The Intellectual Property Clause's Preemptive Effect , in Intellectual Property and the Common Law 265 (Shyamkrishna Balganesh, ed., Cambridge University Press, 2013)

The Intellectual Property Clause's Preemptive Effect, in *Intellectual Property and the Common Law* 265 (Shyamkrishna Balganesh, ed., Cambridge University Press, 2013)

Jeanne C. Fromer, The Intellectual Property Clause's Preemptive Effect, in Intellectual Property and the Common Law 265 (Shyamkrishna Balganesh, ed., Cambridge University Press, 2013)

Federal law's preemption of state power in the context of intellectual property (as well as more generally) remains unclear in several respects, even in the face of considerable scholarship and judicial decisions on the subject. As Arthur Miller observes, "Preemption in the intellectual property context . . . has received oscillating treatment over the years. . . . The result has been a body of law replete with internal tensions, distinctions, and ambiguities, making definite answers to many preemption questions impossible to divine." 1 Much of the confusion in preemption doctrine in intellectual property comes from trying to piece together the Supreme Court's various cases in the area into a coherent analytical framework. I propose that the cases can be read consistently, with the help of the Constitution's Intellectual Property Clause (IP Clause), which grants Congress authority "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." 2 The IP Clause can help shed analytical light on when state laws are preempted. The IP Clause is the authority pursuant to which American copyright and patent laws were enacted. As I discuss elsewhere, this clause establishes the means and ends to which Congress can legislate to protect intellectual property: Congress can act with the goal of promoting progress of science and useful arts, using only the means set out therein, of securing for limited times to authors and inventors the exclusive rights to their works. 3 I argue herein that understood through the lens of the IP Clause, state laws are preempted upon satisfaction of two conditions: (1) they lie within the preemptive scope of the IP Clause, and (2) they upset the IP Clause's balance, as effectuated by a federal law. Because the IP Clause authorizes Congress to act only for the purpose of promoting progress in science and useful arts (using the means specified), when state laws (or their enforcement) are instead structurally directed to another purpose, they generally lie outside the scope of the IP Clause and therefore outside its preemptive scope. Nonetheless, transitively, state laws that piggyback off the federal laws passed pursuant to the IP Clause in certain ways lie within the IP Clause's preemptive scope, even if they lack structural purpose to promote progress of science and useful arts. State laws within the IP Clause's preemptive scope ought to be preempted when they upset the IP Clause's balance, as instantiated by federal laws enacted pursuant to its authority. The IP Clause effectuates a balance between granting incentives to authors and inventors to create certain valuable works and promoting the public interest of having access to these works (by encouraging their creation and by ensuring that rights last only for limited times). Federal legislation enacted pursuant to this power instantiates this balance in particular ways (even when Congress does not expressly state as much). It is therefore problematic when state laws within the IP Clause's preemptive scope upset this balance. Part I explains my understanding of the IP Clause and provides an overview of the patent and copyright laws enacted pursuant to its authority. Part II describes the Supreme Court's preemption doctrine, focusing on its case law with respect to intellectual property. Part III turns to the IP Clause's preemptive effect. I maintain therein that the IP Clause does not preempt state laws of its own force. Yet the IP Clause is helpful in making sense of Supreme Court doctrine to decipher when state laws are preempted. I argue that state laws are preempted when they both fall within the IP Clause's preemptive scope and upset the IP Clause's balance, as instantiated by federal law. The Constitution grants Congress authority "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." 4 Pursuant to this grant of power, Congress has enacted patent and copyright laws. Patent law grants protection to inventors of useful, novel, and nonobvious inventions. 5 Patents are granted after successfully undergoing examination by the Patent and Trademark Office (PTO) to ascertain that an invention meets patentability conditions and the description in the patent application satisfies certain disclosure requirements. 6 The patent right permits the patentee to exclude others from practicing the invention claimed in the patent for a term of typically twenty years from the date the patent application was filed. 