Fordham Law


Hello and Summary of Fordham’s Tri-State Conference on Intellectual Property

Jeanne Fromer, Michael Martin, Sheila Foster, Joel Reidenberg in Concurring Opinions (summary), January 18, 2011

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posted by Sonia Katyal

Greetings folks and many thanks to our fearless leaders at Concurring Opinions for the opportunity to guest blog on this site. This week, my colleague, Jeanne Fromer, and myself had the pleasure of hosting a Tri-State conference on Intellectual Property at Fordham Law School. The conference featured several papers and a selection of commentators, all selected from the Tri-State area (broadly defined), listed below:

Horace Anderson, Jr., Pace Law School
No Bitin’ Allowed: A Hip-Hop Copying Paradigm for All
of Us

Commentator: Greg Lastowka, Rutgers School of Law, Camden

Mark Bartholomew, University at Buffalo Law School
A Right Is Born: Celebrity, Property, and Postmodern Lawmaking

Commentator: Jason Mazzone, Brooklyn Law School

Oskar Liivak, Cornell Law School
Incentives & Indecision in Patent Law

Commentator: Clarisa Long, Columbia Law School

Amy Kapczynski, UC Berkeley Law School (visiting, Yale Law School) and Bhaven Sampat (Columbia School of Public Health)) (with Chan Park (UNITAID)
Hydrates and Solvates and Salts (oh my!): Secondary Patents and Effective Patent Life

Commentator: Rochelle Dreyfuss, NYU Law School

Jeremy Sheff, St. John’s University School of Law
Veblen Brands and Invisible Hands: How Trademarks Create a
Market for Suppressed Speech

Commentator: Barton Beebe, NYU Law School

Brett Frischmann, Cardozo Law School
Intergenerational Progress (with Mark McKenna, Notre Dame Law School)

Commentator: Joel Reidenberg, Fordham Law School

James Grimmelmann, New York Law School
A Bridge Too Far?: Google Books and the Limits of Class-
Action Settlements

Commentator: Diane Zimmerman, NYU Law School

Because of the scintillating quality of the papers presented, I couldn’t let the opportunity pass up to mention them on this site. It was a fascinating and fun day, and one that I hope sets the foundation for more regional collaborations with the various intellectual property/information law scholars in the Northeast.

So the day began with hip hop, where Horace Anderson presented us with a great paper that blended an analysis of copyright law with the social norms that surround hip hop artistry. The title of the paper, No Bitin’ Allowed, focused on some of the informal ways in which hip hop artists both regulate and respond to copying and appropriation of lyrics and sampling. For Anderson, this study demonstrates how, at times, the reality of creative collaboration sometimes conflicts with our romantic notion of authorship that predominates within copyright law. This work, as Anderson acknowledges, joins the work of other scholars (Dotan Oliar, Christopher Sprigman, Jacob Loshin, Mark Schultz, Emanuel Fauchart and Eric von Hippel, among others), both in and outside of the law, who study norm-based practices among chefs, comedians, jambands, magicians, and others, to name just a few areas.

What Anderson does, though, that is particularly notable in this paper—is to dissect and offer a taxonomy of at least eight different ways in which artists can imitate or appropriate from a preexisting work in hip hop—ranging from outright copying of lyrics (without attribution) to quoting to sampling of actual beats. Anderson then explores the social implication of each practice in the hip hop world, examining how a host of factors impact the “acceptability” of the appropriation—the role of consent from the original source, the identifiability of the original source, the “brand” implications for the original artist, and others.

Two other aspects of the paper that turned out to be particularly notable concerned the limitations of Copyright law in addressing the complexity of internal social norms regarding copying—and, as our commentator, Greg Lastowka, focused on—potential trademark or “branding” issues regarding the role of such appropriation within the hip hop community. Lastowka also encouraged Anderson to analyze further a growing division between the impact of performance-based works (which might be more sympathetic to appropriation due to their ephemeral nature) and product-based works (which might be less sympathetically treated under the law due to the multiplicity of other intermediary actors—recording producers, publishers, distributors, and the like).

From there, we turned to the rise of the right of publicity in the United States, A Right is Born: Celebrity, Property and Postmodern Lawmaking, by Mark Bartholomew, who explored a fascinating tension regarding the growth of the right of publicity both before and after the 1980s. The conventional story of the right of publicity is that the right came into being after the 1950s because of the obvious economic value that celebrities added to advertising. Bartholomew’s account, however, unpacks and challenges the dominant story of the right of publicity, pointing out that even though the right emerged in the 1950s, courts remained somewhat frosty to the right—despite its clear commercial value—until much later, around the 1980s and 1990s, demonstrating a clear recalcitrance towards thinking of the right as both descendible and property-based. Bartholomew’s account, however, ties the emergence of property rights in publicity to the changing intellectual, political and economic landscape that surrounded the culture of celebrity status.

