The Software Freedom Law Center said that, in its opinion in CLS Bank v. Alice,1the Supreme Court “took one more step towards the abolition of patents on software inventions. Upholding its previous positions, the Court held that abstract ideas and algorithms are unpatentable. It also emphasized that one cannot patent ‘an instruction to apply [an] abstract idea . . . using some un-specified, generic computer.’”2 Though very little in the Alice opinion is clear or free from doubt, this is one oft-heard interpretation of the case. Software patents are in the dock, awaiting sentencing. Many predict a swift execution.

This brief chapter covers two topics: (1) it identifies the special nature of IP entitlements, the better to integrate IP into the fabric of private law theory; and (2) it investigates the “origin story” of IP entitlements, by describing two examples of business-related torts that transformed into true property rights (right of publicity and trademark law), under conditions where the functional advantages of property entitlements were apparent. What sets private law apart is its conceptual core: corrective justice, the form of justice at work when one private actor harms another. The starting point for private interactions is the baseline entitlements held by the actors in question. For torts, the right to bodily integrity; for contracts, the expectation interests of the parties. Intellectual Property (IP) rights are more complex than the relatively simple entitlements in tort and contracts cases. The major IP rights granted under federal statutes (patents, copyrights, and trademarks) must satisfy validity and registration requirements designed to further various public policies. The rights are typically tested for validity at multiple stages of the IP granting and enforcement process, including when an IP right is asserted against an infringer in a district court action. As a consequence, IP rights cannot be considered settled entitlements for purposes of a private IP enforcement action until validity issues are put to rest: they serve as private law "baselines", but they are contested baselines. But once validity is established between two private parties, an IP right is as solid as any private law entitlement. Which – at this proper stage – opens the way for the full force and logic of corrective justice in IP matters. The second part of the Chapter traces the transition of two IP rights from their origin as a bundle of individual tort duties into a true property right “good against the world”. The advantages of this transition to property are that (a) the bundling of duties into a concentrated right makes those duties more salient; (b) the concentrated legal right is alienable in whole or in part, and owners may grant it on an exclusive or nonexclusive basis, to different licensees in different fields, etc.; (c) the IP right forms a legal res, which becomes a valuable business asset around which licensing programs and other business partnerships can be constructed. The first example of the tort-property transition is the right of publicity, where the transition is fairly recent. The second example comes from further back, in the form of trademark law. The process was different for trademarks because a trademark’s entitlement structure differs from the right of publicity (and all other IP rights). Trademark law has a triadic structure: every competitor (C) of the owner (A) of a well known brand has a duty not to deceive A’s customers (call them B’s), by using a mark confusingly similar to A’s brand. C’s duty to the B’s is breached only when C creates a likelihood that an appreciable number of A’s buyers (the B’s) will think that C’s product comes from A. When A’s brand is protected by a trademark, that property right represents a bundling of all duties on the part of all of C’s (all A’s competitors) not to confuse A’s customers, the B’s. The duties in A’s bundle, in other words, are all owed to the B’s; A protects the interest of the B’s by enforcing the duty of C (and all C’s) not to confuse the B’s. Even so, aside from the distinctive triadic structure of its origin, and post-validity of course, a trademark is for the most part like any other private law entitlement.

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age.

Rapid advances in digital and life sciences technology continue to spur theevolution of intellectual property law. As professors and practitioners inthis field know all too well, Congress and the courts continue to developintellectual property law and jurisprudence at a rapid pace. For thatreason, we have significantly augmented and revised "Intellectual Propertyin the New Technological Age.The 2016 Edition reflects the following principal developments:● Trade Secrets: Congress passed the Defend Trade Secrets Act of 2016, oneof the most momentous changes in the history of trade secret protection. Thenew law opens up the federal courts to trade secret cases, provides for exparte seizures of misappropriated trade secrets in “extraordinarycircumstances,” and establishes immunity for whistleblowers.● Patents: The past several years have witnessed some of the mostsignificant developments in U.S. patent history — from the establishment ofthe new administrative review proceedings at the Patent Office to importantshifts in patent-eligibility, claim indefiniteness, and enhanced damages atthe Supreme Court and means-plus-function claim interpretation andinfringement doctrine at the Federal Circuit. We have restructured thepatent chapter to illuminate these areas. We have also significantlyexpanded coverage of design patents in response to the growing importanceof this form of protection.● Copyrights: The Supreme Court issued important decisions addressing thepublic performance right and the first sale doctrine. The past few yearsalso witnessed important developments in the Online Service Provider safeharbor, fair use, and state protection for pre-1972 sound recordings. Wehave also integrated the digital copyright materials into a unifiedtreatment of copyright law and substantially revamped the fair use sectionto reflect the broadening landscape of this important doctrine.● Trademarks: We have integrated important cases on federal registrabilityof disparaging marks, merchandising rights, likelihood of confusion on theInternet, and remedies.● Other State Protections: We have updated material on the right ofpublicity, an active and growing area. We have also reorganized the chapterand focused it on IP regimes.