7 Federal patent law contains no provision specifying when state laws are preempted by it. 8 American copyright law looks different. It protects "original works of authorship fixed in any tangible medium of expression, now known or later developed," including literary works, sound recordings, movies, and computer software code. 9 To obtain copyright protection, authors need only create an original fixed work. There is no requirement that a work be published to be protected. 10 10 Id. § 102 (requiring only that a work be fixed in "any tangible medium of expression" to be copyrightable). holder receives the exclusive right to reproduce the work, sell copies of it, and prepare derivative works, among other things, 12 normally until seventy years after the author's death. 13 Copyright protection extends to the expression of particular ideas rather than to the ideas themselves. 14 Yet protection actually reaches well beyond the literal work to works that are copied and substantially similar. 15 In its 1976 revision of copyright law, Congress included a preemption provision in § 301. 16 Section 301 principally provides that state laws are preempted when two conditions are met: (1) they confer "legal or equitable rights that are equivalent to any of the exclusive rights" provided by federal copyright law; and (2) they protect "works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103" of the copyright laws. 17 Although § 301 was intended to clarify copyright's preemptive reach, 18 the litigation it has generated and the often conflicting judicial decisions applying it underscore that the provision has likely muddied preemption analysis. 19 For example, when is a state right equivalent to copyright's exclusive rights, as the first factor requires? Is the state right valid when it contains an extra element not found under federal copyright protection, as most courts find; 20 if copyright holders' exercise of any of their exclusive rights does not violate the state right, as a minority of courts hold; 21 or on some other basis entirely? From the first perspective, most state rights, including laws of contract, trade secrecy, and rights of publicity, are in the clear, as they have additional elements that copyright law does not. 22 By contrast, from the second perspective, state laws can more easily be preempted. 23 The dominant premise underlying American patent and copyright laws is that the incentive of exclusive rights is granted to creators for a limited time to encourage their productions, which are valuable to society. 24 An integral part of this understanding is that the restrictions these rights impose on the public are justified, but only for a limited time and with some limitations on right scope, so that the public can use them to create further. 25 In fact, the power conferred on Congress by the IP Clause itself reflects a balance between granting creators rights to create (and disseminate) works that are valuable to the public to consume and build on, but restricting them so that the public is not hurt. 26 The Supreme Court, in its most recent preemption decision for intellectual property, stated as much when it underscored the balance struck by the IP Clause between encouraging innovation and competition, by permitting Congress to enact intellectual-property protection to promote the progress of science and useful arts, but only for limited durations and without removing material from the public domain. 27 This principle is longstanding. In 1896, the Supreme Court emphasized in the patent context that "on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted."foot_3 On this reasoning, Congress can act to secure intellectual-property protection so long as it does not upset this calibrated balance established by the IP Clause. 29 Therefore, when Congress enacts intellectual-property protection pursuant to the IP Clause, it is essentially effectuating a particular instantiation of this balance. 30 The Supreme Court has explained that the patent laws provide rights in a bounded set of inventions for a limited time, leave the rest in the public domain, and induce disclosure to support the public domain (and scientific and technological progress). 31 It has elaborated that the patent system is one in which uniform federal standards are carefully used to promote invention while at the same time preserving free competition. Obviously a State could not, consistently with the Supremacy Clause of the Constitution, extend the life of a patent beyond its expiration date or give a patent on an article which lacked the level of invention required for federal patents. To do either would run counter to the policy of Congress of granting patents only to true inventions, and then only for a limited time. Just as a State cannot encroach upon the federal patent laws directly, it cannot, under some other law, such as that forbidding unfair competition, give protection of a kind that clashes with the objectives of the federal patent laws. 32 The Court has made the same observation about copyright law. For example, one opinion observes in light of the IP Clause that "the monopoly privileges that Congress has authorized, while intended to motivate the creative activity of authors . . . by the provision of a special reward, are limited in nature and must ultimately serve the public good." 33 This balance is particularly emphasized with respect to copyright's limited duration, doctrine of fair use limiting copyright's scope, 34 and its idea-expression dichotomy. According to the Supreme Court: The limited scope of the copyright holder's statutory monopoly, like the limited copyright duration required by the Constitution, reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts. The immediate effect of our copyright law is to secure a fair return for an 'author's' creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good. 35 Similarly, the idea-expression dichotomy "strike[s] a definitional balance . . . by permitting free communication of facts [and opinions] while still protecting an author's expression." 