimination of All Forms of Discrimination Against Women. In sum, there are various SDGs, and human rights instruments, that are pertinent to women and their human development, as well as that of their families. As discussed, IP and more specifically trademarks and geographic indications, can be used as tools to empower women on the path towards expanding and fully realizing their human potential.

iii. ip and human development A human development framework aligns well with the goals of innovation and progress that are central to IP laws. The World Intellectual Property Organization (WIPO), for instance, acknowledges the relationship between IP rights and global development.48 Indeed, the WIPO has a committee that works on IP and development as part of its Development Agenda.49 This connection between IP and development is logical because IP laws are meant to stimulate innovation and progress, which are often framed in relation to copyright and patent laws. Trademarks can also stimulate progress to the extent that they can be used to improve opportunities for female entrepreneurs.

42

43 44 45 46

47 48

49

Human Rights Council, Implementation of the Recommendations of the Working Group on the Right to Development, Endorsed by the Human Rights Council in Resolution 12/23: Right to Development, A/HRC/15/WG.2/TF/CRP.5 (Jan. 14, 2010), at 4, 6. Declaration on the Right to Development, supra note 41, preamble (referencing the UDHR and the two covenants). Id. art 1.1. Id. art. 1.2. Convention on the Elimination of All Forms of Discrimination Against Women, opened for signature Dec. 18, 1979 (entered into force Sept. 3, 1981), https://www.ohchr.org/Documents/ProfessionalInterest/cedaw.pdf. Id. See, e.g., Millennium Development Goal 1: Eradicate Extreme Poverty and Hunger, WIPO, http://www.wipo.int/ipdevelopment/en/agenda/millennium_goals/millennium_goal_1.html (“The intellectual property (IP) system plays an important role in the agricultural sector, in particular in agricultural innovation and food security. In 2009, WIPO established the Program on IP and Global Challenges, with one of its priorities to deal with issues relating to IP and food security”); WIPO, The Role of Intellectual Property in Development and WIPO’s Development Cooperation Program, in WIPO Intellectual Property Handbook: Policy, Law and Use 161 (2004). WIPO, The Role of Intellectual Property in Development and WIPO’s Development Cooperation Program, in WIPO Intellectual Property Handbook: Policy, Law and Use 161 (2004).

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

442

J. Janewa Osei-Tutu

As discussed, the human development indices that are used by the UN measure the health of the population, literacy, educational attainment, life expectancy, and a variety of factors that are indicative of the quality of life.50 In particular, progress can be understood more broadly to include economic progress, scientific, and artistic progress, but also progress in relation to health and education. Like human development, IP progress encompasses human flourishing and well-being, and is not limited to the financial impact of IP rights. Indeed, IP can be used to enhance human rights such as freedom of expression,51 the right to participate in cultural life, and the right to development, among others. The right to participate in cultural life includes the right to “freely participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits.”52 Clearly, IP rights are related to culture and cultural life in various ways. Copyright, for example, incentivizes the production of literary and artistic works. Trademarks are also an important aspect of cultural life. This is increasingly true as trademarks and brand identity become more than source indicators; they are also important aspects of cultural conversation.53 Strengthening the relationship between IP, gender, and human development is a matter of strategic use of the existing system to benefit women. A starting point is to empower women to use the IP system to their advantage.54 This is not intended to negate the reality that IP has been used as a tool of oppression, nor to disregard the documented inequalities that exist in the system. The suggestion here is that, by adopting a more expansive and human-centered view of IP’s purpose, IP can be reframed as a tool for human development, which includes gender equality. As the next section explains, although trademarks do not directly incentivize innovation, nonetheless they do play a crucial role in the marketplace of innovative goods, and for businesses in general.

iv. using trademarks to empower women Human development is a global issue, but since IP laws are territorial, each country has its own standards for what can be protected as a trademark or a geographical indication. While this chapter will focus primarily on the U.S. approach to trademarks, there is international agreement about what must be protected as a trademark. The World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) and the Paris Convention for the Protection of Industrial Property are the two primary international agreements that address the substantive requirements for trademarks.55 The TRIPS Agreement 50

51

52 53

54

55

J. Janewa Osei-Tutu, Human Development as a Core Objective of Global Intellectual Property, 105 Ky L.J. 1 (2016). See also Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on Intellectual Property, Innovation, and Entrepreneurship, ch. 6 in Entrepreneurship and Innovation in Evolving Economies: The Role of Law (Megan Carpenter ed., 2012). See Steven D. Jamar, A Social Justice Perspective on the Role of Copyright in Realizing International Human Rights, 25 Pac. McGeorge Global Bus. & Development L.J. 289 (2012). G.A. Res. 217 (III) A, Universal Declaration of Human Rights, art. 27.1 (Dec. 10, 1948). See Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law; and Mariana Bernal Fandiño, Controversial Trademarks: A Comparative Analysis, respectively chs. 2 and 21 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Lateef Mtima, What Is Intellectual Property (And Why Should You Care About It Anyway?), Prolusion in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). TRIPS Agreement, supra note 24.

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

IP, Social Justice and Human Development: Empowering Women

443

requires that “any sign or combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings” is protectable as a trademark.56 Trademarks can be helpful tools for businesses and they can become valuable assets as well. A trademark is a symbol that a business can use to distinguish itself in the marketplace. It is an indicator of source that provides the customer with information about the producer of the product or service. This makes trademarks tremendously beneficial for entrepreneurs because they are integral to building the business brand. Trademarks also serve consumer interests by enabling them to efficiently select their preferred product from a range of competing products. The customer can anticipate that the product or service will have the qualities that she has come to expect from prior purchases or as a result of advertising. The effective use of trademarks can help a business to build its brand and the corresponding goodwill. As the United States Supreme Court has observed, the purpose of trademarks is to “secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers. National protection of trademarks is desirable . . . because trademarks foster competition and the maintenance of quality by securing to the producer the benefits of good reputation.”57 Learning how to use trademarks to their advantage could be empowering for female entrepreneurs. This is not formal education, but it is business-related education and information that is useful to women to the extent that they can generate economic wealth from their trademarks and branding. This not only enables them to provide for their families, but it also gives them the potential for increased freedom and independence to make their own choices. But understanding how to use trademarks effectively may not be readily apparent. For example, in choosing a name for the business and creating a brand, one may naturally assume that the name should describe the product or service so that the public knows what to expect. However, this is the opposite of what should happen when choosing a good trademark. In this regard, selecting a trademark is counterintuitive. This is because the trademark is not meant to describe the product, but rather to indicate the source of the product. Indeed, if the chosen name or symbol describes the product or service it cannot be protected as a trademark. From a legal standpoint, the best trademarks are words that are invented, or words that have no relation to the product or service.58 For example, words such as Xerox or Exxon are fanciful marks because they are invented. This is the strongest kind of mark to have. Arbitrary marks, which are existing words that have no relation to the products are also strong. A well-known example is Apple for computers. But a mark or brand that describes the product is not ideal because the fact that it describes the product means it also describes similar products. As such, others may have a need to use that name in the marketplace. Moreover, one would not be able to obtain trademark protection without demonstrating “secondary meaning.”59 This requires the business owner to provide sufficient evidence that the public associates the name with a source and not with a product.60 An accountant who decides to brand as “Fast Accounting” will likely have to demonstrate that the public associates that name with her particular service rather than taking it as a description of the service. This makes registration more difficult and more costly. 56 57 58 59

60

Id. at art. 15.1. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774, (1992) (discussing trademarks and trade dress). Star Indus. v. Bacardi & Co., 412 F.3d 373, 385 (2d. Cir. 2005). Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 772 (1992) (discussing secondary meaning as a requirement to registering descriptive marks). Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 211 (2000).

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

444

J. Janewa Osei-Tutu

This knowledge about trademarks and the application process for trademark registration can become technical and complex. However, there are some general principles that could be shared, particularly with a view to promoting the human development of female entrepreneurs, including those in developing countries. Looking at the African continent as an example, the majority of women employed in the non-agricultural labor force operate in the informal sector.61 Female-owned businesses tend to be informal, home based, and retail or service oriented because the family and cultural constraints women face make home-based businesses more feasible for them.62 Trademark selection and brand development are not a guarantee of business or financial success. But an effective trademark and branding strategy can certainly be beneficial. Imagine a young woman in an African marketplace, selling things from her shop just outside her home. She has simply labeled her products and her shop using her name and describing the services or products: Akua’s Shea Butter or Akua’s Coconut Oil. Her product is consistently of a superior quality. Why does the branding matter? The choice of trademark can affect how easily Akua can distinguish herself in the marketplace. There may be other women with the same name and the same product who wish to call their product by their name and “shea butter” or “coconut oil.” This is why fanciful marks are accorded broader protection under the law. Competitors cannot claim that they have a business need to use the name Exxon to describe their product.63 If another Akua is selling shea butter, our Akua will have a more difficult time preventing her competitor from using the same name or a similar name because the chosen name is primarily descriptive of the product. This means that potential and existing customers will not be able quickly and easily to identify her products as coming from her as a source. This in turn makes it more difficult for her to develop her brand. Certainly, one can distinguish oneself by using a visual symbol, referred to as a logo, but this involves potentially more expense and requires additional knowledge. But awareness about the need to choose a name that is not primarily descriptive of the service or product is a simple adaptation that can help female entrepreneurs to build their brand identity and grow their businesses without increasing the costs of protection and enforcement.64 Another potentially useful form of IP protection for female entrepreneurs, particularly in relation to human development, is geographical indications.

v. geographical indications and collective gendered production Geographical indications are similar to trademarks because they are indicators of source, but they are not used exclusively by an individual enterprise. They are registered by a competent authority that can be governmental or nongovernmental, which certifies that the mark being 61

62 63 64

The World Bank, Female Entrepreneurship Resource Point: Introduction and Module 1: Why Gender Matters (“Women-owned businesses tend to be informal, home-based and concentrated in the areas of small-scale entrepreneurship and traditional sectors, which primarily includes retail and service”), https://www.worldbank.org/en/topic/ gender/publication/female-entrepreneurship-resource-point-introduction-and-module-1-why-gender-matters. Id. This is descriptive fair use. For a further discussion of the role of trademarks in establishing a position in the marketplace and related issues of economic empowerment through entrepreneurship, see Hannibal Travis, Trademarks, Legal Remedies, and Social Injustices, ch. 6 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

IP, Social Justice and Human Development: Empowering Women

445

used meets certain standards or criteria.65 While there are other geographically related source indicators, such as appellations of origin, they do not have the same global protection as geographical indications.66 All WTO member countries are required to protect geographical indications through their national laws.67 A geographical indication is defined under the WTO TRIPS Agreement as an indication that identifies “a good as originating in the territory of a member or a region or locality in that territory, where a given quality, reputation, or other characteristic of that good is essentially attributable to its geographic origin. Countries vary with respect to how they protect geographical indications. In the United States, geographical indications are protected through a combination of trademark law and labeling law.68 The main aspects of geographical indications are that, like trademarks, they are source indicators, but they communicate some quality, reputation, or characteristic of the good is related to the geographic origin. This could be, for instance, the quality of the soil or some other aspect of the climate, for example. In what ways might geographical indications be pertinent to gender and human development? Geographical indications could be a way for women in developing countries to generate more wealth in industries that are dominated by women. IP laws sometimes fail to protect work that is considered women’s work.69 This includes the lack of copyright protection for food recipes or clothing design, or the absence of IP protection for forms of intergenerational traditional knowledge. But trademarks and geographical indications could be used to fill some of the gaps. One example is shea butter, long used in West African countries, and which has become a popular product for hair and skin in the West.70 West African shea butter is predominantly made by women and is based on traditional methods that have been passed down through generations.71 In this respect, developing a geographical indication for shea butter could foster human development and human rights in relation to both gender and traditional knowledge.72 Importantly, geographical indications can be financially lucrative because they allow producers to charge premium prices.73 Geographical indication protection has enabled European producers to generate significant revenues. A study by the European Commission valued geographical indication protected goods to be worth nearly €80 billion in 2017 and the value of geographical indications for wine was even higher.74 A geographical indication is a form of collective branding, which is why geographical indications can be protected as a collective mark under U.S. law.

65 66

67 68 69

70

71

72 73

74

TRIPS Agreement, supra note 24, art. 22.1. Jose Manuel Cortes Martin, TRIPS Agreement: Towards a Better Protection for Geographical Indications?, 30 Brooklyn J. Int’l L. 117, 117–18 (2004). TRIPS Agreement, supra note 24, art. 22.2. See, e.g., 15 U.S.C. § 1052 (2020); In re Nantucket, Inc., 677 F.2d 95 (C.C.P.A. 1982). See Miriam Marcowitz-Bitton et al., Unregistered Patents & Gender Equality, 43 Harv. J. L. & Gender 47 (2020); see also Swanson, supra note 9. Rebecca Moudio, Shea Butter Nourishes Opportunities for African Women, Africa Renewal (Aug. 2013), https://www .un.org/africarenewal/magazine/august-2013/shea-butter-nourishes-opportunities-african-women. See Esther Ekong, Gender Implications of Geographical Indications for Ghanaian Shea Butter, 2 CIGI, SAIIA (2019) (describing shea butter as “an inextricable feature of the female domain”). Id. Council of Europe, Why Do Geographical Indications Matter to Us?, Doc. MEMO/03/160 1, 1, July 30, 2003, https:// ec.europa.eu/commission/presscorner/detail/en/MEMO_03_160. European Commission, https://op.europa.eu/en/publication-detail/-/publication/a7281794–7ebe-11ea-aea8–01aa75ed71a1.

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

446

J. Janewa Osei-Tutu

Since geographical indications are a type of collective source indicator that are geographybased, they become an option for protecting some traditional and intergenerational knowledge. Traditional knowledge (TK), broadly speaking, refers to intergenerational knowledge, skills, and know-how that are passed down within a community.75 TK can range from medicinal or scientific knowledge to cultural symbols, songs, and artistic works.76 Some traditional cultural handicrafts are protected through geographical indications.77 Thailand, for example, has protected geographical indications that pertain to a variety of items, including fabric made using intergenerational knowledge.78 The Chonnabot Mudmee Thai Silk is registered as a geographical indication for silk made in the Chonnabot District of Thailand and based on the intergenerational knowledge relating to weaving this particular silk product.79 Some TK will be predominantly shared among women. Shea butter has already been discussed as one example. Traditional medicinal knowledge has become more valuable as people in Western countries search for natural alternatives. Women in certain communities hold knowledge about medicinal plants and practices, particularly in relation to childbirth.80 Midwives and their assistants may be responsible for maternal care during pregnancy and delivery. In one Zimbabwean village, for instance, the majority of the midwives learned the skill from mothers, grandmothers, aunts, and great aunts.81 As part of this intergenerational knowledge, labor and childbirth are treated not strictly from a clinical medical perspective but as a combination of physical, social, and spiritual environments.82 Women may also be the primary producers and knowledge holders of traditional textiles and other cultural works.83 Geographical indication protection has the potential to recognize and reward these contributions to the health of their communities, to acknowledge and fortify the role these women play in the cultural life of the community, and to thereby utilize the IP regime to promote gender parity and socioeconomic empowerment through the IP ecosystem. Some commentators have criticized geographical indications as being too complex and expensive to help female entrepreneurs in developing countries.84 Yet, each nation is free to implement geographical indication protection in the manner that suits its domestic situation. There is no requirement that geographical indications be protected through a highly complex regime. As mentioned, geographical indications in the United States are protected through 75 76 77

78

79

80

81

82 83

84

WIPO, Traditional Knowledge, https://www.wipo.int/tk/en/tk/. Id.; Traditional Cultural Expressions, https://www.wipo.int/tk/en/folklore/. Patricia Covarrubia, Geographical Indications of Traditional Handicrafts: A Cultural Element in Predominantly Economic Activity, 50 Int’l Rev. Intell. Prop. & Comp. L. 441, 442 (2019) (discussing GI protection as a tool to protect TK handicrafts in Latin America). See generally Pajchima Tanasanti, Dir. Gen., Dep’t of Intell. Prop. Thailand, Presentation to WIPO, Geographical Indications Today: Where Do We Stand?, https://www.wipo.int/edocs/mdocs/geoind/en/wipo_geo_bkk_13/wipo_geo_ bkk_13_5.pdf. Chonnabot Mudmee Thai Silk, ECAP III, http://www.asean-gidatabase.org/gidatabase/sites/default/files/gidocs/ THGI0000052100058-en.pdf (“The intricate traditional geometric and zoomorphic motifs of Mudmee Thai silk have been passed down through the generations. The designs and patterns produced in Khon Kaen are created primarily by using colours in the weft of the fabric . . . The main link between product and territory is the human factor – the knowledge of the local villagers that has been passed down from generation to generation”). UNESCO, Gender & Local Knowledge, http://www.unesco.org/new/en/natural-sciences/priority-areas/gender-andscience/cross-cutting-issues/women-and-local-knowledge/. Jane Mutambirwa, Pregnancy, Childbirth, Mother and Child Care Among the Indigenous People of Zimbabwe, 23 Int’l J. Gynaecol. & Obstet. 275, 281 (1985). Id. at 277. C. Phochanthilath, Women’s Rights in Intellectual Property and Traditional Knowledge Protection in Lao PDR, 16 Asia-Pacific J. on Human Rights & L. 9, 11 (2015) (discussing women as traditional knowledge holders of traditional textiles in Lao society). See generally Ekong, supra note 71.

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

IP, Social Justice and Human Development: Empowering Women

447

trademark law as certification marks and labeling regulations. Other countries have special legislation for geographical indications, but this is not mandatory. If the system in a particular nation is too complicated, the goal should be to simplify the relevant laws and processes. If geographical indications can be used to effectively protect products, such as shea butter, that are largely produced by women, then geographical indications could become a powerful tool for promoting women’s human development. Geographical indications can give female entrepreneurs in developing countries more economic independence as well as increased choices and freedoms by enabling them to charge premium prices. But the benefits go beyond the immediate economic rewards. Given the collective nature, geographical indications could have positive implications for human rights, such as the right to participate in cultural life, in addition to the economic benefits they provide.

conclusion Taking the position that, by applying the precepts of IP-SJ, IP laws have the potential to increase human development and human flourishing, this chapter has explained how trademarks and geographical indications could be used as tools to empower women. Effective selection of trademarks can help female entrepreneurs to develop their brands and highlight their unique goods or services in the marketplace. In addition, geographical indications can be beneficial for female entrepreneurs, particularly in developing countries. Geographical indications enable women to engage in collective branding, which can be strategically used to protect traditional knowledge and other forms of intangible cultural heritage. Such applications of trademark and geographical indication protection address the social justice obligations of the IP regime. IP awareness and education initiatives for marginalized communities and women as to the prospective benefits of geographical indications will enable their access to and equitable inclusion in the IP system, which will in turn promote their socio-economic empowerment through IP and IP-related endeavors. The resulting benefits to women include increased financial independence, which has implications for their health and well-being, as well as enhanced self-determination and personal dignity derived from the attendant national and global recognition of their creative and entrepreneurial contributions, rights, and interests. Finally, this development-oriented use of trademarks and geographical indications supports human flourishing generally. It also bolsters various individual human rights, including the right to development, the right to freedom of expression, and the right to participate in cultural life, among others. These social justice effects of IP use and protection not only promote human development, but also enhance the social efficacy of IP protection.

https://doi.org/10.1017/9781108697613.028 Published online by Cambridge University Press

21 Controversial Trademarks: A Comparative Analysis Mariana Bernal Fandiño*

Introduction I. Limits on Registration of Controversial Trademarks A. Limits on Registration of Controversial Trademarks in the European Union B. Limits on Registration of Controversial Trademarks in the United States C. Limits on Registration of Controversial Trademarks in the Andean Community II. Refusal of Registration: Controversial Cases A. Refusal of Registration: Controversial Trademarks in the European Union B. Refusal of Registration: Controversial Trademarks in the United States 1. The Matal v. Tam case 2. The Washington Redskins case C. Refusal of Registration: Controversial Trademarks in the Andean Community 1. The trademark El pez weon 2. The trademark Pablo Escobar III. The Rights of the Victims: Social Justice in Trademark Law Conclusion

page 448 449 449 450 451 452 453 454 454 455 456 456 456 457 459

introduction Trademark regulation in many countries contains provisions that prohibit the registration of marks that are disparaging, scandalous, immoral, or offensive to a group of people in society. In the European Union (EU) and in the Andean Community, trademark regulations also deny registration of trademarks that are contrary to public policy or good manners. In the United States of America, immoral, disparaging or scandalous trademarks were banned as well according to the federal trademark statute, but in 2017 and 2019 the United States Supreme Court held that those limits violated the United States Constitutional First Amendment right of Freedom of Expression.1

* Professor at Universidad de Los Andes, member of the Los Andes University Private Law Research Group (Grupo de Investigación en Derecho Privado). J.D., Javeriana University, 2012; Master 2 Commercial Law, Paris II University, 2004; Master 2 International Private Law, Paris II University, 2005; B.A., Javeriana University, 2001. 1 Iancu v. Brunetti, 588 U. S. ___ (2019); Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744, 1754 (2017). See also Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 447 (E.D. Va. 2015).

448 https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

Controversial Trademarks: A Comparative Analysis

449

Because these limits employ very broad, imprecise terms, judges and other authorities are obligated to analyze each situation case by case in order to determine the tolerance of a trademark in a community. Indeed, public policy and good manners are dynamic concepts in society insofar as certain terms that were acceptable some time ago are not acceptable anymore and some expressions that were not tolerated may be reconsidered nowadays. For example, American companies used racially offensive trademarks such as “Nigger Head Brand” or “Niggerhair Tobacco” in a time where the country was dominated by white men, but they are not acceptable in today’s multicultural society.2 Trademark systems have strong ethical dimensions even though some opinions claim that regulation should limit its scope to technical aspects. Some authors consider that the prohibition on the registration of scandalous marks serves no proper purpose and should be retired in the face of both the evolution of cultural mores and the restriction it places on the freedom of speech.3 Based on intellectual property social justice (IP-SJ) theory, particularly its inclusion and empowerment aspects, this chapter contends that trademark law should not eliminate the limits that protect victims from insults and offenses. Limits for registration of controversial trademarks, particularly when they are scandalous and offensive, are necessary to assure the peaceful coexistence of diverse groups in society and to protect marginalized groups.4 Section 1 of this chapter will highlight the limits on registration of controversial trademarks in a comparative analysis of European Community regulation, United States regulation, and Andean Community regulation. Section 2 of this chapter will discuss the refusal of registration of some controversial trademarks in those legal systems. Section 3 of this chapter will discuss the relationship between social justice and IP law with respect to protection of the interests of victims of unethical trademarks.

i. limits on registration of controversial trademarks Various legal systems have limited the kinds of trademarks that can be registered. This chapter compares the limits for controversial trademarks in the regulation of the EU, the United States, and the Andean Community. A. Limits on Registration of Controversial Trademarks in the European Union The recent Regulation (EU) 2017/1001 of the European Parliament on European Union trademarks establishes in its article 7 the absolute grounds for refusal of trademarks, including “trademarks which are contrary to public policy or to accepted principles of morality” (article 7.1(f )). This article implements the limits established on the Paris Convention (article 6 quinquies B(iii)), which refuses the registration of trademarks that are “contrary to morality or public

2

3

4

Kimberly A. Pace, The Washington Redskins Case and the Doctrine of Disparagement: How Politically Correct Must a Trademark Be, 22 Pepp. L. Rev. 7, 8–9 (1994). Regan Smith, Trademark Law and Free Speech: Protection for Scandalous and Disparaging Marks, 42 Harv. C.R.-C.L. L. Rev. 451, 452 (2007). Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law, ch. 2 in The Cambridge Handbook on Intellectual Property Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

450

Mariana Bernal Fandiño

order.” Regulation (EU) 2017/1001 does not define the concepts of public policy or morality. Those are very broad legal concepts that are defined in the EUIPO Guidelines (2017).5 The interpretation of article 7 demands a balance between the trader’s freedom of using words and images to register a brand and the right of the public not to face trademarks that are perturbing. EUIPO Guidelines recite that the purpose of the refusal of registration in these cases is to preclude trademarks that offend basic values of the society.6 These Guidelines even explain that the refusal to register a trademark under article 7(1)(f ) EUTMR “only means that the sign is not granted protection under trademark law and does not stop the sign from being used – even in business”7 so the use is not limited by principles of freedom of expression. EUIPO Guidelines also explain that, in order to determine if a trademark is contrary to public policy, the context of the conduct of the person applying for it should not be considered. Only the intrinsic qualities of the mark8 and the evidential value regarding the perception of the relevant public9 should be taken into consideration. According to EUIPO Guidelines, “Public policy is the body of all legal rules that are necessary for the functioning of a democratic society and the state of law.” Those rules reflect a common understanding of certain basic principles necessary for peaceful communal living. Thus, we can see how the EU places IP protection within the total political economy, i.e., IP protection is part of a larger socio-legal system and is not immune from or indifferent to external values and social objectives. This contextual understanding is central to IP-SJ theory.10 A few examples of the limitations of a registration of a trademark under this prohibition are those words and images that would contravene the fundamental values of the Charter of Fundamental Rights of the European Union such as equality, solidarity, human dignity, freedom, and the basis of democracy and the rule of law. In particular, there is a list of persons and groups related to terrorist acts in the EU and there is a prohibition against supporting or benefiting anyone on that list as being against public policy. B. Limits on Registration of Controversial Trademarks in the United States The Lanham Act contains the federal statutes governing trademark law in the United States at the federal level. Section 2(a) of this Act barred registration of immoral, deceptive, disparaging, or scandalous trademarks: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it: (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other 5

6 7 8 9 10

Guidelines for examination of European Union trademarks, European Union Intellectual Property Office (EUIPO) https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/trade_marks/Draft_Guide lines_WP_1_2017/11_part_b_examination_section_4_AG_chap_7_article_7–1-f_clean_2017_en.pdf. Decision of 06/07/2006, R 0495/2005-G – SCREW YOU, § 13. Judgment of 09/03/2012, T-417/10, “¡Que buenu ye! HIJOPUTA”, § 26. Judgment of 13/09/2005, T-140/02, “INTERTOPS”, § 28. Judgment of 20/09/2011, T-232/10, “Coat of Arms of the Soviet Union”, § 57. See Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description; and Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, Introduction and ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

Controversial Trademarks: A Comparative Analysis

451

than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

This prohibition against the registration of marks that consist of or comprise immoral or scandalous matter was enacted in the Trademark Act of 1905, and was reenacted in the Lanham Act of 1946. It continued in force until the United States Supreme Court held portions of these provisions unconstitutional as violations of the United States Constitution First Amendment protection of freedom of speech.11 It has been argued that the terms “immoral” and “scandalous” and even “disparagement” of the Lanham Act in that particular matter are unconstitutionally vague because it is not clear what marks may fall under those terms and because application of them is subject to too much discretion by those making the decisions.12 In 2017, the United States Supreme Court affirmed that the disparagement clause in the Lanham Act denying registration for trademarks that “may disparage any persons” was unconstitutional on its face under the First Amendment.13 After that decision, it was uncertain if scandalous or immoral trademarks would follow the fate of disparaging trademarks and no longer be afforded protection as registered trademarks. In 2019, the Supreme Court invalidated the provision of the Lanham Act that prohibited trademark registration for immoral or scandalous marks because it “discriminates on the basis of viewpoint and so collides with this Court’s First Amendment doctrine”.14 C. Limits on Registration of Controversial Trademarks in the Andean Community The Andean Community, in Spanish the Comunidad Andina (CAN), formerly the Andean Group, is a South American organization founded to encourage industrial, agricultural, social, and trade cooperation. The members of this Community are Bolivia, Colombia, Ecuador, and Peru. The trademark law that rules the Andean Community, known as Decision 486 of 2000, establishes in Article 135 that signs may not be registered as trademarks when they: “p) Are contrary to law, morality, public policy or good manners.” Imperative rules, morality, public policy, and good manners are traditionally considered limits on private autonomy (the general freedom of contract which everyone has).15 For some authors, those limits could be reduced to the sole concept of public order (ordre publique),16 given the broad and protean nature of the concept of “public order” in civil law systems. The listing of four limits expressly, i.e., “[positive] imperative law, morality, public policy, and good manners,” serves to concretize the nature of and extent of proper limits without relying on the inherent vagueness of “public order.”

11 12

13 14 15 16

Iancu v. Brunetti, 588 U. S. ___ (2019); Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744, 1754 (2017). Ron Phillips, A Case for Scandal and Immorality: Proposing Thin Protection of Controversial Trademarks, 17 U. Balt. Intell. Prop. L.J. 55, 56 (2008). Matal v. Tam, , 582 U.S. ___, 137 S. Ct. 1744, 1754 (2017). Iancu v. Brunetti, 588 U.S. ___ (2019). Guillermo Ospina Ferna´ndez, Teorı´a General del Contrato 12 (4th ed. 1994). Sergio Muñoz, El postulado de autonomía privada y sus límites frente al constitucionalismo colombiano contemporáneo, in Neoconstitucionalismo y Derecho Privado 227, 233–34 (Beatriz Espinosa & Lina Marcela Escobar eds., 2008).

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

452

Mariana Bernal Fandiño

Imperative rules are the rules that self-autonomy cannot rule against, that is, rules that cannot be modified by contract or agreement. These rules are opposed to the dispositive rules that are used to fill in the blanks of the parties to a contract. For instance, in many countries, consumer law sets out consumer rights, that is, consumer guarantees which cannot be ignored by the parties in their contract. In many Latin American countries, for example, the sale of real estate has to be done by public deed: that is an imperative rule; the contracting parties cannot agree to effectuate the contract by other means. In the United States, certain warranties for consumer products are included in the sale of those products and cannot be modified by contract. These would be, under the usage here, “imperative rules” or “imperative law.” Public policy is a group of principles necessary for pacific community coexistence.17 Winfield defined it as “a principle of judicial legislation or interpretation founded upon the needs of the community.”18 This author explains that the notion of public policy entails that the interests of the public as a whole must be taken into account; but “in many cases what seems to be in contemplation is the interest of one section only of the public.”19 Public policy is also a dynamic concept because the interpretation of those principles changes with time in a society. Indeed, what was considered as ethically unacceptable 30 years ago may not be so today.20 Good manners are, for some authors, the moral aspect of public order.21 Although we recognize that the distinction between morals and ethics is not universally shared, we consider that ethics is the concept that should be applied on matters of law, not morality, because moral issues concern only each individual person, and therefore involve an overly subjective perspective foreign to the proper subject of law. Instead of individual morality as a limit to autonomy, the concept of social or public ethics is more appropriate. Ethics is the social morality; it is a social perspective rather than an individual one.22 From this perspective, good manners could be the ethical aspect of public order. Relationships between the members of a society may benefit some or be detrimental to others. A moral or ethical qualification will arise from that specific behavior. A person, in her individuality, in her conscience, aspires to a maximum level of righteousness. This subjective morality should not have a role in justifying law. On the contrary, an ethical view is necessary for the interpretation and justification of law, a social morality that establishes a minimum level of acceptance of behavior in society, a basic order among subjective morals.23

ii. refusal of registration – controversial cases Examination of a few controversial cases that involve offensive or scandalous trademarks will be analyzed in each system to illustrate the difficulty of drawing lines in multicultural societies; to explore the implications of rules not being absolute; to consider the problems associated with changing norms and attitudes in society; and to highlight the tensions between freedom of speech and public order. 17

18 19

20 21 22 23

Mariana Bernal Fandiño, El principio de solidaridad como límite a la autonomía privada, 13 Rev. Jurı´dicas 60, 70 (2016). Percy H. Winfield, Public Policy in the English Common Law 42 Harv. L.R. 92 (1928). Id. Winfield explains that “Many questions of public policy are profoundly uninteresting to the whole community. What does it matter to the ordinary citizen whether matrimonial agencies flourish or not, whether parish officers compound with the putative father of an illegitimate child, whether family bargains are made about church livings.” John Shand, Unblinkering the Unruly Horse: Public Policy in the Law of Contract, 30 Cambridge L.J. 144 (1972). Fernando Hinestrosa, Tratado de las Obligaciones 282 (3d ed. 2007). Adela Cortina, Etica Sin Moral 214 (3d ed. 1995). Guillermo Hoyos, Para una Teorı´a Discursiva del Derecho 11 (2012).

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

Controversial Trademarks: A Comparative Analysis

453

A. Refusal of Registration: Controversial Trademarks in the European Union Among many decisions that denied registration of trademarks for being contrary to public policy or morality, one of the most famous cases is the decision of the General Court in “La Mafia se sienta a la mesa” (“The mafia sits at the table,” in Spanish). In 2006, La Mafia Franchises (a Spanish company) filed an application for registration of an EU trademark with the European Union Intellectual Property Office (EUIPO), which was registered in December 2007. In 2015, Italy filed an application of invalidity of that trademark, based on article 7(1)(f ) of the 2017/1001 Regulation of the European Parliament, before the EUIPO, because it was contrary to public policy. Italy based its application on the ground that the word “Mafia” makes reference to a criminal organization and its use in a trademark was offensive due to its negative connotation. On March 3, 2016, the EUIPO accepted the application made by the Italian Republic and annulled the registration. La Mafia Franchises appealed the decision on 29 April 2016 but it was confirmed by a resolution of the First Board of Appeal on October 27 in the same year. After that, La Mafia Franchises pleaded to the General Court to review the resolution of the First Board of Appeal, claiming that the registration should be admitted because neither Mafia Franchises nor its members were among the list of terrorists included in the Annex to Council Common Position 2001/931/CFSP of 27 December 2001. The applicant argued that the mentioned Annex is used by the EUIPO Guidelines to determine the limits of article 7(1)(f ). Also, the applicant claimed that the trademark was a type of parody of The Godfather movie and there are other European and Italian marks that use the word mafia. The General Court dismissed the action brought by La Mafia Franchises and confirmed EUIPO’s decision. In its ruling, the General Court explained that the element “la mafia” is the dominant element of the mark and it is universally well known that it refers to a criminal organization related to intimidation, violence, and murders, among other illegal activities such as drug dealing, arms trafficking, and corruption.24 Additionally, the General Court clarified that the criminal activities related to the word mafia “breach the very values on which the EU is founded, in particular the values of respect for human dignity and freedom, which are indivisible and make up the spiritual and moral heritage of the EU.”25 The General Court emphasized that the mafia in Italy caused serious damage to Italian society and its security. Furthermore, the General Court found that the idea that the applicant had of making a parody of The Godfather movie was irrelevant to the effect of the trademark and the public’s perception of it and that it trivialized the criminal activities of that organization. There are other registrations in the EU that were refused on grounds of morality or public policy, like the sign “Screw You” or the case concerning the application for the term “Fucking Freezing.” In this last case, the applicant argued that the word “fucking” is frequently considered a synonym of “very” when it accompanies an adjective. The Board of Appeals of the Office of Harmonization for the Internal Market considered the word offensive and vulgar and did not accept the argument of the applicant.26

24

25 26

General Court of the European Union, Press Release No 33/18, Luxembourg, March 15, 2018. See Judgment in Case T-1/17 La Mafia Franchises SL v EUIPO, ECLI:EU:T:2018:146. Id. Enrico Bonadio, Brands, Morality and Public Policy: Some Reflections on the Ban on Registration of Controversial Trademarks, 19 Marq. Intell. Prop. L. Rev. 39, 46 (2015).

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

Mariana Bernal Fandiño

454

B. Refusal of Registration: Controversial Trademarks in the United States There are many cases of controversial trademarks in the United States. This chapter analyses two of those cases that are particularly interesting for developments related to the scope of public policy in IP in the United States. 1. The Matal v. Tam case 27

In Matal v. Tam, the Supreme Court decided that the Lanham Act’s prohibition of registration of disparaging terms violated the First Amendment’s Free Speech Clause. This decision confirms an increasing U.S. tendency toward deregulation of the content of trademarks. The Slants are a musical band comprised of Asian American musicians who chose its name even though it has a disparaging and offensive meaning when used to describe a person of Asian ancestry. Simon Tam, a member of the band, sought trademark registration, but the USPTO rejected it under the Lanham Act disparagement clause, confirming that the word “slants” disparaged people of Asian descent. The examining attorney considered there was “a substantial composite of persons who find the term in the applied-for mark offensive.”28 The applicant challenged the decision before the USPTO’s Trademark Trial and Appeal Board,29 but he did not succeed. Tam then appealed this decision to the Federal Circuit, which held that the Disparagement Clause was unconstitutional on its face under the First Amendment.30 The USPTO filed a petition to the United States Supreme Court to determine whether the disparagement clause was invalid under the First Amendment and the Supreme Court granted the petition for certiorari ultimately to decide whether the Disparagement Clause was invalid under the Free Speech Clause of the First Amendment. The Supreme Court ruled that the provision violated a fundamental principle of the First Amendment because it refused full protection to otherwise protected speech, merely because the speech (in this case, the trademark “slants”) expressed offensive ideas.31 Tam explained after the ruling that the name of his band was a way of repurposing a slur: “[t]he process of turning negative words, symbols or ideas into positive parts of our own identity can involve repurposing a racial epithet or taking on a stereotype for sociopolitical empowerment to turn negative words into positive parts of an identity.”32 This phenomenon is known as reclaiming power by using “self-disparaging trademarks”; it occurs when an applicant wants to register a trademark that contains a slur and he or she is also a member of that disparaged group.33 Even though there is no agreement about the balance between freedom of expression and the need to prevent oppression particularly in the context of hate speech,34 that decision of the Supreme Court changed the future of trademark registration cases and set a precedent for other

27 28 29 30 31 32

33

34

Matal v. Tam, 137 S. Ct. 1744, 1754 (2017). Matal v. Tam, No. 15-1293, slip op. at 7 (U.S. June 19, 2017). Matal v. Tam, 137 S. Ct. 1744, 1754 (2017). In re Tam, 808 F.3d 1321, 1334–39 (Fed. Cir. 2015). Matal v. Tam, 137 S. Ct. 1744, 1759 (2017). Simon Tam, The Slants on the Power of Repurposing a Slur, N.Y. Times (June 23, 2017), https://www.nytimes.com/ 2017/06/23/opinion/the-power-of-repurposing-a-slur.html. Todd Anten, Self-Disparaging Trademarks and Social Change: Factoring the Reappropriation of Slurs into Section 2(a) of the Lanham Act, 106 Columbia L. Rev., 388, 389 (2006). Smith, supra note 3, at 453.

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

Controversial Trademarks: A Comparative Analysis

455

constitutional challenges.35 Indeed, in 2019, in Iancu v Brunetti, the Supreme Court held that the Lanham Act’s prohibition of the registration of “immoral” or “scandalous” trademarks infringed the First Amendment.36 In Brunetti, the USPTO refused to register the trademark FUCT of Brunetti’s clothing line because it was “a total[ly] vulgar” and “therefore unregistrable” expression. The artist and entrepreneur appealed the USPTO ruling in the Court of Appeals for the Federal Circuit. That court held the prohibition violated the First Amendment. The Supreme Court affirmed the judgment of the Court of Appeals on the basis of viewpoint discrimination. In Justice Breyer’s separate opinion in Iancu v Brunetti, concurring in part and dissenting in part, he wrote: “[I]t is hard to see how a statute prohibiting the registration of only highly vulgar or obscene words discriminates based on ‘viewpoint.’”37 2. The Washington Redskins case38 In 1992, Native American leaders first challenged the team’s Redskins trademark as disparaging under federal trademark law39 before the USPTO, with evidence that demonstrated that the term is an ethnic slur and that Native American groups condemned it.40 In 1999, the USPTO agreed and canceled all the registrations for these trademarks. The team appealed the decision in the D.C. federal court41 and they won because the Redskins trademarks had been used for 45 years and registered around 25 years before the action was brought, so the plaintiffs’ claims were barred due to an unjustifiable delay.42 The Native applicants appealed the decision unsuccessfully and the U.S. Supreme Court declined to take the case. In 2014, another group of Native petitioners again asked the USPTO to cancel the registration of the same registered trademarks, which were canceled again under the Lanham Act.43 In 2015, the team appealed, claiming that the disparagement clause of the Lanham Act was unconstitutional under the First Amendment,44 but the District Court confirmed the cancelation. The team appealed to the U.S. Court of Appeals and also filed a petition for a writ of certiorari to the Supreme Court to accompany the pending petition in the Matal v. Tam case.45 As described above, the Supreme Court found the disparagement clause of the Lanham Act unconstitutional. Consequently, the Redskins’ trademark registrations were reinstated despite the evidence of the offensiveness of the term.46 35

36 37 38

39 40

41 42 43 44 45

46

Elly Goettelman, Joseph Matal v. Tam 137 S. Ct. 1744 (2017), 28 DePaul J. Art Tech. & Intell. Prop. L. 57,69 (2017). Iancu v. Brunetti, 588 U.S. (2019). Id. The Washington football team ultimately changed its name to the Washington Commanders, a change brought about by public pressure, not a legal requirement. “The Washington Football Team is now the Washington Commanders, Press release, Commanders.com, Feb. 2, 2022. Harjo v. Pro-Football, Inc., 50 U.S.P.Q. 2d (BNA) 1705, 1705 n.1 (T.T.A.B. 1999). Victoria F. Phillips, Beyond Trademark: The Washington Redskins Case and the Search for Dignity, 92 Chi.-Kent L. Rev. 1061 (2018). Pro-Football, Inc. v. Harjo, 415 F.3d 44, 50 (D.C. Cir. 2005). Phillips, supra note 40, at 1064. Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d (BNA) 1080 (T.T.A.B. 2014). Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 447 (E.D. Va. 2015). As discussed elsewhere in this volume, the Supreme Court elected to decide the Tam case, although the dispute concerning the Washington Football Team was already pending. See Chon & Chang, supra note 4. It is possible that the Court found it politically expedient to uphold the trademark use of a racial slur where the party seeking to use the slur is a member of the community denigrated by the term. Relatively recently, in July 2020, the team changed its name and intends to remove it from all digital and physical space associated with the team name in light of the recent Black Lives Matter events following the death of George

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

456

Mariana Bernal Fandiño

C. Refusal of Registration: Controversial Trademarks in the Andean Community In the Andean Community, there are very controversial cases that blur the limits of public policy in trademark registration. Two relevant cases illustrate the inconsistency of the limits of the Andean Community trademark law: the trademark “El pez weon” and the trademark “Pablo Escobar.” 1. The trademark El pez weon In Peru, the National Institute for the Defense of Competition and Intellectual Property (INDECOPI) considered that the trademark “El pez weon” was not against public policy or good manners even though it clearly refers to a swear word in Spanish, “pues huevón,”47 and its logo shows a fish with big reproductive organs. The registration of the trademark El pez weon was rejected for the first time in 2009,48 because it transgressed article 135(p) of Decision 486 of the Andean Community. The applicants asked INDECOPI to reconsider its decision, arguing that the denial of the registration was an attempt against their fundamental right of freedom of speech. INDECOPI confirmed its decision in 2010, establishing that the word “weon” refers to “huevón,” a swear word that cannot be registered for being contrary to public policy and good manners.49 The administrative agency considered that the right of the applicants to use their mark was protected by their freedom of speech and free enterprise, but that trademark could not be registered because registration would violate public order. INDECOPI considered that the applicants could not prove that the expression was socially accepted and there was no attempt to deny their freedom of speech because they could continue to use the sign even without the registration. The applicants appealed the decision before the Chamber of Intellectual Property of INDECOPI, which overturned the INDECOPI decision because the Chamber determined that the word “weon” used in the mark did not transgress public policy or good manners because it is often used by young people, particularly young men, and it is not perceived among them as a rude expression.50 In contrast, in the EU some immoral or scandalous trademarks are still banned from registration, including “Screw you.” Nevertheless, as noted below, the trademark “Pablo Escobar,” a deceased Colombian drug dealer, has been registered in Europe and the United States, while being prohibited from registration in Columbia. 2. The trademark Pablo Escobar In March 2012, the Deputy Superintendent for Industrial Property of Colombia denied the registration of the trademark “Pablo Emilio Escobar Gaviria,” considering it against the morality of Colombian society and public order.

47 48 49 50

Floyd. Les Carpenter & Mark Maske, NFL Franchise to Go by “Washington Football Team” This Season, Delaying Permanent Name Change, Wash. Post (July 23, 2020), https://www.washingtonpost.com/sports/2020/07/23/washing ton-redskins-new-team-name-washington-football-team/. “Huevón” is a swear word used to insult a person’s intelligence by referring to the size of the male reproductive organs. Res. No. 015444–2009/DSD-INDECOPI. Res. No. 002628–2010/DSD-INDECOPI. Res. No 0436-2011/TPI-Indecopi.

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

Controversial Trademarks: A Comparative Analysis

457

The relatives of Pablo Escobar51 appealed the decision, arguing that the trademark invites society to respect human values. The government entity considered that the name of Pablo Escobar is related to a cycle of terrible violence that struck Colombia in the 1980s and 1990s carried out by the late Pablo Escobar. He is considered to have been the most violent and destructive drug dealer in the history of the country.52 In his resolution, the Deputy Superintendent added that the trademark endorsed violence and violated the limits of public order. Although in Colombia it is clear that the trademark “Pablo Escobar” is contrary to public order, it is shocking that this trademark is registered in other countries such as the United States and Italy. In Italy, the registration of the trademark “Cocaina Pablo Escobar” was obtained in 2004.53 In the United States, there are 16 records of its registration in the USPTO database, three of them including his signature and fingerprint.54

iii. the rights of the victims: social justice in trademark law Commercial enterprises are increasingly using aggressive marketing strategies to attract customers and shocking brand names have become a very important tool, especially when targeting a younger demographic.55 Immorality pays because it is controversial and generates a “buzz,” which can be profitable.56 Trademark law should measure all the impacts of the trademark when determining whether the state should grant the considerable protections that accompany registration and formal recognition of a trademark. Impacts include its offensiveness to the victims of the mark and communitarian damage to society in general. Limits to registrable trademarks are important in protecting the interests and rights of the victims considering a medium range of tolerance and sensibility. For instance, the victims of Pablo Escobar terrorist attacks should be taken into consideration before accepting that trademark registration. Similarly, that should also apply to the interests and rights of the children and of the parents to protect them from highly vulgar and obscene trademarks being displayed in public places. In a civil law system, public policy is a very important limit of human will. The law cannot protect behaviors that collide with the basic principles of a society. Public policy is a dynamic term and what it encompasses changes with time. As society changes and accepts new realities, such as the equal rights of people despite their race or gender – a step forward in social justice – the law must embrace those changes to assure a more peaceful and fair coexistence of diverse groups in society. That the law needs to respond to changes in social mores does not mean that the law should not protect scandalous, aggressive, and offensive terms just because they become normal for some people. The use of edgy brands by some marketing strategies evidences that those terms are not socially accepted; they are chosen precisely because they are not socially 51

52 53 54

55 56

Pablo Escobar was a Colombian drug dealer and terrorist who caused the deaths of hundreds of innocent Colombian people. The application for registration of the trademark was made by his wife and children. Deputy Superintendent for Industrial Property of Colombia, Res. No. 52907, Sept. 9, 2013. Italian Patent and Trademark Office, Filing No. 2004901200863, obtained on Apr. 6, 2004. See United States Patent and Trademark Office, Trademarks Database, http://tmsearch.uspto.gov/bin/showfield?f= toc&state=4806%3Axlj06r.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_ tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=Pablo+Escobar&p_tagrepl%7E%3A= PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query&a_search=Submit+Query. See Bonadio, supra note 26, at 39, 43. See Gordon Humphreys, Deceit and Immorality in Trade Mark Matters: Does It Pay to Be Bad? 2 J. Intell. Prop. L. & Prac. 89 (2007).