Whereas intellectuals in the early 19th and 20th century distrusted celebrities, the twentieth century can be characterized by a growing recognition of the social and economic value of fame, culminating most prominently in an increasing democratization of celebrity status. Views on publicists also changed, making the study of celebrity seem more scientific due to more refined data on celebrities, enabling the study of popularity to become quantifiable.

Our commentator, Jason Mazzone, encouraged Bartholomew to explore the unfinished story of the right of publicity—pointing out that while it has gotten more powerful in recent years, it still remains far less developed, as a property right than other areas of intangible goods, exhorting Bartholomew to explore further why it has lagged behind others.

Our third paper moved towards patent law. Oscar Liivak presented a paper entitled Incentives and Indecision in Patent Law (or, alternatively, a slightly wordier title, Building a Free Market for Inventions: Removing the Vestigial Mercantilism from Patent Theory). In this paper, Liivak ambitiously argues that we’ve become too dominated by a view of ‘patent exceptionalism;’ Liivak’s idea that the patent system needs to be an exception to a competitive market and that a patent, therefore creates incentives above and beyond those available in a free market. Liivak, however, disagrees with this view, and argues that instead of postulating patents as an exception to the free market, the purpose of the patent system is to augment the free market instead.

Under this view, patents are not incentives per se, but rather the means to an end within a free market patent system. An incentive-based system, along with the patent system’s anticompetitive stance, Liivak argues, conflicts with the broader goals of antitrust law. However, a market theory, Liivak suggests, recasts a patent as offering a baseline of background protection to an inventor, reserving financial gain only to those inventors who can successfully commercialize their invention.

Liivak’s commentator, Clarissa Long, suggested that Liivak consider the dual trajectories of distribution vs. creation—is Liivak’s story focusing less on the domain of creation, and more on questions of distribution, and the distinction between them. Finally, Long encouraged Liivak to explore more deeply the range of patents in our system—e.g, improvement patents, 2nd generation patents, and queried how Liivak’s alternative theory might play out in exploring questions about patent scope.

Our fourth paper, continuing the patent theme, Polymorphs and Prodrugs and Salts (oh my!): An Empirical Analysis of ‘Secondary’ Pharmaceutical Patents, by Amy Kapczynski, Chan Park (UNITAID), and Bhaven Sampat (Columbia School of Public Health), is a fascinating example of the great results that transpire when a law professor, empirical researcher, and public health and policy expert decide to study a particular issue. In this case, the object of study concerned secondary patents, that is, patents that are motivated, in part, by those that cover either base compounds (or further modified forms), ‘new’ medical uses, compound combinations, dosage requirements, and process patents, among other types of patents that have the collective effect of extending the ‘life cycle’ of a particular invention.

The results of their study are fascinating—demonstrating that for the class of new molecular entities (NMEs) approved by the FDA between 1985 and 2005, more patents are associated with secondary than primary compound patents, and that these secondary patents are more often ‘follow on’ patents, coming in usually later in the primary patent’s life cycle—thus demonstrating a potential predisposition towards extending the life cycle of a particular drug.

Our commentator, Rochelle Dreyfuss focused her comments primarily on the implications of this study—asking whether in fact the secondary patents ARE invented later, or whether its possible that many of these uses might be found at the moment of creation, raising further considerations for patent policy. Dreyfuss also suggested various implications of this research for KSR’s outcome, the issue of secret prior art, and the role of TRIPS and international agreements in regulating secondary patents. (After all, some countries, India notably as the paper points out, ban secondary patents for both administrative and substantive reasons).

Our fifth paper introduced the topic of trademarks—Jeremy Sheff presented his work in progress, Veblen Brands and Invisible Hands—How Trademarks Create a Market for Suppressed Speech. In this provocative and very interesting paper, Sheff explores the speech implications of the doctrine of post-sale confusion, which is an umbrella term for various types of confusion stemming from bystanders (who may view a knockoff good, carried by a consumer, inducing various potential purchasers to misidentify the product as coming directly from the plaintiff (usually a luxury goods manufacturer).