36 As such, "every idea, theory, and fact in a copyrighted work becomes instantly available for public exploitation at the moment of publication." 37 More generally, the Supreme Court strongly indicates that there is a public domain that cannot be undone. For example, in the context of discussing the relationship between federal powers under the IP Clause and state authority, the Supreme Court notes that the ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure. State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation. . . . To a 33 ("The fair use doctrine is an essential part of [copyright's] balancing approach. It attempts to correct market inefficiencies inherent in the grant of a monopoly by sanctioning uses that otherwise might be infringing when doing so is necessary to strike the appropriate balance between the rights of authors and those of the public."). 36 Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556 (1985) (making this statement in the course of discussing the interaction of copyright law and the First Amendment). 37 Eldred v. Ashcroft, 537 U.S. 186, 219 (2003). limited extent, the federal patent laws must determine not only what is protected, but also what is free for all to use. 38 An unfortunate outlier in this context is one of the Supreme Court's most recent decisions, Golan v. Holder. 39 In that decision, the Court maintained that the IP Clause does not impose an "impenetrable barrier to the extension of copyright protection to authors whose writings, for whatever reason, are in the public domain." 40 Justice Breyer's forceful dissent in Golan reveals the problems of allowing Congress to protect works that have already fallen into the public domain: because doing so both "bestows monetary rewards only on owners of old works-works that have already been created and already are in the American public domain," and "inhibits the dissemination of those works, [which otherwise] would assume their rightful places in computeraccessible databases, spreading knowledge throughout the world." 41 These concerns are reflected in the IP Clause itself, which the Golan majority discounted in its constitutional construction. Related, however, to the more consistently invoked understanding of the patent and copyright laws as instantiations of the balance set out in the IP Clause is the limited reach of congressional power pursuant to the IP Clause. In other work, I rely on the text, structure, and history of the IP Clause, as well as subsequent governmental activity and Supreme Court doctrine, to show that the IP Clause operates to forbid Congress from using its other powers "To promote the Progress of Science and useful Arts" through laws employing means beyond the extent of the IP Clause's power to "secur[e] for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." 42 That is, this evidence shows that if Congress seeks, via legislation, to promote the progress of science and the useful arts, the only way it can do it is by enacting laws that secure to authors and inventors exclusive rights in their writings and discoveries for limited times. Having discussed the power conferred by the IP Clause and the patent and copyright laws Congress enacted pursuant to those powers, I turn to the Supreme Court's preemption doctrine, both generally and in the context of intellectual property. Generally, the Supreme Court has classified three different types of preemption of state law: express preemption, field preemption, and conflict preemption. 43 Express preemption occurs when Congress legislates, in a lawful exercise of authority, to state explicitly how its laws 38 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 151 (1989); accord Graham v. John Deere Co., 383 U.S. 1, 6 (1966) ("Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."). Another view of copyright and patent laws is occasionally articulated: They set out default terms that private parties (and perhaps states) can modify. Kathryn Judge, Note, Rethinking Copyright Misuse, 57 STAN. L. REV. 901, 907 n.25 (2004) (articulating this position). That view is hard to square with the Supreme Court's and others' thinking on the finetuned balance of these laws. 39 132 S. Ct. 873 (2012). 40 Id. at 884. 41 Id. at 900 (Breyer, J., dissenting). 42 Fromer, supra note 3. 