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

458

Mariana Bernal Fandiño

accepted and because a relevant part of the community feels offended by them. IP protection is intended to promote intellectual endeavor for society’s benefit, and this can only be fully accomplished through a system based upon the precepts of socially equitable access, inclusion, and empowerment. In the United States, the Lanham Act protected victims insulted by unethical trademarks. Unfortunately, since the Matal v. Tam and the Iancu v. Brunetti decisions, indecent, profane, or racial insults are protected, as well as highly vulgar and scandalous trademarks. Formal recognition of such marks through governmental rubber-stamping of registration causes harm to social cohesion and direct harm to those victimized by official recognition of words that exclude and disempower historically marginalized groups. United Kingdom and EU judges and examiners usually conclude that there is no interference with free speech in cases of denial of registration of trademarks contrary to public policy because it does not prevent the applicant from using the sign.57 It only prevents the government from compounding the harm. In the Andean Community, even though public policy and good manners traditionally impose a significant limit on offensive trademarks, those limits are gradually receding, considering that in some cases insulting brands are accepted despite the target they aim to hit.58 The rights of victims insulted by offensive trademarks should lead the decisions about the propriety of granting a controversial trademark, rather than merely the commercial interests of certain businesses. IP law must consider not only utilitarian economic objectives but also other social, cultural, and legal interests, and incorporate a broader sense of moral and ethical obligations. In the United States case Matal v. Tam, the government argued that the disparagement clause concerns trademarks generally from a neutral point of view, regardless of an applicant’s personal views.59 It also explained that Tam’s application was rejected based on the concern that it would be offensive to some Asian Americans and not based on the belief that Tam intended to offend anyone.60 What is more disturbing about this case and the Supreme Court’s decision declaring the disparagement clause in the Lanham Act unconstitutional under the First Amendment is that the attempt to reclaim disparaging words could open a window for hate groups to denigrate minority groups with government sanction and government support through rights attendant on registration of trademarks. A similar analysis can be applied to the other cases reviewed in this chapter. In the European case “La Mafia sits at the table,” the rejection was based on the fact that the word mafia has a negative, violent content, despite the intention of the applicant to make a parody of a movie. In the United States “Washington Redskins” case,61 the court clearly stated that intent was not necessary to evaluate the trademark: “We believe the use of the term ‘may’ is necessary in connection with ‘disparage’ in Section 2(a) to avoid an interpretation of this statutory

57

58 59 60 61

Bonadio, supra note 26, at 56. In the same way stands the opinion of Justice Breyer in Iancu v. Brunetti, 588 U.S. (2019): “The statute leaves businesses free to use highly vulgar or obscene words on their products, and even to use such words directly next to other registered marks,” so it does not harm the First Amendment. See The pez weon case in Peru, Res. No. 0436-2011/TPI-Indecopi. See Goettelman, supra note 35. Id. As explained above, the team is now called the “Commanders” and has changed its logo to remove the offensive Native American profile. This occurred not because of a change in the law but rather in response to “the broader nationwide discussion of race and mounting pressure on the franchise from corporate sponsors.” See Washington’s NFL Team to Retire Redskins Name, Following Sponsor Pressure and Calls for Change, Wash. Post, July 13, 2020, https://www.washingtonpost.com/sports/2020/07/13/redskins-change-name-announcement/.

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

Controversial Trademarks: A Comparative Analysis

459

provision that would require a showing of intent to disparage.”62 Nevertheless, as described above, in Pro-Football v. Harjo the decision was based on laches as a defense to Section 2(a) challenges. However, the laches defense is not appropriate because it undermines the understanding of how language operates in use over time.63 A word that was acceptable in an earlier time might now be unacceptable in society. As noted at the outset of this chapter, IP protection has to be assessed within the total political economy and not as an isolated, standalone outlier. In the Colombian case, the intention of the relatives of Pablo Escobar to use his name as a trademark to make a statement against violence (by selling T-shirts and other clothes with his name and image, which is not easy to understand) is irrelevant because the name used in the mark relates to the most dangerous drug dealer in the history of Colombia. There are T-shirts, movies, even video games about Pablo Escobar. Freedom of speech allows people to express themselves through that kind of content despite how ethically regrettable that is. However, it should be illegal for a state to grant the propriety of a trademark to the relatives of a criminal wanting to benefit from the name of a drug dealer who caused enormous harm to a society. IP cannot protect cases where intangible goods are created from illegal activities.64 Social justice attributes of inclusion and empowerment, especially of vulnerable people and historically marginalized groups, are damaged when the law grants trademarks for offensive and scandalous words that wound. These injuries to IP-SJ also undermine IP social utility by damaging all of society and even the economy when people are excluded or disempowered.

conclusion Various legal systems limit registration of trademarks on various grounds in the service of social justice values of inclusion and empowerment. The Trademark regulation regimens of the European Parliament and of the Andean Community have both established public policy and accepted principles of morality as absolute grounds for refusal of trademarks. In the United States, the Lanham Act established a bar to the registration of scandalous trademarks as well as disparaging trademarks, but in two cases in 2017 and 2019, the United States Supreme Court ruled that those limits were unconstitutional as infringements of freedom of speech. Hence, since 2017 the First Amendment has also protected offensive trademarks in the United States. Although apparently in all those law systems scandalous and immoral trademarks seem to have limits in the different regulations, following the analysis above of different controversial cases, those limits are becoming blurred and are clearly receding. IP law must not eliminate the limits that protect victims from insults and offenses in the name of freedom of speech. Regardless of whether those victims are individuals, groups, or society’s cohesion itself, law that aims for social justice ought not to allow the government to support such commercial tactics through registering those sorts of trademarks. IP protection is intended to promote intellectual endeavor for society’s benefit through a system based upon socially equitable access, inclusion, and empowerment. Therefore, the limits for registration of controversial trademarks, particularly when they are scandalous or offensive,

62 63 64

Harjo v. Pro-Football, Inc., 50 U.S.P.Q. 2d (BNA) 1821–22. (T.T.A.B. 1999). Regan Smith, supra note 3, at 480. José Roberto Herrera, ¿Es procedente el registro de la marca Pablo Emilio Escobar Gaviria? A´mbito Jurı´dico, Nov. 7, 2017, https://www.ambitojuridico.com/noticias/noticias/mercantil-propiedad-intelectual-y-arbitraje/es-procedente-elregistro-de-la-marca.

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

460

Mariana Bernal Fandiño

are important for advancing inclusion and empowerment of marginalized groups. In an IP regime without those limits, victims of unethical behavior from companies or people that use scandalous or disparaging marks for their own benefit are defenseless under the law. IP-SJ theory rebalances the proper role of IP law in the political economy to reduce such injustices through express inclusion of the IP-SJ values of equitable access, inclusion, and empowerment.

https://doi.org/10.1017/9781108697613.029 Published online by Cambridge University Press

22 The Role of Nonrightsholder Advocates and Academics in Achieving Social Justice Balance in Copyright: The Case of Colombia Marcela Palacio Puerta

Introduction page 461 I. The Negotiation of the Intellectual Property Chapter of the U.S.–Colombia Free Trade Agreement 462 II. Colombia’s Process of Implementation of the USCO Copyright Obligations 463 III. The Role of the Nonrightsholder Advocates and Academics in the Implementation Process of the USCO’s Copyright Provisions 465 A. Building the Power of Outsider Advocates over Time 465 B. The Effectiveness of the Advocacy 467 IV. Substantive Improvements 468 Conclusion 471

introduction Colombia’s process of implementing the copyright provisions of the United States–Colombia Agreement (U.S.–Colombia FTA) illustrates the importance of nonrightsholder advocate interest groups, including among others tech-users, software engineers, scholars, free speech advocates, and academics in achieving intellectual property social justice (IP-SJ) by balancing the interests of intellectual property rights (IPR) holders and the interests in equitable access, inclusion, and empowerment of other affected groups. In a country where economic interests have dominated the content of IPR law, especially copyright law, without regard for the law’s impact on the interests of others, the active participation of representatives of nonrightsholder interest groups makes a critical difference. For the first time in the literature, this chapter describes the implementation process of the U.S.–Colombia Free Trade Agreement copyright provisions, highlighting the impact of advocacy by representatives of nonrightsholders and academics in achieving a more balanced copyright system that is in accord with IP-SJ theory. The provisions ultimately adopted provide more socially equitable access, inclusion, and empowerment opportunities for users, the general public, and other groups beyond the narrow economic interests of rightsholders, which are nonetheless still strongly protected. At Colombia’s request, Colombia and the United States entered into bilateral Free Trade Agreement (FTA) negotiations in 2003. The treaty was negotiated from 2004 to 2006 and took until 2012 to enter into force because of the U.S. delay in ratification. Colombia’s implementation period started at the beginning of 2011 – even before the treaty entered into force.

461 https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

462

Marcela Palacio Puerta

Even though the treaty was in force, the implementation process in Colombia was not easy. The strong economic interest of the Colombian government in showing the United States its commitment to having such a commercial agreement in force led to a fast-track implementation which disregarded any deep analysis of the provisions of the treaty and their broader impact on society. Nonrightsholder advocates, interest groups, and academics requested public discussion, and deep analysis of the impact of the provisions to ensure proper balance, including access rights for nonrightsholders. These two sides, those pushing a narrow version protecting rightsholders’ economic rights and those advancing social justice balance, clashed repeatedly over a period of more than seven years until 2018 when the sixth version of the implementation law was actually adopted. This chapter is organized as follows: (1) summary of the process of negotiation of the intellectual property chapter of the U.S.–Colombia Free Trade Agreement; (2) a section tracing Colombia’s process of implementation of the USCO copyright obligations including a summary of the content of the government’s proposed implementation of the USCO’s copyright provisions; (3) a section explaining of the role of nonrightsholder advocate interest groups and the academy in the implementation process of the USCO’s copyright provisions; (4) a summary of the highlights of the substance of the final result, Ley Lleras 6.0; and a conclusion highlighting the essential role that nonrightsholder advocate interest groups played in obtaining a better social justice balance in the law.

i. the negotiation of the intellectual property chapter of the u.s.–colombia free trade agreement Colombia entered into free trade agreement negotiations with the United States in 20041 after having lobbied the idea of getting a commercial agreement with the U.S. for some time.2 From 1

2

See Laura Cristina Silva, El Proceso de Negociación del TLC Colombia-Estados Unidos, 65 Colombia Internacional 112, 124 (2007), http://dialnet.unirioja.es/servlet/articulo?codigo=2345401 (describing that, in 2003, former president Alvaro Uribe Velez asked the U.S. to enter into FTA negotiations with Colombia. The negotiations began in 2004). See Jose Alberto Pérez Toro, Negociaciones del TLC Colombia-Estados Unidos, Revista Ana´lisis Internacional 183, 195 (2010) (stating that, before 2004, Colombia was lobbying the United States in order to get a commercial agreement). The promulgation of the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS) by the World Trade Organization in 1994 restructured the global relationship between First World IP interests and international trade. In accordance with TRIPS, First World nations have the power to condition access to their trade markets, access that is vital to Developing World nations, on national guarantees of protection and enforcement of First World intellectual property interests. Consequently, appeasing the IP demands of First World trade partners can be critical to the survival of many Developing World nations. See, e.g., Lateef Mtima, Copyright and Social Justice in the Digital Information Society: “Three Steps” Toward Intellectual Property Social Justice, 53 Hous. L. Rev. 459, 501–502 (2015) (“In the latter decades of the twentieth century, various commercial IP industries and interests urged that the question of international comity for intellectual property rights should be resolved as a matter of international trade law. These efforts reached their apogee with the adoption of the TRIPS Agreement. Today, more than 150 nations are signatories to TRIPS, and while there remain legal scholars and commentators who question the compatibility of international trade policy with intellectual property social utility, for better or worse, TRIPS is now the ‘IP Magna Carta’ for the international community.”); Daniel J. Gervais, Making Copyright Whole: A Principled Approach to Copyright Exceptions and Limitations, 5 U. Ottawa L. & Tech. J. 1, 6–7 (“The progressive alignment of trade and intellectual property policy started in the United States in the 1980s through successive amendments to section 301 of the Trade Act, which allowed the U.S. Administration to impose trade-based sanctions on countries which, in the view of the United States Trade Representative, did not adequately protect intellectual property rights of United States citizens and companies . . . There ensued a well-documented push by the United States government, supported by the European Commission and the Japanese government, to link intellectual property and trade rules in the World Trade Organization (WTO) as part of the Uruguay Round of Multilateral Trade Negotiations, which ended in Marrakesh in April 1994 with the signing of the Agreement Establishing the WTO, Annex 1C of which is the TRIPS Agreement. While critics opined that intellectual property was not proper subject matter for the WTO, enter the house of trade it

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

Social Justice Balance in Copyright: The Case of Colombia

463

analyzing the negotiation process, the commercial interest of having access to the U.S. market appears to be the main reason for this developing country to accept the intellectual property rights chapter included in the U.S.–Colombia FTA (USCO). The USCO negotiation process was extended and difficult. Almost two years (21 months), 15 roundtable negotiations, and 100 meetings were needed to reach the final agreement3 which was signed in 2006.4 It took another six years, until 2012, for the agreement to enter into force because of delayed action by the U.S. Congress.5 Colombia’s very strong desire to have an FTA with the United States influenced Colombia’s negotiating position. Colombia’s presidential order was to act fast and to disregard any obstacles during the negotiation.6 Gaining access to the U.S. market was the primary goal7 and in its rushed pursuit of that objective, Colombia granted more concessions, including in the area of IP, than it should have just to get the agreement. The economic motivations overrode other concerns to enter into an FTA with the United States. The government’s desire to have access to the U.S. market resulted in acceptance without restriction of many of the U.S. proposals, even in the face of contrary advice from the expert negotiator commission. This was especially true concerning the IP chapter.

ii. colombia’s process of implementation of the usco copyright obligations The economic motivation that drove the negotiation of the commercial agreement with the United States also drove the implementation process which began in 2011 (before the agreement even entered into force), and was completed in 2018, bridging the actual 2012 date USCO entered into force. The treaty’s predominantly economic motivation is reflected in Colombia’s implementation of the copyright provisions, publicly known as “Ley Lleras.” Implementation required six different attempts. The implementation of the copyright provisions can be divided into two stages, before and after the agreement entered into force in 2012. Before the agreement entered into force, the main motivation to implement the treaty’s provisions was to try to induce the United States to

3

4 5

6

7

did, wholesale.”); Cynthia M. Ho, Biopiracy and Beyond: A Consideration of Socio-Cultural Conflicts with Global Patent Policies, 39 U. Mich. J.L. Reform 433, 469 (2006) (“The TRIPS agreement can be seen as the ultimate act of imperialism to the extent that it forces countries opposed to patents to nonetheless tolerate and grant patents within their own countries. Not only do many indigenous communities oppose patent rights, but also the scope of patentable subject matter under TRIPS. In particular, many communities object to patent rights over any type of life forms, regardless of the amount of human intervention involved. This objection reflects their philosophy that life is sacred. However, their philosophies are inherently irreconcilable with the mandatory language under TRIPS that plant and animal varieties must be granted protection.”). See Alberto Romero, Colombia–USA Free Trade Agreement (El TLC Colombia–USA), VII (2) Tendencias 29, 30 (2006), http://papers.ssrn.com/abstract=957133 (stating the length of the negotiating process). Id. The allegations against Colombia’s lack of protecting labor rights put the agreement on hold at the U.S. Congress by the Democratic Party. See Efe, TLC entre Colombia y EE.UU entra en vigor casi 6 años después de su firma, El Espectador, May 10, 2012 (stating the reason for the delay in entering the USCO into force). See Cecilia López Montaño, ¿Cómo Se Negocia Un TLC En Colombia? 65 Colombia Internacional 154, 161 (2007), http://www.scielo.org.co/pdf/rci/n65/n65a08.pdf (stating that politics played an important role in the negotiation of the FTA. Moreover, the orders of the President Alvaro Uribe Vélez were to negotiate fast [“rapidito, rapidito”] and even if thunderbolts fall [“asi caigan rayos y centellas”]). Since the beginning of the negotiations, USCO was announced as the most important FTA in Colombia’s history. See Elpais.com.co, TLC con Estados Unidos es el más importante de nuestra historia: Juan Manuel Santos, El Pais, Oct. 12, 2011, https://www.elpais.com.co/economia/tlc-con-estados-unidos-es-el-mas-importante-de-nuestra-historiajuan-manuel-santos.html.

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

464

Marcela Palacio Puerta

ratify and implement it so that it would enter into force and thereby open U.S. markets to Colombians. For instance, in 2006, the Colombian government sought to convince the United States to enter into the proposed treaty by amending the Colombian copyright law along the lines that the United States was requesting.8 For example, article 272 was modified to increase sanctions for circumvention of technological protection measures (TPM) from a fine to imprisonment from four to eight years plus a fine.9 This amendment was done to demonstrate to the United States that Colombia favored the protection of copyright holders. The economic motivation behind the amendment resulted in no balance in the law. Even something as basic as a requirement that a person circumventing a TPM could be held criminally liable only if that person acted with a motive of obtaining a commercial benefit was not included. Anyone circumventing a TPM could be criminally liable.10 Moreover, further attempts to implement the USCO before its entry into force, publicly known as “Ley Lleras 1.0” and “Ley Lleras 2.0,” the fast-track procedures led by economic interests, were structured so as to preclude input regarding amending the copyright system from anyone seeking to protect access or inclusion for users.11 For instance, in 2012, Ley 1520 de 201212 – “Ley Lleras 2.0,” which sought to implement, among other matters, the regulation for technological protection measures,13 was enacted in only 18 days.14 A short time later, this Act was struck down by the Colombian Constitutional Court due to procedural irregularities as the debate over the terms of the Bill of law was conducted by the Second Commission of Congress which did not have jurisdiction over the subject-matter.15 After the USCO entered into force in 2012, three more attempts to implement the USCO’s copyright provisions were made; they are known as “Ley Lleras 4.0, 5.0 and 6.0.” However, the first two attempts failed and the third, Ley Lleras 6.0, succeeded. Two reasons for the failures are: (1) the subject is controversial and the attempted implementations did not account for balancing the interests of all groups; and (2) after the agreement entered into force, the economic interest to implement it immediately was less pressing. The next impetus to implement the treaty came in 2018, when Colombia sought to join the OECD. The condition placed on Colombia by the United States in order to garner U.S. support was to implement the copyright provisions of the USCO treaty. Once again, the procedure was

8

9 10

11 12 13 14

15

See Ernesto Rengifo, Un Nuevo Reto del Derecho en la Edad de la Información, 12 Propiedad Inmaterial 105, 116 (2008), http://revistas.uexternado.edu.co/index.php?journal=propin&page=article&op=view&path%5B%5D=626 (stating that Ley 1032 de 2006 that increased the punishment for the circumvention of technological protection measures was promoted as a lobby strategy for the USCO). See L. 599/2000, Julio 24, 2000 Diario Oficial [D.O] [hereinafter C Pen.] (Colom.). See L. 1032 de 2006, junio 22, 2006 Diario Oficial [D.O] art. 3. (Colom.). The original text of the TPM provision was very open and ambiguous. The text prohibited the circumvention of a copy control TPM and the trafficking of devices to circumvent a copy control; however, the text did not require the TPM to be “effective,” it did not offer protection only to TPM imposed by authors, and there were opposing opinions on whether the TPM protection was a standalone provision. Indeed, the subject provisions provide even stronger technological protection measures than those provided under U.S. copyright law, which accommodate consumer circumvention conduct in connection with “unlocking” personal devices such as cellphones. See, e.g., Bill of Law 241, Apr. 4, 2011. (Colom.) L. 1520 de 2012, Apr. 13, 2012 Diario Oficial [D.O.] (Colom.). This Act was publicly known as “Ley Lleras 2.0.” See Redacción por redes sociales, ¿Goberno no puede ser el Gran Hermano’ Demandante de la Ley Lleras 2.0, El Tiempo, May 4, 2012. See infra.

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

Social Justice Balance in Copyright: The Case of Colombia

465

fast-tracked. On May 22, 2018, the Copyright provisions were implemented, and it became the latest amendment to the Copyright Act, Ley 1915 de 2018. As with all of the earlier iterations, social justice concerns of access, inclusion, and empowerment of people other than the rightsholders themselves were not included in version 6.0 as originally enacted. As the history of the enactment of it sketched above demonstrates, Colombia’s major concerns in implementing the copyright provisions of the USCO have been purely economic concerning obtaining greater access to international trade both through the trade agreement with the United States and through entry into the OECD. This economic focus impacted the implementation process and resulted in very technical and controversial provisions being fast-tracked without adequate time for meaningful input from stakeholders other than rightsholders. The economic interests coupled with the fast-track procedures resulted in the originally enacted amendments to the copyright law being almost a “copy–paste” version of the treaty language.

iii. the role of the nonrightsholder advocates and academics in the implementation process of the usco’s copyright provisions During the implementation period, representatives of nonrightsholder interest groups, including among others tech-users, software engineers, scholars, and free speech advocates, raised their concerns about the lack of provisions in the Bill of Law that addressed the interests of IP consumers and other users and more generally about the lack of attention to principles of balance and access, inclusion, and empowerment of marginalized groups. For instance, the law as proposed included excessive criminal protection for copyright infringement even criminalizing nonprofit and noncommercial scale uses; included TPM protection that could prevent users from even quoting a work; extended terms for copyright protection without appropriate concomitant exceptions and limitations; and protected copyright rights in the digital environment without important exceptions and limitations, such as allowing temporary reproductions. Balancing the public interest and using social justice concepts of access, inclusion, and empowerment simply were not considered in the proposed Bill of Law. Nonrightsholder advocates and scholars were concerned not only with substantive flaws, but also with the process followed to enact the law insofar as the process itself did not incorporate social justice and public interest values of inclusion in the process. The fast-track procedure given to the various Bills of Law, despite the technical and complex nature of the topics, and the lack of public discussion created an environment adverse to sharing concerns and to achieving access to address flaws in the proposed law. Nonetheless, over time, as outsider advocates grew in knowledge and understanding of the issues and processes, they were able to change the process and ultimately to temper the final substance of the law. The rush by the government to enact the law was slowed and provisions favoring access, inclusion, and empowerment were incorporated into the Law. A. Building the Power of Outsider Advocates over Time The process of the enactment of the implementing legislation provides a case study in the development and evolution of nonrightsholders as advocates for access, inclusion, and empowerment in Colombia. During the negotiation period of the USCO, nongovernmental organizations (NGOs), advocates for interested parties, and academics were not involved in the discussion of the copyright provisions. Their efforts were focused on other important matters

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

466

Marcela Palacio Puerta

which certainly have significant social justice implications, such as access to medicines.16 As a result of points that NGOs, advocates of interested parties, and academics raised during the treaty negotiation regarding a set of points of contention about the patent provisions, the latter were becoming a barrier to closing the deal because of their one-sidedness. In contrast, Colombia’s negotiating team accepted the copyright provisions without raising major concerns.17 Things changed with respect to the copyright provisions, however, after the treaty negotiation process and during the implementation process because representatives of other interested groups and academics vigorously participated. The battle of nonrightsholder advocates started in 2011. At the time, the number of nonrightsholder advocates interested in the copyright provisions was very small. NGOs like Karisma,18 and afterward a collective group called Redpatodos,19 led the movement. Over time, and thanks to social media campaigns and academic debates,20 the interest of the public on the matter grew. By 2016, more people and organizations had joined the discussion in favor of users. In 2017, 30 academics wrote a letter to Congress asking for more balance in the copyright law.21 Finally, in 2018, many interested advocates spoke at public hearings. Speakers included Wikimedia Colombia, Fundación para la Libertad de Prensa (FLIP) [Foundation for Freedom of Expression], Coordinadora Nacional de Organización de Personas con Discapacidad Visual (Conalivi) [National Coordinator of Organization of People with Visual Disabilities], as well as librarians, engineers, and academics.22 Through this multidisciplinary team approach, concerns from various points of view were allowed to be raised and to enrich the discussion regarding the need to reflect access, inclusion, and empowerment of marginalized groups in the text of the law, focusing, among other things, on the needs of people with visual disabilities. Nonrightsholder advocates used diverse tools in their advocacy as their understanding of the issues and how to wield power effectively grew. For instance, they started with social media

16

17

18

19

20

21

22

See Alvaro Diaz, TLC y Propiedad Intelectual: Desafios de Politica Publica-en 9 Paises de America Latina y El Caribe 85, CEPAL Comision Economica Para America Latina y el Caribe (2006) (stating that in the negotiation of the FTAs of the Latin and Caribbean region, there were a number of NGOs engaged in the subjects of patents. However, this did not happen in the same way with copyright and access to information. This movement happened after the signature of the FTAs). See an interview with Fernando Zapata, former Director of the Copyright Office and main negotiator of the copyright provisions of USCO, stating that the final balance was positive in the sense that Andean countries and the United States had the same purpose: protecting the authors. See Jhonny Antonio Pabon, Tratado de Libre Comercio con Estados Unidos de Norteamérica y el Derecho de Autor. Entrevista a Fernando Zapata, 11 Derecho de Autor (2006), http://www.cecolda.org.co/images/publicaciones/numero11/ed11_1.pdf. Karisma is an organization that works on the promotion of human rights in the digital world. See Fundacio´n Karisma, https://karisma.org.co/. Redpatodos is a collective of people who work in academia and industry and students who are concerned about topics such as access to knowledge, privacy, and Internet governance, among other things. Redpatodos started as a reaction to Ley Lleras; today, it has broadened its scope of topics. See Redpatodos, https://redpatodos.co/blog/nosotros/. Redacción Política y Tecnología, Archivada la ‘Ley Lleras?, que pretendía regular el uso de internet, El Tiempo, Nov. 16, 2011, https://www.eltiempo.com/archivo/documento/CMS-10777484 (describing that there was a controversy around the Bill of Law in social media and academic debates). The criminal provisions protecting copyright infringement were so broad that a Master’s student was denounced for sharing research on Facebook; after four long years of discussion, the student was absolved. See Carolina Botero, Académicos Comentan la Nueva Ley Lleras, El Espectador, Dec. 14, 2017, https://www.elespectador.com/opinion/ academicos-comentan-la-nueva-ley-lleras-columna-728531 (stating that academics sent a letter to Congress asking for modification of the criminal punishment in copyright law). To see the entire list of participants of the public hearing, see Acta de Audiencia Pu´blica del 16 de Abril de 2018 Senado, https://2019.vlex.com/#vid/acta-audiencia-publica-16-717238821.

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

Social Justice Balance in Copyright: The Case of Colombia

467

campaigns.23 Other effective tools, such as an action before the Constitutional Court, open debates, written comments, and participation in public hearings, were all employed. For instance, in 2012, after Act 1520 was enacted in 18 days (enacting TPM protection), an opponent Congressman, Jorge Robledo,24 working with nonrightsholder advocate interest groups presented a claim before the Constitutional Court which struck down the Act due to procedural mistakes.25 B. The Effectiveness of the Advocacy The effectiveness of the advocacy can be seen through tracing the developments in the implementing law over time. As mentioned in the previous sections, the enactment process was marked by a strong economic desire to obtain the commercial agreement leading to a fasttrack procedure that was not open to public discussion. From this procedure resulted various Bills of Law without safeguards for access or inclusion. Despite the obstacles, active participation of scholars and nonrightsholder advocates occurred and resulted in two crucial changes in process and substance: (1) they slowed down the rush in the enactment procedure and ultimately won the involvement of different stakeholders in the revised process; and (2) they advocated for, and were successful at, incorporating provisions to the Bills of Law providing inclusion of affected groups other than rightsholders. Regarding process, nonrightsholder advocates and academics made it possible to open the discussion to interested parties other than representatives of rightsholders after Act 1520 was struck down. For instance, in 2013, regarding “Ley Lleras 4.0,” after three years of demanding public discussion, the government set some working tables for discussion.26 For the first time, the government invited the public to make comments on the Bill of Law. Unfortunately, at the time, most of the suggestions were not incorporated into the new Bill of Law and no explanation for their exclusion was offered by the Bill’s supporters.27 The same thing happened in 2016, during Ley Lleras 5.0,28 when nonrightsholder advocate interest groups, academics, and citizens presented comments. Once again, very few comments were seriously considered.

23

24

25

26

27 28

Redacción Política y Tecnología, Archivada la ‘Ley Lleras?, que pretendía regular el uso de internet, El Tiempo, Nov. 16, 2011, https://www.eltiempo.com/archivo/documento/CMS-10777484 (describing that there was a controversy around the Bill of Law in social media and academic debates). See Tomás Betín del Río, Caída de la ‘Ley Lleras? Es un triunfo para el derecho a la información: Robledo, El Heraldo, Jan. 27, 2013, https://www.elheraldo.co/noticias/politica/caida-de-la-ley-lleras-es-un-triunfo-para-el-derechoa-la-informacion-robledo-97766 (stating that Jorge Robledo presented a suit against Act 1520 de 2012 at the Constitutional Court). See Corte Constitucional de Colombia [C.C.] [Constitutional Court], enero 23, 2013, M.P.A. J. Estrada, Sentencia C011/13 (Colom.). See Carolina Botero, Después de 3 años, la Ley Lleras prácticamente no cambió, Fundacio´n Karisma, Aug. 20, 2016, https://karisma.org.co/despues-de-3-anos-la-ley-lleras-practicamente-no-cambio/ (stating that working tables were set to discuss the topic). Id. Santiago La Rotta, La Ley Leras Regresa, El Espectador, Aug. 10, 2016, https://www.elespectador.com/tecnologia/ ley-lleras-regresa-articulo-648421 (stating that the government opened the draft of the Bill of Law to comments from the public); see Éricka Duare, ¿Qué ha pasado con . . . La Ley Lleras?, Xalaca Colombia, Sept. 16, 2016, https://www .xataka.com.co/legislacion-y-derechos/que-ha-pasado-con-la-ley-lleras (stating that the government opened the draft of the new Bill of Law to comments from the public).

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

468

Marcela Palacio Puerta

Finally, during 2018, the pressure of nonrightsholder advocate interest groups forced the Congress to schedule a public hearing on Ley Lleras 6.0,29 at which representatives of groups in favor and against the Bill of Law were allowed to speak. This was the first time a public hearing was held about the issues. The public hearing did have an impact on the text of the Bill that became Act 1915 de 2018, at time of the writing of this chapter, the latest amendment to the Copyright Act. The actions of nonrightsholder advocates and academics was crucial to achieving balance and inclusion within the text of the Act. Thanks to their work, the final Act softens the wording of some measures, thereby allowing appropriate access to users, such as in the case of technological protection measures described below. It included exceptions and limitations to copyright protection and provisions for orphan works favoring education and access to information that were missing in previous versions of the text. Provisions that undermined the access, inclusion, and empowerment interests of people with visual disabilities were eliminated. This is the case of an exception and limitation included in the text of the Bill of Law Ley LLeras 6.0 that narrowed the scope of application of a previous exception. Thanks to the active participation of the representatives of people with a visual disability, the exception was removed. Nonetheless, the Act was also careful in assuring protection to rightsholders and in complying with international standards. Thus, nonrightsholders and academics continuously worked over a period of more than seven years in order to be listened to by the government and to show that copyright can affect access, inclusion, and empowerment of other affected groups. These people made the Congress and government realize that copyright law provisions should be subject to a deep discussion instead of being fast-tracked. “Ley Lleras 6.0” still has many issues and weaknesses. Nonetheless, the last version does reflect that, thanks to nonrightsholder advocate interest groups, some balance was fought for and achieved.30

iv. substantive improvements Six different attempts at implementation were made. Comparing the text of the first Bill of Law Ley Lleras 1.0 to the text of Ley Lleras 6.0, which became Act 1915 de 2018,31 it is evident that the work of nonrightsholder advocates and academics was crucial to incorporate balance, access, and inclusion within the text. The most significant improvements are with respect to (i) limitations and exceptions; (ii) technological protection measures; and (iii) orphan works. (i) Limitations and exceptions: Ley 1915 de 2018 seeks balance in the pre-existing copyright law by incorporating five new exceptions and limitations important for users. These 29

30

31

See invitation to participate at the public hearing: Congreso de la Republica, Audiencia publica, https://www .comisionprimerasenado.com/convocatorias-audiencias-y-foros/1590-convocatoria-y-resolucion-audiencia-publica-p-l206-de-2018-senado-222-de-2018-camara-derecho-de-autor-resolucion-05-de-2018/file. The successful impact of IP social justice advocacy is by no means unique to the case of Colombia. As Krista Cox details in Chapter 15 in this volume, such advocacy efforts have been critical to protecting the public interest in a socially balanced IP ecosystem in connection with a broad spectrum of issues, from preserving access to breast cancer diagnostics and treatments to obtaining the adoption and ratification of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled. See Krista Cox, Applying Social Justice Values in the Practice of Public Interest IP Law and Activism, ch. 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023), and also in Above the Law, Jan. 18, 2018, https://abovethelaw.com/2018/01/intellectual-property-law-meets-public-interest-law/. See L. 1915 de 2018, julio 12, 2018, Diario Oficial [D.O] (Colom.).

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

Social Justice Balance in Copyright: The Case of Colombia

469

exceptions and limitations did not previously exist under Colombian copyright law despite being common in other jurisdictions: (1) the exception for temporary reproductions in an automatic technological procedure, made with the single purpose of facilitating a digital transmission, provided that the temporary reproductions do not have an independent economic value;32 (2) nonprofit loan by a library, archive, or center of documentation of copies of a work, interpretations or artistic performances, phonograms, and fixed broadcast that is in its permanent collection;33 (3) making available by libraries, archives, or centers of documentation, through specialized terminals installed in their own premises, for the purpose of research or personal study of their users, of works, phonograms, audiovisual recordings, and broadcasts fixed, provided that they were lawfully acquired and are not subject to other limiting conditions of acquisition or license;34 (4) exception for parody or caricature;35 and (5) exhaustion of the distribution right after the first sale of the work36 or interpretations or artistic performances.37 Ley 1915 also clarifies the scope of the application of the exception for reproduction by reprographic means for teaching and for examination, already included in the copyright law, to apply at all levels of education and to cover some new works, such as an isolated plastic, photographic, or figurative work.38 However, Ley 1915 of 2018 did not update the Copyright Act regarding exceptions and limitations for the Internet, for distance education, or to promote the transformation of a protected work in making a derivative work. Therefore, despite its recent amendment, Colombia’s copyright law is still behind with respect to technological advances. Nonetheless, one novelty in Ley 1915 regarding exceptions and limitations is the obligation of the Copyright Office [Dirección Nacional de Derecho de Autor] to revise exceptions and limitations every three years to consider the convenience and need to present a Bill of Law to Congress to update them.39 This provision mirrors the process mandated to revise exceptions and limitations to technological protection measures. It seeks to have participation from different stakeholders and copyright holders. Congress gave this solution as a response to the requests of nonrightsholder advocates to incorporate an open-ended clause.40

32 33

34 35 36 37 38 39 40

Id. art. 16(a). Id. art. 16(b) (“The non-profit loan, by a library, archive or center documentation of reproduction or copies of works, interpretations or artistic performances, phonograms and fixed broadcasts, provided that they appear in their permanent collections or are part of a program of library cooperation and, that they would have been lawfully acquired” [nonofficial translation]). Id. art. 16(c). Id. art. 16(d). Id. art. 3. Id. art. 7. Id. art. 16(e). Id. art. 17. See Carolina Botero, Una de las Ley Lleras por fin sera ley y reformará el derecho de autor en Colombia, Fundacio´n Karisma, May 24, 2018, https://karisma.org.co/una-de-las-ley-lleras-por-fin-sera-ley-y-reformara-el-derecho-de-autor-encolombia/ (stating that instead of incorporating an open-ended limitation and exception, the Act incorporated a compromise by the Copyright Office to revise existing limitations and exceptions periodically).

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

470

Marcela Palacio Puerta

(ii) Technological protection measures: My personal experience in this process exemplifies how it is possible to effect change in IP law for social justice purposes. Since 2013, I had been submitting comments regarding the provisions of technological protection measures. However, only in 2018, after the public hearing, was I heard on the substantive weaknesses that needed to be addressed. The message I was conveying was that the text of the law was imbalanced and adversely affected access for noninfringing uses. After the public hearing, the Congressman in charge of the Bill of Law called me and asked me to meet with the Director of the Copyright Office. After a strong debate for about four hours, some comments seeking to balance TPM regulation were welcomed. Despite all the comments against certain provisions, Ley 1915 of 2018 retained four prohibited acts against TPMs: (1) circumvention of an access control TPM;41 (2) circumvention of a copy control TPM;42 (3) trafficking devices and services capable of circumventing an access control TPM;43 and (4) trafficking devices and services capable of circumventing a copy control TPM.44 However, we did add exceptions to the protection against the circumvention of a copy control TPM that allows certain users to circumvent it under the exception for certain uses.45 In previous versions of the text, this type of TPM protection was not subject to any exceptions or limitations. Consequently, circumventing a copy control TPM to make a quotation of a work was an infringement subject to civil sanctions. That sort of circumvention is now permitted. Additionally, we were able to narrow the scope of the definition of TPM to those devices or components that cannot be circumvented accidentally.46 Moreover, regarding the procedure to create new exceptions to the circumvention of an access control TPM, some improvements were achieved, bringing balance to the regulation. First, the process of creation of new exceptions was modified from previous versions of the Bill of Law, changing from a legislative to an administrative procedure. The entity in charge of creating the new exceptions and limitations is the Copyright Office. This change is positive because submitting the Bill of Law to the Legislature could make it subject to political decisions and the legislative period’s term of duration.47 Second, the exceptions created under this procedure became permanent, instead of temporary, as provided in previous versions. These administratively created exceptions can be revoked if there is substantial evidence that the need that gave rise to the exception has disappeared.48 This provision mirrors the Australian System. Its purpose is to avoid making users prove every three years that there is still a need for the exception, as happens in the United States. And third, a requirement that in order to obtain a new exception to TPM protection, a noninfringing use must be covered under an existing exception and limitation to the copyright law was eliminated.49 This modification is important insofar as it broadens the scope of exceptions that can be created under the procedure.

41 42

43 44 45 46 47 48 49

See L. 1915 de 2018, julio 12, 2018 Diario Oficial [D.O] art. 12(a) (Colom.). Id. Despite the fact that the USCO did not mandate to protect against circumvention of a copy control TPM, the Copyright Office, the entity in charge of drafting the Bill of Law, considered that it was necesary in order to comply with the compromises acquired in the WCT and WPPT. Id. art. 12(b). Id. Id. art. 13 para. 4. Id. art. 12 para. 1. Id. art. 13(g) (Colom.) Id. Id.

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

Social Justice Balance in Copyright: The Case of Colombia

471

(iii) Orphan works: Ley 1915 de 2018 incorporates for the first time in the Colombian copyright regime the regulation of orphan works. Although the uses allowed with an orphan work are very limited, this was an important achievement for nonrightsholder advocates in promoting access and inclusion in connection with such works, especially for educational and cultural purposes.50 The Act recognizes as an orphan work any protected works or phonograms published for the first time in Colombia, or, if unpublished, whose first broadcast has taken place in Colombia, and where copyright holders are not identified, or, if identified, cannot be located. The beneficiaries of the orphan works provisions are libraries, teaching centers, museums accessible to the public, archives, conservation organizations of cinematographic or sound heritage, and public broadcasting organizations, but only concerning works available in their repositories.51 The acts allowed to the beneficiaries are making the work and the reproduction available for digitalization;52 and making the work available to the public for indexing, cataloging, and conservation or restoration.53 Nonetheless, to make the authorized uses, an authorized entity must perform what the Act calls a diligent search54 and register at the Copyright Office the results of such a process.55 Moreover, if the copyright holder appears, it has the right to be compensated for the uses.56 These results demonstrate the important role of nonrightsholder advocacy and scholars in seeking to balance provisions in the copyright regime. The final text of Ley LLeras reflects a fight of over seven years seeking balance, access, and inclusion. Although the balancing tools achieved are common in other jurisdictions, it is a huge triumph for Colombia, taking into account that Colombian copyright law is protectionist. Nonetheless, the importance of a balanced copyright law in order to promote access, inclusion, and empowerment of other affected groups is gaining territory. Therefore, Act 1915 de 2018 is the first step for oncoming regulation.

conclusion Colombia’s experience with Ley Lleras provides a real-world example of how the IP-SJ theory more effectively embodies and serves the social function of IP protection than a narrow rationale based primarily on economic incentives and interests. Colombia’s strong economic interest in entering into a commercial agreement with the United States affected the negotiation procedure, the implementation process, and the substance of the copyright provisions. During the negotiation procedure, Colombia’s desire to have access to the U.S. market led Colombia to grant more concessions than it should have in the copyright portion of the treaty. Afterward, during the implementation stage, Colombia’s desire to have an agreement in force with the United States and, later on, to obtain the United States’ support for Colombia’s entry into the OECD, led to a copy–paste implementation of the text of the USCO without considering balancing rightsholders’ interests with the interests of others in access, inclusion, and empowerment. As a result of this undue emphasis on economic objectives, and indeed in this case, 50 51 52 53 54 55 56

See Botero, supra note 40. See L. 1915 de 2018, julio 12, 2018 Diario Oficial [D.O] art. 20 (Colom.). Id. art. 23(a). Id. art. 23(b). Id. art. 21. Id. art. 22. Id. art. 25.

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

472

Marcela Palacio Puerta

economic objectives external to the copyright system, the government hurried through adoption of amendments to the copyright law that failed to serve many of the public’s critical copyright needs and interests. Fortunately, because of dogged efforts by nonrightsholder advocates and academics for more than seven years, a better implementation which protects the interests of rightsholders and which also serves the IP-SJ interests of broader equitable access, inclusion, and empowerment was enacted. Consequently, the final version of the Act contains an improved system that includes exceptions and limitations to copyright protection, provisions regarding orphan works, and a less restrictive but still strong and effective protection for technological protection measures. Colombia’s experience with Ley Lleras demonstrates that the social justice theory of copyright law, which considers both economic incentives and benefits and also access to information, education, and other social objectives of copyright, ensures a more effective copyright regime.

https://doi.org/10.1017/9781108697613.030 Published online by Cambridge University Press

23 Exposing Gender Bias in Intellectual Property Law: The UK Music Industries Metka Potočnik*

Introduction: Unconscious Gender Bias of IP Law I. Gender Bias of IP: Identifying the Problem A. Beyond Economic Utility of IP B. Literature Review: Doctrinal Evidence of Gender Bias in IP Law C. Research Gap: Identifying Appropriate Feminist Theories and Collecting Empirical Evidence II. Theoretical Framework: A Tapestry of Feminist Approaches A. Relational Feminism: The Inclusive Understanding of a Human B. In Case of Emergency: Break this Window! C. Positionality as the Construction of Knowledge Theory III. Methodology: The Feminist Toolbox A. Consciousness Raising as the Meta-Method B. Lived Experience of Women C. Intersectionality D. Practical Feminist Reasoning, Rationality, and Contextuality IV. Exposing Gender Bias in IP Law: A Feminist Checklist for the UK Music Industries A. Lived Experience of the Creatives: A Start to Women’s and GenderExpansive Narratives B. Item 1: From Outputs to People C. Item 2: The Dominant Position of Gatekeepers in IP D. Item 3: The Negotiation Black Hole Conclusion

page 474 478 478 479 482 482 483 484 485 486 486 486 487 488 489 490 492 493 494 495

* Dr Metka Potočnik is a Senior Lecturer in Law at Wolverhampton Law School, University of Wolverhampton; and a Director for the F-List for Music CIC. ORCID ID: 0000-0002-9985-0827. This work would not be possible without the support of the University of Wolverhampton (ECR ERAS and LPF Schemes), or the grant awarded by the Society of Legal Scholars. For more detail see https://researchers.wlv.ac.uk/m.potocnik. The author is grateful to conference participants and paper discussants at (1) the Sixth Annual IP Mosaic Conference, The Arc Is Hot! Using IP to Further Social Justice, U.S. (online) (Oct. 30–31, 2020); (2) the 112th Annual Society of Legal Scholars Annual Conference, University of Exeter, Exeter, UK (online), Aug. 31–Sept. 2, 2020); (3) the Annual Research Conference at University of Wolverhampton (online), June 15–16, 2020; and (4) the Seventh Annual IP Mosaic Conference: IP as Protest, Change, and Empowerment, U.S. (online), Oct. 21–23, 2021). Extra appreciation is extended to the book’s editors, Professor Jamar and Professor Mtima, for their thoughtful feedback. All errors or omissions remain my own.