This type of ‘bystander’ post-sale confusion usually presumes that the bystander views the knockoff good as immediately inferior (a proposition that seems pretty speculative, to Sheff and others, but often adopted by courts) and will therefore be dissuaded from purchasing the good in the future. Then there is also ‘downstream confusion’ which stems from situations where a defendant might either resell admitted replicas of a particular good OR modify a genuine article and then resell it in a secondary market. The issue, here, as Sheff points out, appears to be that this theory directly conflicts with our theories of contributory liability and the first sale doctrine.

But the real heart of Sheff’s paper lies in his exploration of ‘status confusion,’ that ephemeral idea that consumer’s might buy a defendant’s knockoff good for the purpose of acquiring the prestige that is signaled from having or displaying a luxury good. The confusion in these cases, Sheff writes, does not focus on the inferiority of the product, but rather are confused about the ‘consumers’ of such products, because the entrance of the knockoffs reduces the scarcity (and hence status) of the luxury goods. Sheff describes this phenomenon in light of Thorstein Veblen’s classic work, The Theory of the Leisure Class, focusing on the intersection of the idea of ‘conspicuous consumption’ and status confusion. In Sheff’s final section, he explores the phenomenon of status confusion in relation to First Amendment concerns, arguing along the lines of Buckley v. Valeo, that the doctrine tends to curb the expressive speech of some consumers in favor of enhancing the speech of others.

Our commentator, Barton Beebe argued that a big part of Sheff’s analysis could be the doctrine of dilution, which raises similar expressive considerations, and encouraged Sheff to analyze further the First Amendment issues present in post sale confusion—is the doctrine focusing on misappropriation, instead of expression, he asked. Finally, Beebe also encouraged Sheff to consider the possibility that we may have moved from a product-based economy to an economy that focuses mostly on the consumption of signs and status instead.

The sixth paper focused on a more meta-oriented theory of intellectual property. Brett Frischmann presented his paper (with Mark McKenna), Intergenerational Progress, where they argued for a less shortsighted approach to innovation, focusing in part on the cumulative nature of scientific and cultural progress. To the authors, a more future-regarding system of intellectual property focuses on the idea of ‘intergenerational progress’—the idea that IP must be committed to the welfare of future generations. In their analysis, Frischmann and McKenna focus, at the outset, on the pitfalls that stem from our system’s clear commitment to utilitarianism within the world of intellectual property.

Instead, the authors propose a more foundational consideration of the Capabilities approach as offered by Amartya Sen and others, and also argues for a more rigorous leveraging of the benefits that nonrivalrous goods offer. Nonrival resources, Frischmann and McKenna argue, offer us a much wider degree of freedom in allocation decisions than rivalrous resources, including sharing and other potentially nonmarket arrangements. However, the market-based system that characterizes our current state of affairs introduces some degree of shortsightedness, because it focuses too narrowly on supply side market failures (including markets in downstream products) and overlooks the reality that demand side market failures may exist. To resolve this conflict between intergenerational progress and market-based shortsightedness, the authors propose the construction of mixed regimes of private property rights and public commons, noting that at times, other means of protecting innovation may be necessary (like public funding for research).

Our commentator, Joel Reidenberg encouraged the authors to do more work analysis on the idea of ‘progress,’ asking whether the notion of intergenerational progress is already part of the normative fabric of IP, and offer more examples of how a focus on intergenerational progress would carve out different results than those that currently exist. Other comments focused on the reach and breadth of utilitiarianism and whether utilitarianism is truly the source of shortsightedness—could it be, instead, the market’s focus on wealth maximization, or is it possible that utilitarianism is already capacious enough to embrace other possibilities of resource management?

I’m going to refrain from summarizing the last paper that was presented, James Grimmelmann (New York Law School)’s paper, A Bridge Too Far?: Google Books and the Limits of Class-Action Settlements, in part because of the currency of the Google Books case, which may alter James’ analysis. Special thanks, however, to James’ commentator: Diane Zimmerman, NYU Law School.

The day closed with a short discussion of various issues raised in today’s intellectual property scholarship—including some very helpful comments on empirical research and interdisciplinarity from Bhaven Sampat, and also on the future of research in our field (including future events like this one). Ideas for future meetings centered on, aside from a clear interest in empirical research, encouraging greater conversations between intellectual property scholars and law professors from other disciplines (like international law, for example).

All in all, it was an awesome day—fabulous papers, commentators, and moderators, and Jeanne Fromer and myself especially thank the Deans at Fordham Law School (Michael Martin and Sheila Foster) and our sponsors, the Center on Law and Information Policy and the Intellectual Property Institute for their support.

More to come on other topics….