The Growth of Intellectual Property: A History of the Ownership of Ideas in the United States

William W. isher III* forthcomin! in Eigentumskulturen im Vergleich "#andenhoec$ % &uprecht' ()))* In 1987, Taco Cabana, a chain of Mexican restaurants in Houston, Texas, brought suit against Two Pesos, a rival chain, claiming that Two Pesos ha eliberatel! co"ie Taco Cabana#s $cor% & combination of nonfunctional features '' overhea garage oors use to se"arate a "atio area from the ining room, a bright color scheme inten e to create a (festive atmos"here,( a istinctive roof esign, etc% '' lent a istinctive overall image to each of its restaurants, Taco Cabana argue % Two Pesos ha acte wrongfull! in a""ro"riating that image without "ermission% )ive !ears an several court rulings later, Taco Cabana "revaile % Two Pesos was re*uire to "a! several million ollars in amages an alter the a""earance of its restaurants% n1 +ast !ear, a grou" of intellectual'"ro"ert! law!ers argue in an article in the ,ational +aw -ournal that athletic maneuvers coul an shoul be "atente % & metho (for sailing an &merica#s Cu" !acht wherein the !acht sails 1. egrees closer to the win , for high' /um"ing higher or for s0iing ownhill 1. "ercent faster,# the! claime , coul easil! be classifie as a (useful "rocess( within the meaning of the fe eral "atent statute% If nonobvious an novel, such a techni*ue shoul *ualif! for "atent "rotection% &fter all, if one can "atent a new surgical "roce ure, wh! not the )osber! )lo"1 n2 The chances that the courts would adopt this proposal are not great, but the argument is colorable. 2here i these claims come from1 How i it come to "ass that, in the 3nite 4tates, one can now own the $cor of a restaurant, an law!ers argue seriousl! about exclusive rights to athletic moves1 This essa! see0s to answer those *uestions% I. The fiel of law in which such claims arise has recentl! come to be 0nown as (intellectual "ro"ert!%( It encom"asses several, "artiall! overla""ing octrines% Co"!right law "rotects (original forms of ex"ression( '' Magic Mountain, (4tar 2ars,( ()i ler on the 5oof%( Patent law "rotects inventions '' win surfers, chemical "rocesses, geneticall! engineere mice% Tra emar0 law "rotects wor s an s!mbols that i entif! goo s an services '' (Mc6onal s,( the istinctive sha"e of a )errari Testarosa% Tra e'secret law "rotects information that a com"an! has trie but faile to conceal from com"etitors '' secret formulas for soft rin0s, confi ential mar0eting strategies% The (right of "ublicit!( "rotects celebrities# interests in their images an i entities% The histor! of each of these octrines 7li0e the histories of most areas of the law8 is involute an i ios!ncratic, but one overall tren is common to all9 ex"ansion% 2ith rare

exce"tions, the set of entitlements create b! each of the octrines has grown stea il! an ramaticall! from the eighteenth centur! to the "resent% A. 2ithin co"!right law, the most obvious axis along which this ex"ansion has occurre is uration% The original, 179. Co"!right &ct establishe a co"!right term of 1: !ears; if the author were still living at the en of that "erio , he coul renew the co"!right for an a itional 1: !ears% n3 Over the next two centuries, Congress periodically added to these time periods. n4 Most copyrights acquired today will last for the life of the author plus 50 years, and Congress is seriously considering extending that term for another 20 years. & less straightforwar but e*uall! im"ortant res"ect in which co"!right has grown concerns the efinition of a co"!righte (wor0%( 3ntil the mi le of the nineteenth centur!, a co"!right owner en/o!e little more than "rotection against verbatim co"!ing of his or her language% In other wor s, the (wor0( shiel e b! the statute was the literal text, nothing more% 4o, for exam"le, in 18<= a fe eral Circuit Court re/ecte the claim of Harriet >eecher 4towe that a ?erman translation of Uncle Tom's Cabin infringe her co"!right% >! the "ublication of Mrs% 4towe#s boo0, the creations of the genius an imagination of the author have become as much "ublic "ro"ert! as those of Homer or Cervantes% % % % &ll her conce"tions an inventions ma! be use an abuse b! imitators, "la!wrights an "oetasters% % % % @Her entitlements are limite toA the co"!right of her boo0; the exclusive right to "rint, re"rint, an ven it, an those onl! can be calle infringers of her rights, or "irates of her "ro"ert!, who are guilt! of "rinting, "ublishing, im"orting or ven ing with her license, (co"ies of her boo0%( & translation ma!, in loose "hraseolog!, be calle a transcri"t or co"! of her thoughts or conce"tions, but in no correct sense can it be calle a co"! of her boo0% Towar the en of the nineteenth centur!, this constricte view of an author#s rights came un er increasing attac0% Bventuall! the courts, with Congress# encouragement, aban one it in favor of the conce"t that the (wor0( "rotecte b! co"!right consists (in the substance, an not in the form alone% That which constitutes the essence an value of a literar! com"osition, which re"resents the results of the author#s labor an learning, ma! be ca"able of ex"ression in more than one form of language ifferent from that of the original% % % % @ThusA translation is not in substance a new wor0% It is a re"ro uction in a new form of an existing one%( n6 This modern understanding confers upon copyright owners many more entitlements than the right to prepare translations. Close approximation of the plot of a novel or play, preparation of a screenplay based on a novel, use of the characters from a movie or book to create an unauthorized sequel -- all these are now understood to constitute infringement. The 0in s of wor0s to which co"!right law ma! a""l! has also grown enormousl!% )or exam"le, in 188:, the 4u"reme Court conclu e that "hotogra"hs coul be co"!righte %

n7 In 1971, Congress decided that musical recordings (not just musical compositions, but recorded performances thereof) should be shielded from copying. n8 Twenty years ago, computer software was added to the list of protectable works. n9 The most recent major addition was architectural works. n10 +. +i0e co"!right, "atent law was gra uall! exten e over the course of the 19th an C.th centuries to an increasingl! wi e arra! of inventions% 4ome exam"les9 Industrial Designs. In 18:C, ho"ing to "rovi e (encouragement to the ecorative arts,( Congress exten e the reach of the "atent statute to cover (new an original esigns for articles of manufacture%( The egree of originalit! eman e b! the Patent Dffice an the courts before recogniEing a "atent of this sort has varie over the !ears, but recentl! a wi e arra! of (ornamental ob/ects( '' from e!eglass is"la! rac0s to containers for is"ensing li*ui s '' have been eeme "rotectable% n11 Plants. 3ntil the earl! twentieth centur!, "lants were consi ere "ro ucts of nature an hence un"atentable% n12 The Plant Patent Act of 1930 overrode this principle, extending a modified form of patent protection to new varieties of asexually reproducing plants. n13 In 1970, Congress went even further, reaching new and "distinct" sexually reproducing plant varieties. n14 Surgical Procedures. 3ntil the 4econ 2orl 2ar, the Patent Dffice too0 the "osition that (the metho s or mo es of treatment of "h!sicians of certain iseases are not "atentable%( n15 In the 1950s, it abandoned this categorical rule, n16 but the continued wariness of the courts n17 combined with doctors' qualms concerning the monopolization of potentially life-saving processes kept the number of such patents low. n18 Recently, however, the rate has increased sharply. The Patent and Trademark Office now typically grants over a dozen medical procedure patents each week. n19 In 1996, Congress curtailed the use of such patents -- not by eliminating them, however, but rather by exempting physicians and "health care entities" (e.g., nursing homes, hospitals, and medical schools) from liability for infringing them. n20 Software. 3ntil the 198.s, both the Patent Dffice an the courts resiste the "atenting of software "rograms, "rimaril! on the groun that the! constitute (mathematical algorithms( an thus un"atentable ("henomena of nature%( n21 In 1981, the United States Supreme Court signaled a slight weakening in this resolve, upholding the patent on a software program (embedded in a computer) that served to monitor continuously the temperature inside a synthetic rubber mold. n22 Since that time, the Federal Circuit has adopted an increasingly receptive posture; today,