43 preempt state laws, 44 as Congress did with § 301 of the copyright laws. 45 The other two forms of preemption are implicit. Field preemption dictates that federal law supersedes state law when there is a "scheme of federal regulation so pervasive as to make reasonable the inference that Congress left no room to supplement it," either "because the federal interest [in the field] is so dominant or because the object sought to be obtained by the federal law and the character of obligations imposed by it may reveal the same purpose." 46 Conflict preemption "arises when compliance with both federal and state regulations is a physical impossibility or where state law stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress." 47 The Supremacy Clause of the Constitution provides a basis for preemption of state laws. 48 The Clause provides that "[t]h[e] Constitution, and the Laws of the United States which shall be made in pursuance thereof; and all treaties made, or which shall be made, under the authority of the United States, shall be the supreme law of the land." 49 In 1964, the Supreme Court ushered in its modern preemption jurisprudence in the context of intellectual property in the companion cases of Sears, Roebuck & Co. v. Stiffel Co. 50 and Compco Corp. v. Day-Brite Lighting, Inc. 51 In these cases, the Court addressed the viability of state unfair-competition laws protecting against the copying of unpatented industrial designs in the face of the federal patent laws. 52 In Compco, the design at issue (a lighting fixture by Day-Brite) was the subject of an invalidated design patent and a refused utility patent. 53 Likewise, in Sears, the design at issue was found to be entitled to neither a design nor a utility patent. 54 The Compco lawsuit involved a claim that Compco had unfairly competed with Day-Brite by selling similar fixtures that deceived consumers into thinking that they were Day-Brite's. 55 Sears involved an analogous claim. 56 The Compco Court saw the evidence that consumers were confused as wafer-thin at best, 57 although there was just slightly more such evidence in the Sears case. 58 Compco found the state law to be preempted because "[u]nder the federal patent laws it is . . . in the public domain and can be copied in every detail by whoever pleases." 59 Sears agreed and expanded on this reasoning: To allow a State by use of its law of unfair competition to prevent the copying of an article which represents too slight an advance to be patented would be to permit the State to block off from the public something which federal law has said belongs to the public. The result would be that while federal law grants only [a limited number of] years' protection to genuine inventions, States could allow perpetual protection to articles too lacking in novelty to merit any patent at all under federal constitutional standards. This would be too great an encroachment on the federal patent system to be tolerated. 60 Nonetheless fearing the undermining of legitimate state interests in promoting fair trade, the Sears Court stated in dicta that "[d]oubtless a State may, in appropriate circumstances, require that goods, whether patented or unpatented, be labeled or that other precautionary steps be taken to prevent customers from being misled as to the source, just as it may protect businesses in the use of their trademarks, labels, or distinctive dress in the packaging of goods so as to prevent others, by imitating such markings, from misleading purchasers as to the source of the goods." 61 Nearly ten years later, the Supreme Court revisited preemption in Goldstein v. California, 62 this time in the context of copyright law. 63 California had enacted a law criminalizing unauthorized copying of sound recordings with intent to sell them, and the law's constitutionality was challenged on the basis that it was preempted by federal copyright law, which at the time did not confer protection on sound recordings. 64 The Court rejected this challenge, reasoning that "[a]lthough the Copyright Clause . . . recognizes the potential benefits of a national system, it does not indicate that all writings are of national interest or that state legislation is, in all cases, unnecessary or precluded." 65 In this statement, the Goldstein Court seems to reject the possibility of field preemption for copyright law. The Court interpreted congressional action neither to have provided copyright protection for sound recordings nor required that sound recordings be freely available. 66 According to the Court, a conflict would develop if a State attempted to protect that which Congress intended to be free from restraint or to free that which Congress had protected. However, where Congress determines that 58 Sears, 376 U.S. at 226. 59 Compco, 376 U.S. at 237-38. 60 Sears, 376 U.S. at 231-32. 61 Id. at 232. 62 412 U.S. 546 (1973). 63 At issue was copyright law predating § 301's provision of express preemption, and thus the Court did not assess express preemption. 64 Id. at 548-52. 65 Id. at 556-57. 66 Id. at 563-69. neither federal protection nor freedom from restraint is required by the national interest, it is at liberty to stay its hand entirely. Since state protection would not then conflict with federal action, total relinquishment of the States' power to grant copyright protection cannot be inferred. 