473 https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

474

Metka Potočnik

introduction: unconscious gender bias of ip law The music industries in the United Kingdom (U.K.) have seen several damning reports in the last few years. The 2019 report “Counting the Music Industry: The Gender Gap” paints a bleak picture,1 where most signed artists by major (traditional) record labels and music publishers in the U.K. are male. U.K. music publishers have in the reported period signed 12,040 writers, out of which only 14.18 percent are women. In similar vein, female musicians make up only 19.69 percent of the rosters of the acts signed to music labels. This severe underrepresentation of women is also reflected in the statistics of music played on U.K. radio, where a 2020 report finds that women are often (if not always) left out, with some radio stations not playing female artists at all.2 Before the COVID-19 pandemic stopped most live music events, women creatives also reported underinclusion on the festival circuits.3 These reports sit in the broader context of gender inequalities, including the gender pay gap4 or motherhood penalties5 in the creative industries; gender-based discrimination; and violence as exposed through movements like Me Too6 or Time’s Up.7

1 2

3

4

5

6

7

Vick Bain, Counting the Music Industry: The Gender Gap (2019) https://vbain.co.uk/research. Linda Coogan Byrne & Women in CTRL, Gender Disparity Data Report, An Analysis of the Top 20 Most Played British Acts across British Radio Stations in the Period of June 2019–2020 and the Top 100 Radio Airplay Chart in 2020 (2020), https://www.canva.com/design/DAEE37rIDuc/-7R8D7lzU7EMdcnv9Snw3w/view#1. The underrepresentation outside the UK, although not the focus of this chapter, is the subject of research in other jurisdictions as well. For the U.S., see Jada Watson’s research and platform, SongData: https://songdata.ca, and research on gender representation in country music: https://songdata.ca/projects/gender-representation-in-country/, with research findings available: Jada Watson, Billboard’s Hot Country Songs Chart and the Curation of Country Music Culture, 13 Popular Music History, Special Issue on Popular Music Curation 168 (2020); and Jada Watson, Gender on the Billboard Hot Country Songs Chart, 1996–2016, 42 Popular Music & Soc’y 538 (2019). For example, as noted by musician Emma Lee Moss, and reported by the BBC, June 22, 2017, https://www.bbc.co.uk/ news/uk-england-40273193. Researchers found exclusion of entire groups from participation in the British Music Festivals in Emma Webster & George McKay, From Glyndebourne to Glastonbury: The Impact of British Music Festivals (2015), https://ahrc.ukri.org/documents/project-reports-andreviews/connected-communities/impact-of-musicfestivals/. The authors’ report “highlights the economic, social and cultural impact of British music festivals” and identifies a gap in our understanding of financials around the festivals: “there is a relative lack of literature about the impact of festivals on musicians, both in terms of the impact on how they tour but also the creative and economic impact of festivals.” Festival underrepresentation still persists in 2021: see Helen Packer, Festivals Are Back, But Where Are the Women?, Apr. 20, 2021, http://internation.maijcityjournalism.uk/arts-culture/festivals-are-back-but-where-arethe-women/. In the UK, annual average income of music creators is distinctly lower for women. In 2019, the median reported income for women was £13,057, whereas for men, it was £20,160; see Intellectual Property Office (IPO), Music Creators’ Earnings in the Digital Era, Sept. 23, 2021, https://www.gov.uk/government/publications/music-creatorsearnings-in-the-digital-era. More broadly in the EU, see Marilena Vecco et al., Gender Gaps in the Cultural and Creative Sectors (With the Exception of the Audio-Visual Sector), European Expert Network on Culture and Audiovisual (EENCA) Report, 2019, http://www.eenca.com/eenca/assets/File/EENCA%20publications/Final% 20Report%20-%20Gender%20in%20CCS%20EAC.pdf, 27 (equal pay issues in the EU markets). Lower incomes are also reported by female musicians in Norway. See Irina Eidsvold-Tøien et al., What Now: The Impact of Digitization of the Norwegian Music Industry: English Summary, Centre for Creative Studies, BI, 2019, https://www.regjeringen.no/ contentassets/94e99440dd604be1836c4543fdb92cb6/what-now—the-impact-of-digitization-on-the-norwegian-musicindustry—english-summary—june-2019.pdf. Orian Brook, Dave O’Brien, & Mark Taylor, Culture Is Bad for You: Inequality in the Cultural and Creative Industries 221–48 (2020). For detail, see https://metoomvmt.org/about/. For the UK industries, see Incorporated Society of Musicians, Dignity at Work: A Survey of Discrimination in the Music Sector, 2018, https://www.ism.org/images/images/ISM_Dignity-at-workApril-2018.pdf. For the U.S. music industry, see Dorothy Carvello, Anything for a Hit: An A&R Woman’s Story of Surviving the Music Industry (2018). For detail, see https://timesupnow.org; also on diversity and statistics in the U.S. film industry, see https:// womenandhollywood.com; or in the UK publishing sector, see https://www.womeninpublishinghistory.org.uk.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

475

Intellectual property (IP) law is traditionally examined through a range of theories, none of which include feminist legal theory.8 This, as will be argued here, is to the detriment of IP law and all its stakeholders. Although there is some significant scholarship in the United States,9 feminist engagement is not systemic and is left to discussions in isolation, or as sometimes phrased by feminist scholars, secluded to the “pink ghetto.”10 With obvious advantages to feminist engagement with any area of the law in mind, many scholars call for an increased feminist analysis of all areas of the law, in particular where scholarship has resisted, or merely ignored all (or most) feminist examination thus far.11 IP law has been justified through (i) natural rights theories, such as Locke or Hegel; (ii) rewards and incentives theories; (iii) law and economics, such as Landes and Posner; and (iv) most broadly, through a neoliberal approach.12 At the same time, criticism of IP law is prevalent and theories of cultural or creative commons have been devised in response to the continuous overexpansion of IP private rights (monopolies) at the expense of the commons, public good, and overall society at large.13 In other words, IP law is not without its challenges and challengers and the continuous overexpansion is resulting in a legitimacy crisis. An important way to address this legitimacy crisis in IP law is a feminist realignment of its fundamental principles, following the integral tenets of IP social justice (IP-SJ) and its aims of inclusion and empowerment for the underrepresented. It is particularly the neoliberal justifications that are proving damaging to the apparent lack of balance in IP law today. Neoliberal principles in IP law will see “anything of value” or an “asset 8

9 10

11

12 13

See, e.g., (1) Lionel Bently et al., Intellectual Property Law 39–44 (5th ed. 2018) (copyright: (a) natural rights; (b) reward; (c) arguments based on speech; (d) incentive-based theories; (e) neoliberal economics; and (f ) democratic and republican arguments), 397–99 (patents), 853–58 (trade marks)); (2) Graham Dutfield et al., Dutfield and Suthersanen on Global Intellectual Property Law 18–49 (2d ed. 2020) (listing (a) Rawls and societal justice; (b) stakeholder theory; (c) institutionalism and (d) traditional theories applied to IP (including Locke; economic rationales; Kant and Hegel)); (3) Annette Kur et al., European Intellectual Property Law; Text, Cases and Materials 5–10 (2d ed. 2019) (referring to idealistic and utilitarian rationales for IP protection); (4) Tanya Aplin & Jennifer Davis, Intellectual Property Law; Text Cases, and Materials 3–21 (4th ed. 2022) (discussing justifications based on (a) unjust enrichment; (b) natural rights theory (Locke); (c) personality theory (Hegel); (d) human rights; (e) the utilitarian justification (Bentham, Hettinger) with authors observing that “while utilitarian justification tends to be more closely associated with common law rather than civil law jurisdictions, we should be wary of assuming that the utilitarian argument is the definitive basis for intellectual property laws in the UK” (at 16); and (f ) law and economics (Landes and Posner)). See section I.B. Pink ghetto concept referring to situations when feminist engagement is limited to specific topics. See Kate Ogg, The Future of Feminist Engagement with Refugee Law: From the Margins to the Centre and Out of the “Pink Ghetto”?, in Research Handbook on Feminist Engagement with International Law 176 (Susan Harris Rimmer & Kate Ogg eds., 2019) (at n.6, referring to Karin Stallard, who first coined the term in Karin Stallard, Barbara Ehrenreich, & Holly Sklar, Poverty in the American Dream: Women and Children First 18 (1983)). Explored in the context of IP: Metka Potočnik, Leaving the Pink Ghetto: Amplifying Feminist Voices in Intellectual Property Policy (Seventh Annual IP Mosaic Conference: IP as Protest, Change, and Empowerment, in organization by the Institute of Intellectual Property and Social Justice and hosted by the U.S. Mitchell Hamline School of Law (online)). Emma Larking, Challenging Gendered Economic and Social Inequalities: An Analysis of the Role of Trade and Financial Liberalisation in Deepening Inequalities and of the Capacity of Economic and Social Rights to Redress Them, in Research Handbook on Feminist Engagement with International Law 306 (Susan Harris Rimmer & Kate Ogg eds., 2019). For an overview, see Bently et al., supra note 8, at 39–44, 397–99, 853–58. On Creative Commons, see Lawrence Lessig, The Creative Commons, 55 Fla. L. Rev. 763 (2003). Professor Lessig has written extensively on this topic. See https://creativecommons.org. Generally, on the negative effects of IP laws on the Commons, see Guy Standing, The Corruption of Capitalism; Why Rentiers Thrive and Work Does Not Pay 165, 197 (2016) (“Plundering the Commons,” where “cultural commons” include “‘the arts,’ sports, the mass media, public libraries, art galleries, museums, concert halls, and public spaces for performances and other creative activities,” and “are being depleted”).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

476

Metka Potočnik

capable of financial valuation,” attracting IP protection, with a corresponding private monopoly.14 Such a direction comes at a price of other, noncommercial interests, such as human rights, e.g., free speech or the right to health.15 This increased favoring of IP owners (typically corporate or other institutional owners) is exacerbated by the challenging task of protecting IP works online (or digitally). The human creatives are consequently on the one hand left out of the protection of IP law, or at least, left at the mercy of the legal persons who are the owners of IP assets; and on the other hand, even the most agreed upon forms of protection that extend to creatives cannot be enforced in the digital realm to their benefit. Recent governmental and organizational inquiries into the consumption of digital music (streaming services) confirm16 that the current economic systems are not working to the benefit of the creative talent (artists, musicians) and that the system needs fundamental rethinking. With this, there is an opportunity to draft inclusive rules, which will not be informed exclusively from the evidence provided by the ‘big players.’ At present, the record labels and streaming services providers are the better organized stakeholders in legislative debates. The voices and interests of women and gender expansive artists, who are also underrepresented amongst the talent signed by the record labels, are not represented in an organized or concerted manner. If a feminist approach is to be the solution, or at the very least a significant component of the solution, one needs to identify a theory, or a combination of theories, to be followed amongst the multiple options available. Feminist jurisprudence or feminist theory is not a single or unitary approach.17 In fact, some would argue that a feminist approach is best described as a tapestry or a 14

15

16

17

See Bently et al., supra note 8, at 43 (offering a helpful, if unsympathetic overview, where, according to “an alternative economic theory, associated with neoliberal economics, [justifies the] protection of virtually “all value” . . . According to this school of thought, private ownership of resources is the juridical arrangement most conducive to optimal exploitation”). See, e.g., Mason Marks, People Are the Lifeblood of Innovation, ch. 4 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Krista L. Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). This is often seen in the international investment regime, which protects IP rights, as investment assets. In cases such as Philip Morris Brands Sàrl, Philip Morris Products SA and Abal Hermanos SA v Oriental Republic of Uruguay (Decision on Jurisdiction, 2013 (PM v Uruguay); Award, 2016 (PM v Uruguay II)) ICSID Case No ARB/10/7 (Bernardini, Crawford, Born (concurring and dissenting)), the tension is illustrated when trademarks as investment assets were weighed against the public interest in reducing health risks from tobacco use (tobacco plain packaging cases). For a general overview of IP assets as investment assets and associated risks of indiscriminate protection, see Metka Potocˇnik, Arbitrating Brands; International Investment Treaties and Trade Marks (2019); see also Emmanuel Kolawole Oke, The Interface Between Intellectual Property and Investment Law: An Intertextual Analysis (2021); and Research Handbook on Intellectual Property and Investment Law (Christophe Geiger ed., 2020). In the UK, the Digital, Culture, Media and Sports Committee launched an inquiry into the “Economics of Music Streaming” (in Oct. 2020). See https://committees.parliament.uk/work/646/economics-of-music-streaming/. For more detail on the DCMS inquiry, see Metka Potočnik, Neutral Is the New Blind: Calling for Gender Segregated Evidence in UK Legislative Inquiries regarding the Music Industries, 6 Wolverhampton L.J. 69 (2021). More broadly in the UK, the Intellectual Property Office collected evidence on the effectiveness of IP rules in protecting individual authors and creatives (Oct. 2020), https://www.gov.uk/government/consultations/review-of-the-ip-enforcement-framework-call-forevidence. Internationally, the World Intellectual Property Organization (WIPO) responded to the current imbalance in remuneration for individual artists in the digital content market with the establishment of the consortium “WIPO for Creators” (2020), which collaborates with the Music Rights Awareness Foundation. See https://www.wipo.int/ pressroom/en/articles/2020/article_0016.html. See the extensive overview of feminist theory offered in The Oxford Handbook of Feminist Theory (Lisa Disch & Mary Hawkesworth eds., 2016). More specifically on feminist jurisprudence, see Research Handbook on Feminist Jurisprudence (Robin West & Cynthia Grant Bowman eds., 2019); see also Research Handbook on Feminist Engagement with International Law (Susan Harris Rimmer & Kate Ogg eds., 2019); and Juliet A. Williams, Feminist Jurisprudence, in The Oxford Handbook of Feminist Theory (Lisa Disch & Mary Hawkesworth eds.,

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

477

multitude of approaches, with some commonality in the broadest sense. As posited by Grant Bowman, Feminist legal theory is the study of the philosophical foundations of law and justice; informed by women’s experiences, its goal is to transform the legal system and the understanding of it to improve the quality of jurisprudence and women’s lives.18

The aim of this chapter is to expose the hidden gender bias of IP law (or at least start) by critically reflecting on its rules through a feminist lens and focusing on the U.K. music industries (section I.A).19 This chapter, and the case study of the U.K. music industries, form part of the research in which this author critically investigates IP law and its gender bias.20 The investigation relies on relational legal feminism in order to consider a theoretical realignment of IP law (section II). Specifically, this chapter aims to answer the research question of what is (to be) the role of IP law in the music industries especially with respect to redressing the effects of their apparent bias against women (inclusive of all persons who identify as such) and gender expansive musicians. This question will be reflected on through a section of select concepts of IP law (section IV) related to music. To answer its research question, the author relies on the feminist methodology, i.e., the Feminist Toolbox (section III)21 and the theory of positionality, which together form arguably the best approach to feminist construction of knowledge.22 With this chapter the author presents the findings of two projects,23 in which she conducted semi-structured interviews with 41 creatives (women and gender expansive persons), who helped to construct a partial picture of the lived experience of female and gender expansive artists, authors, musicians, and other creatives in the U.K. Informed by the theoretical framework, doctrinal evidence, and numerous testimonials, the author argues that IP law is not gender blind and more research is needed for a better understanding of the gender bias in all areas of IP law. Although the creatives are unaware of its

18

19

20

21

22 23

2016); or earlier works, including Hilaire Barnett, Introduction to Feminist Jurisprudence (1998); and Zillah R. Eisenstein, The Radical Future of Liberal Feminism (1993); or select chapters in M.D.A. Freeman, Lloyd’s Introduction to Jurisprudence (9th ed. 2014) (mainly ch. 14). This list is, of course, only illustrative. Cynthia Grant Bowman, Socialist feminist legal theory: a plea,’in Research Handbook on Feminist Jurisprudence 91 (Robin West & Cynthia Grant Bowman eds., 2019). This carries an important limitation to the present research: the author is limited to the EU literature in the English and Slovenian languages. For further detail, see https://researchers.wlv.ac.uk/m.potocnik: (1) Society of Legal Scholars (UK) funded project: “Hear Her Speak: a Feminist Approach to Intellectual Property Law” (2020–21); (2) Lord Paul Fellowship, University of Wolverhampton funded project: “ALL HER VOICES Record Label: a Feminist Approach to Intellectual Property Assets” (2020–22). The author is also on the Board of Directors of The F-List for Music CIC (for Women in the UK Music Industries), https://thef-listmusic.uk/about-us/directors-of-the-f-list/. Hila Keren, Feminism and Contract Law, in Research Handbook on Feminist Jurisprudence 424 (Robin West & Cynthia Grant Bowman eds., 2019) (offers the term, but does fill the toolbox with specific methods); Julie A. Nice, The Gendered Jurisprudence of the Fourteenth Amendment, in, Research Handbook on Feminist Jurisprudence 343 (Robin West & Cynthia Grant Bowman eds., 2019) (“The common context-based methods of feminist jurisprudence include: grounding one’s perspective in women’s lived experiences; incorporating multiple aspects of identity beyond sex (such as race, ethnicity, sexual orientation, gender identity, age, class, disability and immigration status); uncovering implicit bias often hiding behind purported objectivity; identifying double binds and dilemmas associated with either ignoring or highlighting differences; revealing the resilience and reproduction of male dominance; and understanding cultural coding of women’s consciousness and choices”). Katharine T. Bartlett, Feminist Legal Methods 103 Harv. L. Rev. 829, 832 (1990). (1) Metka Potočnik, Breaking Monopolies: A Feminist Approach to Intellectual Property in the Creative Industries, Early Researcher Award Scheme (ERAS), University of Wolverhampton (Oct. 2019–Sept. 2020) (15 interviews, 8 with creatives from the music industries, marked “C”); and (2) Society of Legal Scholars (UK) funded project: Hear Her Speak: a Feminist Approach to Intellectual Property Law (2020–2021) (26 interviews, 14 with creatives from the music industries, marked “H”).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

478

Metka Potočnik

role or effects, it is suggested here that IP law has proven to pose a substantial barrier to the success of women and gender expansive persons in the creative industries. The extent to which IP law promotes, or enables at the very least, maintenance of gender bias in the IP ecosystem presents a systemic problem of IP social injustice that is monumental in dimension. Gender bias in the formation and implementation of IP law can deprive a society of the IP contributions of at least half of its citizenry. Moreover, a male dominated IP economic system is qualitatively imbalanced, in that it lacks the diversity of perspective and input that is essential to a fully optimized IP regime.24 The IP-SJ rationale recognizes the importance of widespread and diverse participation to the social of function of IP protection. This means that the IP regime must adhere to precepts of socially equitable access, inclusion, and empowerment.25 A feminist analysis of IP law applies the tenets of IP-SJ toward correcting the gender biases and related deficiencies of the IP regime. As theory of positionality suggests, every additional perspective will enrich our understanding of the consequences IP law has on its stakeholders.26 Therefore, this is just the beginning.

i. gender bias of ip: identifying the problem A. Beyond Economic Utility of IP Creative industries are defined by the U.K. Department of Digital, Culture, Media and Sport (DCMS)27 as “industries that are based on individual creativity, skill and talent with the potential to create wealth and jobs through developing intellectual property.”28 Creative industries include advertising; architecture; arts and culture; craft; createch; design; fashion; games; music; publishing; and TV and film.29 As suggested by the DCMS definition, IP serves as the vehicle for transforming individual creativity skill and talent into the creation of “wealth and jobs.” The definition on its face does not appear to favor any particular type of individual and reads as an objective term, which focuses on the merit of an individual’s endeavors. Are all “individuals” equal under the current regime? As clearly stated by the various industry reports in the introduction to this chapter, there are great inequalities in the music industries, and more broadly the creative industries. These reports of course sit in the broader context of social inequalities, including the gender pay gap,30 gender-based discrimination, and violence, as exposed through movements like Me Too31 or Time’s Up.32 All this evidence notwithstanding, the main proposition that IP law is gender-neutral persists. From the governmental perspective,

24

25

26

27 28

29 30 31 32

See Lateef Mtima, Copyright and the Interdependent Relationship Between Social Utility and Social Justice, ch. 5 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). The author continued her empirical study with women and gender expansive artists (creatives), with the support of the University of Wolverhampton LPF scheme, supra note 20. https://www.gov.uk/government/organisations/department-for-digital-culture-media-sport (last visited Dec. 17, 2022). DCMS Creative Industries Sector Deal, Mar. 2018, https://www.gov.uk/government/publications/creative-industriessector-deal. Listed on UK CIC portal, https://www.thecreativeindustries.co.uk/industries. See, e.g., Vecco et al., supra note 4, and the other references cited therein. For more detail, see https://metoomvmt.org/about/. For more detail, see https://timesupnow.org; see also on diversity and statistics in the U.S. film industry, https:// womenandhollywood.com; or in the U.K. publishing sector, https://www.womeninpublishinghistory.org.uk.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

479

as reflected in the DCMS definition, it is still posited that individual creativity, skill, and talent will lead to wealth and jobs. “Worthy” artistry will pay the bills. Or so the story goes. Placed against the broader context of the inequalities in the creative industries, it is argued here that not all “individuals” are equal (at least not before the provisions of IP law). With an express link between IP and individual creativity, skill, and talent, a question that crystallizes is whether IP is playing its role in transforming all individual creativity, skill, and talent into societal utility. At the same time, the question of what amounts to “societal utility” is to be asked. The economic function of IP law to “create wealth and jobs” is currently embedded in governmental policies and its resulting Creative Industries Sector Deal of 2018.33 It suggests that IP’s function is in creating economic utility. This is, however, a (too) narrow view and alternative options should be explored. The DCMS definition is turning a blind eye to the preexisting inequalities in the sector. The DCMS suggests that an artist will earn money with her music through IP, which transforms “individual creativity, skill and talent” into “wealth and jobs.”34 And although it is agreed that IP has an important economic function, more is needed. It is argued here that a social utility of IP laws is crucial in order to avoid the pre-existing inequalities, underrepresentation and discrimination. According to the theory of IP-SJ, in order “[t]o achieve its social utility purpose of human nourishing and flourishing, the intellectual property law must . . . adhere to inherent precepts of socially-equitable access, inclusion, and empowerment.”35 In sum, the application of a feminist analysis in the pursuit of IP-SJ can not only improve the internal efficacy of the IP regime, but it can also enhance the social effects of IP in the total political economy. B. Literature Review: Doctrinal Evidence of Gender Bias in IP Law Scholars engaging in IP feminist review acknowledge that gender and feminist theory are seldom used by mainstream scholars,36 despite the doctrinal need for IP law to be examined through the lens of feminist theory. No different from other areas of the law, application of feminist theories exposes the fallacy in the presumed gender neutrality of the law, lays bare the bias of seemingly neutral legal rules, and highlights the nonexistence of true objectivity of legal standards. Scholars in this field will not always expressly differentiate among the various theoretical approaches that exist in feminist scholarship, and it has been correctly argued that applying different feminist theories can lead to substantively different results.37 Opening up our understanding through the use of a variety of theories that may lead in a variety of different directions and outcomes is not a bad thing. Indeed, even though various authors might disagree with each other about the best outcomes, the use of multiple perspectives will bring further development of the field, and will diversify what we see through the application of diverse 33 34

35

36

37

See supra note 28. Department of Digital, Culture, Media and Sport, https://www.gov.uk/government/organisations/department-fordigital-culture-media-sport. Lateef Mtima, IP Social Justice Theory: Access, Inclusion, and Empowerment, 55 Gonz. L. Rev. 401, 419 (2019); and Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on Intellectual Property, Innovation, and Entrepreneurship, in Megan M. Carpenter, Entrepreneurship and Innovation in Evolving Economies (2012). Ann Bartow, Fair Use and the Fairer Sex: Gender, Feminism, and Copyright Law, 14 Am. U. J. Gender Soc. Pol’y & L. 551, 552 (2006). For an example of a text where the author considers gender-based differences in a creative industry, see Casey Fiesler, Pretending without a License: Intellectual Property and Gender Implications in Online Games, 9 Buff. Intell. Prop. L.J. 1 (2013). Deborah Halbert, Feminist Interpretations of Intellectual Property, 14 Am. U. J. Gender Soc. Pol’y & L. 431, 433–34 (2006).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

480

Metka Potočnik

theoretical approaches in critically examining IP law.38 Refusal of academics to do so perpetuates the IP law’s seeming “neutrality,” which is harming the diversity of intellectual creations protected and valued under the system. Bartow39 applied feminist theory to U.S. copyright law, with a normative goal. According to Bartow, all feminist scholars should pursue “low protectionism” in copyright law,40 although admittedly, not all feminist scholars might agree with this approach. In her more specific observations on the state of creative industries, Bartow shares an observation of the role of copyright as a barrier to inclusivity: Creative industry sectors such as publishing, film, television, theater, art dealing, and the music business are also dominated and controlled by men. Consequently, it is predominantly men who choose the content that will be commercialized and the quantity of resources that will be expended to promote individual works. Decisions about how aggressively to “protect” copyrights, such as when to bring infringement suits and how zealously to pursue them are largely made by men as well.41

More damningly, Pollack42 observes that IP systems, which are built on notions of property and exclusion, are inherently male. Objects that will be protected are of commercial interest to men; and, conversely, objects that are traditionally not protected under copyright or patent laws, such as clothing, food, folklore, or traditional knowledge are excluded in a “gendered, anti-feminist manner.”43 The reason why IP law will necessarily have gendered implications rests on the fact that it is part of a larger society, which has historically favored men: Some intangibles can be owned. Some cannot. Decisions about the scope of protection are usually described as the outcomes of economics, special interest politics, or history. Economic relationships, special interest groups, and political power, however, have long been dominated by men. Furthermore, economic efficiency through individual ownership is an inherently male approach to the world, especially when the central prong of ownership is the right to exclude others.44

In a similar vein, through the study of fair use case law, Tushnet observes that U.S. copyright’s “economic focus and the expense of litigation will systematically lead to case law undervaluing non market production, including historically female creative practices.”45 By looking at mainstream media and copyright law in the U.S. through a feminist lens, Chaloner argues that copyright serves as a controlling mechanism for deciding which culture gets distributed.46 Although not solely responsible for this exclusion, Chaloner finds that copyright plays a role in excluding women from mainstream, commercial culture.47 Holistically, Chaloner also sees IP as a masculine field, “because it is about asserting dominance and control over information.”48 Chaloner does not

38 39 40 41 42

43 44 45

46 47 48

Id. at 460; Bartow, supra note 36, at 554. Bartow, supra note 36, at 551. Id. at 570. Id. at 578. Malla Pollack, Towards a Feminist Theory of the Public Domain, or Rejecting the Gendered Scope of United States Copyrightable and Patentable Subject Matter, 12 Wm. & Mary J. Women & L. 603 (2006) (also discussing patents). Id. at 603. Id. Rebecca Tushnet, My Fair Ladies: Sex, Gender, and Fair Use in Copyright, 15 Am. U. J. Gender Soc. Pol’y & L. 273, 303–304 (2007). Emily Chaloner, ‘A Story of Her Own: A Feminist Critique of Copyright Law’ (2010) 6 ISJLP 221. Id. at 221. Id. at 238–39.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

481

propose the abolition of copyright, but points to important doctrinal value of feminist critique of IP law: A feminist critique of copyright recognizes that the law works to protect patriarchal systems of creation and does not provide space for alternative narratives or for critical dialogue with dominant narratives.49

IP law is also not race neutral,50 and feminist scholars have considered, through the principle of intersectionality, both race and gender issues together. Greene explored how women artists, in particular Black women, have been (negatively) impacted by the IP system, and importantly posits that authorship, like gender and race, is socially constructed.51 Greene relies on critical race theory, and combines it with feminist legal theory. The value of the latter “is its focus on uncovering subordination hidden in ‘neutral’ legal regulations.”52 Applying critical race, feminist, and cultural production theories on IP law, Lester argues that IP law is not objective.53 Other authors have also found that feminist legal theory, when applied to IP law, will have fundamental effects on some of the key concepts, such as authorship or inventorship. Robbins relies on feminist material culture theory to redefine the notion of authorship, as “a flexible cultural formation shaped by material conditions and contested beliefs about writing, reading, and texts themselves.”54 Halbert relies on theories of social construction of knowledge, gendered construction of authorship and postmodern feminism,55 and finds that IP law is inherently masculine, resulting in the particular appeal of feminist theories in the designing of the future direction of IP lawmaking, wishing to avoid overexpansion: My early hypothesis was that feminist theory could be used to create a critique of expanding intellectual property rights. However, I am not convinced all feminist theory, and by extension all feminists, would be equally critical of intellectual property. That being said, my argument is that while some feminists may perceive benefits from copyright and/or patent law, feminist theory can make visible the underlying masculine assumptions existing in our construction of intellectual property as well as highlight a political economy of intellectual property that has historically benefited men more than women. Furthermore, the value of a feminist analysis is that it can be used politically – to think actively about what the future may hold by avoiding choices that privilege men more than women.56

The application of feminist legal theory to patent law also led to tangible results. Burk found that viewing traditional concepts of patent law, such as “the person skilled in the arts,” through a 49 50

51

52 53

54

55 56

Id. at 254–55. See Deidre Keller & Anjali Vats, A Primer on Critical Race Intellectual Property, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Kara W. Swanson, They Knew It All Along: Patents, Social Justice and Fights for Civil Rights, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See generally Anjali Vats, The Color of Creatorship; Intellectual Property, Race and the Making of Americans (2020). K.J. Greene, Intellectual Property at the Intersection of Race and Gender: Lady Sings the Blues, 16 Am. U. J. Gender Soc. Pol’y & L. 365, 379 (2008). Id. at 378. Toni Lester, Oprah, Beyoncé, and the Girls Who Run the World: Are Black Female Cultural Producers Gaining Ground in Intellectual Property Law, 15 Wake Forest J. Bus. & Intell. Prop. L. 537, 543 (2015) (in general discussing copyright cases of Oprah Winfrey, Beyoncé Knowles and Alice Randall (Gone with the Wind/The Wind Done Gone)). Sarah Robbins, Distributed Authorship: A Feminist Case-Study Framework for Studying Intellectual Property, 66 College English 155, 160 (2003). Halbert, supra note 37, at 431 (also discussing patents). Halbert, supra note 37, at 433–34.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

482

Metka Potočnik

feminist lens (relying on the writings of MacKinnon), would lead to a different system of patent grants, compared to the patents granted today.57 Foster reviews the role of patents in the field of biotechnology, and with the use of feminist theory and construction of “labor” argues that “patent law functions within gendered and ethno-racialized forms of neoliberal, biopolitics involving the patenting of women’s reproductive and intellectual labor within new bioeconomics.”58 Studying the historical case study of the corset and applying feminist theory to patent law, Swanson finds that this area of the law is not a “gender-free zone of technology, but involves carefully negotiated knowledges about gender that are exposed when the masculine category of technology is claimed for a profoundly femininized item, such as a corset.”59 The doctrinal evidence is scarce outside the U.S.60 Feminist IP U.S. scholarship is on the rise and it seems to suggest that IP law is not gender neutral. If anything, this is “a question not asked,” and not “a nonissue.” As Swanson concluded, based on the growing U.S. IP feminist scholarship,61 Facially neutral IP law is not neutral, but imbued with the assumptions of those who wrote it and interpret it, including assumptions about sexual orientation and gender identity. Identifying this problem is a first step toward addressing the problem.62

C. Research Gap: Identifying Appropriate Feminist Theories and Collecting Empirical Evidence Learning from the literature, there are several future directions a researcher might wish to take. First, the feminist investigation of IP law is still unknown in most jurisdictions outside the U.S., in particular the U.K. Second, IP law would benefit from an investigation through various feminist legal theories, as feminist theory is not a singular concept. And finally, any future direction in IP reform should be informed by the lived experience of women and gender expansive persons. In order to understand the way in which IP law and its rules affect women and gender expansive artists, we must collect empirical evidence.

ii. theoretical framework: a tapestry of feminist approaches Feminist theory is not a unitary concept. Instead, a feminist approach is best seen as an umbrella for a variety of approaches, which covers a range of theories, combined with numerous 57

58

59 60

61

62

Dan L. Burk, Feminism and Dualism in Intellectual Property, 15 Am. U. J. Gender Soc. Pol’y & L. 183 (2007) (also discussing copyright); Dan L. Burk, Do Patents Have Gender, 19 Am. U. J. Gender Soc. Pol’y & L. 881, 891 (2011). Laura A. Foster, Patents, Biopolitics, and Feminisms: Locating Patent Law Struggles over Breast Cancer Genes and the Hoodia Plant, IJCP 371 (2012). Kara W. Swanson, Getting a Grip on the Corset: Gender, Sexuality, and Patent Law, 23 Yale J.L. & Feminism 57, 115 (2011). There is some literature. See Sharmista Barwa & Shirin M. Rai, Knowledge and/as Power: A Feminist Critique of Trade Related Intellectual Property Rights, 7 Gender, Tech. & Dev. 91 (2003); Pauline Greenhill, Natalka Husar and Diana Thorneycroft versus the Law: A Critical Feminist Consideration of Intellectual Property and Artistic Practice, 18 Can. J. Women & L. 439 (2006); Raadhika Gupta, Copyright v. Copyleft: A Feminist Perspective on Marginalization under Copyright Law, NUJS L. Rev. 67 (2011) 4; Madhavi Sunder, Intellectual Property and Identity Politics: Playing with Fire, 4 J. Gender Race & Just. 69 (2000); and Madhavi Sunder, IP3, 59 Stan. L. Rev. 257 (2006). There are also recent signs of growing scholarship. See Sasha Mathew, A Feminist Manifesto of Resistance Against Intellectual Property Regimes: Reclaiming the Public Domain as an Open-Access Information Commons, 13 Crit. Afr. Stud. 115 (2021) (finding that “intellectual property law is named as a system of oppression and its gendered, racist, imperialist assumptions are exposed” and resultingly making “a normative argument for the revitalization of the public domain as a feminist decolonial enterprise”); see also Lucero Ibarra Rojas, Muses, Impostors and Embroiderers: Intellectual Property from a Feminist Perspective, 34 Revista de derecho (Valdivia) 73 (2021) (in Spanish). Kara W. Swanson, Intellectual Property and Gender: Reflections on Accomplishments and Methodology, 24 Am. U. J. Gender Soc. Pol’y & L. 175 (2015). Id. at 185.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

483

methodologies. Accordingly, it appears reasonable to state the selection of a theoretical approach expressly, which is arguably the more convincing choice for IP law. A. Relational Feminism: the Inclusive Understanding of a Human Is there a feminist theory, which would shine a light on the apparent dehumanization of IP law? Increasingly, the individual author is disappearing from the IP discourse, and the interests protected by IP laws seem to value the economic interests above all. The neoliberal justification of IP law appears to be prevalent, despite the continuous struggles and objections from academia to resist these developments. Even when faced with the need to protect the most basic of human rights, the right to health, the rights of IP owners are not trumped, and instead, have now been recharacterized as investment assets, meriting yet another level of legal protection.63 This chapter does not aim to offer an extensive overview of feminist theories and the multiplicity of approaches that have been developed in the past century and a half.64 Much better texts have been written to that effect. It is acknowledged here, however, that liberal feminism, as the most obvious theoretical choice still faithful to the liberal legal order, has received ample criticism, which cannot be ignored.65 Instead, alternative theoretical options have been identified in the search for a more suitable lens to explore the previously assumed gender neutrality of IP law. Out of the many options,66 this author opts for relational feminism, as developed by West.67

63 64

65

66

67

See Marks, supra note 15, discussed broadly in Potočnik, supra note 15. For an overview of different schools, see, e.g., Robin West, Introduction to the Research Handbook on Feminist Jurisprudence, in Research Handbook on Feminist Jurisprudence 1–22 (Robin West & Cynthia Grant Bowman eds., 2019). For an overview of numerous theoretical approaches, see, e.g., Disch & Hawkesworth, supra note 17. In basic terms, liberal feminism rests on the proposition of equality between the sexes; argued in Sylvia A. Law, In Defense of Liberal Feminism in Research Handbook on Feminist Jurisprudence 24 (Robin West & Cynthia Grant Bowman eds., 2019) (Law argues that the “liberal feminist commitment [is] to an expansive conception of women’s liberty and women’s equality”). There has been ample criticism of the theory, resulting from the blind focus on the “white elite” or the refusal to appreciate the differences between men and women. To illustrate: (1) radical feminism according to Catharine MacKinnon, which offers an improvement of the “formal equality theory” which originated with Aristotle: discussed in Chao-ju Chen, Catharine A. MacKinnon and Equality Theory in Research Handbook on Feminist Jurisprudence 91 (Robin West & Cynthia Grant Bowman eds., 2019); (2) bell hooks, Ain’t I a Woman: Black Women and Feminism (1981) (explaining how Black women have been systematically ignored by the women’s rights movements in the 1920s onwards, and the feminist movements into the 1980s); or (3) Lola Olufemi, Feminism, Interrupted; Disrupting Power (2020) (a recent contribution in radical feminism, which is a systemic critique of liberal feminism, which focuses on an elite group); (4) similarly intersectionality, which highlights the need to consider the multiple characteristics, which combined can increase systemic oppression (Black women have been systematically ignored by liberal feminism and theories): Kimberlé Crenshaw, Mapping the Margins: Intersectionality, Identity Politics, and Violence against Women of Colour, 43 Stan. L. Rev. 1241 (1991) (the first scholar to coin the term of intersectionality, but preceded by works such as bell hooks); (5) Eisenstein, supra note 17, at 9 (presenting an overarching criticism that liberal feminism is not to be seen as “the feminism” and without suitable theory, it is best viewed as ideology; according to Eisenstein, liberal feminism has an inherent limitation or contradiction, in that liberal feminists ask for “sexual egalitarianism from within a structure [i.e., a liberal state] that is patriarchal”). For a brief description of four schools of thought (liberal, radical, cultural, and postmodern), see M.D.A. Freeman, Lloyd’s Introduction to Jurisprudence 1288–89 (8th ed. 2008) (“For liberals, equality amounts to equal opportunity. Radical feminists, such as Littleton and MacKinnon, focus on differences between women and men and support affirmative measures to challenge inequalities. Cultural feminists also emphasize difference, but view it more positively. They (thinkers such as Carol Gilligan and Robin West) use the rhetoric of equality to advocate change that supports the values (caring, relational connectedness) of this difference. Postmodern feminism sees equality as a social construct and, since it is a product of patriarchy, one in need of feminist reconstruction, but it warns against searching for a new truth to replace an old one”). Robin West, Relational Feminism and Law, in Research Handbook on Feminist Jurisprudence 65–72 (Robin West & Cynthia Grant Bowman eds., 2019).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

484

Metka Potočnik

West developed relational feminism as a response to three types of criticism against liberal feminism. Liberal feminism is based on formal equality, the “sameness” argument and inherently individualistic approach. Relational feminism aims to address all three characteristics through a new concept of “humans” and our interconnectedness. From the start, one of West’s observations is particularly noteworthy from the perspective of the plaguing criticism of IP law, which appears to serve mostly the neoliberal visions of corporations (legal persons), and fails to adequately protect the individual authors and inventors, There is much that is wrong, that is inhuman and cruel, about our idealized liberal vision of unencumbered souls marching through chosen lives of productivity and earned incomes unencumbered by human connection. Feminism can be and has been a way to highlight what is wrong with such a vision and to seek a more humane and inclusive ideal for communal life.68

The appeal of relational feminism in law is that it reasserts the importance of human beings in the liberal legal order and it stresses the need to diversify the understanding of a multitude of human perspectives. Here the liberal legal order includes and values the human and lived experience by women, and in that way, makes it more humane, At the heart of the movement sometimes called relational feminism is the claim that we might best address all the problems, or limits, within liberal feminism . . . by reconceptualizing the human being and doing so in a way that centralizes precisely the experiences, emotions, ambitions, fears and dreams shared by many women that are marginalized by liberal conceptions of the human. Perhaps human beings are not, contrary to any number of political theorists writing within the liberal tradition, essentially separated from or disconnected from other human and animal life and uniquely knowledgeable of that separation . . . Perhaps human beings are not embodied in a physical self that acts as a “container” of each individual being. If we centralize women’s experiences to the definitional and tentative accounts we give of humanity, a different and truer picture might emerge.69

In order to start the vision of an inclusive liberal legal order, and within it, IP law, feminist methodologies and the exploration of the lived experience of women will be necessary. Without the appreciation of the women’s experience, a new – and more inclusive liberal legal order – will not be possible: We should build a liberal legal order on a foundation that rightly values choice and individualism, but that also recognizes human connection . . . If we centralized women’s experiences of both the harms and the aspirations that are rooted in some way in this fundamental fact of human connectivity to the understanding of humanity that undergirds our liberal legal orders, we might thereby construct a more humane as well as more inclusive liberal legal order.70

B. In Case of Emergency: Break this Window! At present, this research relies on relational feminism, and the collection of lived experience of women in the U.K. music industries. It is quite possible, however, that upon the collection of a broader body of evidence, a more radical approach in theory will be required, when searching for a suitable foundation for new IP rules. Lola Olufemi, a radical feminist, has already made a 68 69 70

Id. at 70. Id. at 71. Id. at 71–72 (emphasis added). This is also a nexus point between relational feminism and IP-SJ theory, which advocates for access, inclusion, and empowerment. See Mtima, supra note 25.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

485

convincing argument in “Arts for Arts Sake” that not everyone gets to make art, as it is intrinsically linked to politics:71 As feminists, if we wish to see a world of art and creativity, then we must remove the barriers to that creativity and the systems that kill artists. We must dismantle the systems of poverty, racism, incarceration, impoverishment that leave so many women unable to fulfil their creative potential. Art requires will. But it also requires, as writer Virginia Wolfe recognises, a room of one’s own. A set of social and financial circumstances that enable creativity to take place. The question of who gets to make art is inseparable from questions of liberation and freedom.72

C. Positionality as the Construction of Knowledge Theory Feminist theories have many differences, while at the same time, they share significant commonalities. These have also been identified in the aims that feminist theorists pursue, or as three common characteristics of feminist theory: We identify three common characteristics of feminist theory in the late twentieth and twentyfirst centuries: (1) efforts to denaturalize that which passes for difference, (2) efforts to challenge the aspiration to produce universal and impartial knowledge, and (3) efforts to engage the complexity of power relations through intersectional analysis.73

Feminist scholars therefore pursue three main principles: first, sex and race are seen as political or social constructs, not reductively as biological or physical traits;74 second, feminist scholars are challenging the knowledge as experienced, collected and written by “socially privileged men”;75 and third, feminist scholars follow the principle of intersectionality, which instructs that a combined set of characteristics in a body (sex, race, age, ability, class) can lead to further systemic oppression.76 It is therefore characteristic of feminist theory to challenge the existing ways in which “universal and impartial knowledge”77 is constructed. Here, the author finds Bartlett’s approach to the theory of positionality convincing: I conclude that the theory of positionality offers the best explanatory grounding for feminist knowledge. Positionality rejects both the objectivism of whole, fixed, impartial truth and the relativism of different-but-equal truths. It posits instead that being “correct” in law is a function of being situated in particular, partial perspectives upon which the individual is obligated to attempt to improve. This stance, I argue, identifies experience as a foundation for knowledge and shapes an openness to points of view that otherwise would seem natural to exclude.78

71

72 73

74 75 76

77 78

See Olufemi, supra note 65, at 87–88 (the divide between art and politics is not real; resulting in the fact that poor women do not get to make art). Similar confirmation is also available in a 2020 empirical study confirming the lack of diversity in U.K. cultural industries in Brook et al., supra note 5 (discussing not only gender, or race, but also class, age, disability, etc.). See Olufemi, supra note 65, at 88. Mary Hawkesworth & Lisa Disch, Introduction: Feminist Theory; Transforming the Known World, in The Oxford Handbook of Feminist Theory 4 (Lisa Disch & Mary Hawkesworth eds., 2016). Id. Id. at 6. Id. at 8 (“intersectional analysis draws attention to the complex means by which power is encoded within particular bodies, exploring how specific gender norms are racialized, reserving the category ‘men’ or ‘women’ to those in dominant classes, while denying gendered inclusion to those deemed ‘inferior,’ ‘subhuman,’ or ‘deviant’). Id. at 4. See Bartlett, supra note 22, at 832.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

486

Metka Potočnik

Positionality dictates that feminist engagement with the law and its assessment of its legitimacy is an ongoing critical process.79 One can never arrive at the final or absolute truth. This theory of knowledge construction therefore demands researchers’ continuous commitment to the discovery of multitude of perspectives, which are not fixed in time or absolute. How to uncover those perspectives is posited in the following section.

iii. methodology: the feminist toolbox The Feminist Toolbox is a concept that has been used in previous writings,80 yet authors use a different combination of methodologies in their varied theoretical approaches. The Feminist Toolbox here is combined with the theory of positionality, as the most appropriate theory to resist the previously constructed “common truths” or “objective standards,”81 the latter being particularly prevalent in IP law. The combination of methods aims to devise an analytical approach (i.e., the Feminist Toolbox), that will shed light on the potential gender bias in IP law. A. Consciousness Raising as the Meta-Method The start of all methods is consciousness raising,82 also referred to as a “meta-method.”83 This method prepares any research area for all the subsequent feminist methods, including asking the woman question84 or feminist practical reasoning85 by identifying and ascribing the research value of women’s experiences in challenging the status quo or the “dominant versions of social reality.”86 In order to enrich or enhance the traditional views, justifications and evaluation of IP law, it is therefore crucial to seek insights through “collaborative or interactive engagements with others based upon the personal experience and narrative.”87 To identify the potential hidden bias of IP law, researchers must conduct empirical research to unearth the narrative and personal experience of women and gender expansive artists, musicians, and other creatives. B. Lived Experience of Women The obvious step in appreciating the personal experience and narrative of women and gender expansive persons is to “speak with, and listen to them.” This can include “asking the woman question” or “asking the woman about her experience.” As Nice explained, one of the common context-based methods of feminist jurisprudence is when researchers ground their perspective in women’s lived experience.88 Would researchers not know (by now), if there is gender bias hidden in IP law? It is posited here that the existing research and literature have not yet conducted empirical studies needed in 79 80 81

82 83 84 85 86 87 88

Id. at 868. Keren, supra note 21, at 424. See Freeman, supra note 66, at 1297 (“Feminist theory challenges the positivist-empirical tradition, the assumption that through observation and measurement by an objective observer the truth about reality will emerge”). See Bartlett, supra note 22, at 831. Id. at 866. See section III.B. See section III.D. See Bartlett, supra note 22, at 866. Id. at 831. See Nice, supra note 21, at 343.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

487

order to understand any power or general inequalities within IP law.89 Rubenstein and Isaac have stressed the fundamental nature of the lived experience of women method, to understanding the power in society and the follow-on recommendation to remedying any potential inequalities.90 It will only be possible to answer the question of whether women and gender expansive creatives have been left out of IP law if we ask them the relevant questions surrounding their experience.91 Bartlett explains the multi-tier approach to asking the woman question as: (1) are there any gender implications of a social practice or rule, that is to say, have women been left out of policy or society’s consideration? (2) If they have been left out, in what way has that been done? (3) If there is an omission, how can it be corrected?92 And in particular relevant to IP law, are the apparently gender-neutral standards set in IP law written in a way that values the experience of men over that of experience of women? Bartlett aptly observed on legal neutrality, Asking the woman question confronts the assumption of legal neutrality, and has substantive consequences only if the law is not gender-neutral. The bias of the method is the bias toward uncovering a certain kind of bias. The bias disadvantages those who are otherwise benefited by law and legal methods whose gender implications are not revealed. If this is “bias,” feminists must insist that it is “good” (or “proper”) bias, not “bad.”93