The Supreme Court promoted private challenges to patent validity in various cases from the 1940s to the 1960s, culminating in 1969. That year in Lear v. Adkins the Court overturned the traditional rule prohibiting patent licensees from challenging the validity of licensed patents. Lear and its ilk were premised on the important public benefits of patent validity challenges, as well as the belief that a patent licensee or assignee has uniquely powerful reasons to challenge a patent. Caselaw culminating in Lear upset a century-old set of patent-specific rules that had been adopted from – and reflected the values of – common law private ordering principles. Licensee estoppel, the rule jettisoned by Lear, was a logical application of ancient doctrines promoting consistent dealing among contracting parties, most notably estoppel by deed. The long pedigree and evident sense of these rules formed the basis for early resistance to Lear, but since 1969 the courts have held true to the pro-patent-challenge rationale of the 1940s-1960s cases.This should end. Today patent challenges are much easier than in the 1940s or 1960s (or 2000s for that matter). Thanks to the America Invents Act of 2012, the Patent Office is now home to an administrative court whose sole purpose and function is to expertly and efficiently consider the validity of any outstanding patent. Primarily through the Patent Office challenge procedure called Inter Partes Review (IPR), patent invalidations have increased over 400% since adoption of the AIA. Widely available and effective patent challenges are now an established part of the US patent landscape.While the AIA undermines the foundation of Lear and other cases premised on scarce patent challenges, fresh academic research recognizes the crucial role of patents as a basis of efficiency-enhancing private ordering. Patents in some cases support firm specialization, but only insofar as firms can reliably transfer to other parties technology or technology-heavy product components. Regulation and restriction of patent licensing blunts the effectiveness of patents as the centerpiece for technology-intensive transactions. This in turn wastes the potential for patents to promote the viability of smaller firms, and thus to contribute to a variegated industry structure free of domination by a few large firms. Lear makes the patent challenge right inalienable: this right vests in a licensee, and cannot be waived or traded away by contract. The newer literature on the importance of patents in the context of private ordering counsels against such a rule, and so provides an additional reason to end the reign of Lear. I conclude this paper with a set of normative suggestions about how to re-adjust patent law in an era of easy patent challenges and renewed interest in patent-based private ordering.

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age.

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age.