67 By asking whether the state law at issue was local or national in character-a question usually asked with regard to laws enacted under the Commerce Clause instead of the IP Clause-Goldstein appeared to shift the focus of the Court's preemption jurisprudence, 68 an analytical move that has been widely criticized. 69 The next year in Kewanee Oil Co. v. Bicron Corp., 70 the Supreme Court took up preemption of state trade secrecy laws by the federal patent laws. 71 The Kewanee Court viewed the patent laws as effectuating the constitutionally authorized promotion of progress by providing inventors with the "high price of [many] years of exclusive use" as an incentive to invent for society's benefit in exchange for the public disclosure of their inventions, upon which society could build to invent cumulatively, thereby further stimulating progress. 72 Given the strong incentive provided and the need to build upon once patented inventions, the Court observed that "that which is in the public domain cannot be removed therefrom by action of the States." 73 Although the Court saw trade secrecy protection as being particularly concerned, just like patent law, with promotion of invention (as well as commercial ethics), it held that Ohio's trade secret laws were not preempted, as they were not an obstacle to the carefully calibrated patent system. 74 The Court reasoned that Ohio's trade secrecy laws did not deter inventors from opting into the patent system with its disclosures, primarily because they protected many inventions that were not patentable and offered less secure protection to those that were, such that reasonable inventors would opt for patent law's certain, though time-limited benefits, over trade secrecy's less certain ones. 75 Moreover, the Court saw the state laws as providing a mere additional incentive to invent without removing material from the public domain; as such, it did not think the state laws upset patent law's balance. 76 Five years later, in Aronson v. Quick Point Pencil Co., 77 the Supreme Court held that the federal patent laws did not preempt state contract law "to preclude enforcement of a contract to pay royalties to a patent applicant, on sales of articles embodying the putative invention, for so long as the contracting party sells them, if a patent is not granted." 78 In that case, the parties had contracted for a specific royalty rate, which would be de-escalated by half were no patent to 67 Id. at 559. 68 Abrams, supra note 16, at 527. 69 E.g., Miller, supra note 1, at 750. 70 416 U.S. 470 (1974). 71 Id. at 472. 72 Id. at 480-81. 73 Id. at 481. 74 Id. at 482-83. 75 Id. at 484-91. 76 Id. at 482-84. 77 440 U.S. 257 (1979). 78 Id. at 258-59. issue within five years. 79 As with the Kewanee Court's view of Ohio's trade secrecy laws, the Court thought that the contract at issue complemented, rather than interfered with, the balance effectuated by the federal patent scheme. It thought that the royalty contract provided an extra incentive to innovate, did not discourage patenting, promoted disclosure by encouraging the invention's commercialization, and did not remove any unpatented invention from the public domain (as the invention had not truly been in the public domain at the time of contracting and remained available to anyone else to use freely once the patent was not granted). 80 In 1989, the Supreme Court considered patent law's preemptive effect in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 81 in ruling on the constitutionality of a Florida law prohibiting the use of direct molding to duplicate for sale any manufactured vessel hull or component thereof without permission. 82 The Court held that federal patent law preempted the state law. 83 It reasoned that the IP Clause "reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the 'Progress of Science and useful Arts.'" 84 As such, the Court continued, progress of science and useful arts is promoted-and authorized-only when rights of limited duration are granted and when the public domain is guarded against removals of material therein. 85 To the Court, the patent laws effectuate this balance with its requirements of novelty and nonobviousness, which ensure that the public domain is the norm rather than the exception, and patent law's disclosure rules, which induce a public sharing of information for the benefit of the public domain. 86 Through this analytical lens, the Court reasoned that the Florida law was preempted, as it upset this balance. For one thing, the state law's purpose was the same as that set out in the IP Clause: to promote technological progress. 87 Additionally, it sought to do that by upsetting patent law's balance between promoting innovation through rights and competition, by providing producers with protection over unpatentable designs, which by the federal scheme, ought to be in the public domain. 