If there are any default settings in legal standards set in IP law, are they disadvantaging women? As observed by Bartlett, it is important to evaluate whether “some features of the law may be not only nonneutral in a general sense, but also “male” in a specific sense.”94 The doctrinal evidence explored previously would suggest that there are clear disadvantages, and that IP rules are “male” in their current default settings.95 Speaking to women and gender expansive creatives allows for the exposure of any default male settings in IP law in practice, or “in the real world” and the understanding of how they operate, and allows for a critical evaluation of IP law, which might lead to the suggestion of a gender correction going forward. C. Intersectionality The need to diversify the feminist approach beyond another default, i.e., the white woman, did not stop at the overwhelming criticism of the theoretical blindness of liberal feminism, but extended to the methodology in feminist jurisprudence. It is here that the importance and fundamental nature of intersectionality are recognized in that it becomes not only one of the theoretical approaches,96 but more fundamentally as the method to feminist engagement with 89

90

91 92 93 94 95 96

See section I.C. There are some empirical studies in the U.S. on the characteristics of IP systems, which have started the conversation: see Mtima, supra note 25. In addition, in 2020 the WIPO started a critical investigation of women and IP law, with multiple projects on gender equality, diversity, and IP. WIPO initiatives in 2021 include: (a) closing the gender gap in IP; (b) empowering women in the publishing industry; (c) gender parity reached among WIPO Academy students; and (d) training indigenous women entrepreneurs. Broadly, see https://www.wipo.int/women-andip/en/. Kim Rubenstein & Anne Isaac, Oral History as Empirical Corrective: Including Women’s Experiences in International Law, in Research Handbook on Feminist Engagement with International Law 356 (Susan Harris Rimmer & Kate Ogg eds., 2019). See Bartlett, supra note 22, at 837. Id. at 837. Id. at 847. Id. at 837. See literature review in section I.B. As coined in 1989 by Kimberlé Crenshaw, supra note 65, described in Williams, supra note 17, at 251.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

488

Metka Potočnik

the law. Intersectionality is a key element in the Feminist Toolbox. Established scholars of different feminist theories adopted intersectionality as a method, including MacKinnon in her radical feminist theory.97 In order to expose the bias of IP law and its overwhelming neoliberal stance, intersectionality as a method is crucial, as artists and creatives can face a multitude of barriers in achieving success. Focusing on gender, without paying attention to race, class, ethnicity, age, (dis)ability or other circumstance, could cloak inequalities unknown to the researcher. Whilst starting the conversations with a multitude of diverse creatives from all fields of the creative industries, “intersectionality can illuminate the diverse ways in which relations of domination and subordination are produced.”98 Intersectionality will therefore allow the researcher to evaluate whether there are women and gender expansive creatives who have characteristics or relations that render them invisible to IP law and consequently their interests are underrepresented and unprotected. In order fully to appreciate the women’s experience with IP law, intersectionality is not only the method in the Feminist Toolbox, but together with the meta-method of consciousness-raising, as characterized by Williams, it is the dominant feminist research paradigm.99 D. Practical Feminist Reasoning, Rationality, and Contextuality Feminist engagement with any area of the law calls for a deeper context.100 In replacing the apparently gender-neutral objectivity, feminist reasoning demands the appreciation of other perspectives, importantly the women’s experience, and a more case-by-case assessment.101 According to Keren, the objectivity in law is to be replaced with more contextuality.102 Contextuality as a method is complemented by practicality of feminist engagement with the law, but the reasoning is not irrational. Feminist practical reasoning is rational, although the concept of rationality itself is to be viewed sceptically, when not challenged for its apparent favoring of the male default position. First, it is observed that issues are better appreciated on continuums, and not in the form of dichotomies. Here, Bartlett explains, Practical reasoning approaches problems not as dichotomized conflicts, but as dilemmas with multiple perspectives, contradictions, and inconsistencies . . . [n]ew facts present opportunities for improved understandings and “integrations.” Situations are unique, not anticipated in their detail, not generalizable in advance. Themselves generative, new situations give rise to “practical” perceptions and inform decisionmakers about the desired ends of law.103

97

98

99 100

101 102 103

As noted in Chen, supra note 65, at 63. See also Ekaterina Yahyaoui Krivenko, Women and the International Court of Justice, in Research Handbook on Feminist Engagement with International Law 209 (Susan Harris Rimmer & Kate Ogg eds., 2019). Brittney Cooper, Intersectionality, in The Oxford Handbook of Feminist Theory 401 (Lisa Disch & Mary Hawkesworth eds., 2016). See Williams, supra note 17, at 252. Presenting her case for contextual methods, see Nice, supra note 21, at 343; see also Krivenko , supra note 97, at 205 (listing contextuality as one of the main three feminist methods: (1) context-specific analysis and attention to the individual and his/her suffering (derived from feminist standpoint epistemology); (2) intersectionality; and (3) deconstruction of binaries and avoidance of hierarchies). See Keren, supra note 21, at 422. Id. at 421. See Bartlett, supra note 22, at 851.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

489

Equally, feminist critical thought does not refuse abstraction, and in that sense, remains a process of rationality. Bartlett again helpfully clarifies that: Feminist practical reasoning gives rationality new meanings. Feminist rationality acknowledges greater diversity in human experiences and the value of taking into account competing or inconsistent claims. It openly reveals its positional partiality by stating explicitly which moral and political choices underlie that partiality, and recognizes its own implications for the distribution and exercise of power. . . [f]eminist method . . . strives to make more sense of human experience, not less, and is to be judged upon its capacity to do so.104

Overall, all lawmaking is the result of its context and social reality. Unless we can confidently point to the collection of women’s and gender expansive persons’ perspectives in drafting the laws, it is time to investigate just how monolithic the experience of the author, inventor, and performer in IP law is.105

iv. exposing gender bias in ip law: a feminist checklist for the u.k. music industries There are several reports at the start of this chapter, which offer empirical evidence of gender (and other categories) underinclusion in the bigger, better-funded organizations (record labels; music publishers; orchestras; radio stations or festivals) in the U.K. music industries.106 It is suggested here that this underinclusion is present also in other sectors of the creative industries, but this chapter focuses on the music industries.107 What is unfortunately still not clear is the role of IP law in this debate. At its core, IP is meant to promote creativity and protect authors’ material and moral interests.108 The question remains whether if there are broader societal inequalities that IP law should correct, in order to foster inclusive creative and expressive spaces. The main human rights instruments, as written, aim to promote all creativity, not solely a particular type of creativity. As seen from Olufemi or Brook et al.,109 in practice, art, culture, and 104 105

106

107

108

109

Id. at 857–58. Id. at 854 (stating that “feminists insist that no one community is legitimately privileged to speak for all authors [and consequently] feminist methods reject the monolithic community often assumed in male accounts of practical reasoning”). In addition to the reports, supra notes 1, 2, and 4 discussed in the Introduction to this chapter, the interviews conducted in the ERAS and SLS studies, supra note 23, similarly confirm that gender continues to be a barrier to professional success in the creative industries, which are still too often male dominated. Focusing on the music industries, interviews confirm that gender is a barrier (H101, H51, H54, H95 (“the only girl in the band”), H57), often combined with other characteristics, where the negative effect is compounded (H99 (gender and age), H34 (gender and race), H94 (gender, and mainly age (older women have it more difficult)), H96 (gender and class), H90 (gender, and in particular the motherhood penalty), and H48 (gender, age and race; and the live music sector is particularly difficult for women to get into). Gender specific issues are reported by participants in both studies, supra note 23 (seven participants in ERAS; and twelve participants in SLS). Underrepresentation of women in the arts has been highlighted by Linda Nochlin, in her now well-known essay, first published in the 1970s. See Linda Nochlin, Why Have There Been No Great Women Artists?, https://www.artnews.com/art-news/retrospective/why-have-there-been-no-great-women-artists-4201/ (a wellknown essay, discussing the structural barriers and erasures of women artists from history). Nochlin also offers her reflections in a second essay, 30 years on: Why Have There Been No Great Women Artists? Thirty Years After, 82–104. Representation of women in the UK art sector is researched and reported annually. See Kate McMillan, Representation of Female Artists in Britain During 2019, Freelands Foundation, 2019, https://freelandsfoundation.co .uk/annual-report-representation-of-female-artists-in-britain. Universal Declaration of Human Rights (UDHR), art. 27(2), G.A. Res. 217A (III), UN Doc. A/810, at 71 (1948); Protocol 1 European Convention on Human Rights, art. 1, Nov. 4, 1950, 213 UNTS 221 (ECHR); and Charter of Fundamental Rights of the European Union, art. 17(2) [2012] OJ C326/391 (CFREU). See Olufemi, supra note 65; Brook et al., supra note 5.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

490

Metka Potočnik

creativity are not, however, meant for all. There are political, systemic, and other barriers which obliterate the purported aim of IP laws to incentivize and promote intellectual creativity in all authors. Rather than simply accepting that IP does not have the power to overcome all these barriers, it is argued here that IP rules must be revised in a way to protect and empower creativity in the currently underrepresented groups. The social justice rationale of IP protection recognizes this fundamental characteristic of an efficacious IP regime and thus mandates the implementation of IP protection in accordance with the precepts of socially equitable access, inclusion, and empowerment.110 To ensure the ultimate efficacy of this realignment of the IP infrastructure, this revision of IP rules must be done critically and informed by empirical evidence.111 That together necessitates a structured, well-funded and collaborative project between the law, creative and business communities in the music industries. A. Lived Experience of the Creatives: A Start to Women’s and Gender Expansive Narratives All IP lawyers will be familiar with the “objective standards” within this area of the law. Whether it is the “average consumer” in trade mark law, or the “person skilled in the art” in patent law, or the “author” in copyright law, whose works are protected, if they amount to “author’s own intellectual creation.”112 Cases where third party uses will not amount to copyright infringement, because they amount to fair dealing, will be tested against the impression of fairness by a “fair minded and honest person.”113 There are two compound barriers to overcome here. First, as already noted by feminist scholars, objective standards in law, when not informed by practice, will often exclude the lived experience of women, and are from that perspective ill designed.114 And second, many artists do not know, or engage with IP law.115 Therefore, a concerted effort must be made to involve all artists in a critical investigation of IP law. From the perspective of this chapter (and the ongoing empirical projects), women and gender expansive artists must be invited to share their views and experiences directly. To illustrate, when speaking to emerging artists in the music industries or other creative industries,116 the initial study confirms that they still hold the belief that the system is merit 110

111

112

113 114

115 116

See Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Mtima, supra note 25. This chapter broadly presents the interviews with 41 creatives but focuses on the interviews with musicians from two studies (ERAS and SLS, supra note 23) including eight interviews with music creatives in the ERAS study (C19, C12, C1, C2, C9, C7, C18, C8); and 14 interviews with music creatives in the SLS study (H101, H51, H54, H99, H56, H34, H94, H96, H95, H57, H98, H93, H90, H48)). ERAS interviews were conducted between 2019 and 2020 (prepandemic) and were conducted in person or over the phone. SLS interviews were conducted between 2020 and 2021 and were conducted mostly online. The interviews include musicians of several musical genres, different ages (none underage), several ethnicities, and various economic backgrounds. The standards introduced here are based on U.K. law; as harmonized (sometimes indirectly) through EU sources (pre-Brexit; and at the time of writing still U.K. law, as “EU Retained Law” under §§ 2–7 of the European Union (Withdrawal) Act 2018). For the originality standard in copyright law “author’s own intellectual creation,” see Case C5/08 Infopaq International A/S v. Danske Dagblades Forening ECLI:EU:C:2009:465. Aldous L.J. in Hyde Park Residence v. Yelland [2004] RPC 604 at [38]. See Keren, supra note 21, at 421; see also the challenge to the “reasonable businessmen” standard made in Mary Keyes, Women in Private International Law, in Research Handbook on Feminist Engagement with International Law 105–106 (Susan Harris Rimmer & Kate Ogg eds., 2019). Potočnik in ERAS, supra note 23, interviews with C35, C18, and C7. Id., interviews with C4 and C5 (emerging).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

491

based, and with hard work, success will be achieved. In contrast, women who have long-standing experience in the industry do not share this view.117 The author characterizes these “merit tinted glasses” which seem to come off, once an artist has been in the industry for a longer period of time. In a similar vein, emerging artists are not well acquainted with IP law, and all would welcome more information in this area. More established artists will have more knowledge but are not likely to pursue their legal rights in the court of public opinion or litigation, for fears of retribution and future loss of career opportunities.118 Most artists agreed, whether familiar with IP law in detail or only in general terms, that the law is incredibly complex.119 At the same time, artists wished and hoped for IP law to offer them rewards and protection, in the sense of control over their creative works.120 Specifically in music, women and gender expansive persons reported the stereotyping as to the music they were expected to produce when first starting in their careers. These expectations were directly tied to them, as women or gender expansive persons in music. The commercial world of the music industry directly dictates the expected outputs that “will sell” (i.e., “commercial sound”, and failing to meet these expectations will lead to the loss of professional opportunities in the industries.121 From the current lived experience collected, it is not suggested that IP law be

117 118 119

120

121

Id., interviews with C12 and C19 (long-term experience). Id., interviews with C6 and C7. Potočnik in ERAS, supra note 23, interviews with C1 (“a minefield”), C6 (“had to learn it through conflict”), C18 (“and currently not working”), C7 (“I was oblivious when faced with an IP problem”), C9 (“a minefield”), C2 (a “very messy area”), C12 (not working “for individual artists”), C19 (“difficult to enforce in practice”), C5 (“not easily accessible”), C36 (“some awareness, but not fully understood”), C27 (never knew about it), C4 (no meaning at all), C35 (aware, but not familiar with the detail of it; “I was not important enough for IP to take notice” (in the form of disputes)). The same impression confirmed in SLS (n23) interviews. Focusing on the experience in the music industries, IP rights, when known, are deemed significant: H101 (women are “locked-in” contractually for longer periods of time, and the associated system (including IP) must be rewritten entirely), H51 (artists have large gaps in IP knowledge), H54 (in classical music, artists have no knowledge of IP or performers’ rights), H99 (IP is instrumental to one’s creative autonomy and that is why it is imperative to keep one’s IP (publishing and recording rights); in general buyouts of all IP in music contracts must stop), H56 (well-aware of IP rights, and they are important), H34 (there is a lot of uncertainty, due to constant changes caused by technology), H94 (clear understanding of IP rules, which are very important to her career), H96 (IP rules are clear on solo projects, but less so on collaborative projects), H95 (IP rules are only somewhat clear or familiar), H57 (until musicians reach a certain level, it costs more money to enforce IP rights than an artist makes from that IP), H57 (IP is about ownership, which connects to power, which is linked to money), H98 (IP is about permissions), H93 (IP is everything the artist owns), H90 (IP is really dated, and it fails to follow the true nature of music production (as changed today)). Potočnik in ERAS, supra note 23, interviews with C2, C7, and C9. The same confirmed in the SLS, supra note 23, interviews: H57 (IP is about creative control), H95 (an artist must keep her IP if she wants creative control in her music). Several music creators commented on the phenomenon of pigeonholes or the need to comply with external expectations as to the type of music they were meant to create, as women: SLS, supra note 23 interviews with H51 (“serious music” often made by men, not women), H34 (capitalist view of music is predominant in commercial industries, where women are seen as “eye candy,” or music is to be made by “young women only”), H94 (women of certain age (“older”) and their music, are “only on the periphery”), H94 (reports of moving away from “commercialization,” and focuses her music practice on reaching out to communities), H96 (“there were always assumptions about the content of my music, because I’m a woman”), H95 (when/if women are signed by record labels, there is a lot of pressure on them to conform), H57 (industry is “all about the money”), H101 (music industries “are all about the money, people are secondary”), H98 (to gain creative control over my music, this artist had to become a music producer), H93 (women in the UK industries are “pigeon-boxed” [sic] and the three major record labels can still “push their artists”; because the world of music producers was male dominated, this negatively affected her freedom to discover her voice; only as an independent artist, one can create “alternative, less commercial” sound), H48 (speaking of the “typical” creator or listener of specific genre and feeling out of place, when one does not conform with the type (a “typical rock fan”); talent is often placed in pigeonholes, especially when of a particular race, which dictates the expectation of the music they create).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

492

Metka Potočnik

abolished all together. It is suggested instead that we are looking at a project of deconstruction, with the aim of rebuilding.122 B. Item 1: From Outputs to People At present, IP law can be criticized as being too oriented on the “valuable IP assets,” as opposed to the artists (people) behind their creation. From the name of the U.K. Copyright, Designs and Patent Act (CDPA), or the definition of protectable subject-matter in its Section 1,123 the role of the person who creates music or other creative outputs is not prioritized. The overall emphasis on the outputs appears to be more in step with neoliberal justification of IP law in the first place, rather the incentivization of individual creators of the works, their personhood, or their creative processes. And yet, women and gender expansive music creators see music less as an output, and more as an activity, or “an experience, which creates emotion.”124 Relying on relational feminism, it is suggested here that IP law should explore legislative solutions that focus more on the creatives (persons), and less on the outputs, assets or their corporate owners. In line with this, the current undernourished moral rights under the U.K. CDPA should be improved and strengthened.125 When focusing on the rewards and incentives for the creatives (musicians), the law is focusing on the creation of circumstances in which all types of creativity would be embraced. By changing the rules on the works protected under CDPA,126 more could be done to also protect the creative process (as part of “author’s own intellectual creation”; or in rules on idea/expression dichotomy). Equally, the law could encourage creativity from all sectors in society by abolishing barriers to professional success in the music industry (and creative industries more broadly).127 122

123

124

125

126 127

Elsewhere in this volume, J. Janewa Osei-Tutu similarly argues for the redirection of IP protection, specifically trademarks, as a means toward the socio-economic empowerment of women. See J. Janewa Osei-Tutu, Intellectual Property, Social Justice and Human Development: Empowering Female Entrepreneurs Through Trademark Law, ch. 20 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). CDPA (1988), as amended: https://www.legislation.gov.uk/ukpga/1988/48/contents. Undoubtedly, the notion of the “author” (CDPA, § 9) is instrumental to the concept of “owner” (CDPA, § 11), but it is the works or outputs from CDPA, § 1 that will qualify for protection (CDPA, § 16). “Works” include original musical works (songs) or original literary works (lyrics) (CDPA, § 1(1)(a)), and sound recordings, which do not have to be original to attract protection (CDPA, § 1(1)(b)). See SLS, supra note 23, interview with H90. More broadly, music creators view success in their music careers as about connection and impact (and less about number of outputs, or commercial success alone): H34 (success is not about awards, but making music; it is about connecting with people and enacting change), H94 (traditional views of songwriter’s success are measured by “where have I heard your song”; in contrast, this individual is focused on professionalism in the craft, and creating human connection with the audience), H96 (her views do not match the industries’ view of success (commercial)), H95 (success is a music career, which ensures stable living conditions and a professional home studio), H57 (success is reaching her own artistic achievements, and connecting with other people, to empower them; success is also creating music for social justice), H98 (success is longevity of one’s music career, and sharing her music with people), H93 (success is courage to speak her creative truth), H90 (success is cultural capital), H101 (currently, the industries are all about the money, but not for this creative), H51 (success is in making the industries accessible to all young musicians), H54 (success is reaching audiences), H99 (although the industries are all about the numbers (streams, awards, number of radio plays or record sales), her view of success is met through a career that allows for making a living from music (with no additional career needed to supplement the income)), and H56 (financial sustainability and commercial recognition). Moral rights appear to be a particularly useful tool for the protection of female and gender expansive musicians against claims raised by the copyright owner (if the author transfers copyright in her works). These issues are reported as a matter of concern in Potočnik in ERAS, supra note 23, interviews with C9 and C12. CDPA, § 1. This would also allow art to take on multiple functions in society. See, e.g., Olufemi, supra note 65, at 93 (who speaks to the use of art as a consciousness raising tool).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

493

Lived experience of women and gender expansive creatives (and musicians)128 confirms that the aim of IP law should be to facilitate “utilities” beyond mere profit-generation. Music creators often reported their notion of success to include not only economic, but other social values, such as reaching out to people with their music, changing lives for the better, or recognition.129 Music carries other value, beyond the narrow view of “commercial songs.”130 With a renewed focus on the music creators, the value of a song, and appreciation of women and gender expansive persons in music, could be assigned as a protectable social utility of the reformed IP system.131 IP laws, when amended, could promote the artists’ opportunity to share their creative works, but also make an impact, share their ideas, raise consciousness of their lived experience132 and overall, build relationships across their communities. C. Item 2: The Dominant Position of Gatekeepers in IP 133

Industry reports and collected lived experience of women and gender expansive creatives134 confirm that the U.K. music industries are controlled by organizations that act as gatekeepers to the distribution of creative content and a platform for commercialization of certain creative works. This creates numerous issues of access and inclusion, which arguably originate in IP rules and their treatment of ownership and commercialization of IP law.135 Additionally, the selective signing of creative talent by the U.K. record labels and the lack of inclusion of women and gender expansive musicians on radio rosters and festival circuits is exacerbating the issues in the system, as it exists right now. Musicians who are not signed by established record labels will struggle to arrange the business and legal side of their creative process, which puts them at a disadvantage when disseminating their works, and also earning a living from them. IP law does nothing to alleviate these systemic barriers, which on the whole

128 129

130

131

132

133 134

135

Potočnik in ERAS, supra note 23, interviews with C1, C6, C9, C12. SLS, supra note 23, interview with H34 (music is about connecting with people). See further interview findings outlined in note 124. SLS, supra note 23, interview with H93 (referring to “commercial sound”). See further interview findings outlined in note 124. Women often report not only being pigeonholed (see supra note 121), but also not being taken seriously in their roles in the music industries. See SLS, supra note 23, interviews with H99 (women often typecast as singers, and not seen or taken seriously as music producers; often their producer credit is given to a man (a husband or another man on the team)), H96 (not taken seriously as a woman in the industry), H93 (male dominated environment of music tech is exclusionary for women). In research, the underappreciation of women is also highlighted more broadly. See Mary Ann Sieghart, The Authority Gap: Why Women Are Still Taken Less Seriously than Men, and What We Can Do About It 143–44 (2021) (in the context of literature, Sieghart reports of the breadth of underappreciation of female writers, where men will mostly read books written by men, whereas women will distribute their reading more evenly). Potočnik in ERAS, supra note 23, interview with C4 (a particular concern when women create art that is not considered as “family friendly” for simply sharing female aspects of life). In music, creators have reported on music practices as a way of connecting with people. See also supra note 124. See references supra notes 1 and 2. Potočnik in ERAS, supra note 23, interviews with C9, C2, C1, C12, C19 (for music); and C5, C35 (for other creative industries). The same was consistently observed by musicians in the SLS study, supra note 23. See also observations in note 121, supra, on commercial sound, and resulting limits on creative autonomy. See, e.g., Robert F. Braunies, Copyright, Race and Music: The Case of Mirror Cover Recordings, ch. 9 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (discussing judicial racial bias in determining the scope of copyrightable elements in a sound recording); Seán M. O’Connor, The Lead Sheet Problem in Music Copyright, ch. 14 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (discussing copyright registration requirements which favor European music notation and discriminate against aural composers).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

494

Metka Potočnik

are prevalent for women and gender expansive creatives.136 By rethinking the monopoly position of the gatekeepers in the UK music industries, the position of an individual artist could be strengthened. Finally, the “big players” often represent the music industries in legislative inquiries, which is problematic, when their signed talent is not representative of the society and/or the creative talent.137 It is therefore imperative that underrepresented groups of musicians continue to come together in formal, or informal networks, and share their lived experience with the decisionmakers. In the U.K., for example, this is now done with the new establishment of the F-List for Music CIC, which represents all women and gender expansive musicians, of all musical genres, which have been enrolled on the F-List (as of December 1, 2022 over 5,830 strong).138 D. Item 3: The Negotiation Black Hole At present, most of the IP rules on commercialization, assignment, or licensing are based on the principle of party autonomy and the premise of equality of parties. That is, however, a starting point, which is not supported by the literature,139 evidence, or the lived experience of women and gender expansive creatives. One of the artists clearly stated that when signing her first contract, “she signed her life away with her early releases,”140 and this is possible under IP rules because there are no rules protecting the weaker party, here the individual artist. Contractual controls, often accompanied by the relinquishing of all IP rights in their music, create negative effects on musicians’ creative control. This system has forced several musicians towards “independent release and publishing.” In order to regain their voices and unfettered creative control, women walked away from extensive levels of business support and investment into their artistry they would have received with commercial record labels.141 136

137

138 139

140 141

Women who do make a living from their music careers do so because of their efforts to combine several activities (i.e. a portfolio career in music). None of the 41 interviewees accredited their financial success to the IP rights in their respective works: ERAS (n23) and SLS (n23) interviews with H101 (music career ended due to gender based discrimination), H51 (freelancer career not sustainable, turned to other roles in the industries (education, promotion)), H54 (yes, making a living from a portfolio career), H99 (yes, making a living, with considerable earnings from syncing), H56 (no, music earnings are not sufficient to make a living, other sources of income are required), H34 (yes, making a living from music), H94 (only a small percentage of income derived from music, but overall making a living from a portfolio career), H96 (yes, making a living from music), H95 (opportunities to make a living from music are declining), H57 (yes, making a living from a portfolio career), H98 (yes, making a living from a portfolio career), and H90 (yes, making a living with music, with significant part of income derived from teaching music). DCMS Legislative Review on Economic of Music Streaming (opened in Oct. 2020), written and oral evidence available: https://committees.parliament.uk/work/646/economics-of-music-streaming/. For more information, see https://thef-listmusic.uk. Mary W. Gani, Negotiating Like a Diva: Preserving Creative Autonomy in the Music Industry, 3 Wolverhampton L.J. 37 (2019). Potočnik, supra note 23, interview with C9. SLS, supra note 23, interviews with H93 (independent release is the only way to secure creative control, but it is very difficult to make it as an independent artist (“it is exhausting to do it all on your own”), and H95 (it is imperative to act as an independent artist to keep creative control and IP, but it is very challenging to run it all on your own). The same has been reported by the industry press, where independent artists, who are seen as “prolific,” have had constantly to fight to make their way in the industry. See Suren Seneviratne, ‘‘Bishi Carves her own Universe with a Rock-Sitar and Tireless Dedication,” Burnt Roti, Dec. 20, 2021, https://www.burntroti.com/blog/bishi-carves-her-own-universe-witha-rock-sitar-and-tireless-dedication (where the author recognizes Bishi’s contribution as “prolific output,” which did not remove barriers, and “an artist who was once dubbed ‘the next big thing’ following an appearance on Live on Jonathan Ross in her teens, Bishi has fought tirelessly against the music industry’s sexist and racist hurdles, blossoming gracefully into the avant-garde artist she is today.” Bishi also confirms, that: “It’s been really really f****** hard. But your creativity and your craft ultimately sets you free . . . it’s been really hard but I can feel something turn, and I’ve done it on my own” (emphasis added)).

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

Exposing Gender Bias in Intellectual Property Law: The UK Music Industries

495

More generally, contracts have been used extensively in the music industries to control women and gender expansive artists.142 Appropriate contract control mechanisms, which would protect the individual artists, and also protect their creative autonomy, should be at the core of newly imagined legislative solutions. IP law should attempt to serve as an intersectional gender corrective mechanism to external inequalities and barriers, not further exacerbate existing inequalities in creative circles.

conclusion This chapter offers an overview of a wealth of empirical studies, done in U.K. creative industries, which together confirm that there is gender (together with race, class, age, disability, and other characteristics) bias in the sector. What is yet missing is a large-scale empirical study on the role IP law plays (whether complicit or not) in perpetuating this actual, or unconscious, bias. The author, relying on research funding143 and collaboration with the industry actors,144 and IP organizations,145 aims to collect further empirical evidence, informing the future legislative agenda on IP law.146 To foster success, it will be imperative for policymakers to join the cause.147 This resolve is informed by the findings of the initial two studies,148 which confirm that IP law, in particular as it relates to music, does nothing to reduce the intersectional discrimination against women and gender expansive persons in the sector.149 On a more practical note, one of solidarity, this researcher is taking her feminist critique of IP laws to the industry, both in her role as one of the directors of the F-List for Music CIC, and as an academic at the University of Wolverhampton. Whilst educating the underrepresented musicians of their IP rights under the current systems,150 this researcher continues to collect, register, and record the lived experience of multiple underrepresented musicians.151 The aim is to use this wealth of information and, first, deconstruct the existing power structures in IP law; and second, rebuild IP law in accordance with IP-SJ principles, which will empower a multitude of musicians to create music and share their lived experiences with the world.

142 143 144 145

146 147 148 149

150

151

See Carvello, supra note 6. For further detail, see supra note 20. The F-List for Music CIC (UK). See WIPO Gender Gap in IP initiative, https://www.wipo.int/women-and-ip/en/news/2021/news_0009.html; and Institute of Intellectual Property and Social Justice: https://iipsj.org/our-mission-vision/. See parliamentary and IPO investigations, supra note 16. As argued in Potočnik, supra note 10. Referenced in note 23. In general, see the discussion in section IV. See also supra note 106 for evidence of women reporting gender as a perpetuating barrier to professional success in the music industries. To support further research in the area, the F-List for Music CIC created the F-List Gender in Music Research Hub, which aims to collect, record, and support relevant research into the position of women in the music industries. See https://thef-listmusic.uk/what-we-do/the-f-list-research-hub/. The LPF project. See supra note 20.

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.031 Published online by Cambridge University Press

part vii

IP Social Justice: The Future of the Global IP Ecosystem

https://doi.org/10.1017/9781108697613.032 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.032 Published online by Cambridge University Press

24 Intellectual Property and Social Justice Futures Debora Halbert and Billy Meinke

Introduction I. Defining Social Justice II. IP and Injustice – When IP Is at Odds With the Social Good A. Access to Medicine B. Access to Knowledge III. The Possibility that IP Can Be a Tool for Social Justice A. Creative Commons and the Public Domain B. Burning Man IV. The Future(s) A. Envisioning an IP-SJ Transformation: The Sharing Economy 2050 B. Business as Usual/Control: The Value of Personal IP C. Collapse: The Collapse of Global IP Regimes Conclusion

page 499 501 502 502 505 507 507 509 510 511 513 515 516

introduction Intellectual property (IP) scholars have spent considerable time demonstrating the global injustice produced by IP rights (IPRs). In any area where IP has taken on a significant role, it comes at a cost. The world’s food security, for example, is dependent upon corporate agriculture and biotechnology companies that control who can plant what and when they can plant it. These patent-protected products are virtually the only choice for modern farmers, even as these companies experiment indiscriminately with new patent-protected products that could have farreaching impacts on the very ability to produce food in the future.1 The production of scientific knowledge is equally monopolized, given that half the world’s research is owned by just five

1

Valerie Reynoso, The Rising Monopoly of Monsanto-Bayer, CounterPunch, Sept. 20, 2019, https://www .counterpunch.org/2019/09/20/the-rising-monopoly-of-monsanto-bayer/; Zoe Willingham & Andy Green, A Fair Deal for Farmers: Raising Earnings and Rebalancing Power in Rural America, Center for American Progress, May 7, 2019, https://www.americanprogress.org/issues/economy/reports/2019/05/07/469385/fair-deal-farmers/; John L. King & David Schimmelpfennig, Mergers, Acquisitions, and Stocks of Agricultural Biotechnology Intellectual Property, 8 AgBioForum, Sept. 19, 2005, https://agbioforum.org/mergers-acquisitions-and-stocks-of-agricultural-biotechnologyintellectual-property/.

499 https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

500

Debora Halbert and Billy Meinke

companies and, despite often being paid for with public funding, is illegal to share.2 While large mergers in the book industry have been unsuccessful due to antitrust concerns, including the proposed merger of the world’s two biggest textbook companies3 and the merger of Simon & Schuster and Penguin Random House,4 the publishing industry remains highly consolidated. In addition to limited competition, the industry also offers limited diversity – 95 percent of the authors published between 1950 and 2018 were white and 76 percent of the industry is white.5 In virtually every area where IP plays a significant role, the results are similar insofar as copyrights or patents allow for further monopoly concentration. Thus, while IP is often claimed to be a tool for inspiring and managing the personal creativity of innovative people, instead it is more often utilized as an essential ingredient in a global political knowledge economy, the regulatory structure of which is designed to assure benefits are allocated to those already asserting monopoly control. It is the global political economy of IPRs that makes envisioning futures grounded in social justice essential. Thus, social justice cannot be peripheral to our construction of IP. Rather, it must be a central consideration.6 As the authors of this text note in the Introduction, to embrace the possible social utility of IP protection fully, it is necessary to address the social justice issues of “access, inclusion, and empowerment” of marginalized and historically or traditionally excluded groups.7 Beyond asking what strategic moves might be possible within the IP system as it exists today, this chapter looks toward the future, to argue that the system itself cannot be extricated from injustice unless we fundamentally rethink IP. In this chapter, we will first set the stage for thinking about social justice by providing two examples of the opposite – how different forms of IP protection create conditions of injustice. Second, we will provide two examples of how IP may be used to help achieve some kind of social justice from within the existing system. Finally, because we believe we need to move beyond the existing system of IP, we will present several future scenarios that help us imagine alternative paths for IP. While alternative futures posit a range of possibilities from transformational to dystopian, we wish to suggest that achieving social justice goals, in other words, achieving our preferred future, will require the structural transformation of existing IP systems.

2

3

4

5

6

7

Vincent Larivière, Stefanie Haustein, & Philippe Mongeon, The Oligopoly of Academic Publishers in the Digital Era, 10 PLoS ONE e0127502, June 10, 2015,. https://doi.org/10.1371/journal.pone.0127502; George Monbiot, Scientific Publishing Is a Rip-off. We Fund the Research – It Should Be Free, The Guardian, Sept. 13, 2018, http://www .theguardian.com/commentisfree/2018/sep/13/scientific-publishing-rip-off-taxpayers-fund-research. Diane Bartz, Textbook Companies Cengage, McGraw-Hill Scrap Merger, Reuters, May 4, 2020, https://www.reuters .com/article/us-mcgraw-hill-m-a-cengage-idUSKBN22G1WF. Alex Shephard, Melissa Gira Grant, & Shaan Amin, Pretty Soon There’ll Be Just One Big Book Publisher Left, The New Republic, Nov. 25, 2020, https://newrepublic.com/article/160391/pretty-soon-therell-just-one-big-book-publisherleft. Constance Grady, The Planned Penguin Random House–Simon & Schuster Merger Has Been Struck Down in Court, Vox, Nov. 1, 2022, https://www.vox.com/culture/23316541/publishing-antitrust-lawsuit-merger-department-justice-pen guin-random-house-simon-schuster. Lateef Mtima, Intellectual Property, Entrepreneurship, and Social Justice: From Swords to Ploughshares 266 (2015); Lateef Mtima & Steven D. Jamar, Fulfilling the Copyright Social Justice Promise: Digitizing Textual Information, 55 N.Y.L.S. L. Rev. 77, 89–93 (2010); Anupam Chander & Madhavi Sunder, Is Nozick Kicking Rawls’s Ass – Intellectual Property and Social Justice 40 U.C. Davis L. Rev. 579 (2007); Steven D. Jamar, Copyright and the Public Interest from the Perspective of Brown v. Board of Education, 48 Howard L.J. 629–57 (2005); Introduction, Symposium, Intellectual Property and Social Justice: IP and Brown, 48 How. L.J. 571 (2005). Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

501

i. defining social justice There are several different ways to think about social justice in the context of IP. The first is to take the system as it is, understanding the benefits it can provide to IP holders and ensure that these benefits are extended to individuals who have traditionally been precluded from taking advantage of IP protections. Such an approach should, as IP scholar Lateef Mtima argues, ensure that, “in the global information society . . . marginalized groups and developing nations . . . must expand their priorities to include the development, protection and commercial exploitation of IP if they are to succeed in their struggles for social, political and economic empowerment.”8 Mtima goes on to say that: “if these opportunities are not timely and effectively seized, however, historically marginalized groups and developing nations will find themselves once again shackled into the bottom caste of the emerging global socio-economic order.”9 Understanding IP from this starting point sees access to IP regimes as well as access to the property associated with these regimes as critical to social justice. As a result, protecting the IP of those historically left out of the IP rights generation process at least allows them to access the playing field to protect their own intellectual products. Extending protection of the already established socio-economic rules more broadly, however, is not the end of the story when it comes to issues of IP and social justice. Social justice, as Giovanni Battista Ramello argues, is benefited by as little appropriation as possible into the IP property regime, and that working within the IP system itself is highly suspect.10 In contrast, Mtima is clear that in addition to seeking better access to existing IP, working to create a paradigm shift in IP policy that will reflect values of self-determination, equity, and access for marginalized groups is critical.11 As Dwijen Rangnekar put it: “Any discussion of IPRs and livelihood needs to be in the context of contemporary global political economy, transnational capital, and local social and political relations.”12 Once described as “parity of participation,”13 social justice in the context of IP can be seen as not only a leveling of the playing field, but as a restructuring of the foundational rules for free expression of ideas, collaboration, commerce, and more. Numerous IP scholars have critiqued IP for failing to achieve social justice in the form of global development or providing for the public good.14 Certainly, without revising the underlying structures of IP, the claim that expanding IP regimes will ultimately facilitate benefits for the world’s poor seems spurious. Instead, such claims are poised to foster further neocolonial appropriation.15 As we argue, strict regimes of IP favor those who are already in positions to interpret and exploit such laws, thereby 8 9 10

11 12 13 14

15

Mtima, supra note 6, at 2–3. Id. at 3. Giovanni Battista Ramello, Intellectual Property, Efficiency and Social Justice, in Intellectual Property and Theories of Justice 88 (Axel Gosseries, Alain Marciana, & Alain Strowel eds., 2008). Mtima, supra note 6, at 3. Dwijen Rangnekar, The Challenge of Intellectual Property Rights and Social Justice, 52 Development 214 (2011). Nancy Fraser, Reframing Justice in a Globalizing World, 36 New Left Rev. II, no. 36 (2005): 69–88. See, e.g., Margaret Chon, Intellectual Property and the Development Divide, 27 Cardozo L. Rev. 2821–912 (2006); Madhavi Sunder, From Goods to a Good Life: Intellectual Property and Global Justice (2012). Anjali S. Vats & Deidré A. Keller, Critical Race IP, 36 Cardozo Arts & Ent. L. J. 735–96 (2018). See also Deidré A. Keller & Anjali S. Vats, A Primer on Critical Race Intellectual Property, ch. 26 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (arguing for the rejection of the prevailing economic utility conception of IP protection in favor of a social justice rationale, which mandates that the IP regime promote inclusion and socio-economic empowerment for marginalized groups, as well as socially equitable access to the IP ecosystem as a whole).

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

502

Debora Halbert and Billy Meinke

further stratifying access and narrowing participation. Thus, we take the approach that social justice for IP rights must go beyond providing access to existing IP regimes for those who have been previously left out, and interrogate the way these rights shape a political economy that has significant social justice consequences for people living around the world. IP in the context of social justice as defined in this volume further clarifies the essential principles: “Socially balanced exploitation of IP in accordance with IP-SJ principles helps equalize health and education standards, promotes socio-economic empowerment, and fosters universal respect for the IP system, including respect for the IP rights granted under it.”16 In this chapter we will use a futures scenario building process to explore the possibilities of creating a socially just system of IP. While it is not possible to predict a future, positing alternative futures scenarios allows those interested in shaping a better future to examine possible outcomes and decide how best to encourage the possibilities of some, while discouraging the possibilities of others. Futures thinking is a useful tool for making it possible to envision alternatives to the status quo.17

ii. ip and injustice – when ip is at odds with the social good Within the current paradigm, IP often functions to undermine efforts at social justice structurally, rather than embrace it. While there are numerous stories documented in the literature, we offer two examples to help highlight the concerns that emerge when rightsholder-focused IP is embraced uncritically. A. Access to Medicine Access to medicine has long been of concern to those watching how patents influence the distribution of life-saving medication to the world’s poor.18 In 1999, the world’s major pharmaceutical companies sued South Africa because it had decided to acquire generic versions of antiretroviral medications. The decision to sue a country mired in a public health emergency sparked global protest and WTO member countries ultimately signed the Doha Declaration during the Doha Round of trade negotiations, a nonbinding agreement that poor countries could develop generic drugs to address public health issues (although parallel exportation of generic drugs was still prohibited).19 Although the Doha Declaration was not a panacea, it elevated the global conversation about access to life-saving medications and positioned human life as a relevant consideration in the global sale of pharmaceuticals. Nonetheless, despite decades of ongoing concern, the role patents play in enhancing profitability for drug companies has not changed, while access to medication 16 17 18

19

Mtima & Jamar, supra note 7, at [2]. Jim Dator, Alternative Futures at the Manoa School, 14 J. Future Stud. 1–18 (2009) For other analyses in this volume of the effect of patents on access to health, see Peter S. Menell, Mapping the Intellectual Property/Social Justice Frontier, ch. 1 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Mason Marks, People Are the Lifeblood of Innovation, ch. 4 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Krista Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See also Matthew David & Debora Halbert, Owning the World of Ideas: Intellectual Property and Global Network Capitalism (2015). Vanessa Bradford Kerry & Kelley Lee, TRIPS, the Doha Declaration and Paragraph 6 Decision: What Are the Remaining Steps for Protecting Access to Medicines? 3 Globalization & Health 3 (2007), https://doi.org/10.1186/17448603-3-3.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

503

remains a challenge for many across the globe. As an example of how little change has happened in this area, on June 18, 2018 a petition with 3,500 signatures was sent to UCLA leadership demanding that it drop a patent suit filed in India over the prostate cancer drug enzalutamide.20 The underlying research for enzalutamide was completed at UCLA with funding from the Department of Defense and $2.3 million from the National Institute of Health (NIH). That is, public grant money paid to public university researchers helped develop the drug. Nonetheless, UCLA, under the existing regime, was allowed to license the drug to Medivation, making UCLA over half a billion dollars in royalties. Medivation was acquired by Pfizer in 2016 and, as of 2017, UCLA no longer receives royalties, having sold its royalty rights in 2016. Despite no longer having royalty rights to the drug, when the Indian courts rejected a patent application for enzalutamide, it was UCLA, who holds the original patent, that filed a petition before the Delhi High Court appealing that decision.21 UCLA contends that it is contractually obligated to pursue the overseas patent and keep the patent from lapsing.22 In May of 2019, UCLA won its appeal and the case was sent back to the Indian patent office to reevaluate the claims.23 If UCLA wins, the drug will be so expensive that it will have the effect of keeping it from being produced at an affordable price for Indian cancer patients.24 Prostate cancer is the sixth leading cause of cancer death in men worldwide and the second leading type of cancer in large Indian cities.25 Yet, the price of the patented drug is well out of reach for most Indians. The drug sells for $130,000–$150,000 a year in the U.S.26 Japan sells the drug in India for over U.S.$5,000 per month, roughly $60,000 a year. If India’s pharmaceutical companies produced a generic version the price could drop to $2 a day, or about $672 a year. Even so, the cost remains high when compared with the standard of living in India. The 2015 per capita income in India was $1,590 according to the World Bank, making even the generic version expensive.27 India, a country that has consistently fought against restrictive patents in order to provide better access to medicine through its domestic generic drug market, denied the patent for the drug, in part so that its generic industries could make an affordable version. According to James Love, Director of Knowledge Ecology International, UCLA’s own policy states that its research should facilitate access to medications.28 UCLA has since revised its policy to only state that it “encourages licenses to consider the interests of underserved populations,” making it obvious that profits are the priority.29 Since the global pandemic began, 20

21

22

23

24 25

26 27

28 29

Update from India on Xtandi (Enzalutamide) for Cancer Treatment, Don’t Trade Our Lives Away, May 3, 2018, https://donttradeourlivesaway.wordpress.com/2017/05/03/update-from-india-on-xtandi-enzalutamide-for-cancer-treat ment/. Id. The High Court remanded the case to the Controller in 2019. See Dhakshina Moorthy & Rajeshri Thota, India: Enzalutamide Case: The Regents of the University of California v. Union of India and Others, Intell. Prop. India, June 19, 2019, https://www.mondaq.com/india/patent/816780/enzalutamide-case-the-regents-of-the-university-of-califor nia-v-union-of-india-and-others-2019. James F. Peltz, UCLA’s Effort to Patent a Costly Prostate Cancer Drug in India Hurts the Poor, Critics Say, L.A. Times, Oct. 22, 2017, https://www.latimes.com/business/la-fi-ucla-cancer-drug-20171022-story.html. Teddy Rosenbluth, UCLA’s Fight to Patent a Life-Saving Cancer Drug Could Make the Medicine Virtually Unobtainable in India, Los Angeles Magazine, Jan. 7, 2020, https://www.lamag.com/citythinkblog/ucla-xtandiindia/. Id. Ani, Prostate Cancer Cases to Double by 2020: Study, The Indian Express, Sept. 15, 2016, https://indianexpress.com/ article/lifestyle/health/prostate-cancer-cases-to-double-by-2020-study-3033236. Peltz, supra note 22. James Love, India Patent Office Denies Patent for Prostate Cancer Drug Sold under Brand Name Xtandi, Generic Name Enzalutamide, Knowledge Ecology Int’l, Nov. 20, 2016, https://www.keionline.org/23200. Peltz, supra note 22. Rosenbluth, supra note 23.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