This case turns on whether the Supreme Court’s 1984 decision in Sony conclusively resolves at the summary judgment stage the present dispute – involving strikingly different technology that was unimaginable at the time that the Sony case was decided. Although some of the language used in the Sony decision – stating that providers of technology that is capable of substantial noninfringing uses cannot be subject to contributory infringement liability – appears to predetermine the outcome of this matter, such a far-reaching, prospective rule goes well beyond the language or intent of the Copyright Act and misconstrues the proper judicial function in copyright adjudication. Over the course of nearly two centuries, courts have evolved, with tacit legislative consent, a rich infringement jurisprudence that balances a range of considerations on a case-by-case basis. This jurisprudence has long recognized indirect as well as direct infringement. In its comprehensive reform and codification of copyright law in the 1976 Copyright Act, Congress purposefully reaffirmed the continued applicability and evolution of this jurisprudence. At the same time, Congress established various express immunities, compulsory licenses, and other categorical limitations on liability. It would be incongruous, therefore, for courts to read additional categorical immunities into the Copyright Act’s liability regime. Congress has since added numerous other limitations to copyright liability, none of which bar a finding of infringement in the present case. Several amendments prohibit trafficking of particular classes of technology capable of substantial non-infringing uses.The Sony Court derived its “staple article of commerce” standard by analogizing to the Patent Act. Transplanting such a rule from the Patent Act, however, misapprehends critical differences between the two legal regimes. Whereas patent law seeks to promote technological innovation and evolved a staple article of commerce doctrine primarily out of concern for unduly expanding patent scope, copyright law seeks to promote cultural and social progress, manifesting a more cautious stance toward technological dissemination, particularly where a technology threatens widespread piracy of expressive works. Furthermore, amendments to the Copyright Act since the Sony decision demonstrate that Congress does not believe that dual-use technology – i.e., technology that is capable of both infringing and substantial non-infringing uses – should be treated as inviolate under copyright law. Rather, Congress has shown that it sees a need to balance the efficacy of the copyright system for promoting creative expression against social interests in technological innovation and consumer autonomy.Consequently, this Court should clarify that indirect copyright infringement liability requires a balancing of factors based on the protection of copyright owners’ rights and other recognized interests and concerns undergirding copyright law. Adverse effects of potential liability on incentives to innovate can and should be considered in such a balance, but no judicially established safe harbors should be recognized or imposed. Any such prospective, categorical safe harbors are properly within the exclusive power of Congress. Until such time as Congress establishes a staple article of commerce immunity to copyright liability, courts should continue to evolve balanced infringement standards that respond to new technologies guided by the text, structure, and purposes of copyright law.For the present case this means that the Ninth Circuit’s decision to affirm summary judgment dismissing the plaintiffs’ cause of action should be overturned and the case remanded for a full trial applying an appropriate balancing test. This Court should clarify that copyright liability extends to acts inducing copyright infringement and that contributory and vicarious liability should be judged on the basis of traditional criteria, including considerations of causation, knowledge, and intent. Given the policies animating copyright law, the standard for indirect liability should balance the harm to copyright owners against adverse effects on consumers from the loss of non-infringing uses from dual-use technologies. Such a balance should consider the full range of factors, including the relative magnitudes (present and foreseeable) of infringing and non-infringing use, the degree of control exercised by manufacturers and distributors of means for reproducing and distributing works of authorship, the intent of such enterprises, the extent to which noninfringing uses can be continued without the technologies at issue, and the extent to which copyright owners can limit unauthorized uses of their works (without undue expense or loss of market). Such an approach would continue the judiciary’s vital role as a flexible and responsive institution for addressing evolving challenges to the copyright system. Until such time as Congress expressly enacts a safe harbor in the Copyright Act analogous to patent law’s staple article of commerce doctrine, the distributor of technology that is merely capable of substantial non-infringing uses (but is in fact used predominantly to facilitate massive infringement) should not be categorically immune from copyright liability.

In this brief Essay, I celebrate the legendary (yet still ongoing) career of Professor Wendy Gordon in the way I think she would appreciate best: by using some of her pioneering ideas to theorize about intellectual property ("IP") rights. My topic is the development of IP rights over time. I am interested not only in the conceptual roots of IP law but also in that moment when the roots push through the crust of soil to form trunk and branch the moment of emergence: When does a normative legal intuition bloom into a full-fledged property right? How do fundamental common-law principles come to be expressed in complex statutory property grants? Starting from Gordon's marvelous 1992 article on the "restitutionary impulse" behind IP law, I explore these aspects of IP 's origin story. The right of publicity is a typical instance of the birth of a property right from common-law origins. I revisit the famous Haelan Labs case, which was central to the development of the publicity right. This case pushed forward the legal recognition of exclusive rights in celebrity images and serves (for many) as the generative source of publicity rights as a form of property. In keeping with some of Gordon's observations in her article On Owning Information: Intellectual Property and the Restitionary Impulse, I explain why the holding in Haelan Labs responded both to fairness concerns and to some felt necessities of the era. Among those necessities was the growth of postwar advertising and celebrity culture. This in no small part explains the impulse to compensate the ballplayers in the Haelan Labs case and to do so in particular by conferring on them a full-fledged (and fully alienable) property right. I then carry this an extra measure by arguing that Gordon's observation about judicial intuition and common-law extension is related to Harold Demsetz's well-known theory of property. From this point of view, Gordon has described one specimen in a larger set: those legal adjustments that take place when the value of an asset has increased. Though Gordon herself might well object to some features of this simple functionalist account, I for one see her as having contributed to it in an important way.

This Chapter describes various philosophical perspectives on the law and economics paradigm in intellectual property. It begins with a description of utilitarianism, which is the philosophical foundation on which law and economics is built. It then describes an alternative way that law and economics can be understood: as a highly effective set of tools that are useful even if one is not convinced that intellectual property law can be justified at the foundational level by a utilitarian account. Various alternatives to foundational utilitarianism are described; the Chapter seeks to explain how a law and economics approach to issues in the IP field is consistent with these alternative foundational justifications for IP law.