88 Having outlined the Supreme Court's preemption doctrine generally and with regard to intellectual property, I turn now to explicating the role of the IP Clause in preemption. In some respects, the Constitution's role itself in preemption analysis for intellectual property has been invoked infrequently. In particular, given copyright law's express-preemption provision in § 301, many courts begin and end their analysis of copyright preemption with that 79 Id. at 261-62. 80 Id. at 262-64. 81 489 U.S. 141 (1989). 82 Id. at 144-45. 83 Id. at 157-66. 84 Id. at 146. 85 Id. 86 Id. at 151. 87 See id. at 157, 165-66 (observing that the state law is occupied with "the protection of producers as an incentive to product innovation"). 88 Id. at 159-60. section. 89 However, to the extent that state laws cause an actual conflict or create a sufficient obstacle with the federal laws, the Supremacy Clause, as understood by the Supreme Court, should nullify those state laws. 90 This is true even in the presence of an express preemption provision in the relevant statute that does not nullify those state laws. 91 That said, when discussing the Constitution's role in preempting state laws, analysis tends to focus only on the Supremacy Clause itself. 92 This Part considers the role that another constitutional provision, the IP Clause, ought to play in analyzing preemption of state laws. 93 After rejecting in Section A the possibility that the IP Clause can preempt state laws of its own force, I take up in Section B the role it serves in conjunction with federal laws enacted pursuant to its authority to preempt state laws. In a 1955 dissenting opinion in Capitol Records, Inc. v. Mercury Records Corp., 94 a case raising very similar issues to Goldstein, Judge Learned Hand seemed to express the view that the IP Clause could preempt laws of its own force. He stated: I cannot believe that the failure of Congress to include within the Act all that the Clause covers should give the states so wide a power. To do so would pro tanto defeat the overriding purpose of the Clause, which was to grant only for "limited Times" the untrammelled exploitation of an author's "Writings." Either he must be content with such circumscribed exploitation as does not constitute "publication," or he must eventually dedicate his "work" to the public. The situation is no different from that of patents, where such bilateral character of the grant is a commonplace. I would hold that the clause has that much effect ex proprio vigore; and that the states are not free to follow their own notions as to when an author's right shall be unlimited both in user and in duration. Such power of course they have as to "works" that are not "Writings"; but I submit that, once it is settled that a "work" is in that class, the Clause enforces upon the author the choice I have just mentioned; and, if so, it must follow that it is a federal question whether he has published the "work." 95 Perhaps the most straightforward interpretation of Hand's view is that the IP Clause directly preempts all state laws that do not comply with the Clause's internal limitations, such as limited duration, so long as they regulate subject matter that is protectable by the Clause. 96 (There is another way to view Hand's reasoning, which I explore in the next Section and which I thinkunlike this understanding-is more compatible with Supreme Court jurisprudence.) Nonetheless, Hand's view seems difficult to accept, given that since the first federal copyright laws, the states frequently provided common-law protection to unpublished writings. 97 As evidenced by Congress's protection of unpublished writings in its 1976 copyright statute, 98 they fall squarely within the scope of the power conferred by the IP Clause. Yet states' pre-1976 protection of these writings often contravened the Clause's internal limitations, by providing protection for an unlimited duration. 99 Even though Congress in 1909 made express the long implicit authorization to the states to protect unpublished writings, 100 Hand's position would deem the earliest state practices constitutionally suspect. Most scholars think that Judge Hand is wrong, observing that the IP Clause "neither specifically endorses nor prohibits state law [intellectual property] protection." 101 The Supreme Court has most recently in Bonito Boats made the same assertion: "the Patent and Copyright Clauses do not, by their own force or by negative implication, deprive the States of the power to adopt rules for the promotion of intellectual creation within their own jurisdictions." 102 As the Court observed in Goldstein, "[t]he [IP] clause . . . does not provide that such power shall vest exclusively in the Federal Government. Nor does the Constitution expressly provide that such 95 Capitol Records, 221 F.2d at 667 (Hand, J., dissenting); see also Abrams, supra note 16, at 519-25 (explaining Hand's view). 96 Paul Goldstein, Federal System Ordering of the Copyright Interest, 69 COLUM. L. REV. 49, 51 (1969); Miller, supra note 1, at 747. Some scholars agree with Hand that the IP Clause can be preemptive of its own force. Bell, supra note 89, at 232-33; cf. Dinh, supra note 44, at 2099 (recognizing "that state laws can be preempted without any congressional action," such as through the dormant commerce clause or federal common law); Jane C. Ginsburg, No "Sweat"?: Copyright and Other Protection of Works of Information After Feist v. Rural Telephone, 92 COLUM. L. REV. 338, 362 (1992) (suggesting that the Supreme Court's reasoning in its preemption decisions have been inconsistent with regard to the Clause's preemptive effect on its own). 