virtually any software program (if novel, nonobvious, etc.) is patentable, so long as the applicant describes it as being programmed into a general purpose computer. n23 The predictable result has been an enormous surge in software patent applications. This "roliferation of the 0in s of "otentiall! "atentable inventions has been "arallele b! ex"ansion of the set of entitlements encom"asse b! a "atent% The octrine that best exem"lifies that ex"ansion is the conce"t of (e*uivalents%( n24 Ordinarily, the rights of a patent owner are defined, not by the scope of his invention, but by the language of his "claims"; a rival's product will infringe the patent if and only if it falls within the bounds of a valid claim. In the nineteenth century, rivals would sometimes take advantage of this principle. By constructing products that differed in minor respects from patentees' claims, they sought to avoid liability. Toward the end of the century, the courts developed the equitable doctrine of "equivalents" to prevent such evasive maneuvers. n25 Since that time, four developments have transformed the doctrine into a powerful weapon in the hands of patentees. First, the courts have abandoned the notion that an "equivalents" inquiry is only appropriate when there is evidence that the defendant has deliberately copied the plaintiff's invention or engaged in some other kind of fraud; now the doctrine is available in every case. n26 Second, the formulas used by the courts to define the ambit of the doctrine have become more favorable to patentees; now plaintiffs need only show that defendants' products are not "substantially" different from the patent's claims. n27 Third, the increasingly common use of juries in patent cases has resulted in increasingly generous (to patentees) interpretation of the doctrine. n28 Finally, courts have held that the doctrine of equivalents may be invoked by patentees even when the defendant's product or activity only became possible as a result of new technology -- in other words, even if the defendant's product or activity could not have been foreseen at the time the patent was granted. n29 2hat about the manner in which the Patent Dffice an courts have inter"rete an a""lie the stan ar re*uirements of "atentabilit! '' novelt!, nonobviousness, utilit!, etc%1 Here the ramatic shift in favor of "atentees has been more recent% 5oughl! s"ea0ing, the nineteenth centur! was characteriEe b! ever more generous inter"retation of the statutor! criteria% Partl! as a result, "atents became im"ortant to man! com"anies an in ustries% n30 Between the First and Second World Wars, however, the tide turned. Angered by anticompetitive uses of patents by large companies, both the Patent Office and the courts became substantially less willing to grant or uphold questionable patents. Beginning in the 1950s, the Patent Office became more generous, but the federal courts varied widely in their willingness to go along. The creation in 1982 of the Court of Appeals for the Federal Circuit eliminated these variations. Equally importantly, the new court (as its advocates had foreseen) has been much more favorable to patentees -sharply lowering the bar of "nonobviousness" n31 and encouraging more generous damage awards. n32 ,.

It is in the area of tra emar0 law that the ex"losion of intellectual "ro"ert! has been most stri0ing% The notion that a manufacturer who "laces on his goo s a "articular mar0 can "revent others from using the same mar0 to sell similar goo s first a""eare in &merican law in the mi le thir of the nineteenth centur!% n33 For many years, however, the kinds of marks shielded by this principle were limited. Initially, for example, most courts (and the leading commentator) insisted that, to be protected, a trademark had to include the name of the manufacturer. Arbitrary or fanciful names (e.g., "Balm of a Thousand Flowers" soap) did not qualify, n34 nor did geographic names (referring to the place a product was manufactured). n35 Gradually, these and other restrictions were lifted. By the end of the century, courts were willing to protect arbitrary names, symbols, and geographic names provided that they had acquired "secondary meaning" (i.e., if in the minds of consumers they had come to be associated with particular products). n36 The names of newspapers, hotels, and other businesses, previously protected only against fraud, were also swept into the general category of trademarks. n37 In the twentieth centur!, the ex"ansion of the set of "rotectable i entifiers continue a"ace '' most notabl! through the octrine of (tra e ress%( The antece ents of this octrine lie in a few late nineteenth'centur! ecisions in which courts shiel e , as a /uncts to tra emar0s, (@tAhe "ac0age, case, or vessel in which the commo it! is "ut, if "re"are in a "eculiar or novel manner%( n38 By the late twentieth century, they had gone much further, shielding against imitation such things as the uniforms of the cheerleaders for the Dallas Cowboys football team and the layout and appearance of greeting cards. n39 The entitlements a manufacturer ac*uires through (ownershi"( of a tra emar0 have li0ewise grown enormousl!% Initiall!, onl! the use b! com"etitors of i entical mar0s 7or "ortions thereof8 was actionable% +ater, com"etitors were "revente from using mar0s sufficientl! similar as to cause consumer confusion, a stan ar the courts construe ever more generousl!% Most recentl!, tra emar0 owners have been able to halt the use of i entical or similar mar0s b! noncom"etitors, on the groun that such usage woul (tarnish,( (blur,( or ( ilute( the mar0% n40 The geographic range of a trademark has also expanded radically. Initially, trademark owners' entitlements were limited to the territories in which they were actually selling or advertising their products. n41 The adoption of the Lanham Act in 1946 allowed users of marks to establish "nationwide constructive use" of their marks as of the date of their application for trademark registration. n42 The Lanham Act (and its subsequent amendments) enlarged owners' rights in many other respects as well -- perhaps most importantly by establishing a generous set of remedies for trademark infringement, including treble damages and attorneys' fees. 6uring the same "erio , &merican courts through common'law a /u ication have evelo"e several octrines ancillar! to tra emar0 law% The most im"ortant of these is a line of ecisions initiate b! the 1918 case of International News Service v. Associated Press, in which the 4u"reme Court en/oine the efen ant news organiEation from a""ro"riating information containe in the "laintiff#s news"a"er stories until such time as the (commercial value( of that information ha ("asse awa!%( Courts in succee ing

!ears iffere shar"l! on the merits of the (misa""ro"riation( octrine announce in INS% 4ome '' most notabl!, the influential Court of &""eals for the 4econ Circuit '' have one what the! coul to eva e or limit it% n43 Others, however, have enthusiastically extended it to a variety of circumstances arguably involving "piracy" of information. In the Dow Jones case, for example, the Supreme Court of Illinois held that the Chicago Board of Trade could not develop a stock index futures contract keyed to the "Dow Jones Industrial Average," without first obtaining the permission of the company that had originally created that famous market index. n44 -. The final intellectual'"ro"ert! growth area is "erha"s less economicall! im"ortant than co"!right, "atent, or tra emar0 law, but has consi erable cultural significance% In 19<:, the lea ing co"!right scholar in the 3nite 4tates "ublishe an article a vocating the recognition of a (right of "ublicit!,( which he efine as (the right of each "erson to control an "rofit from the "ublicit! values which he has create or "urchase %( n45 Since that date, the large majority of American jurisdictions to have considered his proposal have adopted some version of it -- either through statute or through commonlaw adjudication. n46 In its modern form, this doctrine enables celebrities to prevent others from making use of the "depiction" or "endorsement" value of their identities. A few examples should suggest the scope and power of the principle. In 1983, Johnny Carson, whose long-running late-night comedy show had traditionally begun with the phrase, "Here's Johnny," successfully invoked the doctrine to prevent the sale of "Here's Johnny Portable Toilet's." n47 Five years later, Bette Midler, a popular singer, recovered $400,000 from the Ford Motor Company on the ground that Ford had deliberately used in one of its advertisements a singer whose voice closely resembled Midler's. n48 And in 1992, the Samsung Electronics Company was held to violate the right of publicity when it included in one of its advertisements "a robot, dressed in a wig, gown, and jewelry" and posed in a "stance" that made it resemble Vanna White, a famous game-show hostess. n49 A few very recent decisions have sought to curtail the reach of the doctrine, n50 but for the most part it continues (despite much gnashing of teeth by academic commentators n51 ) to be widely accepted.

II. 2hat "ro uce this ramatic ex"ansion of intellectual'"ro"ert! rights1 ,o single force was res"onsible% 5ather, a host of factors '' some of them economic, some i eological, some "olitical, an some "eculiar to the s"here of the law '' converge to cause the growth% A. Perha"s the most obvious contributing circumstance was the gra ual transformation of the basis of the &merican econom!% 3ntil the late eighteenth centur!, the >ritish ,orth

&merican colonies that became the 3nite 4tates e"en e heavil! on agriculture; no more than ten "ercent of the wor0force of an! colon! was engage in manufacturing% n52 Over the course of the nineteenth century, the economy became ever more dependent upon industry. n53 During the twentieth century, industry has been gradually supplanted by information processing as the principal source of American jobs. The impact of this familiar but fundamental change was an increase in the perceived need for intellectual property rights. During the colonial period, few people stood to gain from copyright or patent protection; not surprisingly, few copyrights or patents were granted. n54 Since that time, the demand for intellectual-property protection has steadily increased. & secon , relate long'term change was the transformation of the 3nite 4tates from a net consumer of intellectual "ro"ert! to a net "ro ucer% 3ntil a""roximatel! the mi le of the nineteenth centur!, more &mericans ha an interest in ("irating( co"!righte or "atente materials "ro uce b! foreigners than ha an interest in "rotecting co"!rights or "atents against ("irac!( b! foreigners% The shift in the (balance of tra e( ha a "re ictable effect on the stance ta0en b! the 3nite 4tates in international affairs% In the earl! nineteenth centur! '' as Charles 6ic0ens learne to his isma! '' the &merican government was eaf to the "leas of foreign authors that &merican "ublishers were re"rinting their wor0s without "ermission% n55 In the late twentieth century, by contrast, the United States has become the world's most vigorous and effective champion of strengthened intellectual-property rights. n56 Thus, for example, the American delegation successfully took a very hard line in the negotiation of the TRIPS agreement, demanding that other nations acquiesce in their generous version of patent and copyright laws. n57 And software piracy in China has triggered a much sterner reaction from the United States than has widespread human-rights violations. n58 & thir economic evelo"ment that ha a "articularl! strong im"act on tra emar0 law was a ramatic increase uring the earl! twentieth centur! of the im"ortance of a vertising% The watershe was the 19C.s% To be sure, manufacturers an retailers ha use a vertising before then% >ut a combination of circumstances uring the #C.s le to a surge in a vertising ex"en itures9 the "roliferation of national bran s; manufacturers# ex"erimentation with a vertising as a wa! of stabiliEing consumer eman s an thus re ucing investment ris0s; an increase reliance u"on ra"i "ro uct st!le changes 7"romote b! a vertising8 to stimulate consumers# thirst for their "ro ucts% (>! 19C8, for exam"le, the )or Mo el T in basic blac0 ha become the Mo el &, available in four colors an in seventeen bo ! st!les, an to "romote the st!le changes, in one exce"tionall! ex"ansive wee0 )or s"ent about FC million on a vertising%( n59 By the end of the decade, approximately 3 percent of the national product ($3.4 billion) was being devoted to advertising. n60 Much of that money was devoted to establishing and maintaining the reputation of trademarks and tradenames. For obvious reasons, manufacturers wished to prevent others from "free-riding" on their investments -- and sought strengthened trademark protection. +.