504

Debora Halbert and Billy Meinke

screening for prostate cancer has dropped by over 30 percent in India, making the situation even more concerning.30 As UCLA’s actions to secure patent protection in India demonstrate, there is very little in the decision they made to appeal the Indian patent rejection that speaks to encouraging access to medication. This single case, just one among many, illustrates how the patent system, as currently practiced, can lead to social injustice of the magnitude of rendering what should be a human right – access to medicine – into an unfairly profitable monopoly for the world’s most rich and powerful pharmaceutical company. In this particular case, Pfizer, the company ultimately benefiting economically from the patent, cannot argue that it is defraying the costs it incurred in the research and innovation necessary to produce the drug, because, of course, it did not play a role in its development. Similar efforts to lower costs of this publicly funded lifesaving medicine have been rejected in the United States as well. The NIH refused a request by Knowledge Ecology International to use its ability to override the patent to alleviate the high costs and limited access patients have to the drug.31 Failure of the ability to access medicines such as these because people are priced out of purchasing them literally kills. At the time of writing, yet another case study demonstrating the potentially disastrous impact of patents on public health is unfolding. The race to produce a vaccine to help resolve the global COVID-19 pandemic is wrapped in the complexities of patent rights. The patents on these vaccines mean global distribution of the needed 12–15 billion doses will take years, Niko Lusiani, a senior adviser to Oxfam told NPR.32 The reason distribution will take so long was outlined by Professor of Law Brook Baker: “The [vaccine] innovators hold patent rights and trade secret rights over those technologies, and they’re unwilling to share them broadly to other manufacturers. So we have artificially constricted supply.”33 IP activists formed the “Open COVID Pledge,” asking innovators working on solutions to make their patents and copyrights freely available to help mitigate the pandemic.34 However, while many companies have signed on, the pharmaceutical industry and many drug researchers have not. Pfizer CEO Albert Bourla, for example, reacted to the pledge by claiming it was “dangerous.”35 Many universities who are working on vaccine related projects have promulgated and signed a COVID-19 Technology Access Framework that would provide limited licenses to facilitate distribution of patent-protected vaccines during and shortly after the pandemic.36 Writing for PharmTech.com, Kevin Noonan interpreted the Framework as being an effort to forestall possibly more extreme, but public focused, efforts to use the Bayh-Dole “march-in” rights to allow for third party manufacturing of patented pharmaceuticals during a pandemic.37 Pharmaceutical companies have shared the vaccine with some large manufacturers in order to 30

31

32

33 34 35

36

37

Arushi Biduri, Prostate Cancer Screening Dropped to 30% Due to the COVID-19 Pandemic, The HealthSite.com, Feb 4, 2022, https://www.thehealthsite.com/news/prostate-cancer-screening-dropped-to-30-due-to-the-covid-19-pan demic-862418/. Carly Helfand, NIH Won’t Override Patents on Astellas’ Pricey Xtandi to Bring Down Prices, FiercePharma, June 21, 2016, https://www.fiercepharma.com/pharma/nih-won-t-override-patents-astellas-pricey-xtandi-to-bring-down-prices. Michaeleen Doucleff, What Will It Take to End the COVID-19 Pandemic? NPR.org, Jan. 5, 2021, https://www.npr .org/sections/goatsandsoda/2021/01/05/953653373/some-experts-say-temporary-halt-on-drug-patents-is-needed-to-stop-pan demic-world. Id. Open Covid Pledge, “About,” https://opencovidpledge.org/about/. Kevin E. Noonan, COVID-19 IP: Protecting Intellectual Property for COVID-19 Innovations, PharmTech, Nov. 6, 2020, https://www.pharmtech.com/view/protecting-intellectual-property-for-covid-19-innovations. Office of Technology Licensing, COVID-19 Technology Access Framework, https://otl.stanford.edu/covid-19-technol ogy-access-framework. Noonan, supra note 35.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

505

expand capacity, but there remain concerns that it will not be enough.38 After several years of discussion, the World Trade Organization finally signed a partial waiver of intellectual property rights in June of 2022, but there remain large gaps in distribution of the vaccine in part because of disparities in manufacturing.39 Vaccination rates in the Global South remain abysmally low and, while patents are not the only issue keeping distribution from moving forward faster, the willingness of the companies who developed the drug to share and allow generics to be made is hindering access.40 As access to the vaccine plays out globally, it appears to follow the same pattern as other access issues – when IP prevails over access and distribution of medicine, social justice fails on a global scale. B. Access to Knowledge A second example of how the IP system distorts social justice by causing unjust results arose in recent litigation concerning access to scholarly research, most of which is now owned and tightly controlled by major publication companies like Elsevier. This particular story begins when Alexandra Elbakyan, a graduate student originally from Kazakhstan, created Sci-Hub.org because the paywalls on most academic research databases kept her from being able to access journal articles essential for her graduate studies. Elbakyan is not alone. In the current knowledge economy, only the wealthiest of institutions, primarily in the most economically advanced countries, can afford the costs of accessing databases like Elsevier’s. Even these countries are balking at the rates being charged by Elsevier, rates that continue to grow without any logic.41 Recently, the University of California system ended its contract with Elsevier because of the astronomical $10 million cost of subscribing.42 Only those who access through their institutions can read these journals because few if any scholars around the world can pay Elsevier’s rates. Sci-Hub became enormously popular and is now used by scholars throughout the world with over 50 million scientific articles downloaded and available for sharing. A recent study found that there are over a million downloads of medical literature each month. These downloads are from countries across the globe, with higher downloads in middle income countries, but with downloads existing in all countries in the world.43 In 2015, Elsevier sued Library Genesis (another file sharing site) and Sci-Hub.org over the creation of their scholarly file sharing services.44 Despite the fact that Elbakyan is not a U.S. citizen, nor living in the United States, Elsevier sued in the Southern District of New York

38 39

40

41

42 43

44

Michaeleen Doucleff, supra note 32. Sarah Gabriele, What Happened to the COVID-19 Vaccine Patent Waiver? Bill of Health, Nov. 8, 2022, https://blog .petrieflom.law.harvard.edu/2022/11/08/what-happened-to-the-covid-19-vaccine-patent-waiver/. Nadia A. Sam-Agudu et al., The Pandemic Is Following a Very Depressing and Predictable Pattern, The Atlantic, Mar. 4, 2022, https://www.theatlantic.com/health/archive/2022/03/pandemic-global-south-disease-health-crisis/624179/; Amy Maxmen, The Fight to Manufacture COVID Vaccines in Lower-Income Countries, 597 Nature 455–57, Sept. 15, 2021, https://doi.org/10.1038/d41586–021-02383-z. Brian Resnick, University of California Drops Subscriptions to Elsevier, World’s Largest Publisher of Scientific Papers, Vox, Mar. 1, 2019, https://www.vox.com/science-and-health/2019/3/1/18245235/university-of-california-elsevier-subscrip tion-open-access. Id. Brian M. Till et al., Who Is Pirating Medical Literature? A Bibliometric Review of 28 Million Sci-Hub Downloads, 7 The Lancet Glob. Health 7, 30–31 Jan. 1, 2019, https://doi.org/10.1016/S2214–109X (18)30388-7. Ernesto Van der Sar, Elsevier Cracks Down on Pirated Scientific Articles, TorrentFreak, June 9, 2015, https:// torrentfreak.com/elsevier-cracks-down-on-pirated-scientific-articles-150609/.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

506

Debora Halbert and Billy Meinke

under the 1976 Copyright Act and the 1986 Computer Fraud and Abuse Act, raising jurisdictional issues as well as moral considerations.45 Elsevier, a company that makes over $1 billion/year, is founded on a business model of appropriating the free labor of academics who submit to its journals. Scholarly works are often published from research generated from public grant funding. They are then published in Elsevier-owned journals that rely upon the free labor of peer-reviewers, and without compensation being paid to the articles’ authors. Within this exploitative environment, Tom Allen, President of the Association of American Publishers, stated that websites like Sci-Hub were a “threat to academic quality as well as public health and safety.”46 Allen based this conclusion regarding public health and safety on the fact that sometimes journals post corrections to articles when they publish inaccurate information, but the pirate sites would not necessarily produce these corrections. Such a justification is specious at best. Elsevier won in the District Court after Elbakyan ignored the lawsuit and the court issued a permanent injunction and a fine of $15 million in damages.47 The quantum of damages was derived from the maximum penalty for the unauthorized reproduction of a copyrighted article on each of the 100 articles Elsevier used in their case ($150,000 each). However, because SciHub hosts hundreds of thousands of articles, if the court had calculated the amount for every article Elsevier claims is pirated, the ridiculousness of such a charge would be even more pronounced. Of course, Elsevier can only sue for its copyrighted works, meaning the damages only escalate if other copyright owners follow Elsevier’s lead. So, for example, even if we assumed Sci-Hub had 15,000 unauthorized journal articles on its site (it has many more) the fines would rapidly escalate to $2.25 billion. Elbakyan said she cannot pay even if she wanted to. However, the litigation had a different impact than Elsevier may have wanted. As an example of the Streisand effect in action, in the wake of the litigation, Sci-Hub grew in popularity and remains active today. As Elbakyan puts it, “If Elsevier manages to shut down our projects or force them into the darknet, that will demonstrate an important idea: that the public does not have the right to knowledge . . . Everyone should have access to knowledge regardless of their income or affiliation. And that’s absolutely legal. Also, the idea that knowledge can be a private property of some commercial company sounds absolutely weird to me.”48 Elbakyan is now living in Moscow and studying philosophy at the Russian Academy of Science.49 She remains embroiled in her fight to free scientific knowledge from the relentless battle on the part of Elsevier and others to lock it down. The most recent litigation is happening 45

46 47

48

49

Delbert Tran, Elsevier v. Sci-Hub: Piracy of Knowledge and the Jurisdictional Reach of U.S. Copyright Law, 17 Wake Forest J. Bus. & Intell. Prop. L. 17 (2017). Van der Sar, supra note 44. Ernesto Van der Sar, Sci-Hub Ordered to Pay $15 Million in Piracy Damages, TorrentFreak, June 23, 2017, https:// torrentfreak.com/sci-hub-ordered-to-pay-15-million-in-piracy-damages-170623/. Ernesto Van der Sar, Sci-Hub Tears Down Academia’s “Illegal” Paywalls, TorrentFreak, June 27, 2015, https:// torrentfreak.com/sci-hub-tears-down-academias-illegal-copyright-paywalls-150627/. Indeed, as Jonathan Band and Brandon Butler discuss elsewhere is this volume, copyright is intentionally structured so as to accommodate free access to knowledge, such as through the limitations and exceptions which enable public library lending services and similar activities. See Jonathan Band & Brandon C. Butler, Libraries, Copyright Exceptions, and Social Justice, ch. 17 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Elbakyan’s Sci-Hub database seems more consistent with the ultimate social function of copyright than Elsevier’s effort to monopolize scientific and medical knowledge in the cause of maximizing commercial profits. Tom Bartlett, Is the Pirate Queen of Scientific Publishing in Real Trouble This Time?, The Chronicle of Higher Education, June 28, 2021, https://www.chronicle.com/article/is-the-pirate-queen-of-scientific-publishing-in-realtrouble-this-time.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

507

in India, where Elsevier and other publishers are attempting to block Sci-Hub access throughout the country.50 In May of 2022 the Delhi High Court indicated that it was likely to rule against Elbakyan.51 Even if she does not win, and despite the fact the global publishers who own the rights to the vast majority of scientific knowledge will continue to attempt to destroy access, it would appear she intends to keep Sci-Hub running.52 These two examples demonstrate two important points. First, there are tensions between what many think ought to be and the way the legal regimes of copyright and patents construct the world we live in now. Second, after almost 20 years of thinking critically about IP and understanding its drawbacks, the IP maximalist ratchet (Susan Sell’s term) has only tightened.53 Given this is the system we live in, the next section inquires into possible ways to mobilize IP towards enhancing and preserving social justice.

iii. the possibility that ip can be a tool for social justice Setting aside the need for fundamental transformation in how the laws of IP operate, are there ways that IP can be a tool for social justice? This section examines several innovative ways in which our foundational IP laws might be flipped to provide for better outcomes in terms of social justice. If IP is a protective framework designed to exclude unauthorized uses, then it is possible to build spaces for free exchange of creative work within a protective blanket of IP without ultimately rejecting IP altogether. IP can be used to stave off possible corporate invasions, one reason anarchist booksellers give for why they copyright their work when it would otherwise appear contradictory to do so.54 While copyright is generally a tool that is used to consolidate ownership and rigorously protect corporate property, and the same could be said for trademarks and patents, there are moments when a small independent creator may be able to utilize the law to resist appropriation. Under some alternative IP regimes, the law can play a positive role in the lives of those trying to express themselves creatively. We offer two examples of how IP generally, and copyright specifically, have been used to create innovative methods of facilitating the dissemination and collaborative upkeep of knowledge. A. Creative Commons and the Public Domain It is possible to see glimmers of futures where IP laws have been restructured to favor individual creators and reusers of work, such as with the Creative Commons (CC) copyright licenses. These hacks on copyright law explicitly allow broad nonexclusive reuse of creative works by anyone, under terms which turn on the use and not the user. This focus on usage rights means that anyone can reuse CC-licensed works, essentially flattening the legal barrier to participation for both the creator and the reuser. From a foundation that simply requires attribution to be given to the original author, several CC licenses allow work to be released to the public with minimal restrictions, although commercial reuse and modification rights can be retained easily.

50 51

52 53

54

Id. Anushka Jain, Case Leaning Against Sci-Hub, Says Delhi High Court, Medianama, May 18, 2022, https://www .medianama.com/2022/05/223-sci-hub-publishers-lawsuit-hearing-delhi-high-court/. Bartlett, supra note 49. Susan K. Sell, The Global IP Upward Ratchet, Anti-Counterfeiting and Piracy Enforcement Efforts: The State of Play, P2P Foundation, Dec. 17, 2011, http://p2pfoundation.net/IP_Maximalists. Debora Halbert, Creativity without Copyright: Anarchist Publishers and Their Approaches to Copyright Protection, in Creativity, Law and Entrepreneurship (Shubha Ghosh & Paul Robin Malloy eds., 2011).

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

508

Debora Halbert and Billy Meinke

The licenses themselves are released into the public domain, meaning that there is no cost associated with licensing and no registration required – leading to reduced friction for those who wish to innovate and build on the works of others. CC licenses can be applied to a variety of creative works, including educational content, music, photographs, music, and more.55 Using attribution as a foundational requirement of all six CC copyright licenses, each license indicates specific reuse rights for works that are shared in the digital commons. These licenses represent an unprecedented amount of legal power that can be exerted by individual creators and large-scale owners of IP alike. Several years prior to the founding of Creative Commons, cofounder Lawrence Lessig identified four types of constraints that affect human behavior: market, architecture, norms, and law.56 Constraints that fall within the “law” category, such as being able to reuse the work of others freely, can be lowered through legal infrastructure such as open copyright licenses. Once barriers are removed, individuals are free to participate collaboratively in IPR economies, whilst following the law and avoiding sanctions, increasing their potential for socio-economic uplift. Several extensions of copyright in the U.S. in the latter part of the twentieth century such as the Copyright Term Extension Act (CTEA), prompted the creation of “open” copyright licenses such as Creative Commons. In the U.S. and many jurisdictions around the world, copyright to creative works is granted automatically without cost or registration, and is retained for a period of time up to 70 years after the death of the author. Beyond this, reusing the work of others typically requires complex legal arrangements that are outside the expertise of individual creators who wish to collaborate with others or add their work to the Commons. Designed to release reuse rights for content and data, CC licenses can be seen as a counterpart to open copyright licenses for software code such as the GNU General Public License, which seeks to “respect users’ freedom and community,” and grant freedoms that “everyone deserves.”57 As of 2017, 1.4 billion creative works had been licensed under a CC license, representing the growing popularity and ease of use of the licenses.58 It is IP frameworks such as these that strike a balance between retaining some rights such as attribution or credit, while allowing for broad reuse by all people. Open and collaborative knowledge production initiatives such as Wikipedia demonstrate legally uncomplicated sharing of IP, supported by a nonprofit foundation and managed in part by a network of volunteers. At any time, anyone in the world can visit Wikipedia and download a single article (or the entire database) and take it with them to reuse as they wish so long as they respect the CC copyright license attached to it. The Wikipedia terms of use continue with: “In keeping with our goal of providing free information to the widest possible audience, we require that when necessary all submitted content be licensed so that it is freely reusable by anyone who cares to access it.”59 The reciprocity of reading and writing in Wikipedia is for the most part without legal and financial complexity, although representation from all groups may still be limited to those who have access to Internet connectivity and computing technology. Although the servers live in the Global North, curation of content and participation in the shared

55

56 57 58

59

Creative Commons, Frequently Asked Questions, https://creativecommons.org/faq/#what-are-creative-commonslicenses. Lawrence Lessig, The New Chicago School, 27 J. Leg. Stud. 661–91 (1998), https://doi.org/10.1086/468039. Free Software Foundation, What Is Free Software?, https://www.gnu.org/philosophy/free-sw.html. State of the Commons, Creative Commons, https://stateof.creativecommons.org/. For open access projects intended to serve all, these licenses make clear the terms of contributions and reuse of the initiative’s products. Wikimedia Foundation Vision, Wikimedia Foundation, https://wikimediafoundation.org/about/vision/.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

509

encyclopedia can be seen through traffic statistics that show participation from low and middle income nations such as India, Argentina, and Ukraine.60 Further uptake and influence of CC licenses in all areas of knowledge sharing has been so great that open licenses have become a core aspect of globally recognized “open” definitions such as that of Open Educational Resources (OER) by UNESCO61 and Open Access (OA) in the Budapest Open Access Declaration.62 Both of these global movements provide access to knowledge, the former in the case of learning and teaching resources and the latter in terms of no-cost access to the outputs of research. Greater access to education and research lowers barriers to socio-economic uplift, especially in developing countries where students may not be able to purchase textbooks. Even in the United States, as many as two-thirds of college students forgo buying the materials needed for courses based on cost alone,63 while instructors who have moved to openly licensed materials can guarantee all students access to the learning materials regardless of their socio-economic status. If formal education and credentialing remain an essential aspect of career advancement and economic uplift, then access to and participation in knowledge economies through less restrictive IP frameworks such as CC licenses can be seen as key to futures where all individuals are placed on a level playing field. There are of course limits to the utility of alternative IP frameworks like CC for economic uplift, depending on the immediacy and kind of value individuals wish to generate. For creatives, CC often solves problem zero: being discovered.64 From Stacey and Pearson’s 2017 book, Made with Creative Commons, users of the licenses do so to build an audience, gain name recognition, or to differentiate themselves among many seeking the market’s attention.65 From an improved platform, individuals can leverage their position to bring in revenue through customized services or products, selling physical copies of digital works, digital advertising, among other strategies. This is to say that permissive IP frameworks do offer a means of individual economic uplift, while making it possible for IP to be shared usefully in collaborative environments, but that direct monetary compensation for participation in the Commons is less likely than other value gained such as exposure and a bigger audience. B. Burning Man Burning Man is an anti-consumerist festival held in the Nevada desert each year. It has evolved into a complex temporary city of anywhere between 30,000 and 60,000 people who spend a week engaging in the art festival grounded upon the 10 Burning Man principles that include leaving no trace, a gift economy, and a commitment to civic engagement.66 Burning Man also

60

61

62

63

64

65 66

Wikimedia Statistics, Page Views by Country, Wikimedia Foundation, https://stats.wikimedia.org/v2/#/all-projects/ reading/page-views-by-country/normal|table|last-month|~total|monthly Open Educational Resources (OER), UNESCO, July 20, 2017, https://en.unesco.org/themes/building-knowledgesocieties/oer. Budapest Open Access Initiative, Ten Years on from the Budapest Open Access Initiative: Setting the Default to Open, https://www.budapestopenaccessinitiative.org/boai-10-recommendations. Access Denied: The New Face of the Textbook Monopoly, Student PIRGs, https://studentpirgs.org/2016/09/21/accessdenied/. P. Stacey & S. H. Pearson, Made with Creative Commons (2017), https://creativecommons.org/use-remix/made-withcc/. Id. The 10 Principles of Burning Man, Burning Man, https://burningman.org/culture/philosophical-center/10-principles/.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

510

Debora Halbert and Billy Meinke

has IP policies that govern how individuals can use Burning Man logos and copyrighted work, as well as how they can use personal photos taken on site.67 Burning Man argues that, in order to protect its values of decommodification, it must assert copyright over all photographs taken at the festival. Furthermore, it does not allow commercial entities to use the Burning Man “brand” to advertise their goods or services, and Burning Man actively seeks to defend its trademarks and copyrighted materials for the purpose of keeping its brand distinct from corporate capitalism. The ticket purchased to enter the Burning Man festival requires participants to adhere to the Burning Man rules, one of which limits all uses of photography taken at the event to personal use with no commercial applications.68 Ultimately, to defend the anticommercial stance Burning Man has taken, and in order to retain a space free from commodification, it repurposes a tool designed to commodify ideas and creativity and uses it against those who might seek to undermine its values. As with any trademark, Burning Man aggressively seeks to control its brand, as evidenced by its response to a Quizno’s advertisement that cleverly parodied Burning Man, while also of course selling sandwiches.69 The spokesperson for Burning Man, Jim Graham, noted that the parody was not the issue; rather, it was the use of any Burning Man related material that violated the control it claims over the event in order to protect the 10 principles, most central to the appropriation of Burning Man for commercial purposes, the principle of decommodification.70 As Ally Deraps, a lawyer for Burning Man notes – and the irony cannot be ignored – “it’s so we can protect them from being misused.”71

iv. the future(s) To engage in futures thinking is to posit possible futures that can help us understand and avoid our least preferred futures while imagining our most preferred future. Unless we grapple with images of preferred futures, it is unlikely that we can effect change to bring such alternatives into existence. The underlying principle of scenario-based futures studies is not to predict the future, but to engage people in an imaginative process that seeks to empower them to achieve the type of future they want. All too often, individuals can feel as if the forces of history move inexorably forward, leaving most of us feeling helpless, but futures studies challenge this notion by suggesting that the choices we make today create the conditions for different futures and there is nothing inevitable about any given future outcome. Not only is it important to envision the future, but it is also important to acknowledge the existence of multiple possible futures, a technique the Hawai‘i Research Center for Futures Studies utilizes in its scenario work.72 As a result, futures scenario building offers a range of possibilities from a future of total transformation to one where collapse is the dominant characteristic. The goal is to create multiple futures so that the assumption wherein there is only a single future emerging in a linear fashion from the present can be disabused. Scenarios 67

68 69

70 71

72

“Trademarks & Copyrights,” Burning Man, https://burningman.org/network/about-us/press-media/trademarksimages-faq/. Id. Mike Masnick, Burning Man Threatens Quizno’s for “Theft of Intellectual Property” Because of a Quizno’s Ad Mocking Burning Man, Techdirt, Sept. 14, 2015, https://www.techdirt.com/articles/20150914/00134532249/burningman-threatens-quiznos-theft-intellectual-property-because-quiznos-ad-mocking-burning-man.shtml. Id. Alissa Greenberg, After the Playa: Decompressing with Burning Man’s Lawyer, Cal Alumni Association, Oct. 23, 2018, https://alumni.berkeley.edu/california-magazine/just-in/2018-10-10/after-playa-decompressing-burning-mans-lawyer. Dator, supra note 17.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

511

are useful in helping readers understand futures work as leading to a pluriversality of futures, where no single hegemonic future prevails, but the seeds of many possibilities exist and can be nurtured.73 In the context of IP, Professors Anjali Vats and Deidre Keller put it best: “Any and all spaces for remaking IP, at individual and structural levels, remain important not only making space within existing IP regimes for the knowledge production of people of color but also envisioning new institutions, laws, practices that do not simply accommodate.”74 In this section we briefly narrate possible futures, in an effort both to imagine what social justice and IP might look like, but also to provide a vision of what less optimal futures look like as well. A. Envisioning an IP-SJ Transformation: The Sharing Economy 2050 In The Third Industrial Revolution, Jeremy Rifkin lays out the importance of transitioning away from the fossil fuel economy into one governed by a networked and distributed sharing economy.75 This sharing economy develops, Rifkin argues, when the emerging distributed energy economy combines with new forms of communication to connect people in fundamentally new ways.76 The convergence of energy and communication will radically transform everyday commerce and everything we know about how the economy works. However, for these future technologies to create the sharing economy envisioned by Rifkin, they must be freed from the tendencies of capitalism to create scarcity and concentrate wealth, both characteristics that perpetuate inequality. A fundamental assumption of a future based on the sharing economy is that social justice includes more than mere restructuring that allows formerly disenfranchised individuals to participate in a still fundamentally unjust system. Rather, structural transformation of the system itself is required and is possible. The emerging socially just IP system is one where, to the degree IP regulations exist, they are available for everyone to use not as a method of concentrating wealth but as a way of protecting creativity from improper appropriation. Furthermore, a new IP system based on a sharing economy can place its roots in the acknowledgment that people engage in creative work for the sense of belonging and community such work can provide, rather than merely as a method of acquiring “stuff.”77 Any such sharing economy will be based upon a fundamentally more egalitarian set of principles than those governing how IP is defined today. This moves us on to the next query of what a future with a distributed and egalitarian IP system may look like. What follows is one potential envisioned future as told from the perspective of that future having been realized. With the world hanging on the precipice of global climate disaster, growing inequality, vast environmental destruction, and faced with massive environmental migration, the sharing economy transition was essential to survival. Underlying the technologies of a sharing economy, however, was a restructured IP system premised upon rewarding public contributions rather than private accumulation of property and wealth. The transformation to a distributed network pitted the vestiges of the old concentrated, monopoly-centric power elite against the socially conscious, technologically distributed, and sharing-oriented entrepreneurs of the middle of the 73

74 75

76 77

Walter Mignolo, The Darker Side of Western Modernity: Global Futures, Decolonial Options 44 (2011). Vats & Keller, Critical Race IP, 36 Cardozo Arts & Ent. L. J. 777 (2018); Keller & Vats, supra note 15. Jeremy Rifkin, The Third Industrial Revolution: How Lateral Power Is Transforming Energy, the Economy, and the World (2011). Id. at 35. Betsy Rosenblatt, Belonging as Intellectual Creation, 82 Missouri L. Rev. 91–132 (2017).

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

512

Debora Halbert and Billy Meinke

twenty-first century. Only by rewriting the rules of patents and copyrights and inserting a new public-oriented prioritization of innovation was it possible to make the transition to a new paradigm. The seeds for such a system were planted at the turn of the century – the emergent success of open source software, open access educational resources, the disintermediation of the corporate-controlled drug industry, and the growing realization in the United States that federal funding for basic research should no longer result in private rewards. The sharing economy, premised upon easy to access 3D printing technology that undermined centralized industrial manufacturing and distribution, meant that people could opt into a parallel system founded on digital distribution and localized production. Instead of creating scarcity through the law, as IP had done, the underlying sharing economy allowed for innovative products and practices to be built upon the scaffolding of free and shareable ideas. Viewed structurally, for those who sought to innovate within the existing IP system, it became obvious that the system was structured to exploit the marginalized, the creative, and the innovative, by claiming their work was either already part of the public domain or by wrapping it within “work made for hire” contracts or limited royalty sharing agreements that assured the vast bulk of any wealth generated went to corporate owners. Increasingly restrictive noncompete agreements, rigorous enforcement of piracy laws, and new rules generated by the U.S. federal government imposing harsher penalties for anything deemed IP theft or piracy meant that those acting to share were punished, while those taking the work of others as their own were rewarded. Once IP was developed and owned, it was then sold to the larger public at prices unaffordable to most. Thus, the first change was the elimination of the “work made for hire” doctrine, given that it was a fundamental element of wealth concentration away from those who create to those who simply appropriate the work of creative people. Instead, researchers and creators retained underlying control of their work and could licence it as they chose but never alienate those rights. Second, in the U.S., the Bayh-Dole Act, which created the regulatory regime for privatizing publicly funded innovation, was repealed and government agencies were instead directed to fund research that could contribute to solving the world’s health and environmental problems rather than further concentrate wealth in key fields such as biotechnology. Companies could still utilize publicly funded research but only through a limited license with the underlying IP remaining publicly controlled. With this slight change, new avenues of research focused on previously ignored deadly diseases and innovative energy solutions were followed. Creative work followed a similar trajectory and expansive copyright protection was repealed. Instead of protecting a work for the life of an author plus 70 years, the U.S. reverted to a 14-year term with the possibility of renewal for another 14 years, which matched more appropriately with the fast pace of innovation and creativity that was required in the mid-twenty-first century. Furthermore, copyrighted works remained with the authors with licensing opportunities rather than work made for hire contracts, providing more control over creative work by the creator. Since most creative producers did not own their copyrights in the past, nor were they able to defend them if they did own them, creative workers were given more control over their work under the new system. The movement to a sharing economy began in the university systems as academics began to realize that their publication model was antithetical to knowledge production. First, libraries across the world began to opt out of the high-priced licensing contracts that the publishing industry was able to impose because their monopoly over access to knowledge allowed them to increase rates and charge exorbitant prices. Next, academics began to resist by refusing to provide the free labor the exploitative business model required for publication demanded.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

513

Academics began to refuse to participate in free peer review of anything but open access, free to publish journals, and they refused to publish their work in journals that had subscription prices beyond the reach of everyday users. Academics also began to break open the textbook industry by writing open access, free to use textbooks that rapidly took the place of the expensive IPcontrolled products sold by textbook companies. They continued to collaborate with their colleagues across the world, even as the U.S. government claimed such collaboration was a new form of IP theft, especially when Chinese scholars were involved. Instead, institutions of higher education throughout the world reaffirmed their commitment to sharing knowledge and began to build out knowledge networks that allowed for those learning and teaching in the Global South to access research and textbooks for free. Overall, the problems with IP were solved when the underlying values structuring the system were re-engineered to prioritize sharing over personal ownership, while still leaving room for business development. In other words, an economy built upon a radically limited protective structure for what was considered “property” 30 years ago helped build a better world. B. Business as Usual/Control: The Value of Personal IP While legal battles over many forms of IP continue, issues of personal data ownership and privacy were brought to the forefront. Lacking privacy protection legislation on the level of the European Union’s General Data Protection Regulation (GDPR), individuals in most parts of the world continued to be monitored and tracked by private companies and governments, their data amassed with that of billions of other people. A series of data breaches across all major social media networks drew the ire of privacy watchdogs and people more generally, prompting calls for increased transparency about the scope and scale of personal data being harvested and the uses to which it was being put. This revealed information allowed construction of a more complete picture not only of the data collected about us, but also how those data were shared across organizational and international borders and exploited as revenue-generating information protected by various forms of IP. Fully autonomous digital assistants which were compliant with explainable artificial intelligence principles (XAI)78 were introduced by Apple and Facebook, offered with tiered pricing that could be offset by consenting to more pervasive data extraction.79 With traditional currency or with our privacy, we paid for use of digital selves that would not exist without the personal information and IP we shared on social media platforms. Ownership and rights to exploit this data were contested, but the U.S. Supreme Court decided in favor of the individual, requiring all collection of personal data to conform to heightened consent and transparency requirements. In spite of this, binding terms of service and privacy policies minimally met transparency requirements and were designed to gather consent quickly. In many cases, a person’s access to social networking platforms did not change in a material way even after consenting to more broad personal data harvesting. In other cases, we consented to greater forms of monitoring in exchange for continued or marginally different capabilities whose personal and societal benefits were questionable at best. Personal data collection as a phenomenon expanded, but it took different forms, all the while producing negative effects for certain classes and ethnic or religious 78

79

See Steven D. Jamar, An Intellectual Property Social Justice Perspective on Intellectual Property Protection for Artificial Intelligence Programs, ch. 18 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Debora Halbert, Intellectual Property in the Year 2055, 59 L. Rev. Franklin Pierce Center for Intell. Prop. 117–35 (2018).

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

514

Debora Halbert and Billy Meinke

groups. Inequality was further automated through the processing of gobs of information and construction of new data streams, and decisionmaking systems that largely determined our ability to seek socio-economic uplift were left to machines.80 Students in China developed Deep Fakes that sat in for students in U.S. colleges during online lectures, responding to discussion questions and interacting with instructors and other students. The education sector responded by increasing surveillance of students to deter and flag autonomous digital selves in classrooms. Major players in the multi-billion dollar textbook and learning tools industry were quick to introduce facial recognition, affect monitoring and social media sentiment analysis on behalf of institutions, but faculty and staff were swept up in the process. New data about learner progress arrived alongside faculty productivity metrics, forcing labor unions to navigate data-dominated negotiations with administrators. These early warning signs were alarming, but slow-moving bureaucratic processes in most parts of the education sector meant that the expansion and effects of personal IP collection easily outran legislation and contract revision, both of which were only able to address the most visible issues of privacy and protection. Even widely known legislation such as the Family Education Rights Protection Act (FERPA) served as more of a talking point than as a way of protecting student data in the face of emerging technology. Ownership of genetic data as IP took the stage for a time as the genome-mapping company 23&Me was found to have violated a range of Health Insurance Portability and Accountability Act (HIPAA) restrictions. During a period of expansive growth and business acquisitions, the company exposed the identifiable genetic data of approximately 20 percent of the world’s known population. The exposed data was then made available on Gen-Hub, a data repository modeled after the successful Sci-Hub research repository which had transitioned into stewardship by researchers within the United Nations (UN). 23&Me was found to have been complicit in the data leak, but the release of a global genome database prompted new questions of ethics and ownership of all personal data. The global elite, who were less likely to have been subjected to personal data harvesting, balked at the notion that our society would survive without even greater data capture, processing, and decisionmaking. Powerful lobbies softened the blow to companies which had mishandled personal IP, and shepherded policy decisions to limit their accountability in the face of widespread misuse. Government funding for surveillance infrastructure skyrocketed globally and so, in both a legal sense and a financial sense, the Wild West of personal data collection and exploitation was even more wild than we had imagined. The poor in all parts of the world were visited by a new extractive gaze, one that colonized bodies through the interlinking of surveillance, data mining, and mapping of resource-rich territories.81 “Smarter” decisions powered by data in a global surveillance society cemented existing class structures and threatened to establish new, more harmful orders. The introduction of real-time data streams directly from our brains was seen merely as a new kind of IP-protectable information that could be traded for services and privileged participation in society. In this scenario, the tensions between policy and industry practices remained somewhat balanced as new technology emerged, producing the optics of better privacy and personal IP ownership for all global citizens. In reality, the processes of expanding personal data capture and processing across society largely affirmed existing class stratification and consolidations of power.

80

81

Virginia Eubanks, Automating Inequality: How High-Tech Tools Profile, Police, and Punish the Poor (2017). Macarena Go´mez-Barris, The Extractive Zone: Social Ecologies and Decolonial Perspectives. Dissident Acts (2017).

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

515

C. Collapse: The Collapse of Global IP Regimes IP has long been of transnational concern. Beginning in the nineteenth century, protecting IP effectively required rules that extended beyond the boundaries of the nation state. Consequently, various instruments and bodies were created to that end, including international agreements governing patents and copyrights in the nineteenth century, followed by the creation of the World Intellectual Property Organization as a part of the United Nations in the midtwentieth century. As the world further engaged with a neoliberal global economic model, countries were required to sign the Trade-Related Aspects of Intellectual Property Agreement (TRIPS) as part of their admission to the World Trade Organization (WTO).82 This multilateral agreement created an international baseline of IP protection linked to global free trade. Despite its broad reach and intrusion into nation states through trade arrangements, from the point of view of the United States, it did not go far enough. The post-TRIPS decades saw additional efforts to enhance global IP protection through multilateral and bilateral agreements, often referred to as TRIPS Plus agreements. The failure of the Doha Round to resolve global trade interests within the multilateral venue suggested that, while such a process, defined around values of development and sustainability in order to convince the developing world that it ought to join, could do much to improve the world, national self-interest made compromise impossible.83 Instead, much of the impetus for global regulatory structures ground to a halt and was replaced with bilateral or regional agreements where the power differential between the United States and its negotiating partners remained firmly in favor of the U.S., with no ability for weaker states to band together as they had done in the WTO.84 Domestically in the U.S., additional efforts to expand the reach of IP met with resistance and the Stop On-Line Piracy Act (SOPA) failed to become law after numerous tech sites blacked out their websites for the day to protest the law, garnering public support against the bill. The public interest, an afterthought in this particular policy work, was effectively mobilized by Internet giants such as Google, who blacked out their search engine for a day to illustrate the importance of the Internet for circulating content.85 New combinations of political allegiances between older labor activists who had vocally opposed regional agreements such as NAFTA, newer anti-globalization activists, and rightwing nationalists rallying around American President Donald Trump emerged to resist further multilateral trade agreements. The U.S. withdrawal from the Trans-Pacific Partnership (TPP), a regional agreement designed to establish U.S. trade rules in the Asia-Pacific as a counter to the burgeoning power of China as an economic force in the region, was one of the first actions taken by Trump upon taking up residence in the White House.86 While the TPP was about more than 82

83

84

85

86

See generally Zehra Betul Ayranci, Intellectual Property Social Justice on the International Plane, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). The Editorial Board, Global Trade After the Failure of the Doha Round, N.Y. Times, Jan. 1, 2016, at Opinion, https:// www.nytimes.com/2016/01/01/opinion/global-trade-after-the-failure-of-the-doha-round.html. Dr. Marcela Palacio Puerta discusses this issue of leverage as a present day weakness of the global IP regime in Marcela Palacio Puerta, The Role of Non-Rightsholders, Advocates, and Academics in Achieving Social Justice Balance in Copyright: The Case of Colombia, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Vlad Savov, The SOPA Blackout: Wikipedia, Reddit, Mozilla, Google, and Many Others Protest Proposed Law, The Verge, Jan. 18, 2012, https://www.theverge.com/2012/1/18/2715300/sopa-blackout-wikipedia-reddit-mozilla-googleprotest. Peter Baker, Trump Abandons Trans-Pacific Partnership, Obama’s Signature Trade Deal, N.Y. Times, Jan. 23, 2017, https://www.nytimes.com/2017/01/23/us/politics/tpp-trump-trade-nafta.html?emc=edit_th_20170124&nl=todayshea dlines&nlid=57211702.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

516

Debora Halbert and Billy Meinke

IP, the IP provisions of this regional agreement (and other agreements like it) continued to expand protection of IP beyond TRIPS to the benefit of IP owners. When Trump withdrew the U.S. from the TPP, he may not have known he was disrupting decades of expanding IP protection, given that his primary goal was to protect the old industrial economic base. However, withdrawal marked the end of U.S. dominance in global IP regulation, replacing global negotiation bilaterally or multilaterally with trade war threats as a method of addressing U.S. claims of IP piracy. Furthermore, the U.S. signaled that it no longer wished to shape regional or multilateral IP policy, but rather would go it on its own. Threats of tariffs as the club to force countries to its will were called one of the biggest strategic mistakes the U.S. has made.87 The vacuum left when the U.S. withdrew from the TPP was quickly filled by China, which continued to negotiate with other regional powers without the U.S. and was thus left to shape regional trade to its liking. The result was the Comprehensive and Progressive Trans-Pacific Partnership (CPTPP), an agreement that does not include the U.S. and is now estimated to cost the U.S. billions in exports.88 Meanwhile, the U.S. imposed massive tariffs on Chinese goods, claiming it did so in part because of Chinese IP theft. The trade wars implemented by the U.S. marked a pendulum swing towards nationalist trade policies and the collapse of global free trade structures, taking IP regulatory structures along into the general demise. As countries shored up national boundaries, the new policy world was based upon the recognition that global trade efforts had never benefited the Global South, and that even during the peak of neoliberal trade, developed countries had never engaged in “free” trade with the Global South. Thus, a new form of the development agenda emerged, based upon IP piracy as a mode of technology transfer and knowledge acquisition. China led the way – hacking libraries to download as many scientific articles as possible to help jump start its own innovative work, as well as mandating that companies doing business in China share their trade secrets and other technologies with their local counterparts. Technology transfer had long been an underlying goal of WIPO but had never really been realized, until now. Interestingly, given that few benefits had ever been shared with the Global South, their withdrawal from these large multilateral organizations made no difference whatsoever to their economic standing. It did, however, free up in-country resources to create a new legal paradigm for information sharing, technological innovation, and alternatives to the decades-long effort to globalize American IP law. In the free-for-all that exists now that TRIPS and other regional agreements are no more, the global flow of consumer culture has been replaced with local efforts to develop meaningful and sustainable domestic capacity. The Global South has created its own trade networks, trading generic medicines, nonpatented seeds, music, books, and much more without worrying about who owns the copyright or the patent. Rather, the goal is to build meaningful communities, share technology and knowledge, and build a better life for people rather than the centralized owners of most IP – the pharmaceutical industry, the music industry, the agricultural giants, etc.

conclusion Futures scenarios are designed to encourage people to think about the possibilities that may emerge and then work towards those possibilities that are the most compelling. It will take more 87

88

Olivia Gazis, Top China Expert: U.S.’ “Biggest Strategic Mistake” Was Exiting TPP, https://www.cbsnews.com/news/ top-china-expert-u-s-biggest-strategic-mistake-was-exiting-tpp/. Dan Kopf, The Huge New Pacific Trade Deal Has Gone into Effect without the US, Quartz, https://qz.com/1511381/ the-cptpp-trade-deal-has-gone-into-effect-without-the-us/.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

IP and Social Justice Futures

517

than opening access to disenfranchised people to shape IP as a tool for social justice because the structure of the system is already framed in such a way that benefits are unequally distributed and ownership is concentrated. Certainly, there are moments when an individual may find she can personally benefit from the existing IP structure. However, if social justice, defined as a better possible world for all, is the goal, then it is unlikely that the existing system will produce meaningful results. Rather, a system based upon fundamentally different principles and objectives, such as the IP social justice precepts of socially equitable inclusion and empowerment, as well as that of access, is necessary. The time is now to envision a different system that can change the way we share.

https://doi.org/10.1017/9781108697613.033 Published online by Cambridge University Press

25 Patenting Custom Fit, Aspiring for Social Justice Shubha Ghosh*

I. II. III. IV.

From Personalized Medicine to Personalized Fashion Technologies of Personalizing Fashion Standardization, Sumptuary Norms, and Social Justice Final Thoughts on Social Justice and Intellectual Property

page 519 521 527 533

Theories of social justice open interesting avenues for both research in and development of intellectual property (IP) law. They provide new normative and policy foundations, looking beyond traditional perspectives rooted in Locke, utilitarianism, wealth-maximization, natural rights, or economic theories of efficiency. But as with all these established approaches, social justice runs the risk of turning routine. One example of the strengths and pitfalls of social justice thinking is the custom-fit movement, the subject of this chapter. My contribution is to invigorate social justice thinking by exploring “social justice in action” through the example of the custom-fit movement. By the custom-fit movement, I refer to a series of developments in patenting, startups, and IP theory that recognize customized fashion as an alternative to the strictures of standardized sizes and styles. Customized fashion liberates non-traditional body types from the dominance of the clothing industry; non-European bodies, anti-Barbie, contra-svelte, each come out of the darkness. As I explain below, my work on this topic arose from a book on personalized medicine. Analogously, custom fit is personalized fashion. Much of current social justice-minded IP research seeks to identify and correct exclusionary barriers in IP, such as structural biases in patent grants or in copyright registration.1 These * Crandall Melvin Professor of Law, Director, Intellectual Property & Technology Commercialization Program & Syracuse Intellectual Property Law Institute Syracuse University College of Law 1 See Lateef Mtima, The Idea Exclusions in Intellectual Property Law, 28 Tex. Intell. Prop. L. J. 343 (2020). Professor Mtima provides a valuable synthesis of various scholars addressing the question of social justice and intellectual property (IP). I was thinking of using this footnote to discuss several of the scholars he cites, critically, in part as a way to differentiate my approach in this chapter. The scholars seem to be engaging in various extensions of traditional arguments within IP law by identifying “cross-modal” goals, urging practical reasoning, or pointing out that copyright can uplift traditionally disadvantaged groups. As to the first of these IP social justice (IP-SJ) approaches, it should not be surprising that law serves goals other than wealth-maximization (wealth itself being such a capacious term). The second approach appeals to pragmatism in an abstract way that evades practical engagement. And the third cannot separate the benefits of copyright from the benefits of a market or contractarian economic system and fails to compare resulting benefits with known harms from copyright and markets. In short, the synthesis Professor Mtima provides illustrates the questions of social justice in action and the harder questions of institutional choice and the organization of politics, society, and markets.

518 https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

Patenting Custom Fit, Aspiring for Social Justice

519

barriers are presumably systematically based on race, gender, or some intersection with the implication that subordinated groups can use IP law as tools of economic, and possibly political, empowerment. All of these contributions are important and may be the basis for reform, even though it is not always clear what the proposed reforms are. Another strand of social justice scholarship, produced for the most part by academics in disciplines outside of law, takes a more systematic approach to how markets, history, culture, and social stratification all intersect in the working of IP-based industries.2 My study of the custom-fit movement takes us through IP and social justice into the heart of standardization and a market defined by a set of sumptuary norms, in the following stages. First is background on custom fit in my work on personalized medicine, followed by a presentation of patents and trademarks in this area, situated in the broader context of design protection. Against this IP portfolio for custom fit emerges a range of startups that challenge industry standards in the clothing industry. Theories of social justice, especially those that are anti-status, shed some light on the custom-fit movement as creating new normative justifications for IP. The chapter ends with an assessment of the potential to realize these normative justifications, concluding with a perhaps pessimistic account of how the politics of IP can undermine egalitarian, anti-status aspirations.

i. from personalized medicine to personalized fashion My interest in custom fit arose serendipitously. In writing my 2012 book on personalized medicine, I researched patents that expressly covered racial types, such as the BiDil patent on a treatment for “black patients.” My research uncovered a patent on “Patterning system for a selected body type and methods of measuring for a selected body type.”3 The abstract of this patent reads as follows: The present invention provides a patterning system and method thereof for a specific Black human selected body physique type and gender when combining and correlatively assembling a body part location(s), height measurement, a weight and and a Black ethnicity solution(s) for the specific Black selected body type, to form a patterning system that is recorded on a patterning surface and to create standard sizing guide and system for the Black human body physique.