97 power shall not be exercised by the States."foot_11 Although some see the Supreme Court's assertions as dicta that could be worked around in future cases, 104 it is unlikely that that Court will soon come to see the IP Clause as working on its own to preempt state laws. Although the IP Clause will not of its own force preempt state laws, the Clause nonetheless has a critical role to play in preemption analysis. As this Section sets out, conflict preemption is a central aspect of the Supreme Court's decisions on preemption in intellectual property. In that light, as understood through the lens of the IP Clause, state laws are preempted when: (1) they lie within the preemptive scope of the IP Clause, and (2) they upset the balance set out in a federal law that effectuates the IP Clause's balance. I consider each requirement in turn. In doing so, I also show how preemption analysis ought to be considered both facially and as applied to the particular challenge. As I discuss in this Section, only state laws that fall within the preemptive scope of the IP Clause are preemptable. As noted above, the best understanding of the IP Clause is that it both grants and limits Congress's powers to enact intellectual-property protection. 105 It confers upon Congress power "to promote the Progress of Science and useful Arts," but only employing the means specified in the latter part of the Clause: "by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."foot_14 While this interpretation has critical implications for Congress's ability to use other means pursuant to its other powers,foot_15 it also has important consequences for the ability of states to enact laws that are not preempted. Given that Congress's authority to act pursuant to the IP Clause limits it to the means specified for the purpose of promoting progress of science and useful arts, state laws (or enforcements) that lack the structural purpose of promoting this progress-whatever their means-ought to lie outside the preemptive scope of the IP Clause. According to the Tenth Amendment, "[t]he powers not delegated to the United States by the Constitution, nor prohibited by it to the States, are reserved to the States respectively, or to the people."foot_16 Therefore, when a state's law (or enforcement of such law) is not done in service of promoting progress of science and useful arts, it is not within the preemptive scope of the IP Clause and will generally not be preemptable by Congress's patent and copyright laws. 109 Although pinning down the precise scope of "promot[ing] the Progress of Science and useful Arts" is beyond the scope of this project, the purpose can generally be understood, as I have discussed elsewhere, as "encouraging the advancement of systematic knowledge, cultural knowledge, and technology." 110 It will frequently, although not always, be self-evident when laws have this structural purpose. I nevertheless sketch some thoughts on how to scrutinize laws for this purpose. Concerns about pinpointing legislative purpose are well-documented, such as the difficulty of assigning a unified purpose to a body composed of many members. 111 To circumvent these problems, I suggest ascertaining the state law's purpose from its structure. As John Manning notes, "[f]ew would deny the possibility of gleaning a statute's overall purpose from its structure or from the aims suggested by the text itself." 112 Moreover, ascertaining this purpose structurally avoids the difficulty of deciding how to measure empirically whether the state law in actuality promotes the progress of science and useful arts, by instead asking whether the law has the structural purpose of so promoting this progress. 113 Exempting from preemption state laws with structural purposes other than promoting progress of science and useful arts is consistent with Bonito Boats's analysis and clarification of the reach of Sears and Compco. Bonito Boats suggested that states can typically protect subject matter traditionally covered by federal copyright and patent laws when they have a legitimate interest in doing so apart from the ends of promoting artistic, scientific, or technological progress conferred by the IP Clause. 114 In this sense, the Florida law prohibiting the use of direct molding to duplicate for sale any manufactured vessel hull or component thereof without permission was problematically within the preemptive scope of the IP Clause because its structural purpose was to promote progress of useful arts, here, of boat hulls. 