To this "oint, the ex"ansion of intellectual'"ro"ert! rights woul seem rea il! ex"lainable in functional terms% The law, it a""ears, evolve so as to serve the changing (nee s( of the &merican econom!% Giewe from this angle, law seems to be su"erstructural '' its evelo"ment riven b! changes in the un erl!ing mo e of "ro uction an associate relations of "ro uction% n61 But this is not the end of the story. To account fully for the development of intellectual-property law, one must also take into account some cultural and ideological factors. The first 7if not most im"ortant of these8 has been the urable an wi es"rea "o"ular commitment in the 3nite 4tates to a labor' esert theor! of "ro"ert!% The notion 7commonl! associate b! aca emics with -ohn +oc0e8 that a "erson eserves to own something that he or she has create through "ro uctive labor has long ha consi erable currenc! in &merica% n62 This was perhaps more true in the nineteenth century than today, but social psychologists tell us that, even now, most Americans (as well as most Western Europeans) subscribe to the closely related "equity theory" of distributive justice -- the notion that each person who contributes to a collective enterprise deserves a reward commensurate with the magnitude of his or her contribution to the enterprise. n63 4ince the late eighteenth centur!, such attitu es have contribute to the willingness of legislators an /u ges first to establish an then to ex"an intellectual "ro"ert! rights% Thus, for exam"le, the committee that "ersua e the Continental Congress to recommen to the states that the! a o"t co"!right laws /ustifie the "ro"osal "artl! on the groun that (nothing is more "ro"erl! a man#s own than the fruit of his stu !%( n64 Similar statements by other lawmakers may be found throughout American history. For example, in 1837 Henry Clay argued that it is "incontestable" that "authors and inventors have, according to the practice among civilized nations, a property in their respective productions . . . ; and that this property should be protected as effectually as any other property is, by law, follows as a legitimate consequence." n65 More recently, Justice O'Connor justified her narrow reading of the fair-use doctrine (which privileges certain sorts of nonpermissive uses of copyrighted materials) on similar grounds: "The rights conferred by copyright are designed to assure contributors to the store of knowledge a fair return for their labors." n66 & secon , relate i eological current has been the wi es"rea "o"ular sus"icion in the 3nite 4tates of governmental involvement in the "rocess of i entif!ing an rewar ing goo wor0s of art an sociall! valuable inventions% This attitu e cr!stalliEe later than the labor' esert theor! /ust iscusse % 3ntil the mi le of the nineteenth centur!, &mericans were remar0abl! rece"tive to the notion that governments coul an shoul a vance the "ublic interest b! i entif!ing an encouraging sociall! valuable ventures of all sorts% This general is"osition ha man! manifestations in earl! &merican legal an economic histor! '' inclu ing, for instance9 selective grants of cor"orate charters to enter"rises that, in the legislators# view, "romise to re oun to the "ublic welfare; (Mill &cts,( which em"owere lan owners who wishe to install mills on streams running through their "ro"ert! to buil ams that floo e their neighbor#s "ro"ert! 7"rovi e the! "ai com"ensation8; an generous elegations b! state legislatures of the "ower of eminent omain to "rivate railroa s% n67 This same general mercantilist sentiment

underlay several proposals early in American history that inventors be rewarded, not with patents, but with public funds. For example, in 1787, Tench Coxe proposed the following scheme to the Pennsylvania Society for the Encouragement of Manufactures and the Useful Arts: Premiums for useful inventions an im"rovements, whether foreign or &merican, for the best ex"eriments in an! un0nown matter, an for the largest *uantit! of an! valuable raw material, must have an excellent effect% The! woul assist the efforts of in ustr!, an hol out the noble incentive of honourable istinction to merit an genius% The state might with great convenience enable an enlightene societ!, establishe for the "ur"ose, to offer liberal rewar s in lan for a number of ob/ects of this nature% Dur fun s of that 0in are consi erable, an almost ormant% n68 The first raft of what ultimatel! became the intellectual'"ro"ert! clause of the Constitution similarl! incor"orate a s!stem of governmental awar s an subsi ies% n69 Edward Walterscheid argues convincingly that this approach was ultimately rejected, not because of principled opposition to governmental involvement in the identification of worthy inventions, but because it was deemed too expensive. n70 By the late nineteenth century, however, this receptivity to direct governmental supervision of inventive activity had been eroded by the complex of attitudes commonly known as classical liberalism -- including, most importantly, the notion that the public and private spheres (the "state" and "civil society") were and should be distinct, combined with a general distrust of governmental tinkering with the market. In the altered ideological climate, intellectual-property rights were more palatable than governmental prizes as a way of stimulating creativity. To modern lawyers, both systems plainly involve governmental adjustments of the market; to that extent, both entail departures from an ideal of laissez-faire. But the intervention by government was (and is) less apparent when it consists of conferring property rights on classes of authors and inventors than when it consists of the identification and support of particular persons. Classical liberalism has also contribute in man! more etaile wa!s to the ex"ansion of intellectual'"ro"ert! rights% The most im"ortant, "robabl!, has been the strong commitment of both courts an legislators when a ministering the co"!right laws to the "rinci"le of aesthetic relativism% 3nwilling to ifferentiate between goo an ba art 7or art an a vertising8, we exten the umbrella of co"!right "rotection to ever!thing '' from brilliant bursts of creativit! to 7at least in theor!8 minor eviations from existing wor0s cause b! a (co"!ist#s ba e!esight or efective musculature, or a shoc0 cause b! cla" of thun er%( n71 Residues of classical liberalism also, incidentally, continue to shape many other, related aspects of American politics and law -- for instance, the distressingly low levels of public funding for the arts in the United States (compared, for instance, to most countries in Western Europe), and the apparently successful recent efforts of conservative Republican congressmen to stunt the National Endowment for the Arts.

& thir i eological current that ha a "articularl! "owerful im"act on &merican co"!right law was the "o"ulariEation an then "ersistence of a (romantic conce"tion of authorshi"%( & great eal of recent scholarshi" has been evote to the ex"loration of this theme% n72 In brief, the story goes as follows: Until the eighteenth century, neither popular nor elite culture in Europe or North American placed a high value on the individual artist or author. Tradition, skill, and connection with the past were more important than originality. n73 The convergence of several forces (Romanticism, the political theory of possessive individualism, the self-interest of English book publishers, the scheming of French monarchists, etc.) precipitated a widespread repudiation of this attitude toward art in favor of a celebration of individual artistic genius. Wordsworth captured the new ideal: ?enius is the intro uction of a new element into the intellectual universe9 or, if that be not allowe , it is the a""lication of "owers to ob/ects on which the! ha not before been exercise , or the em"lo!ment of them in such a manner as to "ro uce effects hitherto un0nown% n74 Co"!right law in Buro"e an the 3nite 4tates grew out of '' an to some extent hel"e "o"ulariEe '' this romantic vision% Combine with the general labor' esert theor! 7 iscusse above8, it hel"e su""ort the notion that an artist eserves to own his creations% &n , as Peter -asEi has shown, it hel"e sha"e m!ria s"ecific octrines in co"!right law '' usuall! 7though not invariabl!8 in a fashion that ex"an e the entitlements of co"!right owners% & few exam"les9 the elaboration of a generous conce"tion of a co"!righte (wor0( an a concomitant ex"ansion of the rights of co"!right owners; the extension of co"!right "rotection to "hotogra"hs; an the curious wa! in which the (wor0'for'hire( octrine has evolve in the 3nite 4tates% n75 2hat is most stri0ing '' an to contem"orar! scholars, most istressing '' about this i eological current is its continue strength% The image of the lone author wor0ing in her garret is almost wholl! obsolete% To a!, most writing 7in ee , most creativit! of all sorts8 is collaborative% B*uall! im"ortantl!, the extent to which ever! creator e"en s u"on an incor"orates into her wor0 the creations of her "re ecessors is becoming ever more obvious% Het &merican lawma0ers cling stubbornl! to the romantic vision% n76 There are few signs that it is losing its grip on the law. Indeed, the recent introduction into American copyright law of (a variant of) the Continental theory of moral rights suggests that its power may be waxing, not waning. n77 +ess well stu ie than the romantic image of the author '' but e*uall! im"ortant to the overall sha"e of &merican intellectual "ro"ert! law '' is an analogous heroic image of the inventor% &s Ieith &o0i observes, this i eal has an even ol er "e igree than the i ea of original authorshi"% ?roun e in (the 5enaissance exaltation of the originar! human sub/ect as inventive genius, as embo ie in +eonar o e Ginci#s wor0,( am"lifie b! the (Bnlightenment elevation of scientific geniuses such as 6escartes, +eibnitE, an ,ewton,( the glowing image of the inventor was alrea ! well establishe in 2estern culture when &merican "atent law began to ta0e sha"e% n78 In the United States, the attractiveness and importance of this image was reinforced by at least three cultural forces: the frontier ethic, which envisions man as pitted against nature, harnessing it