In many industries, the arc of our contemporary economy bends towards bigness. The now-ubiquitous digital platform companies such as Amazon, Facebook, and Netflix and (in China) Baidu, Tencent, and Alibaba are the best-known examples. While some concerned onlookers propose structural remedies, our constrained antitrust law plus the logic of natural monopoly means we are likely to be living with this reality for the foreseeable future. In this setting, it is imperative that we preserve multiple sources of rivalrous innovation even as the reach of Big Platforms continues to grow. We need to carve out and preserve a niche for innovative small and medium sized companies. One way to do this is to promote and protect the secondary patent market. Sale of patents is one way small firms can remain viable in the shadow of Big Platforms. I argue that patent markets are superior in some cases to complete acquisition of a small firm by a Big Platform company, because by selling patents a small firm survives as an independent entity. Recent patent system reforms support this pro-secondary market policy: the era of easy, extortionate patent litigation (which has been associated with the secondary patent market) is coming to a close. After these reforms, patent sales and licensing, at times backed by the threat of litigation, can and will promote small company innovation. This is crucial: if history is any guide, though Big Platforms are today young and vigorous, in the long run they will become less innovative. Preserving multiple small innovators – through the patent market and otherwise – is the best way to prepare for this long run reality.

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age. The 2018 Edition reflects the following principal developments: Trade Secrets: Congress passed the Defend Trade Secrets Act of 2016, one of the most momentous changes in the history of trade secret protection. new law opens up the federal courts to trade secret cases, provides for ex parte seizures of misappropriated trade secrets in “extraordinary circumstances,” and establishes immunity for whistleblowers. Patents: past several years have witnessed some of the most significant developments in U.S. patent history — from the establishment of the new administrative review proceedings the Patent Office to important shifts in patent-eligibility, claim indefiniteness, enhanced damages, and equitable remedies the Supreme Court and means-plus-function claim interpretation and infringement doctrine the Federal Circuit. We have restructured the patent chapter to illuminate these areas. We have also significantly expanded coverage of design patents in response to the growing importance of this form of protection. ● Updated Section 102 discussion with time line illustrations explaining first-to-invent (1952 Act) and first-to-file (AIA) regimes; added note on corroboration of invention dates; update on Helsinn (Supreme Court grant of certiorari) ● Updated Section 101 notes to reflect substantial new developments (Berkheimer, Aatrix, Vanda) ● New section on Reassessing Patent Eligibility featuring Judge Lourie's concurrence in denial of rehearing en banc in Berkheimer. ● Administrative Patent Review: Updated statistics on IPRs ● Defenses and Remedies: Integrated materials relating to the Supreme Court’s 2017 laches and exhaustion decisions; note on lost foreign profits (WesternGeco LLC v. ION Geophysical Corp., S. Ct. (2018)) . ● Design Patent: Updated note on apportioning damages to reflect remand of Samsung Electronics Co. v. Apple Inc. Copyrights:The Supreme Court issued important decisions addressing the useful article doctrine, public performance right and the first sale doctrine. past few years also witnessed important developments in the Online Service Provider safe harbor, fair use, and state protection for pre-1972 sound recordings. We have also integrated the digital copyright materials into a unified treatment of copyright law and substantially revamped the fair use section to reflect the broadening landscape of this important doctrine. ● Originality: adds new problem based on the Statue of Liberty stamp State and Common Law Copyrights: updates on state law protection (or lack thereof) for pre-1972 sound recordings and proposed music modernization legislation integrates new cases into notes ● Naruto v. David John Slater, 888 F.3d 418 (9th Cir. 2018) (Monkie selfie) ● Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018) (Jordan Jumpman logo) ● Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018) (Blurred Lines) ● VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 880-87 (9th Cir. 2016) (rejecting the 6th Circuit’s statutory interpretation and holding the de minimis doctrine applies across the classes of copyrightable works) ● Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 229 So.3d 305 (Fla. S. Ct. 2017) ● Oracle Corp. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018) ● Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (illustrations added) ● Mavrix Photographs, LLC v. LiveJournal, Inc., 853 F.3d 1020 (9th Cir. 2017) (DMCA at the direction of the user) ● Ventura Content, Ltd. v. Motherless, Inc., 885 F.3d 597 (9th Cir. 2018) (DMCA at the direction of the user) Trademarks: We have integrated important cases on federal registrability of disparaging marks, merchandising rights, likelihood of confusion on the Internet, and remedies. ● Infringement and Dilution: (Fun) new problem based on The Lord of the Dings surfboard repair shop, autobody shop, and dent repair franchise ● integrates new developments and cases into notes ● Play-Doh registering a mark for the smell of its dough ● In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017) (holding that FUCT, while vulgar, is registrable) ● San Diego Comic Convention v. Dan Farr Productions, 2017 WL 3732081 (S.D. Cal. Aug. 30, 2017) (concluding that there was no category of marks “generic ab initio” and that defendants had not proven that the term “comic-con” had become generic) ● adidas Am. v. Skechers USA, 890 F.3d 747 (9th Cir. 2018) (injunctive relief) ● Trader Joe’s Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016) (applying US trademark law against a Canadian infringer where effects were felt in the US) Other State Protections: We have updated material on the right of publicity, an active and growing area. We have also reorganized the chapter and focused it on IP regimes. ● Idea Submissions: added note on breach of implied contract claim not subject to Anti-SLAPP suit based on Jordan-Benel v. Universal City Studios, Inc., 859 F.3d 1184 (9th Cir. 2017) ● Right of Publicity: added note addressing docudramas based on de Havilland v. FX Networks, 21 Cal. App. 5th 845, 230 Cal. Rptr. 3d 625 (Cal. Ct. App. 2018)