Issued to Stacey Ellis, this 2002 patent covered an alternative sizing and fit model for clothing to fit Black body types. For the 2012 book on personalized medicine, the patent illustrated how notions of identity shape invention and, in turn, aid in product differentiation and market segmentation. As I stated in my 2012 book, Ellis’ patent is one of many examples of how the use of racial categories should be assessed under a more nuanced application of the antisubordination principle. The appropriateness of using these categories rests on their effect on perpetuating the subordination of groups by imposing limits on access to critical resources or by perpetuating stereotypes. A nuanced application of this principle would also recognize the principle that civil society mandates some degree of cooperation and harmony among various groups. Therefore, this principle should be applied to avoid claims that would put different groups in opposition and further fragment or balkanize the public arena.4

2

3 4

See, e.g., Brad Hamilton, Just Around Midnight: Rock and Roll and the Racial Imagination (2016) (African American composers and performers in music industry); Anthea Kraut, Choreographing Copyright: Race, Gender, and Intellectual Property Rights in American Dance (2015). U.S. 6978549 (June 5, 2002, priority date). Shubha Ghosh, Identity, Invention, and the Culture of Personalized Medicine Patenting 183 (2012).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

520

Shubha Ghosh

When Stacey Ellis contacted me in 2018, I was surprised that an abstract invention serving as data point in my book came to life through a phone call. Mr. Ellis informed me of developments since the 2002 patent, including a startup founded with his partner, Vernelia Ellis. The startup called “House of Made” is dedicated to designing, manufacturing, and distributing clothing to fit “alternative body types,” generally associated with African American women. Included in its IP portfolio was a 2012 design patent for “Curved Denim Jeans,” whose contours can be seen in the figures extracted from the issued patent. Also part of the portfolio is a 2015 patent application for “Patterning system for selected body types and articles of manufacture produced therefrom.” This utility patent builds on the 2002 patent on body types to develop a manufacturing system for jeans of a particular body type. As the abstract describes: A method for manufacturing a garment includes creating a database of various body types, the database including variances within a selected body type. After the body type variance is selected the garment is prepared including a pant, skirt, t-shirt or the like. In creating a jean a cup is provided within the buttocks of the wearer to enable the fullness of the buttocks to reside therewithin. The database may be used to prepare it is possible articles of manufactures such as seating which is contoured to the body of the driver.5

The invention consists of a database of body types from which parameters for a manufacturing process is set, based on variances in a selected body type. The system creates custom-fit jeans for a particular body type.

5

U.S. 20150026990 (filed, Jan. 29, 2015).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

Patenting Custom Fit, Aspiring for Social Justice

521

Ellis’ startup and patents are not unique. They are part of a larger class of enterprises that challenge standardized sizes and fashions in the clothing industry through creating technologies for customizing clothing to different body types. In the next section, I present several examples of these custom-fit startups as background for the normative and policy analyses of this chapter. Custom fit can also be described as “personalized fashion” and the parallel to “personalized medicine” highlights a shared set of policies. The normative discussion of custom fit in the last half this chapter continues from my points about personalized medicine in my 2012 book: [P]ersonalized medicine and its patents confront directly the core of personhood. Whether as patient under treatment or as consumer of diagnostic methods, the person is affected by how personalized medicine shapes the markets for its patented inventions and the cultural context that the markets shape and to which they respond. Furthermore, personalized medicine can alter how we conceive of our own personhood, whether as a patient or as a thinking, inventing person. To what extent, personalized medicine has these effects depends on the form that patenting and commercialization take.6

Custom-fit startups demonstrate the ideals of recognizing personhood in invention and commercialization and the potential dangers to how personhood is devalued and stereotyped.7 In these ways, they advance the IP social justice (IP-SJ) aims of inclusion through making fashion fit everyone.

ii. technologies of personalizing fashion We look in this section at some startups in the world of custom fit. These companies develop technologies to design and distribute contemporary fashions tailored to individual body types. Each adopts different business models for collecting personal data about body size and contours and translating these data into bespoke products. Although patenting is at the very early stage for some of these companies, technologies for data aggregation and analysis are a consistent foundation for how each company operates. One established company is also expanding into this business model. Dr. Scholl’s has obtained a number of patents and has marketed a number of technologies for the development of tailored footwear. Analysis of Dr. Scholl’s business strategies ends this section. The custom-fit movement encompasses a range of strategies to overcome hierarchies in access to clothing and fashion. These strategies encompass IP acquisition as well as marketing. In 2018, for example, three new brands of custom fit, SuitKits, Careste, and Red Thread, all launched following a trend that began with consumer frustration with non-inclusive sizing and disposable purchases. By disrupting the standard sizing system, utilizing advanced technologies such as 3D body scans, and eliminating overstock, made-to-measure brands will survive in the short term and pave the path for the future of fashion. This future entails inclusive sizing and solving fashion’s waste problem. In addition to these three companies, Zozo launched in November 2017 in Japan and has expanded globally in 72 countries in less than a year, with a recent setback in its business strategy. We first look at these startup ventures before considering technological needs for custom fit more broadly.

6 7

See Ghosh, supra note 4, at 213. For the scholarship on personhood in property law, see Margaret Jane Radin, Property and Personhood, 34 Stan. L. Rev. 957 (1982); Eduardo Peñalver, Property as Entrance, 91 Va. L. Rev. 1889 (2005); Colin Crawford, The Social Function of Property and the Human Capacity to Flourish, 80 Fordham L. Rev. 1089 (2011).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

522

Shubha Ghosh

Lab141 is a New York City-based company launched in 2017. Its website brands the company’s services as “Modern Couture.” The number “141” refers to a patent obtained by the grandfather of one of the founders in an area unrelated to the company’s business and serves as a pun on its service of providing one product for one customer. This commitment to individualization comes across in its catchphrases, “Luxury designer clothes for everybody” and “We invented the tech to make it fit you.” The company’s hashtag is “nosizesever.” The website contains the promises “Made-to-fit advanced manufacturing for luxury brands. Made in New York in 48 hours” and the following pledge: At Lab141 we work with luxury fashion designers to offer their styles in a made-to-fit format. This means there are no numbers or sizes to pigeonhole you. We don’t have plus, petite, or tall sections either. We make clothes to fit your already perfect body.8

What Lab141 provides is 3D printing technology which combines digitizations of fashion design with information on an individual customer’s body type to produce clothing for women and men. As the company states on its website: “It’s the only way something fits you perfectly. Using the fashion designer’s original clothing pattern, we create a unique version of that pattern for your exact body – One pattern For One person – YOU!” “To buy a bespoke item,” co-founder Andrea Madho says, “the consumer can measure herself with a good old fashioned tape measure, or use an online measuring app, or purchase Lab141’s proprietary Fiteema system, a wearable measuring garment that Lab141 also will sell on its website.”9 As one article reports: “The brainchild of Philip Manning, a former software engineer for Procter & Gamble, Fiteema uses embedded technology to measure many parts of the body useful for fitting clothes, such as neckline, waist position, slope of the shoulder, curve of the back, and so on.”10 Madho further observed: “Fitting and cutting clothes is all about Bezier curves and mapping the body. There’s a lot of math and science involved in ‘redimensioning’ clothes to fit a body exactly.”11 The article concludes: “Lab141’s technological approach to clothes manufacturing offers many advantages for designers who partner with Madho and Manning. They include access to a lucrative market of consumers of all body types, a more transparent supply chain, reduced inventory, and digital, analytical reports about fit and preference that can be shared with designers. All in all, explained Madho, Lab141 offers a better way for clothes designers to make money from an untapped market in an industry in which margins are small.”12 Gwynnie Bee is another startup that has objectives similar to Lab141, but with a very different business model. As the website describes, “Gwynnie Bee is a service that offers unlimited styles for women. Raid our closet as often as you like – anytime, anywhere – and never wear the same outfit twice! Shop better, wear smarter, and rediscover the fun of fashion.” A subscription-based service that does for fashion what NetFlix does for film, Gwynnie Bee provides a wardrobe selection that serves plus-size customers through an online fitting and styling service. Christine Hunsicker, a data-obsessed executive, started Gwynnie Bee in 2012. Gwynnie Bee is a subscription-based retail service that only targets sizes 10–32. The service helps women discover, experience, and enjoy great clothing without limitations by offering the most up-to-date 8 9

10 11 12

http://www.lab141.com/ (last visited Nov. 25, 2022). http://law.syr.edu/news_events/news/for-this-fashion-technology-company-the-tech-commercialization-research-cen (last visited Nov. 25, 2022). Id. Id. Id.

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

Patenting Custom Fit, Aspiring for Social Justice

523

looks all in one place. Their business model is relationship driven. Their members are contracted on a month-to-month basis, and are wearing 8 to 10 pieces of Gwynnie Bee clothing a month. At the conclusion of each month, members provide feedback on each and every one of the pieces they received. This allows Gwynnie Bee to personalize and recommend items to each member based upon their interests, and the likelihood of fit. Gwynnie Bee offers tiered monthly plans that allow subscribers take out up to 10 items at a time with unlimited exchanges and free shipping. Members receive about $900 to $1,200 worth of clothing each month, and unlimited free shipping and exchanges for an affordable flat monthly fee. Customers can sign up for a subscription based upon a tier that best fits their needs. The different levels are based on the number of garments received at one time. Customers can order one, two, three, or more garments at one time. It costs the customer about $1 to $1.50 per day for each garment currently held, depending on the subscription signed up for. This equates to a price of $49 per month for one garment, $69 per month for two, and $95 per month for three. The items in collection come from big names like McCarthy, ASOS, and small startups and straight-size companies. In fact, Gwynnie Bee has been bringing more straight-size designers into their service. They go to straight-size designers they believe will translate well into plus sizes. They order an entire collection and then handle their fit and pattern making for them. This is extremely difficult as moving from plus to straight and straight to plus pattern gradients is a big investment. By providing these services, Gwynnie Bee eliminates two of the major concerns for fashion distributors: first, that their collection will not fit plus-size buyers, and second, these plussized lines will not sell. Through a partnership with BeKitzur, D/Workz Interactive designed and developed a mobile app that allows customers to keep using Gwynnie Bee’s service on the go. The mobile app offers “My Closet” as the main section of the app where you organize your virtual closet. The On-theRack section shows all garments that you want to rent. These are clothes that the customer has selected and placed in their closet. The On-Hold section is the customer’s wish list; it saves the articles the customer might want to rent at a later time. Since 2012, Gwynnie Bee has grown 10 to 15 percent each year to become one of the biggest buyers in plus-size fashion; by 2015, the company had shipped over 3 million boxes. According to CrunchBase, the company has raised about $8 million in financing so far from venture capital firms, including Cava Capital and Grace Beauty Capital. While Hunsicker will not confirm its investors or how much the company has earned, claims are that sales are growing 15 percent month-to-month. Moreover, while the company has yet to post a profit, Hunsicker remains optimistic. Hunsicker has stated that Gwynnie Bee’s primary customers are generally women between the ages of 28 and 45. Their target customer has a job, is a professional woman, and is looking for clothing that makes her feel great at her job every day. Ashley Stewart is a New Jersey-based retail company that started in 1991, but has recently rebranded itself as an online retail clothing store that provides service for plus-size women. Although not a technology-based company, Ashley Stewart’s retail model targeted at expanding sizes and different types of fit is consistent with the custom-fit movement. This alignment comes across in its branding choices, particularly its trademark protection for the word marks “CurvyGirl,” “Bella,” and “Take It to the Maxi.” Specializing in plus-size women’s fashion, Ashley Stewart is one of the largest apparel retailers in the U.S. It has 89 physical store locations across 22 U.S. states, and a large ever-growing online store presence. The name Ashley Stewart was inspired by Laura Ashley and Martha Stewart, who the company viewed as icons of upscale Americana.

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

524

Shubha Ghosh

In 2000, the company was sold to the first of many private equity firms that launched the company into a downward spiral – largely caused by overexpansion, poor management, and a shift toward boring clothes. By 2013, Ashley Stewart was on the brink of bankruptcy for the second time in a little over three years. Decades of operating losses and rampant turnover, in both employees and the ownership group, had created a fragile culture. A significant contributing factor was the company’s outdated business management. The company did not even have WiFi at its corporate headquarters. The company’s budding e-commerce market operated independently on an outdated platform. In 2013, James Rhee assumed leadership of the Secaucus, New Jersey-based company. Rhee decreased the payroll from 1,800 employees to 1,000; upgraded the website; revamped the merchandising team; and sped up the production cycle. With the core customer’s needs in mind, Ashley Stewart closed almost 100 stores, and renegotiated or terminated about 150 executory contracts. They also revamped their technology by reconstructing their website algorithms tracking customer tendencies, and outsourcing all distribution. Additionally, Rhee focused the marketing on celebrating the “Ashley Stewart woman,” specifically her “pride, resilience, and connection to her community.” They also emphasized a culture of kindness and generosity within the store and corporate levels. In recent years, the brand has made a comeback, after filing for bankruptcy in 2010 and 2014. The renewed Ashley Stewart brand has established a significant presence on social media. Today Ashley Stewart is one of the fastest growing, top grossing, plus-size fashion brands with almost 40 percent of its revenue being generated online. The company’s strong social media presence has evolved into an interactive community for its customers. Moreover, a brand initially reliant upon the support and loyalty of Black women now has an online customer base that is 40 percent white. Even more significant, instead of losing $7 million a year, Ashley Stewart is bringing in profits of $20 million annually. The turnaround has been attributed, in part, to better management and improved technology. Now, the chain has bounced back to the point where it is comfortable enough to open new stores. In 2017, Ashley Stewart opened its first new store (in Newark, New Jersey) since the company emerged from bankruptcy. Zozo is a Japanese company which billed itself as “Custom-Fit Clothing for a Size-Free World.” According to its website, its measurement service would be deactivated on July 30, 2019, as “ZOZO has closed its US shop and is discontinuing its service in the Americas, Asia Pacific and Middle East.”13 Two types of technology were critical to Zozo’s business model. One was through the use of a photographic technique that captured the body shape and contours from 12 angles spaced around a clock. The second was the Zozosuit, which captures body contours at multiple points on the person wearing the suit. According to one article: Zozo’s idea was that the suit would let shoppers order clothes with a near-custom level of fit from the inexpensive, private-label clothing line it launched as it tries to expand beyond Zozotown, its platform for selling other brands and the bedrock of the company. The dots on the suit are markers that Zozo’s phone app reads to create a 3D model of the wearer’s body, letting the customer order clothes such as $58 jeans or a $22 t-shirt matched to their shape.14

The Zozosuit was given away for free in the hopes that customers would order custom-fit clothing from the company. Unfortunately, these orders did not materialize. 13 14

https://zozo.com/us/en (last visited Nov. 25, 2022). https://qz.com/quartzy/1539036/the-zozosuit-has-been-an-expensive-mistake-for-japans-zozo-inc/ (last visited Nov. 28, 2022).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

Patenting Custom Fit, Aspiring for Social Justice

525

Zozo CEO Yusaku Maezawa told analysts that, while many people ordered the suits, not nearly as many purchased clothes. Others didn’t even bother to upload their measurements with the Zozo app. “By distributing the ‘Zozosuit’ for free so that people could take measurements, we were hoping to create demand for the Zozotown business, including the private brand,” the company said in a statement reported by Reuters. “But the impact did not have the scale that we had hoped for.”15

Consequently, Zozo terminated its Zozosuit business model in April, 2019, with plans for launching a “multi-size platform in collaboration with brands to sell a selection of items in more individualized sizes” in Fall, 2019. Less techy than Zozo, Careste offers a made-to-order service that provides “a uniquely intimate, made-to-measure and made-to-order couture clothing experience.”16 As CEO Celeste Markey describes: We felt it was time to offer custom, made-to-measure tops to women of all shapes and sizes because not only have women been forced into predetermined sizes, but few have been able to experience couture and the indulgent salon-privé experience that goes along with it. We can give that to women, regardless of size, at a much more affordable price point without sacrificing styling or needlework. When founding Careste, we all agreed that it was important to look at fashion through the lens of new luxury: runway quality made to order exclusively for you.17

Careste collects body size and shape data from an individual customer and manufactures women’s tops based on these dimensions from a selection of fashion designs. The business model addresses the problem that “styling, as well as the speed and frequency of change, is far greater in women’s fashion, which makes it more challenging to create individual patterns and make custom one-at-a-time garments for women.”18 RedThread is a startup that announces itself in the slogan “So Long Sizes.” As its website states: We believe all women deserve well-made, well-fitting clothes they feel great in. So we ditched sizes (finally!) and came up with a better way. We create essential pieces to your exact measurements and deliver them to your door in one week, from just a few phone selfies.19

As founder Megan Litchfield explains: “What we’re doing is we’re kind of challenging the apparel industry and everything that it does, from how women shop, to how clothing is designed, to how it’s manufactured, and ultimately, to how women feel about themselves and perceive their bodies.”20 The company’s business model works as follows: Using its patent-pending tailoring algorithms, manufacturing process and designs, RedThread delivers clothes direct to consumers within one week of purchase. All RedThread requires from you is a short fit quiz – where you answer questions about your fit challenges – and four photos (three from different angles and one of an empty room). To capture the photos, RedThread texts you a link after purchase to scan your body. For each angle, RedThread tells you exactly how to stand.21 15 16 17

18 19 20 21

Id. https://careste.com/pages/how-it-works (last visited Nov. 25, 2022). https://www.forbes.com/sites/abinlot/2019/02/28/careste-simplifies-the-process-of-ordering-custom-made-to-measuretops/#3f029a184b77 (last visited Nov. 25, 2022). https://www.vogue.com/article/careste-custom-shirts (last visited Nov. 25, 2022). https://redthreadcollection.com/ (last visited Nov. 25, 2022). https://techcrunch.com/2018/10/23/redthread-launch-no-sizes/ (last visited Nov. 25, 2022). Id.

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

526

Shubha Ghosh

The 3D scanning technology derives 15 specific measurements to calculate the best fit. The technique, as Litchfield describes, is “80 per cent math and 20 per cent human.”22 Paralleling the work of these startups is the entry of an established company like Dr. Scholl’s in the custom-fit industry. Dr. Scholl’s is a shoe and foot-care company owned at present by Bayer in the North American and Latin American markets. Aurelius AG owns the company in the remaining world markets. The North and Latin American markets were previously owned by Schering-Plough, via their parent company Merck & Co., from whom Bayer acquired the company on October 1, 2014. Bayer markets 170 consumer health products, 17 with annual sales topping $100 million. Those include Bayer’s One-A-Day and Flintstones vitamins, Aleve pain reliever, and Phillips’ Colon Health, plus former Merck products including Claritin, Coppertone, and Dr. Scholl’s foot products. In 2015, Dr. Scholl’s signed a three-year deal to become an NBA promotional partner and will use league marks and digital media to market its foot-care products and hopefully expand retail distribution. The deal could result in its insoles being sold alongside Nike sneakers in sports specialty retailers. Dr. Scholl’s distribution in both chain drug and mass retailers, like Wal-Mart and Target, is strong. But Bayer is hoping to use the power of the NBA to gain incremental sales in large sporting goods retailers such as Dick’s and Foot Locker, which generally dedicate more space to footwear than to other products. In 2016, sales of Dr. Scholl’s foot-care products declined due to higher competitive pressure and a weak market environment in the United States. Moreover, in February 2016, a class-action lawsuit was filed against Bayer Consumer Health for allegedly deceptively marketing Dr. Scholl’s “Custom Fit Orthotic” inserts. The complaint alleged that the company deceptively markets over-the-counter shoe inserts as “custom fitted orthotics” when, in reality, they are standardized, factory-manufactured inserts and do not compare to a custom orthotic device, which is tailored to the measurements of an individual’s feet. In addition, the complaint alleged that Dr. Scholl’s Custom Fit Orthotics Foot Mapping Kiosk makes consumers who use the machine believe that they are having custom orthotics designed for their feet when the Kiosk only directs consumers to one of 14 pre-manufactured Dr. Scholl’s over-the-counter arch inserts, and the Kiosk is programmed to offer a product to any consumer who uses it; it is not programmed to refuse to offer a product if none of its “custom” inserts would be suitable for the customer.23 As with shoe sizes, so dress sizes also illustrate developments toward custom fit. According to new research, the average American woman wears anywhere between a size 16 and size 18. Presently, there are anywhere between 85–100 million women who wear larger than a size 12 in the U.S. This population of women has increased their spending on clothes faster than their smaller-sized counterparts. In 2017, sales of plus-size apparel hit 20 billion; a 20 percent increase from the year before. Designers claim to be uninterested in the plus-size women because “they are difficult to dress” and “no two size 16s are the same.” It is not as simple as making a larger size of a straight sized piece of apparel. Above size 12 you cannot grade up, you have to reconceive the standard patterns because variations in shape are greater in larger sizes. This means plus-size clothing requires more fabric, cut into more pieces and sewn together, to accommodate the woman’s curves. A 2016 Bloomberg study shows that the correlation between the size of the plus-sized

22 23

Id. Kommer et al. v. Bayer Consumer Health, a division of Bayer AG, and MSD Consumer Care, Inc., Case No. 16-cv1560, S.D.N.Y.

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

Patenting Custom Fit, Aspiring for Social Justice

527

population and their spending habits has created a market where there is money to be made.24 In fact, in 2016, it was estimated that the market for plus-sized women’s clothing was $20.4 billion, up 17 percent from $17.4 billion in 2013. According to the same study, only 8.5 percent of dresses on Nordstrom.com were in plus size; on J.C. Penney’s website, it was 16 percent; and Nike.com had a mere five items in total. Plus-size fashion tends to “yo-yo” in department stores. They offer a new designer or plus-size line to garner attention, and then kill or shrink the line when the economy turns slightly. This lack of consistency turns away plus-sized customers from shopping at that retailer for other items. Moreover, those retailers, such as Ashley Stewart, who do offer plus-size fashion sell out quickly due to demand. Ashley Stewart CEO James Rhee stated they once sold out of extended sizes within six weeks of being offered. Despite a clear market demand, designers openly refuse to make clothes for women size 12 and up. Under the tenure of CEO Mike Jeffries, Abercrombie & Fitch sold nothing larger than a size 10; in explanation, Jeffries stated that “we go after the attractive, all-American kid.” Moreover, in 2009, Karl Lagerfield openly stated “No one wants to see curvy women” on the runway. This disdain toward plus-sized women has been the overwhelming response from designers who continuously state “I’m not interested in her,” or “I don’t want her wearing my clothes.” One presumptive fear of these designers is “She won’t look the way that I want her to look.” A Time Magazine article discusses the struggle for women to find clothes that fit. According to the author, Eliana Dockterman, vanity sizing has created an “arms race,” causing the average size of clothes to decrease continuously. While different brands do it at different rates, the idea is smaller numbers will boost confidence and encourage more shopping. While many call, and are discussing, a unified system of sizing for clothes, such a system will never work. A universal clothing size standard will exclude more people than it includes, and people are already being left out due to the present system.25 There are some designers who are more plus-size friendly than others. When working with women size 14 and above Dockterman recommends retailer Lane Bryant. Additionally, designer Christian Siriano gained notoriety for producing a look for Leslie Jones to wear to the “Ghostbusters” red-carpet premiere. Dockterman has also praised TrueFit’s system of clothing sizing. TrueFit asks for your favorite piece of clothing and its size in order to best match you with their database of measurements and sizes. The custom-fit movement is a mix of technology for data collection, manufacturing processes, and novel app- and web-based retailing charged with a common goal of challenging traditional sizing and marketing in the clothing industry. From the perspective of social justice, one might find little of interest in these various companies and business strategies insofar as they are primarily private responses driven by perceived needs in the marketplace. But proponents of custom-fit, such as Stacey Ellis, see these market disruptions in social justice terms, as entrepreneurs are posing a challenge to assumptions about appearance and fashion in the clothing industry. To what extent can clothing and fashion fuel the social justice message? The next section explains.

iii. standardization, sumptuary norms, and social justice As this section transitions to exploring the theory of social justice underlying the custom-fit movement, the first step is to define social justice. Intellectual property and social justice, or 24 25

https://www.bloomberg.com/gadfly/articles/2016-05-10/plus-size-could-save-retailers (last visited Nov. 25, 2022). http://time.com/how-to-fix-vanity-sizing/ (last visited Nov. 25, 2022).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

528

Shubha Ghosh

IP-SJ, and its tenets, guide the contributions to this volume. What the chapters share is a view of IP as a means to ends that go beyond pure monetary rewards. These ends include broad social goals, including more equitable distribution of wealth, access to education, and healthcare, and the recognition of all dimensions of human autonomy and capacity. A careful reader may question the implicit assumption that IP policy has at its central concern the allocation of monetary rewards. Such readers might point out that IP is traditionally guided by utilitarian concerns that translate into the pursuit of social welfare, which can include many of the social goals set forth above.26 But the IP-SJ project has in its sights more refined and focused directives than the undifferentiated goal of welfare maximization.27 These directives include such specific ends as gender and racial equality, disability rights, protection of underrepresented and excluded groups within the legal system, and representation of interests beyond the consumerist goals of welfarism.28 Our discussion of the custom-fit movement has highlighted some of these often overlooked goals in its confrontation with matters of standardization, individualized norms of fit and comfort, and access to clothing. This section attempts to give this movement more rigor within the parameters of IP-SJ, noting possible successes and possible pitfalls. In developing a more rigorous social justice theory of custom fit, I turn first to international human rights law and conclude with considerations of the work of John Rawls. A starting point for identifying the social justice role of the custom-fit movement is international human rights. Article 25 of the United Nations Declaration of Human Rights identifies clothing as a facet of a standard of living adequate for health and well-being of persons, equivalent to food, healthcare, housing, and necessary social services. Clothing functions to house the body, to protect it from elements that can aggravate and accelerate disease, and to provide comfort necessary for social interaction. The act of ripping off a person’s clothing is an assault, a deprivation of dignity, a reduction of the human to a state of animal nakedness. So, the argument for access to clothing as a key element of social justice is readily understood. As Professor Mark Brewer summarizes: [T]he laws regarding dress have moved away from historical sumptuary regulations and become more influenced by basic notions of freedom of expression, speech, and religion. Article 19 of the Universal Declaration of Human Rights and article 19 of the International Covenant on Civil and Political Rights recognize a universal right to freedom of expression . . . Although freedoms of speech, expression, and religion in the U.S. and UK have played decisive factors in guiding the law, other countries, most notably France and Turkey, have identified alternative policy considerations for restricting religious dress in schools. In contrast, a number of other countries grant constitutional protections for more permissive dress than France, Turkey, the U.S., and the U.K. However, given that the law is concerned with notions of rights of expression or religion, an actual right to “freedom of dress” remains elusive despite strong arguments, 26

27

28

See Peter S. Menell, Mapping the Intellectual Property/Social Justice Frontier, ch. 1 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Debora Halbert and Billy Meinke, Intellectual Property and Social Justice Futures, ch. 24 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries; John R. Whitman, Intellectual Property Empowerment and Protection for Prisoners; J. Janewa Osei-Tutu, Intellectual Property, Social Justice and Human Development: Empowering Female Entrepreneurs Through Trademark Law; Madhavi Sunder, Intellectual Property After George Floyd, respectively chs. 23, 12, 20, and 27 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

Patenting Custom Fit, Aspiring for Social Justice

529

including those by Professor Gowri Ramachandran, who argues that the connection between freedom of dress and a notion that control over our own bodies is essential to human dignity.29

Fashion, however, may seem less central to the goal of justice. Clothing design, its style and appeal, may appear to be a matter of choice, an aesthetic concern that society may reject as a matter of individual necessity. Fashion is a luxury, subject to the discretion of those who can afford the refinements. But this distinction between clothing and fashion may readily become blurred. One may scoff at a right to wear the latest designs from the leading fashion houses, but at a greater level of generality, a right to fashion implicates social justice considerations. Although the case for a right to luxury goods is a weak one, there may be a right to fashion in a limited sense consistent with egalitarian goals. But this counterargument would be misguided. The social justice foundation for custom fit would not be a right to fashion, but a right to be free of the discriminatory effects of fashion standards; to be free, in short, of the implicit and explicit sumptuary norms in the fashion industry. As a marker of status, fashion supports hierarchical distinctions among people. The hierarchy may reflect notions of “the natural order,” a sense that some people are better than others based on breeding, race, and gender. While this conception of hierarchy may be archaic and illegal, contemporary notions of hierarchy serve an aspirational purpose. For the utilitarian minded, fashion-based status inspires social mobility, stimulating consumer-led economic expansion. Fashion-based hierarchies also serve a cultural function, with the well-heeled serving as role models to be idolized and emulated. Such cultural idolatry may be negative, as well as positive, with the tribulations of the famous serving as satisfying vindication for one’s own place in the hierarchy. The point is that fashion is an important marker that creates difference. Fashion is also a key to economic access. Success in various domains, whether employment or courtship, business solicitation or self-promotion, rests in part on fashion. Therefore, the hierarchies created and reinforced by fashion can determine who obtains access to markets and social positions. Although sumptuary laws per se may be relics, contemporary customs and norms embedded in fashion trends which are in turn embedded into IP law serve a similar function as sumptuary laws. Fashion creates entitlements. Entitlements create power. Power limits liberty. Even if one accepts this line of argument, there is still a logical leap to advocating for a “right to fashion.” Equalizing fashion by requiring everyone to dress the same eliminates some of the desirable features of fashion, the differences that flow from individual self-expression as opposed to the differences that express inequality or hierarchy. I am not advocating for a right to fashion, or to other status goods, because there is an inherent circularity to such a right and it would create intractable problems of its own. Nonetheless, the obverse of the argument seems strong: status goods should not be allowed to serve as a barrier to social mobility or as a tool of exclusion. Equality supports the right to be free of social hierarchies which is addressed by the strategies presented in this chapter. Rather than advocating the adoption of a right to fashion, this chapter argues for a reexamination of how legal rights, in the spirit of the UN Human Rights Declaration cited at the beginning of this section, can re-appropriate fashion and change its role as a marker of inequality to one of self-expression. The custom-fit movement, I argue, has this goal and this goal is consistent with challenging the gender and racial assumptions of standardized fit and its 29

Mark K. Brewer, Fashion Law: More Than Wigs, Gowns, and Intellectual Property, 54 San Diego L. Rev. 739, 765–66 (2017) (internal citations omitted). For a discussion of the persistence of the sumptuary code and its relationship to IP law, see Beebe Barton, Intellectual Property Law and the Sumptuary Code, 123 Harv. L. Rev. 809, 819–24 (2010).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

530

Shubha Ghosh

underlying premise of a limited range of what is normal and acceptable, thereby reaffirming the goals of social justice of inclusion and empowerment. Two factors drive the custom-fit movement. The first arises from the retail sector and complaints about the large number of returns from unsatisfied customers who do not find clothes that fit. The second comes from scholars and consumer activists who challenge standardization in the clothing and fashion industries, which challenges can be traced back to the 1920s. Recommendations from the retail industry illustrate some of the problems with the custom-fit movement. A 2016 report from BodyLabs.com, summarizing surveys conducted by the retail sector, concludes with three recommendations: obtain measurement data from customers, mass customization through correlation with body type, and the use of virtual try-on.30 A contemporaneous study by Fits.me, a virtual fit online retail store finds that “73 percent of people would be inclined to trust solutions that take their measurements and then either recommend a size or show them how garments fit on them.”31 For the retail sector, the custom-fit movement is about collecting customer data, correlating with types, and facilitating a technology-based mapping of body types to clothing. Scholars and activists in the custom-fit movement offer a different tack. For example, Professor Dr. Noopur Anand of the National Institute of Fashion Technology in New Delhi calls for “Size India” – a collaboration among government, industry, and academia to collect anthropometric data in India to develop a new system of standard sizes.32 Professors Olubunmi Ola-Afolayan and Anne Mastamet-Mason develop their own customized size chart for “the African pear-shaped plus-sized South African women.”33 Several other scholars also contribute to this debate in Africa and in Asia.34 Much of the literature from Africa serves as the basis for proposals to develop the African fashion industry.35 These ideas have a social justice foundation. John Rawls’ theory of justice can justify a “right to clothing and fashion” that is framed in terms of a right not to be excluded based on norms and rules of fashion.36 Rawls’ theory of justice has three principles: (1) a principle of basic notions of equality and liberty; (2) a principle of equal opportunity; and (3) a difference principle which focuses on constructing standards to maximize the well-being of the least well off in society.37 The last of the three is the most often cited and is relevant in our discussion to the point about status. But the difference principle must be understood in terms of the two prior ones of basic notions of equality and liberty and the principle of equal opportunity.

30

31 32

33

34

35

36 37

https://www.apparelnews.net/news/2016/jun/23/survey-fit-issues-impact-shopping-decisions-online/ (last visited Nov. 25, 2022) (hard copy on file with author). Hard copy on file with author; no longer available online. https://www.researchgate.net/publication/307898495_Tech_Exchange_Size_Matters_-_National_Sizing_Survey_of_ India_Dec2011 (last visited Nov. 25, 2022). See Olubunmi Ola-Afolayan & Anne Mastamet-Mason, A Customized Size Chart for the African Pear-Shaped PlusSize South African Women, Conference Proceedings for the Design Education Forum of Southern Africa (2013). Bukisile P. Makhanya et al., Ethnicity, Body Shape Differences, and Female Consumers’ Apparel Fit Problems, University of Pretoria Working Paper Series (2014); Minah Thembi Nkambule, Apparel Sizing and Fit Preferences and Problems of Plus-Size Swazi Working Women, University of Pretoria, Master’s Thesis in Consumer Science (Clothing Management) (2010); Y.C. Lin et al., The Comparisons of Anthropometric Characteristics Among Four Peoples in East Asia, 35 Appl. Ergon. 173–78 (2004). See, e.g., African Development Bank Group, Investing in the Creative Industries: Fashionomics, Executive Summary (2016). John Rawls, A Theory of Justice (1971). Id. at 83.

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

Patenting Custom Fit, Aspiring for Social Justice

531

Rawls acknowledges that social differences will exist either as a matter of historical circumstance or as a result of social and market forces. Therefore, he does not make a case for absolute equality. Instead, social differences must meet certain socially agreed-upon standards, according to the difference principle. Status, particularly that associated with clothing and fashion, is one example of social difference. Under Rawls’ difference principle, rules about status should be designed in order to maximize the well-being of the least well off in society.38 The difference principle is subject to the two other principles: recognizing basic notions of equality and liberty and of equality of opportunity. With respect to clothing and fashion, these two principles would imply that society meets everyone’s basic need for clothing and that everyone has the opportunity to obtain clothing and fashion they need in order to have equality of opportunity in the marketplace. Against these two principles, the difference principle would imply some limits on the use of clothing and fashion to impose social differences based on status. In order to maximize the wellbeing of the least well off, clothing and fashion should not be used to exclude individuals from enjoying the liberties of others in society or from being denied opportunities for social benefits. These liberties and opportunities would include employment prospects, social advancement possibilities, and consumption. What this implies is that, under the difference principle, clothing and fashion should not be used to exclude the least well off from enjoying basic social liberties and opportunities. Such an interpretation would be consistent with Rawls’ notion of “justice as fairness.” The three principles are to be applied cohesively as a single principle that the least advantaged are benefited and not hurt or forgotten.39 The inclusionary nature of the custom-fit design movement is consistent with this application of the difference principle and obviously serves social justice interests in inclusion and empowerment. I introduce here the concept of inclusionary design as a bridge between Rawls’ difference principle and the custom-fit movement. A consistent motif in the declarations of actors promoting custom fit is the unmet need of consumers with non-standard body types. My particular application of Rawls’ difference principle can explain why this unmet need is a matter of social justice. Inclusionary design may serve to counter the exclusionary use of clothing and fashion. As Professor Deborah Rhode shows, appearance and standards of beauty are discriminatory, limiting access to employment and social opportunities.40 As one article on Rhode’s scholarship points out: Uncomfortable shoes trouble Deborah Rhode. And not only because they hurt. She’s concerned that ninety years after women got the vote and almost five decades after The Feminine Mystique was published – in a time dubbed “post-feminist” when women are now in the majority at universities and in the workforce (if not the boardroom) – there is a surgery specifically designed to sculpt a woman’s foot so that it fits into pointed shoes. Leaving aside the risks of going under the knife, she wonders why women feel compelled to do such a thing.41

To summarize, if those who fall outside standards for appearance are among the least well off in society, the difference principle would support norms and rules against using appearance to deny these members of society liberties and opportunities available to those meeting standards of appearance. Actors within the custom-fit movement are standard-bearers for these antidiscrimination norms and rules. 38 39 40 41

Id. at 76–78. John Rawls, Justice as Fairness: Political Not Metaphysical (1985). Deborah L. Rhode, The Beauty Bias: The Injustice of Appearance in Life and Law (2010). https://law.stanford.edu/stanford-lawyer/articles/deborah-l-rhode-tackles-the-beauty-bias/ (last visited Nov. 25, 2022).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

532

Shubha Ghosh

In assessing whether this movement implements Rawls’ difference principle to correcting appearance discrimination, we need to delve deeper into Rawls’ theory of social and political institutions. While Rawls’ difference principle might be useful in identifying potential norms and rules under a shared notion of justice, Rawls leaves open how to implement these norms and rules in political and social institutions, such as the custom-fit movement. In his Justice as Fairness: A Restatement, published nearly two decades after his A Theory of Justice, Rawls assesses various political systems under his three principles of social justice.42 He rejects laissez-faire capitalism, welfare-state capitalism, and one party “state” socialism as not meeting one or more of his principles.43 The two options that Rawls leaves us with are property-owning democracy and liberal democratic socialism.44 Of these two, the first supports a decentralized market system combined with democratic governance while the second would permit a narrow type of socialism, allowing for government ownership of infrastructure. Rawls, however, does not provide guidance on how to choose among these two options. Some efforts of the custom-fit movement align with Rawls’ difference principle. By alerting potential customers, manufacturers, retailers, and other market actors to the negative consequences of standardization, custom-fit oriented startups attempt to combat appearance-based discrimination and meet neglected needs in standardized clothing and fashion markets. However, at the core of the movement seems to rest a commitment to the principles of laissez-faire capitalism that Rawls finds incompatible with improving the well-being of those who are least well off in society. When we scrutinize the custom-fit startups more closely, it is not clear what their political commitments are. Rawls, building on his theory of justice, points toward either a system of property-owning democracy or of liberal democratic socialism. The custom-fit movement, in theory, is not incompatible with either of these alternatives. For example, combating appearance discrimination in the marketplace might support democratic legislation that counters such discrimination. Alternatively, the state could potentially expand clothing and fashion markets by developing and propagating new sizing standards that are more inclusive. How the custom-fit movement maps onto political and social institutions is an underdetermined question, just as it is not completely clear how Rawls’ difference principle is implemented in practice. The danger is that the custom-fit movement may lead to the invasive foot-sculpting surgery that troubles Rhode. Custom fit, through the personalization of fashion, may set the path for the corporatization of difference, as companies collect data and develop technologies that further fetishize the body, creating new standards that serve profit rather than individual needs.45 Custom fit may promote stylish fashions while ignoring the need of disabled or differently bodied individuals, people who have lost limbs, for example. Rawls’ insistence on democratic governance either through civic participation (under property-owning democracy) or government ownership and management (under liberal democratic socialism) underscores the need for political and social institutions to implement the difference principle, not simply market

42 43 44 45

John Rawls, Justice as Fairness: A Restatement (2001). See William A. Edmundson, John Rawls: Reticent Socialist 8–9 (2017). Id. Disability has not been explored in this chapter but poses another domain for the abuse of appearance discrimination. Design of clothing and medical devices, for example, does not accommodate the unique needs of disabled populations arising from different body types. See Leslie P. Francis, Understanding Disability Civil Rights Non-Categorically: The Minority Body and the Americans with Disabilities Act, 175 Philosophical Stud. 1135 (2018); Jasmine E. Harris, The Aesthetics of Disability, 119 Columbia L. Rev. 895 (2019).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

Patenting Custom Fit, Aspiring for Social Justice

533

ones. The custom-fit movement may be solely focusing on market solutions, while ignoring politics and social organization. IP’s place in the custom-fit movement highlights this potential danger. Patent strategies46 adopted by established and emerging companies drive some parts of the movement as alternatives to standard sizes enter the marketplace. While the custom-fit movement advocates goals of distributive and corrective justice, patent strategies may only serve further to entrench existing forms of standardization rather than permitting wearers to custom design clothing sizes and shapes to match individualized bodies. Patents serve only to objectify body types further. Alternative technological solutions, however, can and should unleash a bespoke fashion industry. Patents, like other IP rights, can be a source of economic empowerment. The difficult question is who is being enriched and at whose expense. Custom fit and patents tell a story not solely about race, but also about social justice. How race fits into the broader fabric of social justice is in the identification of body type as a basis for inclusion. However, language of body type in patent language and patenting strategy reify existing notions of difference. The challenge is to transform patents into tools of resistance. That challenge may be a fantastic one. Background distributions of knowledge, political power, wealth, and technology can affect how revolutionary patents can be. The standardization movement of the 1920s, which resulted in the current problem of fit, arose from the growth of retail, in turn a movement away from communal forms of clothing manufacture and distribution. Modern technologies can disrupt the fashion and clothing industry by returning to a decentralized market for clothing, promoting personalization over standardization. If patents can be harnessed to reach those goals, then they can truly be legal tools of resistance. The problem left open for the development of the custom-fit movement and IP-SJ scholarship is bridging legal and social rights with the political.

iv. final thoughts on social justice and intellectual property As a lens for understanding IP-SJ, the custom-fit movement reveals a critical problem for both social justice and IP. Our discussion of Rawls identified a gap between the difference principle with the goal of maximizing the well-being of the least well off and the political, social, and market institutions within which the principle will be implemented. Rawls, while rejecting the extremes of laissez-faire, welfare socialism, and one-party socialism, leaves his readers with the ambiguous choice between property-owning democracy and liberal democratic socialism. IP, similarly, suffers from this ambiguity. As a system of property rights, IP seemingly points to free markets, perhaps even libertarianism. However, as these same rights are made possible through 46

Some readers may wonder about copyright and trademark and its role in the custom-fit movement. I have not seen much discussion within the movement of copyright, perhaps because of its limitation to ornamental design. The custom-fit movement seems to pursue technological strategies focusing on data gathering, aggregation, and implementation in manufacture, all functional features that are the subject matter of utility patent. I have provided one example of design patent in the text, and there would be overlap for this design with copyright protection. I would argue that both design patent and copyright should fail for contour and shape of clothing. There is a strong case, which I do not have space to present here, that contour and shape are functional, not ornamental. But this point rehashes the ongoing debate about the vague boundaries between ornament and function in design law. See, e.g., Sarah Burstein, Faux Amis in Design Law, 105 Trademark Rep. 1455 (2015). As for trademark, marks such as “CurvyGirl,” owned by Ashley Stewart, might be considered offensive, but such marks would be protected by the First Amendment in the United States. See Matal v. Tam, 137 S. Ct. 1744 (2017); Iancu v. Brunetti, 139 S. Ct. 2294 (2019).

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

534

Shubha Ghosh

state organizations – legislations, administrative agencies – IP is embedded in, to adopt the vernacular, if itself misleading, term, socialism. What political, social, and economic institutions follow from IP is a neglected, but fundamental question, for those seeking to align IP with social justice. It is a question that parallels the dilemma stemming from Rawls’ work. This chapter has used the custom-fit movement to bring these broader questions of IP, social justice, and their alliance into sharper focus. Custom fit brings together economic actors who seek to bring a political dimension to the marketplace. The goal is recognizing equality for consumers and economic power for social entrepreneurs challenging established standards, which goal can be achieved by applying the IP-SJ precepts of equitable access, inclusion, and empowerment to fashion creation and in shaping any concomitant patent (or other IP) protection. Moreover, custom fit can promote the acknowledged social function of IP protection, in that by expanding the palette of pattern options to include non-European, anti-Barbie, contrasvelte body types, custom fit promotes a more diverse range of fashion creative exploration and achievement. The danger is of creating new standards that have their own exclusionary assumptions about ethnic body types and data agglomeration, a result which would be contrary to the express mandates of IP-SJ. What direction the custom-fit movement takes is a matter of market and political dynamics and application and interpretation of the IP law. However the reality plays out, my hope is that on the runway to a politically energized IP law, this initial study of clothing, fashion, and custom fit does not become just an accessory.

https://doi.org/10.1017/9781108697613.034 Published online by Cambridge University Press

26 A Primer on Critical Race Intellectual Property Deidré A. Keller and Anjali S. Vats*

Historical Underpinnings: From Critical Legal Studies to “Critical IP” Enter Critical Race Theory Locating the Discipline: What’s In a Name? Mapping the Field A. What Is the “Race” in Critical Race IP? V. What Is the “IP” in Critical Race IP? VI. (Un)bounding Critical Race IP: Core Themes A. Storytelling as Critical Race IP Praxis B. Protecting Traditional Knowledge C. The Public Domain D. Framing and Reframing “Piracy” and “Counterfeiting” E. Access to Knowledge F. Remaking Intellectual Properties VII. Critical Race IP as a Decolonizing Praxis VIII. Critical Race IP as Community Building and Intimacy Making Conclusion

I. II. III. IV.

page 537 539 541 542 543 545 545 546 547 548 550 551 552 553 555 556

Race poses complex and challenging problems within intellectual property (IP) ecosystems. Just as racial perspectives, attitudes, and beliefs have played an important role in shaping many aspects of Euroamerican society and culture as a whole, they similarly have significantly affected the shape of Western IP law and the implementation of it in the broader IP ecosystem. IP social justice provides a strong theoretical basis for confronting the role of race in IP protection across a broad range of equity concerns with particular focus on core social justice precepts of access, inclusion, and empowerment. Because, as this volume showcases, IP inherently mandates engagement with social justice, identifying and addressing issues that fail to promote the social good by entrenching inequity is imperative. Emphasis placed on the social justice aspects of IP protection have waxed and waned over the decades1 and, for much of the latter part of the twentieth century, the broader interests in society * This article is adapted and excerpted from “Critical Race IP,” published in the Cardozo Arts & Entertainment Law Journal, Vol. 36, Issue 3 (2018). We have retitled it here as “A Primer on Critical Race Intellectual Property.” Thank you Lateef Mtima for his brilliant work in producing this condensed version. 1 See, e.g., Lateef Mtima & Steven D. Jamar, Researching Social Justice Aspects of Intellectual Property in Handbook of Intellectual Property Research 671, 677–83 (Irene Calboli & Maria Lillà Montagnani eds., 2021).