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through ingenuity as much as through force; n79 the associated "pastoral ideal," celebrating the transformation of the wilderness into the garden; n80 and the premium placed on social mobility, from which standpoint inventiveness is seen as an important way in which a talented youth can achieve wealth and fame. n81 The net result is the reverence with which Americans have treated -- and continue to treat -- our major inventors: Thomas Edison, Alexander Graham Bell, the Wright Brothers, Bill Gates, etc. The im"act of this imager! on "atent law has been enormous% ,ot alwa!s has it o"erate to increase the availabilit! of "atents% )or exam"le, the establishment an sometimes severe a""lication of the re*uirement that, to be "atentable, an invention must be (nonobvious( to a "erson having or inar! s0ill in the "ertinent art n82 is plainly traceable to the heroic image of the inventor. What we wish to reward are "flashes of creative genius," n83 not mere works of craftsmanship. The net effect of this orientation has been to constrict rather than to expand the zone of creations covered by patents. n84 But, in general, the high regard in which inventors have been held in the United States has worked to support and expand the patent system. +i0e the romantic i eal of authorshi", the image of the inventor has "rove istressingl! urable% )or exam"le, Ieith &o0i observes that the ebate over the "atenting of 6,& fragments from the Human ?enome Pro/ect was "ermeate with heroic imager! 7researchers analogiEe to +ewis J Clar0; the "ro/ect as a whole li0ene to the search for the Hol! ?rail, etc%8 n85 The rhetoric persists (and continues to shaping patent policy) despite the ubiquity of collaborative research and development (of which the Human Genome Project is a prime example) -- to which the image of the lone genius seems singularly inapt. ,. The two forces /ust reviewe '' economic nee s an i eological "ressures '' have been reinforce in the 3nite 4tates b! a recurring "olitical !namic% The a vocates of increase intellectual "ro"ert! "rotection have consiste , for the most "art, of creators, their surrogates 7"ublishers, movie stu ios, etc%8, businesses intereste in "rotecting their tra emar0s, "atent "ortfolios, or tra e secrets, an celebrities eager to ca"italiEe on their re"utations% Most have ha strong financial interests in statutor! reform that woul "rotect them against non"ermissive use of their ("ro"ert!%( The interests of "ersons who woul benefit from re uce intellectual'"ro"ert! "rotection, b! contrast, have ten e to be more ilute % The largest an most im"ortant such grou" consists of consumers '' each of whom t!"icall! has ha onl! a small sta0e in the content of the "ertinent laws% The result is that lobb!ing efforts have re"eate l! been biase in favor of the ex"ansion of intellectual "ro"ert!% Bnthusiasts have ma e themselves hear , while s0e"tics have been largel! silent% There are man! exam"les of this !namic in the course of &merican histor!% & *uaint but "erha"s im"ortant earl! instance involves the efforts of -ohn )itch, one of the "ersons who claime to have invente the steamboat, to obtain "atent "rotection for his invention% 6uring the wee0 of &ugust C., 1787, )itch invite at least three 7an "erha"s man! more

11

n86 ) members of the Constitutional Convention to see a demonstration (and perhaps to ride upon n87 ) his invention. What exactly was discussed during this demonstration we will never know, but the chances are good that he pressed on the delegates the need for firmer, national patent laws. Fitch's timing was either shrewd or fortuitous. On August 18, the first draft of what ultimately became the intellectual-property clause had first been presented to the delegates. n88 By September 5, they had settled on the language that was ultimately incorporated into the Constitution. n89 Man! exam"les of exertion of the same 0in of "ressure can be foun in the legislative histor! of the 197K general reform of the Co"!right &ct% &s -essica +itman has shown, the Congressional committees an subcommittees charge with overseeing that reform t!"icall! refuse to raft statutor! language themselves% Instea , the! force the re"resentatives of organiEe interest grou"s that ha sta0es in the content of the statute to negotiate com"romises% Man! of the crucial "rovisions in the act incor"orate verbatim the fruits of those eals% Thus, for exam"le, (@tAhe wor ing of the fair use "rovision, an the language of the committee re"orts accom"an!ing it, emerge from a har fought com"romise involving "rotracte , own'to'the'wire negotiations among re"resentatives of authors, com"osers, "ublishers, music "ublishers, an e ucational institutions%( n90 Similar compromises provided the content for "the statute's treatment of cable television, library photocopying, phonorecord publishing, jukebox operation, and the manufacturing clause." n91 This is not to suggest that the parties to these negotiations were always in accord. On the contrary, the "affected interests" often disagreed sharply, and many of the compromises were achieved only after protracted discussions and much cajolery by the pertinent Congressional committees. n92 The point, rather, is that the negotiations privileged groups with interests sufficiently strong and concentrated to have formal representatives. Very rarely was the public -- the consumers of intellectual products -represented in any way. And Congress itself -- whose job, one might think, is precisely to protect the public's interest -- failed to do so. The exam"les coul be multi"lie , n93 but the general proposition is clear enough: The sharply different densities of the "interests" on opposite sides of intellectual-property issues, combined with the important role played by organized interest groups in American politics, means that, more often than not, the proponents of expanded entitlements will win out. -. The fourth an final force that has contribute to the growth of intellectual'"ro"ert! rights consists of a gra ual shift in the terminolog! use b! law!ers to escribe an iscuss those rights '' in a wor , the ("ro"ertiEation( of the fiel % In the eighteenth centur!, law!ers an "oliticians were more li0el! to refer to "atents an co"!rights as (mono"olies( than the! were to refer to them as forms of ("ro"ert!%( The "o"ularit! of the former term erive "artl! from the historical origins of "atent law9 In Bnglan , "atents in the mo ern sense originate in section K of the 1KC= 4tatute on Mono"olies, which both escribe "atents as (mono"olies( an exem"te them from the general ban on ro!al grants of such rights% n94 But the currency of the term also derived partly from

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-- and helped to reinforce -- a substantive position: like other "monopolies," patents and copyrights were dangerous devices that should be deployed only when absolutely necessary to advance some clear public interest. Thomas Jefferson was the most prominent adherent of this view, but many others shared his attitude to varying degrees. n95 ?ra uall! over the course of &merican histor!, this iscourse was su""lante b! one centere on the notion that rights to control the use an issemination of information are forms of ("ro"ert!%( This transition can be seen most clearl! in the context of tra emar0 law% 3ntil the mi le of the nineteenth centur!, legal "rotection of tra emar0s was /ustifie on the basis of the nee to "rotect innocent sellers against (frau %( n96 In other words, the law in this field was understood to be a branch of (what was gradually coming to be called) tort law, n97 not property law. In the 1849 case of Amoskeag Manufacturing Company v. Spear, a sharply different language appears: "the doctrine of an exclusive property in trade-marks has prevailed from the time of the year books." n98 This new conception did not immediately sweep the field; for many years, tort and property concepts coexisted uneasily in the many subdivisions of the law of trademarks and unfair competition. But slowly, property discourse took precedence. n99 In the earl! twentieth centur!, an influential grou" of commentators lent their ai to this tren % +e b! )ran0 4chechter, these scholars argue that the true basis of tra emar0 "rotection was a "ro"ert! interest in the mar0 itself 7or in the goo will of which the mar0 was a vehicle8, an that the law shoul recogniEe an enforce that "ro"ert! right more full! than it alrea ! i % n100 Oliver Wendell Holmes and a few like-minded scholars disagreed, but they were clearly in the minority. n101 )raming arguments in terms of "ro"ert! rights became increasingl! common in other octrinal fiel s as well% )or exam"le, in the 19C1 case of is!er v. Star, the ,ew Hor0 Court of &""eals rule that the comic'stri" characters, Mutt an -eff, coul not be use b! the efen ant news"a"er without the "ermission of the creator of the characters% n102 The court founded its judgment on the general proposition: "Any civil right not unlawful in itself nor against public policy, that has acquired a pecuniary value becomes a property right that is entitled to protection as such." n103 More recently a federal district court in New York held that the digital sampling by a rap artist of a small portion of the classic song, "Alone Again, Naturally," constituted copyright infringement. The court opened its opinion justifying this outcome with the statement: "'Thou shalt not steal' has been an admonition followed since the dawn of civilization." n104 &nother, more general manifestation of the same tren has been the growing "ower of the "hrase (intellectual "ro"ert!%( >efore the 4econ 2orl 2ar, use of the "hrase as shorthan for co"!rights, "atents, tra emar0s, an relate entitlements was rare% 4ince that time, it has become stea il! more common% n105 Today, it is the standard way for lawyers and law teachers to refer to the field. 2h! oes the "o"ularit! of the term matter1 The answer '' as the +egal 5ealists recogniEe long ago '' is that legal iscourse has "ower% 4"ecificall!, the use of the term