This chapter analyzes the second wave of the economic study of intellectual property (IP) law. This second wave is characterized by two primary features: increasing methodological diversity and sophistication and an emphasis on contextualization—understanding how IP law is embedded in larger social and economic systems, and how IP interacts with other aspects of those systems to foster innovative ideas and economic growth. The chapter first discuss the many ways that second-wave scholarship seeks to show how IP rights are embedded in broader economic contexts, and thus diverges from first-wave research, which tended to focus exclusively on IP rights as the central determinants of economic activity. Next, it considers the many different methodologies being deployed to study issues in the economics of IP rights—from large-scale empirical work to surveys to interviews to experimental research.

This chapter considers the nature of intellectual property (IP) rights. It addresses some misunderstandings about legal rights, including that they are necessarily absolute, and rejects the view of IP as a regulatory tool rather than property. It then enumerates the key attributes and limits of IP using Hohfeld’s taxonomy of legal relations, and shows that, while none of these limits is enough to disqualify IP from being property, altogether they impose significant restrictions on its scope. Attention then turns to the problems of injunctions and constitutional takings of IP rights. The chapter concludes with observations about why, when properly framed, “rights talk” about IP does not inexorably point to absolutist views. The emphasis throughout is on two consistent thoughts: IP rights are real rights; but they are limited rights. They dominate some interests, but not all, and they are subject to restrictions and limitations that third parties also sometimes hold as rights.

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age. The 2017 Edition reflects the following principal developments: ● Trade Secrets: Congress passed the Defend Trade Secrets Act of 2016, one of the most momentous changes in the history of trade secret protection. The new law opens up the federal courts to trade secret cases, provides for ex parte seizures of misappropriated trade secrets in “extraordinary circumstances,” and establishes immunity for whistleblowers. ● Patents: The past several years have witnessed some of the most significant developments in U.S. patent history — from the establishment of the new administrative review proceedings at the Patent Office to important shifts in patent-eligibility, claim indefiniteness, enhanced damages, and equitable remedies at the Supreme Court and means-plus-function claim interpretation and infringement doctrine at the Federal Circuit. We have restructured the patent chapter to illuminate these areas. We have also significantly expanded coverage of design patents in response to the growing importance of this form of protection. ● Copyrights: The Supreme Court issued important decisions addressing the useful article doctrine, public performance right and the first sale doctrine. The past few years also witnessed important developments in the Online Service Provider safe harbor, fair use, and state protection for pre-1972 sound recordings. We have also integrated the digital copyright materials into a unified treatment of copyright law and substantially revamped the fair use section to reflect the broadening landscape of this important doctrine. ● Trademarks: We have integrated important cases on federal registrability of disparaging marks, merchandising rights, likelihood of confusion on the Internet, and remedies. ● Other State Protections: We have updated material on the right of publicity, an active and growing area. We have also reorganized the chapter and focused it on IP regimes.

Many justify intellectual property (IP) rights on utilitarian grounds: IP should exist only if and only to the extent that it can be shown empirically to increase net social welfare. Others justify IP on separate, deontic, grounds: IP exists and adds value because as an institution it produces just and fair outcomes. A prominent critique of the latter view was presented in an article called Faith-Based Intellectual Property. I traverse that critique here. I argue that the critique mischaracterizes deontic views as a form of blind faith. I describe theories and studies showing a common intuition that under some circumstances ownership of ideas conforms with people's sense of right and wrong. Finally, I summarize a point made in my book, Justifying Intellectual Property (2011): that even if a deontic theory is adopted to justify the existence of IP rights, efficiency considerations and cost-benefit analysis are still useful and desirable tools in designing an effective IP system. A later version of this article was published at 90 St. John's Law Review 681 (2017).