535 https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

536

Deidré A. Keller and Anjali S. Vats

benefiting from IP law have been subsumed by an inappropriately narrow focus on protecting the economic interests of IP property rights holders. As recounted earlier in this volume, some scholars had fought against this trend.2 With the founding of the Institute for IP and Social Justice (IP-SJ), work on all levels of IP-SJ including scholarship, advocacy in litigation and in policymaking, and networking with practitioners and NGOs began in earnest.3 In 2017, a small group of law, economics, and critical race theory scholars conceptualized a forum to explicitly explore the function of race in IP regimes.4 In April of that year, the concept was realized in the form of the inaugural Race + IP Conference, hosted by Boston College.5 Race + IP 2017 convened scholars and activists from around the world and across disciplines for generative discussions of issues at the intersections of race, colonialism, and IP. The conference was the outcome of many years of thought, research, and discussion, often in collaboration with other scholars – such as Laura Foster,6 Rayvon Fouché,7 and Lateef Mtima8 – who also work at the intersections of race and IP. Through Race + IP 2017 and later ensuing Race + IP conferences, scholars, lawyers, and activists have refined a language through which to engage conversations about race, nation, colonialism, imperialism, and other forms of exclusion in IP contexts. That context has since evolved into the discreet (and still developing) scholarly approach of critical race theory IP (CRTIP).9 In this chapter, we undertake to provide a primer of the interdisciplinary movement of CRTIP. CRTIP is an analytic lens for describing and analyzing the interdisciplinary approach of scholars connected by their focus on the racial and colonial nonneutrality of the laws of copyright, patent, trademark, right of publicity, trade secret, and unfair competition using principles informed by critical race theory (CRT).10 The ground-breaking work of legal scholars such as Keith Aoki,11 Rosemary Coombe,12 Margaret Chon,13 Kevin J. Greene,14 Madhavi 2

3 4 5 6 7 8 9

10

11

12

13 14

See Lateef Mtima & Steven D. Jamar, Intellectual Property Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Id. The members of the organizing committee were Amit Basole, Deidre Keller, Anjali Vats, and Jessica Silbey. Anjali Vats et al., Schedule, Race + IP, http://raceipconference.org/conference-schedule/. Laura Foster, Ind. U. Bloomington, https://genderstudies.indiana.edu/about/faculty/foster-laura.html. Rayvon Fouché, Purdue U., https://cla.purdue.edu/academic/sis/directory/index.aspx?p=Rayvon_Fouch%C3%A9. Lateef Mtima, How. U., http://law.howard.edu/faculty-staff/lateef-mtima. Here we take a page from Cultural Studies, which has been termed an “interdisciplinary movement” and a “network.” See Richard Johnson, What Is Cultural Studies Anyway?, 16 Soc. Text 38 (1986). Unlike many Cultural Studies scholars, we argue for “academic codification” in this chapter. See Tony Bennett, Cultural Studies: A Reluctant Discipline, 12 Cultural Stud. 528, 533 (2010) (citing Johnson and noting that: “The concerns that inform [Johnson] . . . and there are many [similar concerns expressed] in the literature – are clear enough. Cultural studies, having accused other humanities disciplines of ‘fixing’ knowledge into particular intellectual and institutional frameworks, must fight shy of both institutionalization and codification if it is not simply to become just another discipline of the kind it had earlier pitched itself against”). Anjali Vats, Deidre Keller, Amit Basole, & Jessica Silbey, CFP, Race + IP, http://raceipconference.org/call-for-papers/ (“Broadly considered, critical race IP brings together two strands of scholarship: critical race theory and IP. Scholarship in critical race IP, which engages a variety of topics and texts, focuses on questions which thematically examine the relationship between race and racial formation and the study of copyrights, trademarks, patents, rights of publicity and trade secrets. Issues such as the trademarking of #BlackLivesMatter, the creation of race-based patents, the deployment of rhetorics of piracy demonstrate that race and IP intersect in important and complex ways”). See, e.g., Keith Aoki, (Intellectual) Property and Sovereignty: Notes Toward a Cultural Geography of Authorship, 48 Stan. L. Rev. 1293 (1996). See, e.g., Rosemary J. Coombe, The Cultural Life of Intellectual Properties: Authorship, Appropriation, and the Law (1998). See, e.g., Margaret Chon, Intellectual Property and the Development Divide, 27 Cardozo L. Rev. 2821 (2006). See, e.g., K.J. Greene, “Copynorms,” Black Cultural Production, and the Debate Over African-American Reparations, 25 Cardozo Arts & Ent. L.J. 1179 (2008).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

537

Sunder,15 Anupam Chander,16 Olufunmilayo Arewa,17 Ruth Okediji,18 and others examine issues related to the racial and neocolonial inequality that IP law and administration produces in contexts such as trade and development, music, film, and traditional knowledge (TK). Building on this a rich foundation of prior scholarship and activism CRTIP created a portal for examining these works together and in the process encouraged the production of scholarship and community with shared tenets about the racialized hierarchies inherent in IP law and its attendant ordering of knowledge.19 As with CRT, histories of the interdisciplinary study of race, particularly those that center on scholars of color, are an important part of CRTIP. The present chapter therefore provides both a narrative of this developing field of study and highlights the work of scholars in the area.

i. historical underpinnings: from critical legal studies to “critical ip” Ash Amin writes that “there is an emerging consensus in the social sciences that the period since the mid-1970s represents a transition from one distinct phase of capitalist development to a new phase.”20 Whether described as “post-Fordism,” “post-industrialism,” “post-modernism,” or any number of other terms, the new phase of capitalism, with its neoliberal characteristics, ideological rejection of industrial production as the primary engine for the U.S. economy, embrace of flexible labor, and trade in knowledge, is one that encourages the creation, protection, and valuation of intellectual properties.21 In the post-Fordist world, America became a net exporter of 15 16 17

18

19

20 21

See, e.g., Madhavi Sunder, IP3, 59 Stan. L. Rev. 257 (2006). See, e.g., Anupam Chander & Madhavi Sunder, The Romance of the Public Domain, 92 Cal. L. Rev. 1331 (2004). See, e.g., Olufunmilayo B. Arewa, Copyright on Catfish Row: Musical Borrowing, Porgy and Bess, and Unfair Use, 37 Rutgers L.J. 277 (2006). See, e.g., Ruth L. Okediji, Africa and the Global Intellectual Property System: Beyond the Agency Model, 12 Afr. Y.B. Int’l L. 207 (2004). We do not mean to suggest that these scholars employ the same methods or make the same critiques. We suggest only that they are tied together by a set of assumptions about intellectual property law, including that it operates to protect the power of whiteness and the Global North. Post-Fordism: A Reader 1 (Ash Amin ed., 2000). See, e.g., W. Ron Gard & Elizabeth Townsend Gard, The Present (User-Generated Crisis) Is the Past (1909 Copyright Act): An Essay Theorizing the “Traditional Contours of Copyright” Language, 28 Cardozo Arts & Ent. L.J. 455, 481–82 (2011) (emphasis added) (footnotes omitted) (citations omitted) (“The fissures that appeared in the system in these postwar decades by the early 1970s became full ruptures, and quite quickly the modernist economic configuration of Fordism gave way. Since that time a new configuration has been emergent, a postmodernist, post-Fordist configuration some have termed ‘flexible accumulation’ but is more commonly recognized by the general term ‘globalization.’ In this period, production and consumption of goods has continued to expand even as they have become ever more adaptable, drawing more and more parts of the world into the market system, while the major bases of manufacturing have been relocated to cheaper labor markets around the globe. Labor in the United States in particular, but also in other fully-developed industrialized nations, increasingly has become information and service sector based, while the cultural experience in these countries increasingly has become one of consumption. The manufacture of goods occurs almost invisibly and the appearance of those goods infinitely arrayed on store shelves seems to happen almost magically . . . The cultural experience of dematerialization presently felt in some locations is the result of the global system’s spatial configuration and distribution of production and consumption. There is no question that more material goods than ever before are being produced. While clear distinctions between Fordist and post-Fordist economic configurations can be drawn, both recognizably are spatio-temporal formations organized to manage mass production, and, as such, can be traced back to the transformations at the end of the nineteenth century when these activities were initiated. There is little doubt that the individual experience of cultural change occurring at the end of the nineteenth century must have been profound. The spatial redistribution of cultural activities coupled with the sudden and growing pervasiveness of material goods must have naturally led to a manifestation of value that was intricately bound up with material qualities. However, as subsequent historical spatial configurations through the twentieth century and up to the present show, what ultimately proves more fundamental than the material state of

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

538

Deidré A. Keller and Anjali S. Vats

information for the first time in its existence, as it shifted from a manufacturing-based to an information-based economy.22 The economic conditions ushered in by the rise of the post-Fordist economy23 not only transformed IP into an increasingly “precious commodit[y],”24 – one which legal scholars almost exclusively theorized through the lens of law and economics,25 but it also marked an evolution in the racialized approaches to handling knowledge produced by people of color. In essence, capitalism – an enterprise racialized at its core and inception26 – progressed in ways which magnified and exacerbated the racialization of IP economies. We therefore situate the rise of IP maximalism and “information feudalism”27 through the lenses of racial capitalism and neoliberalism, both of which are helpful in making race visible in a legal regime which purports to regulate knowledge production in race-neutral ways.28 Intellectual property law, technology, and race coproduce one another and facilitate the development of new forms of biopolitics.29 In other words, IP law’s orientation to technology shapes and is shaped by structures of race and capitalism in a way that informs state management over life and bodies. The contemporary emphasis toward intellectual property maximalism across bodies of law thus prompts urgent questions about the relationship between intellectual properties, race, and inequality.30 If we are steadily moving toward a situation in which relatively few global conglomerates are in possession of the vast majority of the IP resources, then there is

22 23

24

25

26

27

28

29

30

culture, even as material elements remain significant and influential, is a society’s exchangist practices, or its manner of circulation. See David Nimmer, The Impact of Berne on United States Copyright Law, 8 Cardozo Arts & Ent. L.J. 27 (1989). Post-Fordism is the economic system marked by “flexible accumulation” rather than standardized industrial mass production as a panacea for economic growth and a means of reconstructing racial and neocolonial hierarchies in the evolving contexts of intellectual property law. See Keith Aoki, Considering Multiple and Overlapping Sovereignties: Liberalism, Libertarianism, National Sovereignty, “Global” Intellectual Property, and the Internet, 5 Ind. J. Global Legal Stud. 443, 457 (1998). Michael Mukasey, Attorney Gen., Remarks Prepared for Delivery by Attorney General Michael B. Mukasey at the Tech. Museum of Innovation (Mar. 28, 2008), https://www.justice.gov/archive/ag/speeches/2008/ag_speech_080328.html. See, e.g., William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective, 30 J. L. & Econ. 265 (1987); William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. Legal. Stud. 325 (1989); Mark A. Lemley, The Economics of Improvement in Intellectual Property Law, 75 Tex. L. Rev. 989, 1084 (1997); Peter S. Menell, Intellectual Property: General Theories, in Encyclopedia of Law & Economics 129, 160 (Boudewjin Bouckaert & Gerrit De Geest eds., 2000). See, e.g., Edward E. Baptist, The Half Has Never Been Told: Slavery and the Remaking of American Capitalism (2014). Peter Drahos with John Braithwaite, Information Feudalism: Who Owns the Knowledge Economy? (2007). In invoking the term racial capitalism, we refer to the work of Cedric Robinson to understand how intellectual property’s economic structure is “always already” raced. Cedric J. Robinson, Black Marxism: The Making of the Black Radical Tradition 9, 66 (2000) (“The historical development of world capitalism was influenced in a most fundamental way by the particularistic forces of racism and nationalism. Racialism . . . ran deep in the bowels of Western culture, negating its varying social relations of production and distorting their inherent contradictions . . . Racialism insinuated not only medieval, feudal, and capitalist social structures, forms of property, and modes of production, but as well the very values and traditions of consciousness through which the peoples of these ages came to understand their worlds and their experiences”). See generally Michel Foucault, The Birth of Biopolitics: Lectures at the College de France 1978–79 (Michel Senellart et al. eds., 2004). See, e.g., Madhavi Sunder, Intellectual Property After George Floyd, ch. 27 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law, ch. 2 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Shubha Ghosh, Patenting Custom Fit, Aspiring for Social Justice, ch. 25 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

539

no question that we are also moving toward the further marginalization of those who are currently situated at the edges of the IP system.31 In 1982, Margaret Jane Radin, in a landmark piece entitled “Property and Personhood,” made the argument that fully realized personhood requires access to and control over at least some “personal property.”32 Her Hegelian argument offers a rights-based justification for ensuring the stability and security of property that is integral to personhood. Radin’s argument is an appropriate place to begin because it engages and informs many of the themes that emerged in the 1970s and 1980s in the areas of critical legal studies (CLS), feminist jurisprudence, and other disciplines seeking to determine how law might become a more economically and socially just enterprise.33 Revealing possibilities for reinterpreting property paved the way for new and radical claims about rethinking and remaking IP.34 Scholars considering the power hierarchies inherent in IP regimes formed the core of a new and progressive “critical IP” literature.

ii. enter critical race theory Around the same time as Radin published her groundbreaking work, CLS and civil rights scholars were facing considerable critique from a subset of scholars interested specifically in the racial hierarchies embedded in the law and in pushing civil rights discourse in a more progressive direction. These contentions would form the basis of the CRT movement.35 CRT, according to Kimberlé Crenshaw, Neil Gotanda, Gary Peller, and Kendall Thomas, “embraces a movement of left scholars, most of them scholars of color, situated in law schools, whose work challenges the ways in which race and racial power are constructed and represented in American legal culture and, more generally, in American society as a whole.”36 CRT emerged from critiques of the civil rights movement and its rights-based approach to equality in the United States.37 While CLS was making important interventions in the areas of class and power, many found its analysis of race to be inadequate. Scholars particularly interested in questions of racial hierarchy, who had been attending CLS meetings, began to meet independently of CLS and articulate a progressive legal perspective that centered race as a necessary and important starting point for inquiries into inequality. CRT is a rich, diverse, and nuanced interdisciplinary movement, bound together by shared tenets and goals related to the racial nonneutrality of law.38 Broadly speaking, CRT evolved as a

31 32 33

34

35 36

37

38

Sunder, supra note 30. Margaret Jane Radin, Property and Personhood, 34 Stan. L. Rev. 957 (1982). Radin’s Property and Personhood has been cited, according to Google Scholar, 2,018 times as of May 12, 2018 at 11:58 p.m. Some of those landmark pieces which engage her work in order to get at questions of equity, justice, gender, and race in law include: Catharine A. MacKinnon, Toward a Feminist Theory of the State (reprt. ed. 1991); Catharine A. MacKinnon, Feminism Unmodified: Discourses on Life and Law (9th prtg. 1994); Frances E. Olsen, The Family and the Market: A Study of Ideology and Legal Reform, 96 Harv. L. Rev. 1497 (1983); Mari J. Matsuda, Looking to the Bottom: Critical Legal Studies and Reparations, 22 Harv. Civ. Rts.-Civ. Liberties L. Rev. 323, 400 (1987). See, e.g., Paul K. Saint-Amour, Your Right to What’s Mine: On Personal Intellectual Property, 25 Law & Literature 103 (2013) (arguing from Radin that users may have personal interests in copyrighted works). Devon W. Carbado, Critical What What?, 43 Conn. L. Rev. 1593 (2011). Kimberle´ Crenshaw et al., Introduction to Critical Race Theory: The Key Writings that Formed the Movement xiii (Kimberlé Crenshaw et al. eds., 1995). See Derrick A. Bell, Jr., Serving Two Masters: Integration Ideals and Client Interests in School Desegregation Litigation, 85 Yale L.J. 470 (1976) (serving as a starting point for CRT). See, e.g., Tara J. Yosso et al., Critical Race Theory, Racial Microaggressions, and Campus Racial Climate for Latina/o Undergraduates, 79 Harv. Educ. Rev. 659 (2009).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

540

Deidré A. Keller and Anjali S. Vats

response to CLS, and it functions as a move to center questions of race and racialization, in intersectional ways, while CLS had focused primarily on class and power.39 At the same time, CRT aims to make progressive interventions in the existing law and scholarship of antidiscrimination, particularly while centering the voices of people of color.40 In the 1990s, IP scholars quickly realized the need for racial justice analytics.41 Rosemary Coombe, who had been developing a framework for studying the intersections between culture and IP, often in the context of race, became one of the first scholars to focus attention on the racial and colonial dimensions of copyrights and trademarks.42 Then, in 1996, Keith Aoki authored a piece entitled “(Intellectual) Property and Sovereignty: Notes Toward a Cultural Geography of Authorship.”43 The article, one of the earliest to expressly invoke CRT in the context of IP law, advances an interdisciplinary critique of attempts to globalize IP rights, particularly copyright, without attending to the politics of local development. At the core of Aoki’s argument is an observation that the one size fits all model of international IP, animated by the figure of the romantic author who is capable of “original” work, speciously justifies maximalist copyright policy based in fictions of universality that are actually grounded in Europeanness. Aoki’s essay presages the major themes that progressive IP scholars have been now considering for two decades, including the public domain, piracy politics, and distributive justice. While authorship is only one component of progressive IP, Aoki’s work offers a starting point for contemplating various strands of critique that have developed over the years. Aoki’s piece is an early example of critical IP scholarship44 and it opened the door to CRTIP by placing questions of race, racialization, and racism at the center of its analysis. In CLS race, although a sufficient marker of critical IP, is not a necessary axis of analysis. We contend here that race is an exceedingly important locus around which IP analysis must be centered. Because critical IP proceeds from a rather broad set of values to assess the relationship between IP and problems of racial injustice, we believe that such a framework cannot do the work of questioning racial liberalism and supplanting the Eurocentrism that is central to CRT. By invoking CRT and thus placing race at the center of the discussion, scholars like Coombe, Aoki, and others effectively reconfigured CLS to confront the issue of race in the IP system and thereby laid the groundwork for CRTIP. The interrogation of property as both a cultural and a

39

40

41

42

43 44

See, e.g., Kimberlé Crenshaw, Mapping the Margins: Intersectionality, Identity Politics, and Violence against Women of Color, 43 Stan. L. Rev. 1241 (1991). Thus, CRTIP applies the cumulative experience derived through these scholarly disciplines toward the reimaging of IP law. As demonstrated herein, contrary to prevailing theoretical rationales for IP protection, the IP ecosystem is not immune to the realities of social inequities and injustice. Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Sunder, supra note 30. See, e.g., Keith Aoki, The Stakes of Intellectual Property Law, in The Politics of Law: A Progressive Critique 259 (David Kairys ed., 3d ed. 1998). Coombe’s early articles, which make up much of her 1998 book, pushed for critical/cultural legal studies, one which examined racial and colonial politics. See, e.g., Rosemary J. Coombe, The Properties of Culture and the Politics of Possessing Identity: Native Claims in the Cultural Appropriation Controversy, 6 Can. J. L. & Juris. 249 (1993). See, e.g., Aoki, supra note 11. In the interest of articulating the actual provenance of the term “critical intellectual property” as we understand it, we note that the first use of the term of which we are aware was in an article by Laura A. Foster. See Laura A. Foster, Situating Feminism, Patent Law, and the Public Domain, 20 Colum. J. Gender & L. 262 (2011).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

541

racial construct formed the backbone of the scholarly investigations and innovations that would follow years later and coalesce into the interdisciplinary movement of CRTIP.

iii. locating the discipline: what’s in a name? In the first plenary session at Race + IP 2017, Boatema Boateng posed the question “Why Critical Race IP?” In part, her query highlighted the need for multiple types of theoretical inquiry into IP’s relationships to race and social justice. It further suggested the possibility of using CRT to inform the study of IP without formally naming the resulting scholarship. It also asks us to consider why investment in CRTIP as a named area of study is important. We believe naming CRTIP is an important move, not only because it aids in reflecting upon the connections between the work of scholars writing about race, social justice, and IP but also because it creates material stakes in the study of the intersections of those topics. With respect to the former, identifying the themes that tie together works at the intersections of race and IP across disciplines lays the groundwork for imagining new directions for future scholarship. With respect to the latter, naming CRTIP quite literally brings into being a new area of study in which new scholars as well as institutions can invest – in material and ideological ways. Although we recognize the potential challenges of institutionalizing radical theoretical positions, naming and articulating the stakes of CRTIP will bring important countervailing benefits. Naming practices are necessarily political. Whether in the context of rejecting slave names in lieu of chosen names, refusing to acknowledge the interests of groups in political negotiations by not naming them, articulating new legal protections for age-old wrongs, or developing new names for unprotected practices, among many other examples, it is clear that the choice of when and how to name is a significant one.45 This is particularly true in institutional contexts. Names and definitions provide practical grounding and centralized focus, “if not as a unity at least as a whole.” They can bring cohesiveness to an intellectual project, in a manner that grounds it. Naming CRTIP is important for focusing conversations, theoretically and conceptually, and marshalling institutional resources. Moreover, it is helpful for bringing new scholars and activists into the fold. CRTIP thus denotes two related things: a [critical] approach to scholarship and a network of scholars who use that approach. Simultaneously thinking of CRTIP as a network of scholars who engage intellectual properties through the lens of race as well as a topic of scholarly focus is a helpful way of capturing its conceptual dynamism and constant evolution. Naming CRTIP is a useful exercise partly because it highlights how CRT can inform the study of IP. For instance, the name CRTIP itself draws one to see to how whiteness operates not 45

Kimberly W. Benston, “I Yam What I Am”: Naming and Unnaming in Afro-American Literature, 16 Black Am. Literature F. 1, 3 (1982) (citing Malcolm X, Malcolm X on Afro-American History 14 (1967)); id.; see also Grant Farred, What’s My Name: Black Vernacular Intellectuals (2003) (on the importance of naming in Black political tradition); Derek H. Alderman, Place, Naming and the Interpretation of Cultural Landscapes, in The Ashgate Research Companion to Heritage and Identity 195, 201 (Brian Graham & Peter Howard eds., 2008); Ben L. Martin, From Negro to Black to African American: The Power of Names and Naming, 106 Pol. Sci. Q. 83, 83 (1991) (“Names can be more than tags; they can convey powerful imagery. So naming – proposing, imposing, and accepting names – can be a political exercise”). See generally Anjali Vats, (Dis)owning Bikram: Decolonizing Vernacular and Dewesternizing Restructuring in the Yoga Wars, 13 Comm. & Critical/Cultural Stud. 325 (2016); see also Chidi Oguamanam, Patents and Traditional Medicine: Digital Capture, Creative Legal Interventions, and the Dialectics of Knowledge Transformation, 15 Ind. J. Global Legal Stud. 489 (2008).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

542

Deidré A. Keller and Anjali S. Vats

only as property (as shown by CRT scholars), but also as IP. It is impossible to speak of CRT without invoking Cheryl Harris’ essay, “Whiteness as Property,” which celebrated its thirtieth anniversary in 2023. Harris’ piece is central to CRT, as well as the study of IP and race, in part because it focuses on the significant and complex relationship between race and property rights.46 Harris highlights how whiteness operates as property, conferring a bundle of social and political rights that are exclusively granted to those who read as white.47 Harris’ piece also provides a starting point for understanding why whiteness functions as IP, by marginalizing people of color in systems of knowledge production. The phrase “critical race IP” carries with it CRT’s core themes, particularly the recognition that racial identities can be linked to privileged access to certain rights.48 Under CRTIP Harris can be reworked to provide that CRTIP “investigates the relationships between concepts of race and [intellectual] property and reflects on how rights in [intellectual] property are contingent on, intertwined with, and conflated with race.”49 Whiteness carries with it a set of privileges and presumptions in the context of IP: whites have historically constructed information regimes in ways which devalue the knowledge and practices of nonwhites;50 whites have historically held the power and authority to determine the legal structures which govern IP rights;51 whites have historically crafted legal doctrines which favor the protection of Western understandings of creativity and knowledge in all its forms;52 and whites largely continue to manage domestic and international IP rights regimes.53

iv. mapping the field In mapping CRTIP, we preface our work by keeping in mind that CRT engages three central ideas: (1) race consciousness is necessary to address structural racism; (2) racism is not the work of a few “bad apple[s]” but the result of systemic institutional and ideological discrimination; and (3) intersectionality is important to any critical race analysis. We explicitly describe and advocate for an approach to CRTIP in which scholars bring these core ideas to bear upon IP. We next explore the meaning of “race” and “IP” in the context of CRTIP. While generally accepted definitions of race can provide a starting point, such prevailing definitions typically fail to account for pertinent historical, social, or activist contexts. Defining race in CRTIP requires consideration of these and other contexts.

46

47 48

49 50

51

52

53

Cheryl I. Harris, Whiteness as Property, 106 Harv. L. Rev. 1707 (1993). We also note that during Race + IP 2017, the plenary sessions continually returned to Harris’ essay because of its central importance to the topic at hand. Id. at 1725–28. See Deidré A. Keller & Anjali S. Vats, CRT-icizing Copyright (Mar. 28, 2017) (unpublished manuscript) (on file with authors), https://ssrn.com/abstract=2895866. Harris, supra note 46, at 1714. See, e.g., Debora J. Halbert, Resisting Intellectual Property 150 (2005) (“Today’s biopiracy is simply the extension of the logic behind the doctrine of discovery”). See Ruth L. Okediji, The International Relations of Intellectual Property: Narratives of Developing Country Participation in the Global Intellectual Property System, 7 Sing. J. Int’l & Comp. L. 315 (2003). Ruth L. Okediji, The Regulation of Creativity Under the WIPO Internet Treaties, 77 Fordham L. Rev. 2379 (2009); see also The Construction of Authorship: Textual Appropriation in Law and Literature (Martha Woodmansee & Peter Jaszi eds., 2d prtg. 1999); Rayvon Fouche´, Black Inventors in the Age of Segregation: Granville T. Woods, Lewis H. Latimer & Shelby J. Davidson (2003); James Boyle, Foreword: The Opposite of Property?, 66 L. & Contemp. Probs. 1 (2003). See, e.g., Peter Drahos, Developing Countries and International Intellectual Property Standard-Setting, 5 J. World Intell. Prop. 765 (2002).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

543

Following that discussion, we complete the chapter by exploring six central themes which consistently emerge in discussions of race and IP: storytelling, traditional knowledge, public domains, piracy politics, distributive justice, and remaking IP. Before concluding, we consider CRTIP as decolonizing praxis and community building. A. What Is the “Race” in Critical Race IP? Race is the socially constructed category used to describe and ascribe value to phenotypic differences between individuals.54 As demonstrated by scientific advances in genetics, such as the completion of the Human Genome Project, there is no biological basis for treating race as a meaningful category, and, therefore, no biological basis for deeming some people “superior” and others “inferior.”55 Rather, as Michael Omi and Howard Winant argue, racial difference is socially and materially constructed through racial projects – policy decisions based on historically contingent understandings of the meaning of race.56 Legislative and judicial definitions of race, as Ian Haney Lopez describes in his groundbreaking text White by Law, were and continue to be integral in rhetorically defining racial categories, as well as materially shaping race through the grant and denial of rights and privileges.57 That said, while the definitions of race we engage here are useful starting points for thinking about racial categories and how they are constituted, they do not help us to situate race in particular historical contexts or in specific academic and activist contexts. We now turn to the question of how we might specifically think of the term “race” in CRTIP. Race is, in Stuart Hall’s terms, a “floating signifier.”58 It does not have a fixed meaning; rather, it is a term with no clear referent whose meaning is contingent on time, place, and context. To speak of race in CRT or CRTIP, then, is not to speak of a static category; it is to speak of an item that is contextually defined. In CRT, race originally centered on black/white binaries in a post-civil rights context. That is not to say that race crits did not recognize the existence of race in other spaces. It is simply that they chose to theorize it primarily vis-à-vis black/ white binaries. Subsequent conversations in CRT resulted in a broader theorization of law and race, through studies of Asians as “model minorities,”59 Latinos as beyond the black/white

54

55

56 57

58

59

See, e.g., Michael Omi & Howard Winant, Racial Formation in the United States: From the 1960s to the 1990s (2d ed. 1994). Alondra Nelson, The Social Life of DNA: Race, Reparations, and Reconciliation After the Genome 13 (2016) (footnote omitted) (“Under the flashing glare of the international press corps’ cameras, President Bill Clinton – flanked by Venter and National Human Genome Research Institute director Francis Collins, and with Prime Minister Tony Blair of Britain joining in via remote video – breathlessly declared that ‘one of the great truths to emerge from this triumphant expedition inside the human genome is that in genetic terms, all human beings, regardless of race, are more than 99.9 percent the same’”). Omi & Winant, supra note 54, at 55–56. Ian Haney Lopez, White by Law: The Legal Construction of Race (1997). For instance, Lopez describes how anti-miscegenation laws, by preventing interracial mixing, affected the physical and biological realities of those who procreated. Stuart Hall, Lecture at the Media Education Foundation: Race, the Floating Signifier (1997),CRTIP www.mediaed .org/transCRTIPts/Stuart-Hall-Race-the-Floating-Signifier-TransCRTIPt.pdf. See, e.g., Robert S. Chang, Toward an Asian American Legal Scholarship: Critical Race Theory, Post-Structuralism, and Narrative Space, 81 Cal. L. Rev. 1241 (1993); Keith Aoki, “Foreign-ness” & Asian American Identities: Yellowface, World War II Propaganda, and Bifurcated Racial Stereotypes, 4 UCLA Asian Pac. Am. L.J. 1 (1996); Harvey Gee, Perspective: Beyond Black and White: Selected Writings by Asian Americans Within the Critical Race Theory Movement, 30 St. Mary’s L.J. 759 (1999).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

544

Deidré A. Keller and Anjali S. Vats

binary,60 and racial categories as geographically and temporally bounded social constructions.61 Moreover, the latter studies resulted in cross-disciplinary and interdisciplinary conversations about the investments of the legal academy and its power structures in whiteness. The race in CRT is therefore unfixed. It is a signifier with constantly changing meaning that evolves based on the everyday practices of groups and individuals, including scholars, and the cultural and historical conditions of the times. The race in contemporary CRT scholarship might be more succinctly described as a floating signifier which refers to the tendency of culture and institutions to operate in ways that, implicitly or explicitly, protect the interests of whiteness at the expense of people of color instead of making space for radical equality built on foundations of restorative justice. We imagine the race in CRTIP similarly. Instead of focusing on the social construction of differences based on skin color, we invoke race to describe the many ways IP discourses play a central role in the protection of whiteness. The study of race in the context of intellectual properties must be an intersectional enterprise, involving the coordinated examination of categories such as gender, class, and sexual orientation.62 An originalist reading of the race in CRTIP might limit analysis to only black/white binaries in the United States or legal regimes around civil rights. However, such a definition of race is both overly narrow and inconsistent with the trajectory that CRT has taken over the past decade. Instead, we encourage a reading of the race in CRTIP as a broad intersectional and transnational category of analysis that leaves space for discussions of the Global South with respect to distributive justice, access to knowledge, and even neocoloniality. Studying the race in CRTIP entails mapping, theorizing, and remaking understandings of the lawful and just governance of IP, which, like the police in the realm of embodied relations, serves to normalize and reinforce whiteness. It further requires asking who is imagined as a legitimate IP owner and who is envisioned as a threat to the (intellectual) propertied order. Focusing on systems of governance of IP and narratives of transgression reveals the racial contours of IP and offers important starting points for reconceptualizing its racial investments. We are, in effect, stressing the need to understand how phenotypic differences play out in particular moments, by and through examination of IP governance and the racial stories which we consistently tell about copyrights, trademarks, patents, and so on. Doing so allows us to locate race, not as a static category, but as an ever-changing one. We understand the race in CRTIP as invoking the spirit and thematic directions of CRT scholarship, in a manner which attends to that area’s core tenets about the investment of culturally constructed institutional regimes which directly or indirectly advance the interests of whiteness.

60

61

62

See, e.g., Francisco Valdes, Forward: Under Construction – LatCrit Consciousness, Community, and Theory, 85 Cal. L. Rev. 1087 (1997). See, e.g., Keith Aoki, Space Invaders: Critical Geography, the Third World in International Law and Critical Race Theory, 45 Vill. L. Rev. 913 (2000). See generally Kimberlé Crenshaw, Demarginalizing the Intersection of Race and Sex: A Black Feminist Critique of Antidiscrimination Doctrine, Feminist Theory and Antiracist Politics, 1989 U. Chi. Legal F. 139 (1989). For analyses of the intersection of race and gender specifically in the context of IP protection, see herein Kara W. Swanson, They Knew It All Along: Patents, Social Justice and Fights for Civil Rights, ch. 10 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Zvi S. Rosen, Unequal Copyright in the Nineteenth Century, ch. 11 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

545

v. what is the “ip” in critical race ip? Traditionally, IP means the laws of copyrights, trademarks, patents, rights of publicity, trade secrets, and/or unfair competition.63 Navigating IP requires a broad understanding of the interrelationships between and among these legal doctrines and other areas of law, including contracts, constitutional law, and property. While the “IP” in CRTIP is not intended to homogenize the various types of IP law, it nonetheless points to the need to both study IP in its mass noun sense through which policy is obscured and in its component parts comprising that mass noun. Moreover, the work of IP scholars, particularly those concerned with social justice, increasingly reflects the reality that copyrights, trademarks, patents, rights of publicity, trade secrets, and claims of unfair competition are not simply legal regimes confined to the realm of law, but also are cultural objects that move through everyday life.64 That is increasingly true given the growth of international IP regimes and appeals to human rights norms as a means of protecting the interests of marginalized peoples. Untangling the cultural implications of intellectual properties and IP law, and not simply the legal regimes themselves, is therefore central to the “IP” in CRTIP.

vi. (un)bounding critical race ip: core themes During Race + IP 2017, 15 plenary speakers and several dozen concurrent speakers presented papers speaking to the issues at the intersections of race and IP from a variety of disciplinary vantage points. In this chapter, to map the continuing Race + IP discourse and to highlight common tenets in the application of CRT to IP, we identify those themes that repeatedly arise at the intersections of IP, race, and social justice. One way to anchor this provisional mapping is to consider how CRTIP orients itself toward ideas of (intellectual) property and personhood. Scholarship in race and IP, like Harris’ “Whiteness as Property,” has adopted questions about race, property, and personhood as fundamental issues, asking how IP is defined, how it ought to be defined, and the racial and social justice implications that flow from such definitions.65 A central issue in CRTIP scholarship – one which might be called a fundamental tenet of the interdisciplinary movement – is critical analysis of how IP does and should relate to conceptual personhood, particularly for those that were not and are not, explicitly and/or implicitly, considered to be fully human. Widely accepted definitions of IP emerge from Lockean understandings of property, which dictate that engaging in the “sweat of the brow” entitles a person to ownership of the fruits of his labors.66 CRTIP scholars not 63

64

65

66

See Lateef Mtima, What Is Intellectual Property (And Why Should You Care About It Anyway?), Prolusion in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Id. Elsewhere in this volume Professor Jamar explores the social utility breadth of IP rights in the context of artificial intelligence and the implications for social justice. See Steven D. Jamar, An Intellectual Property Social Justice Perspective on Intellectual Property Protection for Artificial Intelligence Programs, ch. 18 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See, e.g., Madhavi Sunder, Property in Personhood, in Rethinking Commodification: Cases and Readings in Law & Culture 164 (Martha M. Ertman & Joan C. Williams eds., 2005). Elsewhere in this volume Professors Yolanda King and Lateef Mtima discuss the importance of publicity rights in promoting Black dignity and socio-economic empowerment. See herein Yolanda M. King & Lateef Mtima, Tattoo Use: What Does the Right of Publicity Have to Do With It, ch. 8 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Mtima, supra note 40. See generally John Locke, Second Treatise of Government § 43 (C.B. Macpherson ed., 1980) (emphasis in original) (“An acre of land, that bears here twenty bushels of wheat, and another in America,

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

546

Deidré A. Keller and Anjali S. Vats

only push against the sweat of the brow theory, they also reframe it in ways that make different kinds of epistemological understandings of creation possible. In many ways, the themes we identify are all negotiations of a fundamental set of questions: Whose knowledge is valuable? How is it valued? What systems underpin those definitions of labor? And how do we alter and remake the systems that undervalue the knowledge of people of color and maintain systems of white supremacy? In addition to defining IP in ways that recognize and attempt to undo its protection of the norms and attendant authority of whiteness, our mapping identifies several recurring themes in CRTIP analyses: 1. Understanding, situating, and retelling IP’s stories; 2. Grappling with the problems of “traditional knowledge,” “indigenous knowledge,” and “folklore” under international IP and human rights regimes; 3. Defining and negotiating the scope of the public domain; 4. Framing and reframing concepts of “infringement,” “counterfeiting,” and “piracy;” 5. Considering the role of distributive justice and access to knowledge (A2K); and 6. Remaking IP law to reflect those “faces at the bottom” and with an eye toward realworld solutions. These themes often overlap and cross multiple areas of law. This is to be expected because of the unbounded nature of IP itself; because of the nature of CRTIP itself as a network of scholarship focused on how IP scholars take intersectional approaches to considering the ways people of color are deprived of the power to create, access, and exploit knowledge, often through justifications that conceive of them as less than human; and because the theoretical and practical approaches to combating such inequality are inherently multifaceted. A. Storytelling as Critical Race IP Praxis Storytelling practices familiar to Race Crits pervaded Race + IP 2017. The authors of this chapter began and ended the conference with stories of Prince as an IP icon, reading him in the larger context of race, copyright, and musical appropriation. Kembrew McLeod spoke about Clyde Stubblefield’s erasure from James Brown’s “Funky Drummer” and the subsequent sampling of his unprotected rhythmic work. Richard Schur discussed the importance of storytelling as methodological intervention in relation to CRTIP. Margaret Chon crafted a narrative history of race and IP through the work of CRT pioneers such as Keith Aoki and Kimberlé Crenshaw and her own insights about the directions of the interdisciplinary movement. Talks such as these epitomize the storytelling practices that often characterize CRT scholarship, with their emphasis on personal experiences, recontextualizing familiar narratives, centering voices that might otherwise remain unheard, and writing scholarly histories. More intangibly speaking, they also serve important affective functions, such as creating feelings of connection, engagement, and common purpose. Storytelling is alive and well in CRTIP. One important function of CRTIP scholarship is to render visible through counter-storytelling those narratives that animate IP law’s nonneutrality which, with the same husbandry, would do the like, are, without a doubt, of the same natural intrinsic value: but yet the benefit mankind receives from the one in a year, is worth 5l. and from the other possibly not worth a penny, if all the profit an Indian received from it were to be valued, and sold here; at least, I may truly say, not one thousandth . . . For it is not barely the plough-man’s pains, the reaper’s and the thresher’s toil, and the baker’s sweat, is to be counted into the bread we eat”).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

547

around race. Engaging the underlying characters, plots, and values these stories endorse is a vital step in undoing IP’s whiteness. Moreover, we might also read creative works and embodied performances as part of the practice of speaking back to IP law, in the tradition of the legal fiction of scholars such as Derrick Bell and Richard Delgado.67 For instance, 2 Live Crew’s “Pretty Woman,” Biz Markie’s “Alone Again,” and Randall’s The Wind Done Gone function as their own types of counter-storytelling, operating as “sites of memory”68 for alternative IP truths. As Schur argues in Parodies of Ownership, African American performance, including hip hop and parody, operates as both powerful critique and pragmatic remaking of IP law.69 Counter-stories need not be literary or musical. For instance, protests against Crazy Horse liquor and Marshawn Lynch’s trademarking of the nickname BeastMode might be read as embodied and performative practices of storytelling, which both assert different epistemological standpoints from those in dominant culture. Each standpoint is used to understand knowledge production and critique the historical exclusion of people of color, particularly Black people, from the privileges of IP ownership. Exploring the role of storytelling in knowledge production, in forms that both comport with and break from those traditionally accepted in the academy, is a productive goal for CRTIP, and builds upon a long history in CRT. Storytelling is a practice that has been and remains important to CRT IP as a mechanism for locating the voices of marginalized groups and centering them in legal contexts that otherwise erase them. B. Protecting Traditional Knowledge Early conflicts between harmonization of free trade and IP regimes and the developing world often revolved around the management of traditional knowledge. Following the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), Vandana Shiva’s Biopiracy: The Plunder of Nature and Knowledge was an important post-TRIPS critique of the practices of bioprospecting that allowed scientists, predominantly in the Western world, to commodify traditional knowledge.70 Since the publication of Shiva’s work, race and IP scholars have turned to considering how best to manage the protection of traditional knowledge, indigenous knowledge, cultural property, and folklore under the rubrics currently set out by IP law – or those yet to be constructed. The treatment of traditional knowledge under TRIPS occupied a considerable amount of space in IP conversations through the early 2000s. It remains an important point of conversation in determining how international IP regimes should understand and treat non-Western knowledge. Pioneers in the area of protecting traditional knowledge have considered the contours of protecting TK in the context of different groups; for example, indigenous Australians,71

67

68 69 70 71

Derrick Bell, Faces at the Bottom of the Well: The Permanence of Racism, ch. 9 in The Space Traders (1992). The short story appeared in two earlier slightly different versions. See Derrick Bell, After We’re Gone: Prudent Speculations on America in a Post-Racial Epoch, 34 St. Louis U. L.J. 393 (1990); Derrick Bell, Racism: A Prophecy for the Year 2000, 42 Rutgers L. Rev. 93 (1989); Derrick Bell, Gospel Choirs: Psalms of Survival in An Alien Land Called Home, ch. 1 in Redemption Deferred: Back to the Space Traders (1997); see also Richard Delgado, The Rodrigo Chronicles: Conversations about America and Race (1995). Lovalerie King, Race, Theft, and Ethics: Property Matters in African American Literature, 1–22 (2007). Richard L. Schur, Parodies of Ownership: Hip-Hop Aesthetics and Intellectual Property Law 26 (2009). Vandana Shiva, Biopiracy: The Plunder of Nature and Knowledge (1997). See, e.g., Jane Anderson, The Making of Indigenous Knowledge in Intellectual Property Law in Australia, 12 Int’l J. Cultural Prop. 347 (2005); Kathy Bowrey & Jane Anderson, The Politics of Global Information Sharing: Whose Cultural Agendas Are Being Advanced?, 18 Soc. & Legal Stud. 479 (2009); Kimberly Christen, Gone Digital: Aboriginal Remix and the Cultural Commons, 12 Int’l J. Cultural Prop. 315 (2005); Kimberly Christen, Opening

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

548

Deidré A. Keller and Anjali S. Vats

Ghanaian kente weavers,72 Indian artisans,73 and Bolivian music producers.74 Important parts of the conversation include how IP ought to refer to traditional knowledge, how to break down the binary between Western and traditional knowledge, and how to build digital archives that center the demands and traditions of indigenous populations. These conversations have also notably taken different forms in different areas of IP. For instance, in the context of copyrights, the limited ability to protect jazz and hip hop, yoga, and design have come to the fore.75 The subject matter in each of those examples is different, although all require a copyright approach that is flexible enough to account for their particularities. In the context of trademarks, the issue is often the opposite; that is, the utilization of racist imagery as alleged source signifiers implicates race more broadly.76 In the context of patents, battles over biopiracy continue, in the form of disputes over the ownership of patented products such as neem oil and turmeric77 and access to pharmaceuticals.78 Conversations in these areas often revolve around the best methods for naming, protecting, and remaking traditional knowledge, particularly when it comes into conflict with maximalist IP regimes or entrenched IP interests. The problem of how to handle traditional knowledge is complex. Some prevailing approaches fundamentally place traditional or “raw” knowledge in a hierarchy below that which is treated as refined or “cooked” knowledge.79 Others focus on the best mechanism for protecting traditional knowledge, including international human rights law.80 Still others focus on the remaking of IP law.81 Taken together, the conflicts and approaches point to the inadequacies of conventional IP law to protect all forms of knowledge equally and with an eye toward restorative justice. C. The Public Domain Some CRTIP scholarship, like IP scholarship generally, is concerned with the nature of and characteristics of the public domain and how those features affect social justice. Unlike their law

72

73

74

75

76

77

78 79

80

81

Archives: Respectful Repatriation, 74 Am. Archivist 185 (2011); Jane Anderson, Anxieties of Authorship in the Colonial Archive, in Media Authorship 229 (Cynthia Chris & David A. Gerstner eds., 2013). Boatema Boateng, That Copyright Thing Doesn’t Work Here: Adinkra and Kente Cloth and Intellectual Property in Ghana (2011). See, e.g., Amit Basole, Whose Knowledge Counts? Reinterpreting Gandhi for the Information Age, 18 Int’l J. Hindu Stud. 369 (2014); Amit Basole, Authenticity, Innovation, and the Geographical Indication in an Artisanal Industry: The Case of the Banarasi Sari, 18 J. World Intell. Prop. 127 (2015). Henry Stobart, Rampant Reproduction and Digital Democracy: Shifting Landscapes of Music Production and “Piracy” in Bolivia, 19 Ethnomusicology F. 27 (2010). See, e.g., K.J. Greene, Intellectual Property at the Intersection of Race and Gender: Lady Sings the Blues, 16 Am. U. J. Gender, Soc. Pol’y & L. 365 (2008); Allison Elizabeth Fish, Laying Claim to Yoga: Intellectual Property, Cultural Rights, and the Digital Archive in India (2010) (unpublished Ph.D. dissertation, University of California, Irvine) (available from ProQuest Central); The IPKat: India’s Yoga Database and Patent Piracy, IPKat (May 10, 2011), http:// ipkitten.blogspot.fr/2011/05/indioas-yoga-database-and-patent-piracy.html; Boateng, supra note 72. See, e.g., Pro Football, Inc. v. Harjo, 565 F. 3d 880 (D.C. Cir. 2009); Jasmine Abdel-khalik, Disparaging Trademarks: Who Matters, 20 Mich. J. Race & L. 287 (2015). See, e.g., Shayana Kadidal, Subject-Matter Imperialism? Biodiversity, Foreign Prior Art and the Neem Patent Controversy, 37 IDEA J. L. & Tech. 371 (1997). Kaushik Sunder Rajan, Pharmocracy: Value, Politics, and Knowledge in Global Biomedicine (2017). See Margaret Chon, Law Professor as Artist: Themes and Variations in Keith Aoki’s Intellectual Property Scholarship, 90 Or. L. Rev. 1251 (2012). See, e.g., Rosemary J. Coombe, The Recognition of Indigenous Peoples’ and Community Traditional Knowledge in International Law, 14 St. Thomas L. Rev. 275 (2002). See, e.g. Kavita Philip, What Is a Technological Author? The Pirate Function and Intellectual Property, 8 Postcolonial Stud. 199 (2005).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

549

and economics counterparts, Race IP Crits are concerned with the racial and social justice dimensions of the management of the public domain, especially the perspectives that refuse to recognize property rights in existing traditional knowledge while hindering access to Western knowledge. Sunder and Chander highlight the need to read the public domain as not simply the negative of protected IP, but also as a space for (neo)colonial ownership claims to traditional knowledge. “The romance of the public domain” refers to the fetishistic desire to embrace the public domain as an alternative to IP maximalism without adequate consideration of its underlying inequalities.82 At the other end of the spectrum, IP maximalism in copyright and patent results in a “shrinking” public domain by restricting access to knowledge along distinctly racial lines. Recent cases such as Eldred v. Ashcroft83 and Golan v. Holder84 have permitted the extension of the term and scope of IP rights, posing considerable problems for marginalized groups, particularly with respect to A2K. Unsurprisingly, according to claims of the rise of information feudalism, such transfers of information often unfold along (neo)colonial axes, with the developing world paying the price for the privatization and increasing scope of copyright, patent, and trademark law.85 As information feudalism has grown more intense in the 2000s, calls for equal access have become more commonplace. Chon, for instance, argues for wide access to educational materials.86 This approach was borne out in the Delhi University copyright case in which the Indian Supreme Court determined that the policy interest in access to knowledge outweighed the monopoly afforded to publishers.87 In contexts such as access to copyrighted materials or access to pharmaceuticals, the public domain is not a universal concept but one that must be situationally redefined to account for the states of development and growth trajectories of nations in the Global South.88 Meanwhile, as the expansion of trademark law threatened and threatens to make the brand all-powerful, both as a legal and as a cultural form, it too erodes equal access to the public domain, particularly for those who were racially stereotyped. Jane Gaines and Rosemary Coombe trace this process, demonstrating the increasing value and significance of ownership