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("ro"ert!( to escribe co"!rights, "atents, tra emar0s, etc% conve!s the im"ression that the! are fun amentall! (li0e( interests in lan or tangible "ersonal "ro"ert! '' an shoul be "rotecte with the same generous "ano"l! of reme ies% )elix Cohen 7the most insightful of the 5ealists8 "ut the "oint forcefull!9 There was once a theor! that the law of tra e mar0s an tra enames was an attem"t to "rotect the consumer against the ("assing off( of inferior goo s un er mislea ing labels% Increasingl! the courts have e"arte from an! such theor! an have come to view this branch of law as a "rotection of "ro"ert! rights in ivers economicall! valuable sale evices% In "ractice, in/unctive relief is being exten e to a! to realms where no actual anger of confusion to the consumer is "resent, an this extension has been vigorousl! su""orte an encourage b! lea ing writers in the fiel % Conceivabl! this extension might be /ustifie b! a emonstration that "rivatel! controlle sales evices serve as a "s!chologic base for the "ower of business mono"olies, an that such mono"olies are sociall! valuable in mo ern civiliEation% >ut no such line of argument has ever been "ut forwar b! courts or scholars a vocating increase legal "rotection of tra e names an similar evices% % % % Courts an scholars, therefore, have ta0en refuge in a vicious circle to which no obviousl! extra'legal facts can gain a mittance% The current legal arguments runs9 Dne who b! the ingenuit! of his a vertising or the *ualit! of his "ro uct has in uce consumer res"onsiveness to a "articular name, s!mbol, form of "ac0aging, etc%, has thereb! create a thing of value, a thing of value is "ro"ert!; the creator of "ro"ert! is entitle to "rotection against thir "arties who see0 to e"rive him of his "ro"ert!% % % % The vicious circle inherent in this reasoning is "lain% It "ur"orts to base legal "rotection u"on economic value, when, as a matter of actual fact, the economic value of a sales evice e"en s u"on the extent to which it will be legall! "rotecte % % % % The circularit! of legal reasoning in the whole fiel of unfair com"etition is veile b! the (thingification( of "ro"ert!% n106 5egrettabl!, the "leas b! Cohen an a few others that /u ges /ettison the conce"t of ("ro"ert!( an fran0l! confront the "ublic "olic! im"lications of "rotecting certain 0in s of information fell largel! on eaf ears% The ("ro"ertiEation( of the fiel continue '' an is now well'nigh com"lete%

III. The various circumstances an forces that have contribute to the "roliferation of intellectual'"ro"ert! rights have reinforce one another% Here are a few exam"les of this !namic9

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The emergence uring the earl! twentieth centur! of the &merican film in ustr! soon gave rise to a shrew an well'fun e tra e organiEation, the Motion Picture &ssociation of &merica% n107 In amicus briefs in important cases, in lobbying before Congress, and in its statements to the public, the MPAA has consistently advocated strong protection of intellectual-property rights. n108 In framing its presentations, the association has capitalized on lawmakers' receptivity to the labor-desert theory as well as their awareness of the position of the United States as the world's largest producer of films. n109 This strategy has been highly effective; with remarkable frequency, the positions the association has supported have prevailed. n110 Power begets power, of course. These doctrinal reforms have further strengthened the industry, lending the MPAA even more authority. The recentl! a o"te fe eral anti' ilution statute, which shiel s (famous( tra emar0s from activities that (tarnish,( ( is"arage,( or (blur( them, grew out of a similar intersection of forces% Manufacturers of "ro ucts sol un er famous labels com"laine to Congress that the "rotection the! en/o!e from state anti' ilution statutes was uneven; too often, the! insiste , manufacturers of unrelate "ro ucts were able to (freeri e( on the re"utations of famous bran s b! using confusingl! similar mar0s% n111 It should be unlawful, they insisted, to manufacture "DUPONT shoes, BUICK aspirin, [or] KODAK pianos." n112 Why? If consumers are not misled concerning the source of the products, why exactly is it important to prohibit such activities? The manufacturers offered two reasons: (1) they had invested time and effort in cultivating these famous marks and thus deserved legal protection; and (2) other countries already had such prohibitions and it was important that the United States not lag behind any nation in the strength of its intellectual-property protections. In the absence of any organized resistance from consumers, these arguments prevailed. n113 In short, the combination of a strong interest group, largely unopposed in the lobbying process, able to draw effectively upon the labor-desert theory and the presumptive legitimacy of its members' "property" rights, secured yet another extension of the law. The ubi*uit! of such s!nerg! means that evelo"ing a strateg! for halting the tren escribe in this article will be ifficult% ,ot im"ossible% The fate of the (2hite Pa"er( shows that it is "ossible at least to slow the growth of intellectual "ro"ert! rights% 5elease in 199< b! Presi ent Clinton#s Information Infrastructure Tas0 )orce, the 2hite Pa"er recommen e a variet! of a /ustments of co"!right law, all esigne to increase the abilit! of co"!right owners to control uses of their wor0s on the internet% n114 Those recommendations were quickly embodied in proposed legislation, which, in the absence of organized opposition, initially seemed assured of passage. To the surprise of many observers, the legislative initiative failed. Crucial to that failure was a publicity and lobbying campaign waged by a miscellaneous group of scholars, educators, and publicinterest activists. n115 In the face of this outpouring of criticism (during an election year), the Congressional committees decided not to proceed. The victory may have been short-lived; Bruce Lehman, the principal architect and proponent of the White Paper, will likely succeed in securing most (albeit not all) of his reforms through amendments to the Berne Convention. But the tide was turned at least briefly.

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Im"ortant lessons can be gleane from this e"iso e% >ut the o""onents of the growth of intellectual "ro"ert! shoul not be overl! o"timistic% & mutuall! reinforcing combination of economic, i eological, "olitical, an iscursive con itions ma0es further ex"ansion of these entitlements li0el!% .otes LProfessor of +aw, Harvar 3niversit!% The research assistance of &lexi +ahav hel"e in "re"aring this article% The comments of 6iane 5osenfel an the "artici"ants in the Conference on Pro"ert! +aw, Personhoo an CitiEenshi", hel at the )reie 3niversitMt >erlin in &"ril 1997, hel"e in revising it% .( 4ee Two Pesos" Inc. v. Taco Cabana" Inc%, <.< 3%4% 7K= 7199C8% ./ 4ee 5obert M% Iunsta t, )% 4cott Iieff, an 5obert ?% Iramer, (&re 4"orts Moves ,ext in IP +aw1,( National #aw $ournal, Ma! C., 199K, "%c1% Iunsta t efen s his "ro"osal on the following groun s9 (&lthough the norms of s"orts enthusiasts might be offen e , s"orts is now big business, an big business eman s this "rotection% Bntire in ustries exist to sell an "romote goo s an services at s"orting events an for use b! s"orts "artici"ants% Pla!ers in this vast mar0et ma! benefit from the efficienc! of fixe "ro"ert! rights in the fuel that rives these mar0et transactions% & 0e! element of that fuel is the s"orts moves themselves, an "atents, co"!rights an tra emar0s ma! "rovi e the best tools for securing those rights%(not ever!one is convince % 4ee, e%g%, March 2alsh, (Patentl! 5i iculous, 4ome 4a!; Peo"le 6un0 >as0etballs% Peo"le +ift >oxes% 4houl the Patent Dffice Protect Their #Inventions#1( #egal Times 7&ugust 19, 199K8, 4=C% .0 4ee Co"!right &ct of 179., ch% 1<, 1, 1 4tat% 1C:, 1C: 7re"eale 18=18% .1 4ee 4tewart B% 4ter0, (5hetoric an 5ealit! in Co"!right +aw,( Mic!igan #aw %eview 9: 7199K89 1197, 1C17'18% N5 Stowe 2. Thomas, C= )% Cas% C.1, C.8 7C%C%B%6% Pa% 18<=8 7,o% 1=,<1:8% .3 Peter -asEi, (Towar a Theor! of Co"!right9 The Metamor"hoses of #&uthorshi",#( Du&e #aw $ournal 19919 :<<, :78 7*uoting Baton 4% 6rone, A Treatise on t!e #aw of Pro'ert( in Intellectual Productions in )reat *ritain and t!e United States 718798, :<1' <C8% N7 +urrow4Giles 5itho!raphic ,o. 2. Sarony, 111 3%4% <= 7188:8% .6 4oun 5ecor ings &ct of 1971, Pub% +% ,o% 9C'1:., 8< 4tat% =9C% Previousl!, some states ha "rovi e '' either through statute or through common'law a /u ication '' com"arable "rotection% .) 17 3%4%C% N1.1%

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.(7 >efore 199., architectural wor0s were not shiel e b! co"!right law% &rchitectural "lans were "rotecte , but onl! in the narrow sense that the! coul not be co"ie without "ermission% If a buil er lawfull! obtaine a set of blue"rints for a buil ing 7or etermine how to buil it without blue"rints8, he was free to buil an i entical structure% & 199. statute 7catal!Ee b! the &merican ratification of the >erne Convention8 exten e co"!right "rotection to (the esign of a buil ing as embo ie in an! tangible me ium of ex"ression( an ma e clear that the buil ing itself constitute such a (me ium of x"ression%( The u"shot is that, as long as a buil ing contains original esign elements that are not functionall! re*uire , its (overall sha"e( ma! not be imitate without "ermission% & mirers ma! "hotogra"h, raw, or "aint the buil ing 7as long as it is (visible from a "ublic "lace(8 but cannot buil an i entical structure or even 7it seems8 a scale mo el of it% .(( 4ee 6onal 4% Chisum, Patents 7199C8, 1918.ff @chec0A% .(/ 4ee +, 'arte #atimer, 1889 Commn% 6ec% 1C= 718898% .(0 =< 3%4%C% secs% 1K1'1K:% .(1 Plant Gariet! Protection &ct, 7 3%4%C% NN C=C1'C<8C% N15 89 parte +rin$erhoff, ,ew 6ecisions, C7 -% Pat% Dff% 4oc#! 797, 797 719:<8% .(3 4ee +, 'arte Sc!erer, 1.= 3%4%P%O% 7>,&8 1.7 7Pat% Dff% > % &""% 19<:8 7a""roving a "atent for a metho of in/ecting me icaments b! a "ressure /et8% .(: 4ee Martin v. -(et!" Inc%, 9K )% 4u""% K89 76% M % 19<18% .(6 4ee B war )elsenthal, (Me ical Patents Trigger 6ebate &mong 6octors,( -all Street $ournal, &ug% 11, 199:, at >1, >K% .() 4ee -oel ?arris, (The Case for Patenting Me ical Proce ures,( CC American $ournal of #aw and Medicine 7199K89 8<; -effre! I%6% +ewis, (,o Protection for Me ical Processes; International Posture Ma! >e Hurt b! ,ew +aw,( New .or& #aw $ournal 7March 1., 19978, 41% ?arris lists the following as exam"les of such "atents9 (a metho of iagnosing heartbeat isor ers, 3%4% Patent ,o% :,9K.,1C9; a metho of treating arthritis, 3%4% Patent ,o% <,.CK,<=8; a metho of a ministering insulin, 3%4% Patent ,o% <,=C.,.9:; an a metho of treating iabetes, 3%4% Patent ,o% <,=C1,..9%( Ibid., n% 1% ./7 =< 3%4%C% NC877c8% The legislation oes not exten to (biotechnolog! "atents%( ./( 4ee )otts!al& v. *enson, :.9 3%4% K= 7197C8; Pamela 4amuelson, (>enson 5evisite 9 The Case &gainst Patent Protection for &lgorithms an Dther Com"uter' 5elate Inventions,( +mor( #aw $ournal =9 7199.89 1.C<, 1.=C'99% N22 -iamond 2. -iehr, :<. 3%4% 17< 719818%

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./0 4ee -ulie B% Cohen, (5everse Bngineering an the 5ise of Blectronic Gigilantism9 Intellectual Pro"ert! Im"lications of +oc0'Dut Programs,( Sout!ern California #aw %eview K8 7199<89 1.91, 11<='K=% ./1 The emergence of this octrine can "erha"s be seen as an analogue to the ex"ansion of co"!right "rotection from literal co"!ing to a""ro"riation of the gist of a wor0% 4ee text accom"an!ing note , su"ra% &nother octrine whose emergence has benefitte "atentees is (contributor! "atent infringement( '' which has ha the effect of significantl! ex"an ing the set of "ersons who will be eeme infringers% ./; Peter I% 4chalestoc0, (B*uit! for 2hom1 6efining the 5each of ,on'+iteral Patent Infringement,( Puget Sound #aw %eview 19 7199K89 =C=, =C:; Mar0 &% +emle!, (The Bconomics of Im"rovement in Intellectual Pro"ert! +aw,( Te,as #aw %eview 7< 7199789 989, 1..:% ./3 4ee /ilton Davis C!em. Co. v. -arner0$en&inson Co %, KC )%= 1<1C 7)e % Cir% 199<8 7en banc8 7"er curiam8 7hol ing that in ever! infringement case the trial /u ge must a""l! the octrine of e*uivalents8, rev# on other groun s, K< 3%4%+%2% :1KC 73%4% Mar% =, 19978; 4chalestoc0, su"ra note , =C:% ./: 4ee +emle!, su"ra note % ./6 4ee 4chalestoc0, su"ra note , =:K% ./) 4ee 5obert P% Merges an 5ichar 5% ,elson, (Dn the Com"lex Bconomics of Patent 4co"e,( Columbia #aw %eview 9. 7199.89 8=9, 8<<'<K% .07 4ee Thomas P% Hughers, American )enesis1 A Centur( of Invention and Tec!nological +nt!usiasm" 234502645 719898 @rechec0A% .0( 4ee 5obert P%Merges, (Commercial 4uccess an Patent 4tan ar s9 Bconomic Pers"ectives on Innovation,( California #aw %eview 7K 7198889 8.=, 8C.ff 719888 @rechec0A% .0/ 4ee Paul M% -anic0e, (Contem"orar! Issues in Patent 6amages,( American Universit( #aw %eview :C 7199=89 K91% .00 4ee &n rea M% ?authier, (The Bvolution of the Conce"t of Pro"ert! in &merican Tra emar0 +aw( 7un"ublishe "a"er 199.8% &s ?authier observes, the first &merican case to invo0e this "rinci"le, T!omson v. -inc!ester, i not use the wor (tra emar0,( rel!ing instea on the general tort of frau % =K Mass% 719 Pic0%8 C1: 74u"% Ct% 18=78% ,ot until the 18:.s i &merican /u ges 7rel!ing "artl! on earlier Bnglish cases8 recogniEe a istinct cause of action for (tra emar0( infringement% 4ee, e%g%, Ta(lor v. Car'enter, 11 Paige Ch% C9C 7,%H% Ch% 18::8%

18

.01 4ee etridge v. -ells, : &bb% Pr% 1:: 7,%H% 4u"er% Ct% 18<78; )rancis 3"ton, A Treatise on t!e #aw of Trademar&s 718K.8, 1.1% .0; 4ee, e%g%, -olf v. )oulard, 18 How% Pr% K:% .03 4ee e%g%, *urnett v. P!alon, 9 >osw% @,%H%A 19C 7(Cocoaine( for hair tonic8; Messerole v. T(nberg, &m% Tra e'Mar0 Cas% :79 7(>ismar0( for collars8; Colman v. Crum', 7. ,%H% <7= 7bull#s hea for mustar 8; Newman v. Alvord , <1 ,% H% 189; #ea v. -olf, :K How% Pr% 1<7, 1<8% .0: ?authier, su"ra note , at =1'=C% .06 Coo& v. Star&weat!er, 1= &bb% @,% 4%A =9C% 4ee ?authier, su"ra note , at =C'==% .0) 4ee Dallas Cowbo(s C!eerleaders" Inc. v. Puss(cat Cinema" #td %, K.: )%C C.. 719798; /artford /ouse" #td. v. /allmar& Cards" Inc. , 8:K )%C 1CK8 7C&1. 19888% Most of these mo ern rulings are foun e on section :=7a8 of the +anham &ct, of which more will be sai below% .17 4ee, e%g%, Mead Data Central v. To(ota Motor Sales" Inc %, 87< )%C 1.CK 7C Cir% 19898; 1< 3%4%C% sec%11C<7c8% .1( This restriction was tem"ere , however, b! two exce"tions9 a rival coul not use an i entical or similar mar0 in an area in which the original tra emar0 owner ha alrea ! establishe a re"utation 7e%g%, through me ia coverage8 an coul not eliberatel! see0 to ta0e a vantage of the original owner#s goo will% .1/ 1< 3%4%C% N1.<77c8% .10 4ee, e%g%, C!ene( *ros. v. Doris Sil& Cor' %, =< )%C C79 7C Cir% 19C98; %CA Mfg. Co. v. -!iteman" 11: )%C 8K 7C Cir%8, cert% enie , =11 3%4% 71C 719:. 7; National *as&etball Association v. Motorola" Inc%, 1997 3%4% &""% +exis 1<C7 719978% .11 *oard of Trade of Cit( of C!icago v. Dow $ones 8 Co. , 9C Ill% C 1.9 7198=8% )or escri"tions an anal!ses of other cases a""l!ing the (misa""ro"riation( octrine, see 6ouglas >air , (Common +aw Intellectual Pro"ert! an the +egac! of International ,ews 4ervice v% &ssociate Press,( Universit( of C!icago #aw %eview <. 7198=8, :11% .1; Melville >% ,immer, (The 5ight of Publicit!,( #aw and Contem'orar( Problems 19 719<:8, C.=, C1K% .13 4ee Michael Ma ow, (Private Dwnershi" of Public Image9 Po"ular Culture an Publicit! 5ights,( California #aw %eview 81 7199=89 1C7% .1: Carson v. /ere's $o!nn( Portable Toilets" Inc%, K98 )%C 8=1 7Kth Cir% 198=8%