82

83 84 85

86

87

88

See, e.g., Chander & Sunder, supra note 16. Moreover, while the issue is typically explored in the context of TKE, it has important ramifications for a variety of marginalized IP creative cohorts in “developed” nations. For example, elsewhere in this volume John Whitman considers the issue as it affects the rights of incarcerated creatives. See John R. Whitman, Intellectual Property Empowerment and Protection for Prisoners, ch. 12 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Eldred v. Ashcroft, 537 U.S. 186 (2003). Golan v. Holder, 565 U.S. 302 (2012). See, e.g., Zehra Betül Ayranci, Intellectual Property Social Justice on the International Plane, ch. 19 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Sunder, supra note 30; Debora Halbert and Billy Meinke, Intellectual Property and Social Justice Futures, ch. 24 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Chon, supra note 13. Elsewhere in this volume Jonathan Band, Brandon Butler, and Krista Cox similarly demonstrate how the requirements of IP-SJ mandate educational access. See Jonathan Band and Brandon C. Butler, Libraries, Copyright Exceptions, and Social Justice, ch. 17 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Krista L. Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, ch. 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Lawrence Liang, The Essence of Education, Hindu (Dec. 13, 2016, 2:00 a.m.), http://www.thehindu.com/opinion/ lead/The-essence-of-education/article16798107.ece. Prashant Reddy T. & Sumathi Chandrashekaran, Create, Copy, Disrupt: India’s Intellectual Property Dilemmas (2017).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

550

Deidré A. Keller and Anjali S. Vats

of the brand, as well as resistance to that ownership, particularly when racial symbols are invoked.89 The public domain is not an unqualified good, nor is its designation as the opposite of property without complications. The regulation of the public domain and the scope of its contents, therefore, remain important questions for scholars of race and IP. D. Framing and Reframing “Piracy” and “Counterfeiting” As Adrian Johns demonstrates in his history of “piracy,” the concept is a historically complicated one,90 in which infringers such as the United States became protectors of intellectual properties once they had the authority and the incentive to do so. Accordingly, attempts to label those in the Global South as “pirates” have been met with considerable conceptual and legal resistance. In particular, those in the Global South have pushed back against the overarching development narrative of IP law, asserting the existence and import of local approaches to the protection of knowledge.91 Moreover, they have articulated alternative economic narratives, which reframe and even justify “Third World” infringement as necessary, beneficial, and unavoidable. For instance, Ravi Sundaram’s concept of the “pirate modernity,” which emerged through his study of the urban modernities in India, calls for recognition that the purportedly universal standards advanced by international IP law do not even begin to describe the material conditions of existence in rapidly developing nations such as India.92 In Sundaram’s retelling of the story of the piracy, the urbanization of the city, as well as its technological development, are integral to understanding the role of infringement, and indeed its unavoidability, within contemporary Indian contexts. Liang tells a tale of Indian counterfeiters turned protectors of their intellectual properties, explaining that the progress of capitalism makes infringement necessary for many to survive.93 He identifies capitalism as a core reason for piracy and counterfeiting, discussing the ways its detritus results in left behind individuals who copy protected works of authorship and invention to survive. Liang’s work demonstrates the nuance of the developing world’s orientation toward knowledge production, as well as how economic systems determine knowledge production structures. Sundaram and Liang offer examples of attempts to reframe those narratives of so-called piracy that originate in the Global North. They and others continue to complicate the critique Shiva initiated, refusing reductive stories of infringement as exclusively about economic loss to Western nations. Studies of shanzhai in China,94 hip hop in South Africa,95 and pharmaceuticals in Mexico and South and Central America96 ask us to reconsider accepted notions that piracy always flows from North to South. Discussions of cultural appropriation, particularly of 89

90 91 92 93 94 95 96

Jane M. Gaines, Contested Culture: the Image, the Voice, and the Law (1991); Coombe, supra note 12. See also herein Mariana Bernal Fandiño, Controversial Trademarks: A Comparative Analysis, ch. 21 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Adrian Johns, Piracy: The Intellectual Property Wars from Gutenberg to Gates (2010). Boateng, supra note 72. Ravi Sundaram, Pirate Modernity: Delhi’s Media Urbanism (1st ed. 2010). Lawrence Liang, Porous Legalities and Avenues of Participation, in Sarai Reader: Bare Acts 6, 13–15 (2005). Fan Yang, Faked in China: Nation Branding, Counterfeit Culture, and Globalization (2016). Adam Haupt, Stealing Empire: P2P, Intellectual Property and Hip-Hop Subversion, chs. 5–6 (2008). Cori Hayden, A Generic Solution? Pharmaceuticals and the Politics of the Similar in Mexico, 48 Current Anthropology 475 (2007); Cori Hayden, The Proper Copy: The Insides and Outsides of Domains Made Public, 3 J. Cultural Econ. 85 (2010).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

551

traditional designs such as Navajo prints and adrinka and kente cloth, raise further questions about the nature of piracy. Along these lines, Kavita Philip’s work makes important claims about the social construction of the pirate figure, particularly by investigating how it is mobilized in the service of violence in contemporary politics.97 We would be remiss, however, to suggest that framings of piracy – or any of the other issues that we have identified here – are only contemporary concerns. Rather, practices of labeling racial Others as pirates can be traced to colonial notions that people of color were incapable of producing knowledge of value. Questions about the definitions and scope of infringement and counterfeiting are not exceptional ones. Rather, they are likely increasingly to frame CRTIP scholarship, particularly as developing countries engage in arguments for maximalist IP law in the context of opposing histories, narratives, and materialities. E. Access to Knowledge An overarching question for race and IP scholars is who receives access to innovations in IP and at what cost.98 One early and ongoing battle in this area has revolved around pharmaceuticals. After the negotiation of the TRIPS Agreement, which grants compulsory licenses for certain medications to developing countries,99 India became – and continues to be – the “pharmacy to the developing world” due to its production of low-cost generic drugs in large quantities.100 The United States and India, however, quickly disagreed about the latter’s production of cheap drugs. As a result, India has spent many years on the United States’ Special 301 Priority Watch List and had a number of disputes with the U.S. over pharmaceuticals, such as Novartis’ Glivec.101 Other nations, including South Africa and Mexico, have had similar conflicts with the United States. Much of the developing world maintains that the limited monopolies granted by patent law are not suitable for the vast majority of the world because they limit access to life-saving medications that can be used to treat HIV/AIDS, cancer, and COVID-19. While an important component of the A2K conversation, pharmaceutical access is simply one aspect of a larger problem. Issues of distributive justice and equal access to intellectual properties arise repeatedly in international contexts.102 Most recently, the Delhi University copyright case has been at the center of conversations about access to scholarship in the developing world. Taking on global fair use standards, the Indian Supreme Court refused to find copyright

97

98

99

100

101 102

See, e.g. Kavita Philip, What Is a Technological Author? The Pirate Function and Intellectual Property, 8 Postcolonial Stud. 199 (2005). See Steven D. Jamar, A Social Justice Perspective on the Role of Copyright in Realizing International Human Rights, 25 Pac. McGeorge Global Bus. & Development L.J. 289 (2012) (exploring how IP can affect the realization of human right to access and use information). Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments – Results of the Uruguay Round vol. 31, 1869 U.N.T.S. 299, 33 I.L.M. 81 (1994). Robinson Esalimba, Novartis Persists in Challenge to Indian Patent Law; India Rejects More AIDS Drugs Patents, Intell. Prop. Watch (Feb. 9, 2009), http://www.ip-watch.org/2009/09/02/novartis-persists-in-challenge-to-indianpatent-law-india-rejects-more-aids-drugs-patents. Office of the U.S. Trade Representative, Exec. Office of the President, 2016 Special 301 Report (2016). See, e.g., Marcela Palacio Puerta, The Role of Nonrightsholders Advocates and Academics in Achieving Social Justice Balance in Copyright: The Case of Colombia, ch. 22 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (discussing how scholarly and NGO intervention in the promulgation of the U.S.–Colombia Free Trade Agreement promoted the public interest in access to knowledge and other public rights); Fandiño, supra note 89 (illustrating how trademark law regarding certain kinds of trademarks can reinforce white privilege).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

552

Deidré A. Keller and Anjali S. Vats

infringement when a copy shop made unlicensed copies of academic articles and books. This decision highlighted the continuing inability of those in the developing world to access many forms of knowledge, a problem that is compounded by the frequent refusal of the developed world to protect many types of traditional knowledge.103 Keith Aoki, Margaret Chon, and Ruth Okediji laid the groundwork for discussions of distributive justice within IP law, centering questions of protectability of creative works and access to knowledge for people of color. As demonstrated in Sunder’s From Goods to the Good Life and Foster’s Reinventing Hoodia, these questions remain live.104 IP-SJ mandates human flourishing and benefit sharing that prevailing theories of and instantiations of IP law fail to adequately engage. We note, as well, that such problems are necessarily intertwined with those of personhood and property because they implicate the question of who is read as a full human being worthy of being treated, healed, protected, or educated. Moreover, important questions about how to achieve equal A2K, particularly in a system of racial capitalism, remain. Because the production and circulation of intellectual properties often move along raced lines, it will be impossible to address such questions without considering the underlying racial structures of copyright, trademark, patent, right of publicity, trade secret, and unfair competition. Both remaking and moving beyond law and economics models of IP to engage IP-SJ A2K and distributive justice concerns are themes that remain and will remain central in the work of Race IP Crits. F. Remaking Intellectual Properties Global South nations have not accepted the landscape of IP law offered to them by developed nations. Quite the contrary, race and IP scholars have traced attempts by those in the developing world to contest international IP regimes, including crafting licenses and exceptions to the TRIPS policies which apply to the developing world.105 Halbert traces some of these approaches in her book Resisting Intellectual Property.106 Jane Anderson, Kathy Bowrey, Kimberly Christen, and Angela Riley,107 among many others, have done considerable work in examining indigenous systems of ownership, highlighting possibilities for creating new licensing schemes, archival practices, and digital information management practices to extend protections to traditional knowledge. Proposals spawned by these ideas are steps for continuing to reimagine intellectual properties futures. Notably, some scholars, such as Jamar, Mtima, and Sunder wish to remake IP through the reorientation of its values, investments, and goals, for instance by focusing on human

103

104

105 106 107

Univ. of Oxford v. Rameshwari Photocopy Servs. (2016) RFA(OS) 81 (Del. HC) (India). Elsewhere in this volume Janewa Osei-Tutu offers proposals for employing IP mechanisms to protect traditional knowledge and expression toward the socio-economic empowerment of women in developing countries. J. Janewa Osei-Tutu, Intellectual Property, Social Justice and Human Development: Empowering Female Entrepreneurs Through Trademark Law, ch. 20 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See Madhavi Sunder, From Goods to a Good Life: Intellectual Property and Global Justice (2012); Laura A. Foster, Reinventing Hoodia: People, Plants, and Patents in South Africa (2017). See, e.g., Halbert, supra note 50, at 150. Id. Anderson, supra note 71; Bowrey & Anderson, supra note 71; Christen, supra note 71; Anderson, supra note 71; Angela R. Riley & Kristen A. Carpenter, Owning Red: A Theory of Indian (Cultural) Appropriation, 94 Tex. L. Rev. 859 (2016).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

553

flourishing.108 Others, such as Foster, suggest a need to dig deeper and unpack the (neo)colonial and capitalist underpinnings of law.109 A number of scholars have also undertaken consideration of the extent to which human rights regimes might be used to reconceptualize and remake IP law. In particular, the possibilities for deploying definitions of folklore and cultural property in international human rights documents have been much discussed as a mechanism for expanding the scope of IP rights regimes for the benefit of those in the developing world.110 The human rights approach is an example of a practical intervention into IP law.111 Similarly, K.J. Greene has remained focused on the practical ways musicians might secure rights to their masters, including through reparations.112 Such practical interventions – CRTIP in action one might say – are an important aspect of the future of the interdisciplinary movement.113 While engagements with remaking in intellectual properties vary in their pragmatism, all perspectives will be important in IP’s remaking.

vii. critical race ip as a decolonizing praxis Coloniality, as formulated by Mignolo and Quijano, implicitly includes IP regimes, which incorporate core principles of modernity into their frameworks for governing property ownership.114 Whether understood through the history of devaluing the knowledge of racial Others, including slaves and indigenous peoples, the imposition of predominantly European IP rights regimes on the developing world, the commodification of traditional knowledge, or the implicit imposition of development agendas on the regulation of knowledge production, IP law reinforces the central premises of modernity and beliefs in the inequality of people of color that underlie them. Because IP law is deeply embedded within and committed to reproducing modernity/coloniality, legal reform without undoing its fundamentally European values is unlikely to succeed in creating more racially just information paradigms.115 This does not mean 108

See, e.g., Steven D. Jamar, Trade Secrets from an Intellectual Property Social Justice Perspective, in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Sunder, supra note 30; Steven D. Jamar & Lateef Mtima, The Centrality of Social Justice for an Academic Intellectual Property Institute, 64 S.M.U. L. Rev. 1127 (2011); Lateef Mtima, The Idea Exclusions in Intellectual Property Law, 28 Texas Intell. Prop. L. J. 343 (2020). 109 Foster, supra note 104. 110 See, e.g., Osei-Tutu, supra note 103. 111 See Steven D. Jamar, A Social Justice Perspective on the Role of Copyright in Realizing International Human Rights, 25 Pac. McGeorge Global Bus. & Development L.J. 289 (2012) (exploring how IP can affect the realization of human right to access and use information). 112 See, e.g., K.J. Greene, Abusive Trademark Litigation and the Shrinking Doctrine of Consumer Confusion: Trademark Abuse in the Context of Entertainment Media and Cyberspace, 27 Harv. J. L. & Pub. Pol’y 609 (2004). 113 See, e.g., Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on Intellectual Property Protection for Folk Music, ch. xx in Handbook of Music Law and Policy (Seán O’Connor ed., 2021) (exploring problems of the scope of copyright for folk music and traditional aural and oral musical composition process including music as part of traditional knowledge). 114 See generally Anibal Quijano, Coloniality of Power, Eurocentrism, and Latin America, 1 Nepantla 533 (2000); see also Walter Mignolo, Introduction: Coloniality of Power and De-colonial Thinking, 21 Cultural Stud. 155 (2007). 115 This premise is complicated by practices of dewesternization, which attempt to remake intellectual property’s fundamental Europeanness. See, e.g. Walter Mignolo, Epistemic Disobedience, Independent Thought and Decolonial Freedom, 26 Theory, Culture & Soc’y 1 (2009) (defining dewesternization as “economic autonomy of decision and negotiation in the international arena and affirmation of the sphere of knowledge, subjectivity. It means, above all, deracialization: it is the moment in which . . . the ‘other’ has become ‘the same’ but with a difference: the wounds inflicted over time by the imperial difference”). While dewesternization may create space for Otherness within the colonial matrix, it remains problematic because of its investments in capitalism – albeit of a less racially inflected type than the status quo – and neoliberalism. As such, dewesternization that does not attend to larger global systems provides its own set of problems.

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

554

Deidré A. Keller and Anjali S. Vats

that less ambitious initiatives should be foresworn, but it does indicate the scope and the depth of the difficulty faced in adopting full reform. According to Quijano, (neo)coloniality operates through a “matrix of power” with four component parts: economic control, authority, patriarchal domination, and knowledge and subjectivity.116 For Quijano, the colonization of power was the underlying impetus for the creation of the category of race, the original move that made all other forms of domination possible. Moreover, colonization’s objectification of the colonized, i.e. rendering them the objects of study instead of producers of knowledge, conceptually voids the idea of Other knowledge. The four categories of the colonial matrix that Quijano identifies articulate areas in which colonizers exercised their power to effect total control over the colonized and their knowledge. Decoloniality, as Walter Mignolo describes it, addresses the “hidden agenda” of modernity,117 namely an investment in coloniality. For him, coloniality “names the underlying logic of the foundation and unfolding of Western civilization from the Renaissance to today of which historical colonialisms have been a constitutive, though downplayed, dimension.”118 WanzerSerrano defines decoloniality as: [A]ny practice, discursive or otherwise, that facilitates a divestment from modernity/coloniality and invents openings through which decolonial epistemics can emerge . . . Delinking requires changes in both content and form . . . It requires being oriented toward shifts in our genealogies of thought, including drawing authority from colonized spaces/voices and resisting latent imperialisms – even when such resistance may not be exclusively oppositional.119

Decolonization, therefore, requires a “de-linking” from the colonial matrix of power and its ideological commitments to modernity, with all its component parts.120 Put differently, decolonial theory and praxis conceives of “epistemological reconstitution,”121 which makes space for “another rationality which may legitimately pretend to some universality.”122 We situate decoloniality as a practice which can be used to unmake IP’s investments in whiteness and racial capitalism, particularly because of its overarching engagement with the underlying epistemologies of knowledge production and its transnational scope. Put differently, decolonizing IP is a necessary prerequisite to undoing the racial hierarchies that are embedded within the law itself. While this does not mean that we should abandon attempts at legal reform, it does mean grappling with the underlying power dynamics through which IP regimes were and continue to be produced. Delinking decoloniality in the context of IP therefore requires the rejection of narratives that categorize Other knowledge as secondary or inferior to that of Westerners, whether implicitly or explicitly. Terms such as “traditional knowledge,” “indigenous knowledge,” and “folklore” are dangerous precisely because they create a bifurcation between that knowledge produced informally, often by those in the Global South, and “real” knowledge. Resisting such narratives, for instance by advancing narratives of bio-piratical theft from the Global South and reclaiming memories that might otherwise be erased from the canon, are important first steps in remaking the laws of information. 116 117

118 119 120 121 122

See Quijano, supra note 114. Walter D. Mignolo, The Darker Side of Western Modernity: Global Futures, Decolonial Options 2 (2011). Id. Darrel Wanzer-Serrano, The New York Young Lords and the Struggle for Liberation 25 (2015). Mignolo, supra note 114, at 159–60. Quijano, supra note 114, at 176. Id. at 177.

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

A Primer on Critical Race Intellectual Property

555

The step which follows pulling back the curtain on the implications of the modernity/ coloniality binary for IP law, however, is a more complicated one. Decolonization requires reconstituting universality in a manner, that, instead of substituting the Euroamerican for the totality, creates space for the embrace of multiple perspectives in a manner that is both democratic and cosmopolitan. While we do not offer a model to supplant that of modernity/ coloniality, we note that several nations, such as India,123 Ghana,124 and South Africa,125 are remaking intellectual properties through the embrace of digital databases, local models of IP protection, and rejection of international IP regimes. Our goal in highlighting both the undoing of narratives of modernity/coloniality in IP and practices which supplant Euroamerican IP law is to point to further avenues of research for CRTIP scholars. Existing scholarship in these areas suggests that attending to decoloniality as a means of interrogating the intersections of race and IP is likely to be a fruitful avenue for further investigation.

viii. critical race ip as community building and intimacy making Communities often come together to respond to intellectual properties that mobilize public feelings.126 Suntrust Bank v. Houghton Mifflin127 moved African American literary scholars to respond to attempts to erase Alice Randall’s tale of Scarlett O’Hara’s half Black sister.128 Matal v. Tam prompted Asian American and Native American activists to question the choice to trademark a name that for many still operates as a racial slur.129 The grant of patent protection of turmeric for wound healing sparked outrage among Indian and Indian American communities, resulting in a political movement against biopiracy. Such responses demonstrate the potential for intellectual properties to prompt the spontaneous and short-lived or long-lasting formation of communities that counter their provocations of public feelings. The Race + IP conferences have provided opportunities for scholars with an interest in race and IP to join together in conversations about the topic. The gatherings brought together an eclectic mix of individuals from across disciplines, including law, communication, ethnic studies, anthropology, and Black Studies. During the events, scholars and activists commented on the public feelings the conference elicited, from excitement about the speakers in attendance to anticipation for that which might come next. Talks about particular icons of IP – Prince, Clyde Stubblefield, the Cadillac – evoked sentiments of pride, sadness, nostalgia, and anger. The project of CRTIP is one that is organically disposed to both community building and intimacy making. Gathering to speak about topics around race, intellectual properties, and social justice naturally lends itself to affective connectedness and public feelings of excitement, frustration, anger, hope, and intimacy which move among bodies. Moreover, recognizing such

123 124 125 126

127 128

129

See generally Reddy T. & Chandrashekaran, supra note 88. See generally Boateng, supra note 72. Foster, supra note 104. Phyllis Chesler, All We Have Is Each Other, in The Woman Centered Economy: Ideals, Reality, and the Space in Between 105 (Loraine Edwalds & Midge Stocker eds., 1995); Brandon Tensley, Michael C. Richardson, & Rejane Frederick, The 2016 Election Exposed Deep Seated Racism. Where Do We Go From Here?, BillMoyers.com (Nov. 25, 2016), http://billmoyers.com/story/2016-election-exposed-deep-seated-racism-go. SunTrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th Cir. 2001). Declaration of Henry Louis Gates, Jr., SunTrust Bank v. Houghton Mifflin Co., 136 F. Supp. 2d 1357 (N.D. Ga. 2001), No. 01-00701-CV-CAP-1; Declaration of Toni Morrison, SunTrust Bank v. Houghton Mifflin Co., 136 F. Supp. 2d 1357 (N.D. Ga. 2001), No. 1:01 CV-701-CAP (N.D. Ga. 2001). Matal v. Tam, 137 S. Ct. 1744 (2017).

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

556

Deidré A. Keller and Anjali S. Vats

public feelings and the relationship to the creation of communities around race and activism is in keeping with the tradition of CRT. The tendency of CRTIP to elicit and traffic in public feelings which aid in the creation of community and intimacy is helpful in contemplating the contours of the material structures that might facilitate the growth of the area of study. Occasions both to recognize and center the affective qualities of intellectual properties and related scholarship in a manner that facilitates community building around racial justice are productive ones for building CRTIP.

conclusion In this chapter we have offered a primer on CRTIP, a relatively new and rapidly growing direction in CRT scholarship concerned with the intersections of race and IP law. In doing so, we have situated CRTIP in the larger context of intellectual property social justice, which acknowledges the extra-economic, human flourishing obligations and effects of the IP system. As we imagine it, CRTIP is a space for creating models for the politics of IP reparation – not simply equal rights or distributive justice – through which we might heal the wounds of racism and colonialism.

https://doi.org/10.1017/9781108697613.035 Published online by Cambridge University Press

27 Intellectual Property After George Floyd Madhavi Sunder*

Intellectual property (IP) and social justice as a critical intellectual movement has come of age. This volume builds on more than two decades of work at the start of the twenty-first century by founding scholars who explored the human rights obligations and other social justice dimensions of the IP regime,1 and introduces new voices who take as their starting point that IP law is deeply implicated in structuring national, racial, gender, and other inequalities.2 The volume represents significant accomplishments. First among those is the recognition that IP rights do far more than the utilitarian economic theories that dominated twentieth century IP scholarship proposed. The old view of IP rights as narrow tools to incentivize the optimal production of creative goods is incomplete.3 Today scholars recognize the myriad ways that IP rights affect not

* Associate Dean for Graduate and International Programs and Frank Sherry Professor of Intellectual Property Law, Georgetown University Law Center. 1 See, e.g., Keith Aoki, Seed Wars: Cases and Materials on Intellectual Property and Plant Genetic Resources (2007); Olufunmilayo Arewa, Copyright and Cognition: Musical Practice and Music Perception, 90 St. John’s L. Rev. 565 (2016); Margaret Chon, Intellectual Property From Below: Copyright and Capabilities, 40 U.C. Davis L. Rev. (2007); Rosemary J. Coombe, The Cultural Life of Intellectual Properties: Authorship, Appropriation and the Law (1998); K.J. Greene, Copyright, Culture & (and) Black Music: A Legacy of Unequal Protection, 21 Hastings Comm. & Ent. L. J. 339 (1999); Ruth L, Okedeji, Reframing International Copyright Exceptions and Limitations as Development Policy, in Copyright Law in an Age of Exceptions and Limitations 429 (Ruth L. Okediji ed., 2017); Peter K. Yu, Intellectual Property and Human Rights 2.0, 53 U. Richmond L. Rev. 137 (2019). 2 See, e.g., Deidré A. Keller & Anjali S. Vats, A Primer on Critical Race Intellectual Property; Metka Potočnik, Exposing Gender Bias in Intellectual Property Law: The U.K. Music Industries; J. Janewa Osei-Tutu, Intellectual Property, Social Justice and Human Development: Empowering Female Entrepreneurs Through Trademark Law; Shubha Ghosh, Patenting Custom Fit, Aspiring for Social Justice, respectively chs. 26, 23, 20, and 25 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See generally Anjali Vats, The Color of Creatorship (2020); Anjali Vats & Deidré A. Keller, Critical Race IP, 36 Cardozo Arts & Ent. L.J. 735, 776–77 (2018). 3 See, e.g., Peter S. Menell, Mapping the Intellectual Property/Social Justice Frontier, ch. 1 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (“The internal utilitarian frame lacks the breadth to address the full social justice ramifications of granting time-limited exclusive rights for biomedical discoveries”; “Intellectual property law and policy should thus be seen not just as an engine of economic progress, but also as an engine of human and cultural flourishing, dignitary values, access, inclusion, and empowerment”); Lateef Mtima, Intellectual Property Social Justice: A Theoretical Rationale, ch. 3 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

557 https://doi.org/10.1017/9781108697613.036 Published online by Cambridge University Press

558

Madhavi Sunder

only efficiency in innovation markets, but also human rights, including access to education4 and healthcare;5 freedom of speech;6 and distributive justice.7 This chapter considers what turns IP and social justice will take in its critical next phase. The worldwide broadcast via cell phone footage of the brutal murder of George Floyd at the hands of a Minneapolis police officer, cast alongside the stark racial disparities in the death toll wrought by COVID-19, set the final nail in the coffin of neoliberal colorblindness. The summer of 2020 laid painfully bare the truth of the Black Lives Matter movement’s claims of structural racism. Black and brown Americans are everyday victims of deeply embedded racism in the foundational structures of American life: housing, education, health, employment, and policing.8 Calls for core legal systems of property, contract, criminal justice, and constitutional law to acknowledge structural racism and to begin to rewrite law to be antiracist are growing.9 The IP regime has been directly affected at this moment of racial awakening and reckoning. Companies long criticized – even sued – for racist brands announced voluntary abandonment of loathed trademarks, from Aunt Jemima pancake products to Uncle Ben’s rice, to the Washington National Football team.10 Decades of inaction and active resistance pre-dated these moves. Notably, it was not law but social movements that forced the change.11 A paradigm shift with the death of George Floyd highlighted how the culture industries’ production and circulation of images of the world shape, perpetuate, and maintain racial hierarchy and white supremacy. The humanities have long recognized the role of literature in laying the foundation for colonialism and imperialism12 – an ongoing project that continues to be contentious.13 Now law is beginning to reckon with its own mythologies and doctrines that have both obscured structures of colonialism and oppression, and facilitated them.14

4

5

6

7 8

9 10

11 12

13

14

Jonathan Band & Brandon C. Butler, Libraries, Copyright Exceptions, and Social Justice, ch. 17 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Lea Shaver, Ending Book Hunger: Access to Print Across Barriers of Class and Culture (2020). Anupam Chander & Madhavi Sunder, The Battle to Define Asia’s Intellectual Property Law: From TPP to RCEP, 8 UC Irvine L. Rev. 331 (2018); Mason Marks, People Are the Lifeblood of Innovation; and Krista L. Cox, Applying Social Justice Principles in the Practice of Intellectual Property Law, respectively chs. 4 and 15 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). The U.S. Supreme Court ruled that Congress cannot ban racist trademarks without violating the freedom of speech protected by the First Amendment. See Matal v. Tam, 137 S. Ct. 1744 (2017); Margaret Chon & Robert S. Chang, The Indians Who Were Not Heard and the Band That Must Not Be Named: Racial Formation and Social Justice in Intellectual Property Law, ch. 2 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). See also Simon Tam, How an Asian American Trouble Maker Took On the Supreme Court (2019). Madhavi Sunder, From Goods to a Good Life: Intellectual Property and Global Justice (2012). For an essay on how decades of housing discrimination policies led to the police shooting of Michael Brown, see Richard Rothstein, The Making of Ferguson: How Decades of Hostile Policy Created a Powder Keg, The American Prospect, Oct. 13, 2014. See Law Deans Antiracist Clearinghouse Project, https://www.aals.org/antiracist-clearinghouse/. Jemima McEvoy, Here Are All the Brands that Are Changing Racist Names and Packaging, Forbes, https://www .forbes.com/sites/jemimamcevoy/2020/10/06/eskimo-pie-becomes-edys-pie-here-are-all-the-brands-that-are-changingracist-names-and-packaging/?sh=6e1def3856a7. See Chon & Chang, supra note 6. Edward Said; Orientalism (1978); Toni Morrison, Playing in the Dark: Whiteness and the Literary Imagination (1993). Rachel Poser, He Wants to Save Classics from Whiteness: Can the Field Survive?, N.Y. Times, Feb. 2, 2021 (highlighting work of Princeton classics scholar Dan-el Padilla who has called out the “field’s long alliance with the forces of dominance and oppression”). Recent critical interventions in real property law including Brenna Bhandar, Colonial Lives of Property: Law, Land, and Racial Regimes of Ownership (2018); Robert Nichols, Theft is Property: Dispossession and Critical Theory (2020).

https://doi.org/10.1017/9781108697613.036 Published online by Cambridge University Press

Intellectual Property After George Floyd

559

It may sound outrageous to claim that IP is implicated in Mr. Floyd’s death. But consider this: this law governs the production and circulation of culture, distributing the power to make and disseminate images that affect one’s daily capabilities, from educational expectations to housing opportunities15 to physical and mental health. The power of images cannot be overstated. In the Information Age wealth derives from ownership and control of intellectual resources. How recognition of authors and inventors is affected by race matters for distributive justice. In my book, From Goods to a Good Life: Intellectual Property and Global Justice, I called upon IP law to lift its gaze from the promotion of more goods to the promotion of a good life. We must be attentive to the structural work that IP performs, from promoting dignity and respect through images and recognition of diverse creators, to the distribution of wealth critical to the full attainment of human capabilities. What will the next two decades’ efforts toward decolonizing the field of IP require? This chapter offers an initial roadmap. From color blindness to racial justice. IP and social justice scholars for some time now have argued that IP rules that may be neutral on their face are not equally applicable to all. Anupam Chander and I, for example, have written that the dominant rhetoric from some left-leaning IP scholars for “free culture” and a robust public domain of ideas at the start of the twenty-first century16 did not, in fact, lead to more equitable distribution of IP rights. Commons create problems of equity, not just efficiency: parties with more power, knowledge, and capital are often the first to exploit and benefit from the Commons.17 Scholars of IP and development ask whether focusing on equal access to IP is enough, given vast differences in resources18 – a reality starkly revealed to the world in the grossly inequitable global access to COVID-19 vaccines by mid 2021.19 Furthermore, a colorblind approach to IP does not confront overt racism in the application of IP rules,20 or implicit bias built into the line drawing in defining IP and the public domain in the first place.21 In the next two decades, IP-SJ scholarship will go deeper in exposing both express and implicit racism in IP systems. IP-SJ scholarship is ready to take the next step, asking how to decolonize law to be antiracist.22 Racial capitalism. The early scholarly work of Cedric Robinson and W.E.B. Dubois on the centrality of race to capitalism is gaining new purchase in the current moment focused on 15

16 17 18 19

20

21

22

See, e.g., Scott Jaschik, Expectations, Race and College Success, Inside Higher Ed., Oct. 24, 2017; Debra Kamin, Black Homeowners Face Discrimination in Appraisals, N.Y. Times, Aug. 25, 2020. Lawrence Lessig, Free Culture (2004); James Boyle, The Public Domain (2008). Anupam Chander & Madhavi Sunder, The Romance of the Public Domain, 92 Cal. L. Rev. 1331 (2004). Anupam Chander, 81 The New, New Property, Tex. L. Rev. 715 (2003). Matthew M. Kavanagh & Madhavi Sunder, Don’t Let Intellectual Property Rights Get in the Way of Global Vaccinations, Wash. Post, Mar. 10, 2021; Matthew M. Kavanagh & Madhavi Sunder, Biden Must Push Drug Firms to Share Science With the World, Bloomberg Law, Apr. 23, 2021. Lateef Mtima & Steven D. Jamar, Intellectual Property and Social Justice Theory: History, Development, and Description, Introduction in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (“the tragic history of African American and other marginalized groups being systematically defrauded out of the commercial profits derived from their creative genius”). See also K.J. Greene, “Copynorms,” Black Cultural Production, and the Debate Over African-American Reparations, 25 Cardozo Arts & Ent. L.J. 1179, 1180–94, 1221 (2008); Tam, supra note 6. Robert F. Brauneis, Copyright, Music and Race: The Case of Mirror Cover Recordings, ch. 9 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023); Seán O’Connor, Lateef Mtima, & Lita Rosario, Overdue Legal Recognition for African American Artists in Blurred Lines Copyright Case, Seattle Times, May 20, 2015. IP-SJ thus provides a theoretical basis for exploring the extra-economic concerns of IP protection, such as the effects of systemic race or gender inequality on the IP regime’s purportedly “neutral” rules and overall social utility objectives. Mtima, supra note 3. IP-SJ thereby undergirds the specialized scholarly analysis of these issues. See Keller & Vats, supra note 2.

https://doi.org/10.1017/9781108697613.036 Published online by Cambridge University Press

560

Madhavi Sunder

dismantling colonial legal structures.23 In the foreword to a new volume on racial capitalism published in January 2021, the legal scholar Angela Harris lays out the central insight: “Racial subjugation is not a special application of capitalist processes, but rather central to how capitalism operates.”24 In the context of real property law, in particular, a new generation of interdisciplinary scholars, including legal scholars, is exploring how race operated to justify settler colonialism’s expropriation of Native American land and Black labor, from slavery to foreclosure laws.25 Particular attention has focused on the creation of surplus value for whites through legally sanctioned dispossession of resources of peoples of color.26 The insights of racial capitalism go beyond traditional Marxist critiques of exploitation of the white working class. As the philosopher Nancy Fraser points out, capitalism operates on a continuum from exploitation to expropriation – the latter sanctioning the wholesale taking of another’s land or physical labor gratis, without compensation. While exploitation has been much studied in critiques of capitalism, less attention has been paid to expropriation, or all-out theft of resources declared by the force of law to be in the public domain and available to all. As Fraser observes, the exploitation/expropriation “continuum remains racialized as people of color are still disproportionately represented at the expropriative end of the spectrum.”27 Intellectual property theorists like Anjali Vats and Lateef Mtima are elaborating the insights of racial capitalism for copyright, trademark, and patent laws.28 Expropriation in the field of IP continues today by creating whole categories of value that are public domain, or free for the taking. What constitutes IP or the public domain often falls along the color line.29 Professor Vats elucidates how racial rhetorics of intelligence, creativity, and authorship affect which creators are recognized and rewarded – a subject I turn to next. Whiteness as property and the impossibility of Black authorship. In her now classic essay, the legal scholar Cheryl Harris poignantly observed that whiteness enables access to legal rights and confers social, cultural, and economic value.30 We are just beginning to understand how whiteness relates to authorship and IP. In her new book, The Color of Creatorship, Anjali Vats details how Enlightenment and American Revolution intellectuals were overtly skeptical of

23 24

25

26 27

28

29 30

See, e.g., Histories of Racial Capitalism (Destin Jenkins & Justin Leroy eds., 2021). See, e.g., Angela P. Harris, Foreword: Racial Capitalism and Law, in Histories of Racial Capitalism (Destin Jenkins & Justin Leroy eds., 2021). See, e.g., K-Sue Park, Race, Innovation, and Financial Growth: The Example of Foreclosure, in Histories of Racial Capitalism (Destin Jenkins & Justin Leroy eds., 2021); K-Sue Park, Conquest and Slavery as Foundational to the Property Law Course, in The Oxford Handbook of Race and Law in the United States (Devon Carbado, Khiara Bridges, & Emily Houh eds., 2020). See Sherally Munshi, Dispossession: An American Property Law Tradition, 110 Georgetown L. J. (2021). The philosopher Nancy Fraser puts the distinction between exploitation and expropriation this way: “Dispensing with the contractual relation through which capital purchases ‘labor power’ in exchange for wages, expropriation works by confiscating capacities and resources and conscripting them into capital’s circuits of self-expansion.” Expropriation refers to the “private appropriation of surplus value . . . [by] acquiring labor and means of production below cost, if not wholly gratis . . . supplying inputs for whose reproduction they do not fully pay . . . [Expropriated labor is] subject to domination unmediated by a wage contract,” made possible by “constituting others as lesser beings” – for example, as chattel slaves, indentured servants, colonized subjects, “native” members of “domestic dependent nations,” debt peons, felons, and “covered” beings, such as wives and children, who lack an independent legal personality. Nancy Fraser, Expropriation and Exploitation in Racialized Capitalism: A Reply to Michael Dawson, 3 Crit. Hist. Stud. 165 (Spring 2016). See Vats, supra note 2; Lateef Mtima, Intellectual Property, Entrepreneurship and Social Justice: From Swords to Ploughshares (2015). Madhavi Sunder, The Invention of Traditional Knowledge, 70 Law & Contemporary Problems 95 (Spring 2007). Cheryl I. Harris, Whiteness as Property, 106 Harv. L. Rev. 1707 (1993).

https://doi.org/10.1017/9781108697613.036 Published online by Cambridge University Press

Intellectual Property After George Floyd

561

Black intelligence and the capacity of non-white peoples for creative expression.31 Vats discusses the response of Founding Fathers to contemporary Phillis Wheatley, the first African American author of a published book of poetry in the late eighteenth century. Stolen from West Africa and enslaved in the Boston home of the Wheatleys as a domestic servant at the age of seven, the young Wheatley learned to read and write, and was encouraged by the Wheatleys along a path of self-education. Her published book of poetry was celebrated in England and America, even drawing the praise of George Washington. But some, including Thomas Jefferson, remarked upon her work with disdain, rejecting the idea that a Black author could exhibit creative genius. Some were skeptical of Wheatley’s authorship – indeed, there was even a trial of sorts, as Boston’s men of letters stood as judge to determine whether Wheatley was truly the author of the works.32 More recently, Amanda Gorman, the first National Youth Poet Laureate who rose to fame after reciting her poetry at the Presidential Inauguration of Joseph Biden in January 2021, shared her own battle with the prejudices against Black women creators that Wheatley faced long ago. Gorman Tweeted: “Whenever I feel unable to write, I remember that Thomas Jefferson singled out young black poetess Phillis Wheatley with shallow disdain: ‘Among the blacks is misery enough, God knows, but no poetry.’ Then I crack my knuckles and get to work.”33 IP-SJ scholarship must continue to contend with ongoing resistance to Black genius, and the structural barriers to the inclusion of Black creatives and innovators and their achievements on an equitable and non-exploitative basis. Recent debates about cultural appropriation demonstrate the pernicious ways whiteness is property in the creative sphere. As the cultural critic Ijeamo Oluo puts it, “[c]ultural appropriation is the product of a society that prefers its culture cloaked in whiteness.”34 One contemporary example: Black choreographers claim to be consistently copied by white artists on TikTok – while only the latter profit handsomely as media influencers, earning millions annually.35 IP-SJ must continue to illuminate how the denial of due recognition and attendant financial rewards to Black and other similarly marginalized creators denies equality and structures inequality. Basic needs. Intellectual property rights are not ends in themselves. They are tools to promote human flourishing. They may be limited to promote other rights, including access to basic needs, from seeds to medicines to educational materials. While IP rights serve as incentives for some kinds of creativity and innovation, incentives for production cannot be the only value recognized and promoted by IP law. Unequal access to COVID-19 vaccines illustrates well what is at stake. Patents protecting the first drug companies to succeed in making vaccines led the wealthiest countries in North America and Europe to buy up most of the supply of the vaccines – “enough to vaccinate two and three times their populations.”36 In the meantime, “poor countries [were] scrambling to secure their share.”37 The IP-SJ agenda mandates that the

31

32 33 34 35

36 37

See Vats, supra note 2, at 34–39. See also Zvi S. Rosen, Unequal Copyright in the Nineteenth Century, ch. 11 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023) (exploring how this skepticism fueled the efforts of Black and women authors to obtain copyrights as public confirmation of their expressive capabilities). See Henry Louis Gates, Jr., The Trials of Phillis Wheatley (2003). Tweet by Amanda Gorman, Feb. 1, 2021. Ijeoma Oluo, So You Want to Talk About Race (2019). Abram Brown, TikTok’s 7 Highest Earning Stars: New Forbes List Led By Teen Queens Addison Rae and Charli D’Amelio, Forbes, Aug. 6, 2020. Peter S. Goodman, If Poor Countries Go Unvaccinated, a Study Says, Rich Ones Will Pay, N.Y. Times, Jan. 23, 2021. Id.

https://doi.org/10.1017/9781108697613.036 Published online by Cambridge University Press

562

Madhavi Sunder

judicial and legislative caretakers of the IP ecosystem consider innovation beyond mere incentives, and address matters as fundamental as access to basic needs. Going further, the inequitable access to COVID-19 vaccines has exposed structural inequity in global IP regimes. While nations had the freedom to tailor IP law, including patent law, to meet their own economic and humanitarian needs prior to 1995, the establishment of the World Trade Organization and the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) stripped countries of this autonomy, establishing global minimum standards for IP protection that require 20-year patents in all areas of technology, including medicines.38 The “bargain” leaves low and middle-income countries that lack capacity to innovate pharmaceutical products or to manufacture them in a state of perpetual dependency and need. Post-pandemic scholarship must confront how to decolonize the rules of innovation to promote public health, equity, and human rights. Technology transfer is necessary to empower low and middle-income countries to become producers of essential medicines and vaccines in their own right. As Lateef Mtima writes, a social justice approach keeps central a commitment to “access, inclusion, and empowerment.”39 Cultural democracy. Empowerment to participate in cultural production is connected to another goal of a social justice approach to IP: broadening participation in innovative industries.40 The ability to participate in cultural production is affected by many factors, including structural, economic, and cultural forces. In the case of TRIPS, low and middle-income manufacturers are legally limited in their ability to make life-saving medicines and vaccines under patent and protected by trade secrets. In addition, these countries lack economic resources to invest in R&D and manufacturing facilities. In other instances, women and people of color are discounted as authors and inventors, or are thwarted from asserting their own takes on popular culture.41 An IP-SJ approach must continue to keep its focus not just on the production of more cultural products but on expansion of participation by all peoples to make and enjoy science and culture. Structural Racism and Distributive Justice. Richard Rothstein has powerfully described how decades of racist housing policies impoverished Black Americans in cities such as Ferguson, Missouri, underpinning cycles of segregation, poverty, policing, mass incarceration, and death of Black men at the hands of police officers. Access, or lack thereof, to property and wealth form the structural basis of inequality along the color line today. IP-SJ scholars attend to the maldistribution of the fruits of intellectual labor, from dance to music, fashion, and medicinal remedies, and the effects of this maldistribution on well-being.42 Distributive justice lies at the core of the IP-SJ precept of socio-economic empowerment. Fair culture. How might IP laws promote cultural sharing, mutual recognition, dignity, diverse participation and just livelihoods? This will require a commitment not just to a free culture but also to a fair culture. Fair culture, like free culture, recognizes and celebrates the 38

39 40

41

42

See Zehra Betül Ayranci, Intellectual Property Social Justice on the International Plane, ch. 19 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Mtima, supra note 3. Mtima & Jamar, supra note 20 (“a fundamental IP-SJ tenet is that the equitable participation of all members of society is essential to achieving the most propitious qualitative and quantitative outcomes”). See, e.g., Elizabeth L. Rosenblatt, User-Generated Transformation: Intellectual Property, Social Justice, and Fanworks, ch. 16 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023). Lateef Mtima, Copyright and the Interdependent Relationship Between Social Utility and Social Justice, ch. 5 in The Cambridge Handbook of Intellectual Property and Social Justice (Steven D. Jamar & Lateef Mtima eds., 2023).

https://doi.org/10.1017/9781108697613.036 Published online by Cambridge University Press

Intellectual Property After George Floyd

563

intercultural dimensions of creativity. Our IP laws must incentivize not just the creation of more culture, but also promote cultural exchange, appreciation, and growth. Culture should not be hermetically sealed off or protected by guardians. At the same time, fair culture, unlike free culture, recognizes that cultural exchanges take place against sharp differentials of power and knowledge.43 Power matters, as do histories of colonialism, slavery, and racism, which continue to affect who makes and benefits from culture today, and our law must attend to these historical realities and how they continue to shape global cultural markets. Finally, a fair culture paradigm recognizes the interrelationship between IP and other freedoms, from the freedom to live a healthy life, to the right to education, to the right to engage in and critique one’s culture, to the right to a livelihood from one’s intellectual work. While the underlying value of free culture is freedom to innovate, fair culture recognizes the interrelationship among intellectual rights and other freedoms and prioritizes human development as freedom. We innovate to promote a host of values, from the freedom to think and speak to the benefits of intercultural exchange, to distributive justice. To hold faith with these values, the IP ecosystem must be predicated upon social justice principles of equitable access, inclusion, and empowerment. The failure to recognize Black and brown citizens as having the intellectual capacity to create has always rested at the heart of American discrimination and oppression, from enslavement to contemporary police brutality that treats people of color as less than human. To achieve the full social promise of IP protection, IP laws must foster our ability to live a good life in a society that respects us.

43

See Sunder, supra note 7.

https://doi.org/10.1017/9781108697613.036 Published online by Cambridge University Press

https://doi.org/10.1017/9781108697613.036 Published online by Cambridge University Press