19

.16 Midler v. ord Motor Co%, 8:9 )%C :K. 79th Cir% 19888; Midler v. .oung 8 %ubicam" Inc%, ,os% 9.'<<.C7, 9.'<<.C8, 1991 3%4% &""% +BPI4 CCK:1 79th Cir% 4e"t% C., 19918 7mem%8, cert% enie , 11C 4% Ct% 1<1= 7199C8% .1) -!ite v. Samsung +lecs. Am." Inc%, 971 )%C 1=9< 79th Cir% 199C8% .;7 4ee Cardtoons" #.C. v. Ma9or #eague *aseball Association, 9< )%= 9<9 7C&1. 199K8% .;( 4ee, e%g%, 5osemar! -% Coombe, (&uthorQiEing the Celebrit!9 Publicit! 5ights, Postmo ern Politics, an 3nauthoriEe ?en ers,( Cardo:o Arts 8 +ntertainment #aw $ournal 1. 7199C8, =K<; Ma ow, su"ra note % .;/ 4ee B war C% 2alterschei , (To Promote The Progress Df 4cience &n 3seful &rts9 The >ac0groun &n Drigin Df The Intellectual Pro"ert! Clause Df The 3nite 4tates Constitution,( $ournal of Intellectual Pro'ert( #aw C 7199:89 1, 1K% .;0 4ee 2% Blliot >rownlee, D(namics of Ascent1 A /istor( of t!e American +conom( 7197:8, 189; B war C% Iir0lan , Industr( Comes of Age" 23;502364 719K18% .;1 2alterschei , su"ra note , "% 1K; P%-% )e erico, (4tate Patents,( $ournal of t!e Patent <ffice Societ( 1= 719=189 1KK% .;; 4ee 4i ne! Moss, C!arles Dic&ens =uarrel wit! America 7198:8; >en/amin Ia"lan, An Un!urried >iew of Co'(rig!t @rechec0A% .;3 4ee -ames >o!le, S!amans" Software" and S'leens1 #aw and t!e Construction of t!e Information Societ( 7199K8, =% .;: 4ee -erome H% 5eichman, (Intellectual Pro"ert! in International Tra e an the ?&TT,( in +,'orting our Tec!nolog(1 International Protection and Transfers of Industrial Innnovations 7199<8, =% .;6 4ee Ieith &o0i, (7Intellectual8 Pro"ert! an 4overeignt!9 ,otes Towar a Cultural ?eogra"h! of &uthorshi",( Stanford #aw %eview 7199K8 1C9=, 1C97'98% .;) >rownlee, su"ra note , at C7.% .37 Ibid% .3( Cf% Iarl Marx, T!e Criti?ue of Political +conom( 718<98% .3/ )or the original version of this argument, see -ohn +oc0e, T!e Second Treatise of )overnment in Two Treatises of )overnment =.='C. 7P% +aslett e % 197.8% )or an a""lication of the argument to intellectual "ro"ert!, see -ustin Hughes, (The Philoso"h! of Intellectual Pro"ert!,( )eorgetown #aw $ournal 77 7198889 C87, C9K'=1:%

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.30 )or a s!m"athetic "resentation of this theor!, see -oel )einberg, Social P!iloso'!( 11:'1< 7197=8% )or ocumentation of the "o"ularit! of this theor! among &mericans an 2estern Buro"eans, see & ams J )ree man, (B*uit! Theor! 5evisite 9 Comments an &nnotate >ibliogra"h!,( in 9 Advances in +,'erimental Social Ps(c!olog( 7+% >er0owitE J B% 2alster e s% 197K8, :=, :7':9; Morton 6eutch, Distributive $ustice1 A Social Ps(c!ological Pers'ective 7198<8,1K='79, C.C'.=% .31 >ruce 2% >ugbee, )enesis of American Patent and Co'(rig!t #aw 719K78, 11=% 4imilar sentiments seem to have influence the various state legislatures in com"l!ing with this recommen ation% )or exam"le, the first Massachusetts co"!right statute was groun e in the following, com"osite /ustification9 (2hereas the Im"rovement of Inowle ge, the Progress of CiviliEation, the "ublic 2eal of the Communit!, an the & vancement of Human Ha""iness, greatl! e"en on the Bfforts of learne an ingenious Persons in the various &rts an 4ciences9 &s the "rinci"al Bncouragement such Persons can have to ma0e great an beneficial Bxertions of this ,ature must exist in the legal 4ecurit! of the )ruits of their 4tu ! an In ustr! to themselves; an as such 4ecurit! is one of the natural 5ights of all Men, there being no Pro"ert! more "eculiarl! a Man#s own than that which is "ro uce b! the +abour of his Min %( Ibid%, 11:% .3; 5e"ort of Henr! Cla!, submitte with 4% CC=, C:th Cong%, C 4ess% 1:8 718=78, re"rinte in T!erman, (The Bconomic 5ationale for Co"!right Protection for Publishe >oo0s9 & 5e"l! to Professor >re!er,( UC#A #aw %eview 18 719718, 11.., 11.. n% =% .33 /ar'er 8 %ow v. Nation +nter'rises, :71 3%4% <=9, <:K 7198<8% 4ee also Twentiet! Centur( Music Cor'. v. Ai&en, :CC 3%4% 1<1, 1<K 7197<8 7arguing that the Co"!right &ct is groun e in two ob/ectives9 (secur@ingA a fair return for an #author#s# creative labor( an (stimulat@ingA artistic creativit! for the general "ublic goo (8% .3: 4ee 2illiam )isher, (The +aw of the +an ( 7Ph%6% iss% Harvar 19918% .36 4ee 2alterschei , su"ra note , ""% =9':.% .3) The first raft woul have em"owere Congress9 (To secure to literar! authors their co"! rights for a limite time; To encourage, b! "ro"er "remiums an "rovisions, the a vancement of useful 0nowle ge an iscoveries; To grant "atents for useful inventions; To secure to authors exclusive rights for a certain time; an To establish "ublic institutions, rewar s an immunities for the "romotion of agriculture, commerce, tra es, an manufactures%( 2alterschei , su"ra note , at ::':<% .:7 4ee ibid% .:( The *uotation is from -erome )ran0#s famous o"inion in Alfred *ell 8 Co. v. Catalda ine Arts" Inc%, 191 )%C 99 7C Cir% 19<18% The seminal /u icial ecision on this issue is *leistein v. Donaldson #it!ogra'!ing Co%, 188 3%4% C=9 719.=8%

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.:/ 4ee, e%g%, Martha 2oo mansee, The ?enius an the Co"!right9 Bconomic an +egal Con itions of the Bmergence of the (&uthor,( +ig!teent!0Centur( Studies 17 7198:89 :C<; i em, (Dn the &uthor Bffect9 5ecovering Collectivit!,( Cardo:o Arts 8 +ntertainment #aw $ournal 1. 7199C89 CC7; Peter -asEi, (Dn the &uthor Bffect9 Contem"orar! Co"!right an Collective Creativit!,( Cardo:o Arts 8 +ntertainment #aw $ournal 1. 7199C89 C79; >o!le, su"ra note , ch"t% K; >ernar B elman, <wners!i' of t!e Image 719798; -ane M% ?aines, Contested Culture1 T!e Image" t!e >oice and t!e #aw 719918; Mar0 5ose, Aut!ors and <wners1 T!e Invention of Co'(rig!t 7199=8; 4usan 4tewart, Crimes of -riting1 Problems in t!e Containment of %e'resentation 719918% .:0 4imilar i eas have en ure far longer in China, 4ee 2illiam P% &lfor , (6on#t 4to" Thin0ing &bout % % % Hester a!9 2h! There was ,o in igenous Counter"art to Intellectual Pro"ert! +aw in Im"erial China,( $ournal of C!inese #aw 7 7199=89 =% .:1 2illiam 2or worth, (Bssa!, 4u""lementar! to the Preface,( *uote 2oo mansee, (&uthor Bffect,( su"ra note , "% C8.% .:; 4ee -asEi, su"ra note , :7Cff% .:3 4ee, e%g%, -asEi, (Dn the &uthor Bffect,( su"ra note , =..'.1, =.K'11 7showing the influence of this i eal on the o"inions in eist an %ogers v. @oon8% .:: 4ee -asEi, su"ra note , :9K'<..% .:6 Ieith &o0i, (&uthors, Inventors an Tra emar0 Dwners9 Private Intellectual Pro"ert! an the Public 6omain,( Columbia >#A $ournal of t!e #aw and Arts 18 799:89 191, C1<'1K% In ee , the better'0nown romantic i eal of authorshi", escribe above, arose in substantial "art in o""osition to this rationalist, Bnlightenment i eal% Ibid% .:) 4ee, e%g%, 2illiam Cronon et al%, Under an <'en S&(1 %et!in&ing America's -estern Past 7199C8% .67 4ee +eo Marx, T!e Mac!ine in t!e )arden1 Tec!nolog( and t!e Pastoral Ideal in America 719K:8% .6( 4ee, e%g%, &braham +incoln, & ress at the 2isconsin 4tate )air 718<98, in T!e Political T!oug!t of Abra!am #incoln 75ichar Current e % 19K78, 1C<'=8% .6/ The histor! of this re*uirement is s0etche in the text accom"an!ing note , su"ra% .60 &t one time, this "hrase was the touchstone for the nonobviousness re*uirement% 4ee Cuno Cor'. v. Automatic Devices Cor'., =1: 3%4% 8: 719:18% That a""roach has since been is"lace b! the framewor0 announce in )ra!am v. $o!n Deere Co%, =8= 3%4% 1 719KK8% in

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.61 4ee Monroe Price J Malla Polloc0, (The &uthor in Co"!right9 ,otes for the +iterar! Critic,( Cardo:o Arts 8 +ntertainment #aw $ournal 1. 7199C8, 7.=, 7.8% .6; &o0i, su"ra note , ""% C1='1:% .63 In his /ournal, )itch suggests that nearl! all of the emonstration% elegates atten e the

.6: &ccounts iffer concerning how man!, if an!, of the elegates actuall! ro e on the boat% .66 The text of that first raft is set forth in note , su"ra% .6) The inci ent an its im"lications are carefull! iscusse in 2alterschei , su"ra note , ""% :1':=% .)7 -essica 6% +itman, (Co"!right, Com"romise, &n +egislative Histor!,( Cornell #. %ev% 7C 7198789 8<7, 8K9% .)( Ibid% .)/ Ibid%, "% 871% .)0 &nother *uaint exam"le9 2alterschei suggests that lobb!ing b! authors '' inclu ing the !oung ,oah 2ebster '' ma! have figure im"ortantl! in the recommen ation b! the Continental Congress that the states a o"t co"!right laws% 4ee 2alterschei , su"ra note , C1% Man! exam"les similar to those catalogue b! +itman vis'a'vis the 197K Co"!right &ct coul be su""lie vis'a'vis the sha"ing of the (2hite Pa"er%( 4ee note , infra% .)1 4ee 2alterschei , su"ra note , 1C% .); 4ee B war C% 2alterschei , (Patents an The -effersonian M!tholog!,( C9 -% Marshall +% 5ev% CK9 7199<8; 2alterschei , su"ra note , <:% .)3 4ee ?authier, su"ra note , 9'1<% .): Dn the gra ual emergence uring the earl! nineteenth centur! of the general categor! of tort law, see ?% B war 2hite, Tort #aw in America 7198.8, cha"% 1% .)6 : ,%H% 7C 4an f%8 <99, K.: 74u"er Ct% 18:98% .)) 4ee ?authier, su"ra note %

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.(77 4ee )ran0 4chechter, T!e /istorical oundations of t!e #aw %elating to Trademar&s 719C<8; H% ,ims, T!e #aw of Unfair Com'etition and Trademar&s 719.98; B%4% 5ogers, )ood -ill" Trade0Mar&s and Unfair Trading 7191:8; 2% 6erenberg, Trade0 Mar& Protection and Unfair Trading 719=K8; Han ler J Pic0ett, (Tra e'mar0s an Tra e ,ames '' &n &nal!sis an 4!nthesis,( Columbia #aw %eview =. 719=.89 1K8% .(7( 4ee 1<1 Mass% 19., 19:, C= ,%B% 1.K8 7189.8; Co!en v. Nagle, 19. Mass% :, 9, 7K ,%B%C C7K 719.K8; DuPont de Nemours Powder Co. v. Masland , C:: 3%4% 1.., 1.C 719178% &s ?authier observes, Holmes# rhetoric veers somewhat towar the ominant ("ro"ert!( iscourse in *eec!0Nut Pac&ing Co. v. #orilland" C7= 3%4% KC9 719C78, a""arentl! because he was influence b! a rea ing of 4chechter#s issertation% .(7/ is!er v. Star, C=1 ,%H% :1: 7Ct% &""% 19C18% &t the time, co"!right "rotection ha not !et been exten e to fictional characters, so the court relie for its ruling on the law of misa""ro"riation% .(70 Ibid%, :C8 .(71 )rand U'rig!t Music #td. v. -arner *rot!ers" 78. )%4u""% 18C 74%6%,%H% 19918% .(7; & search of the +exis s!stem in icates that the "hrase, (intellectual "ro"ert!,( a""ears onl! once in the re"orts of the fe eral courts before 19.. an oes not a""ear at all between 19.. an 19=.% Thereafter, its usage b! fe eral courts stea il! increases% In the 19=.s, it a""ears in two o"inions; in the 19:.s, K; in the 19<.s, 1.; in the 19K.s, 9; in the 197.s, :1; in the 198.s, C87; in the 199.s 7as of this writing8, 8C9% To be sure, man! circumstances un oubte l! contribute to this extraor inar! increase, inclu ing the growing caseloa of the fe eral courts an the verbosit! of mo ern law cler0s% >ut much of the increase must be attribute to the growing currenc! of the "hrase in legal iscourse in general% .(73 )elix Cohen, (Transcen ental ,onsense an the )unctional &""roach,( Columbia #aw %eview =< 719=<89 8.9, 81:'817% .(7: 4ee -ohn 2% Cones, ilm" inance and Distribution 7+os &ngeles9 4ilman'-ames Press, 199C8, =11% .(76 4ee, for exam"le, -ames +ar ner, (&nnals of the +aw9 the >etamax Case( 7"art C8, T!e New .or&er 7&"ril 1= 19878, vol% K=, "% K.; 5an ! 4u0ow, (MP&& "ro"oses interim co"!right fees,( *roadcasting 7,ov 18 19918, vol% 1C1, no% C1, "% :% .(7) 4ee, for exam"le, Ian &usten, (&rguments with Muscle,( Maclean's 7March C8, 19888 Gol% 1.1, ,o% 1:, "% C:% .((7 4ee, for exam"le, 6ennis 2harton, (MP&&#s 5ebel 2ith Cause )ights for Co"!right Coin,( >ariet( 7&ugust =, 199C8, Gol% =:8, ,o% C, "% 18%

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.((( 4ee, for exam"le, the statement of -ames I% >aughman, &ssistant ?eneral Counsel of Cam"bell 4ou" Co%, in the subcommittee hearings on the bill% Ma ri Protocol Im"lementation &ct an )e eral Tra emar0 6ilution &ct of 199<9 Hearings on H%5% 1C7. an H%5% 1C9< >efore the 4ubcomm% on Courts an Intellectual Pro"ert! of the House Comm% on the -u iciar!, 1.:th Cong% 1C: 7199<8, "% 89% .((/ These exam"les are ta0en from the House 5e"ort% 4ee H%5% 5e"% ,o% 1.:'=7: 7199<8% .((0 4o, for exam"le, the House 5e"ort /ustifies the legislation on the following groun 9 (The conce"t of ilution recogniEes the substantial investment the owner has ma e in the mar0 an the commercial value an aura of the mar0 itself, "rotecting both from those who woul a""ro"riate the mar0 for their own gain%( Ibid% .((1 4ee Information Infrastructure Tas& orce" T!e %e'ort <f T!e -or&ing )rou' <n Intellectual Pro'ert( %ig!ts1 Intellectual Pro'ert( And T!e National Information Infrastructure 7199<8% The origins of this re"ort are escribe in (&bout The Presi ent#s Information Infrastructure Tas0 )orce,( http://www.iitf.nist.gov/about.html. The recommendations of the White Paper are contrasted with the policies adopted by other nations in Ron Reiling, "Intellectual Property Regimes for the Information Age: Policies of the United States, the European Union and the World Intellectual Property Organization," Boston University Journal of Science and Technology Law 3 (1997): 9. .((; 4ee, e%g%, Pamela 4amuelson, (The Co"!right ?rab,( -ired 7199<8; i em, (+egall! 4"ea0ing9 The ,II Intellectual Pro"ert! 5e"ort(; -ohn Perr! >arlow, (Pro"ert! &n 4"eech9 2ho Dwns 2hat Hou 4a! In C!bers"ace1,( Communications of t!e ACM 76ecember 199<8, Gol% =8, ,o% 1C, "% 19; (In ustr! 2arns Df )laws In ,II >ill,( Information 8 Interactive Services %e'ort 76ecember 1, 199<8, ,o% C:, Gol% 1K; (Bxcer"ts Df +etter To Congress >! 6igital )uture Coalition, 5e"resenting +ibrarians, Com"uter )irms, &n Public Interest ?rou"s,( Information #aw Alert 76ecember 1, 199<8, ,o% 19, Gol% =; -% 6avi +oun !, (>ill To &men Co"!right &ct ,ee s 2or0,( C!icago Dail( #aw *ulletin 7Dctober 1C, 199<8, "% K; -onathan >an , (+iabilit!9 The 2eb#s big worr!,( San rancisco +,aminer 7Dctober 8, 199<8, "% >'<; (Pre"are 4tatement Df Professor Peter -asEi, 2ashington College of +aw, &merican 3niversit!, >efore The 4enate -u iciar! Committee 5e9 4% :8=, The Co"!right Term Bxtension &ct Df 199<,( ederal News Service 74e"tember C., 199<8; -ames >o!le, (4ol Dut,( New .or& Times, March =1, 199K% i em%, (Intellectual Pro"ert! Polic! Dnline9 & Houng Person#s ?ui e,( /arvard $ournal of #aw 8 Tec!nolog( 1. 7199K89 :7% IEvor9 htt"s9QQc!ber%law%harvar %e uQ"ro"ert!99Qhistor!%html

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