115 Moreover, the Illinois unfair-competition law at issue in Sears and Compco, as applied to unpatentable designs, fell within the IP Clause's preemptive scope. Even though the state law is not about promoting progress of science and useful arts but about promoting fair trade, as applied in this circumstance, it sought to protect the functional aspects of a design that had passed into the public domain. The principal reason there might have been unfair competition in these cases is that consumers might have been confused in seeing a copy of the design due to the unique functionality that had once (or might in theory have) been protected by the patent laws. 116 As 110 Fromer, supra note 3, at 1373. 111 William W. Buzbee, The One-Congress Fiction in Statutory Interpretation, 149 U. PA. L. REV. 171, 173 (2000). 112 John F. Manning, The Absurdity Doctrine, 116 HARV. L. REV. 2387, 2408 n.75 (2003). 113 See generally Fromer, supra note 3, at 1373-79. 114 See Bonito Boats, 489 U.S. at 154 ("That the extrapolation of . . . a [very] broad preemptive principle from Sears is inappropriate is clear from the balance struck in Sears itself. The Sears Court made it plain that the States 'may protect businesses in the use of their trademarks, labels, or distinctive dress in the packaging of goods so as to prevent others, by imitating such markings, from misleading purchasers as to the source of the goods.'"). 115 Supra text accompanying note 87. 116 Cf. Deven R. Desai & Sandra L. Rierson, Confronting the Genericism Conundrum, 28 CARDOZO L. REV. 1789, 1820-21(2007) (observing that "genericide . . . was much more likely to occur where the mark was placed on a product that was or had been the subject of a utility patent," because during the patent period, "the trademark label placed on the good typically serves a dual function: to identify the sole source of the good (i.e., the trademark holder) and to identify the good itself"). such, permitting the state law to operate in this circumstance would piggyback on the federal laws passed pursuant to the IP Clause, thereby transitively (or constructively) conferring upon it the purpose of promoting progress of science and useful arts. So doing places this state law, as applied, squarely within the IP Clause's preemptive scope. By contrast, consider a hypothetical state law that forbids the copying of computer programs containing a virus or one that forbids copying or distribution of obscene materials. The purpose of the former law is to prevent the spread of computer viruses, and the purpose of the latter is to diminish obscenity. Both laws ought not facially lie within the IP Clause's preemptive scope, even though they might forbid copying beyond the federal copyright and patent laws, as neither is concerned with promoting progress of science and useful arts or is bootstrapping off of the IP Clause's purpose transitively. Similarly, the hypothetical state law mentioned in Sears and Compco requiring the labeling of designs with a source would fall outside of the IP Clause's preemptive scope. Contrasting the analysis for the vessel hull and unfair-competition laws suggests that to understand a state law's purpose, one ought to look both at the law's facial purpose and its purpose as applied in the particular enforcement scenario. 117 That is, the law struck down in Bonito Boats was analyzed (and preempted) facially given that (all or most of) its conceivable applications were within the IP Clause's preemptive scope, whereas the law struck down in Sears and Compco was analyzed (and preempted) merely as applied to designs denied patent protection. Thus, whether state laws seemingly unconcerned with promoting the progress of science and useful arts-such as a right of publicity or contracts-are within the IP Clause's preemptive scope likely depends on analyzing their purpose as applied in the particular enforcement scenario. If a state law is within the preemptive scope of the IP Clause, either facially or as applied, I contend that it is preempted only if it also upsets the particular balance effectuated by Congress in light of the more general balance specified in the IP Clause. In so doing, I reject an alternative understanding that state laws are never preempted by the IP Clause-as effectuated by federal laws-when they confer protection using means forbidden to Congress by the IP Clause. One view of the IP Clause's role in preemption of state laws starts from the point that if the Clause does not confer particular powers on Congress, the states are not preempted from enacting laws that confer those withheld powers. 118 To take a concrete example, the Supreme Court interprets the IP Clause as not providing Congress the authority to protect the factual content in most informational works, as it is lacking a sufficient degree of authorial creativity. 119 As such, one might conclude that states instead could protect this factual content. In Goldstein, in response to an argument that California had created a copyright of unlimited duration, in contravention of the IP Clause, the Supreme Court seems sympathetic to this understanding: [Article I, ] Section 8 enumerates those powers which have been granted to Congress; Whatever limitations have been appended to such powers can only be understood as a limit on congressional, and not state, action. Moreover, it is not clear that the dangers to which this limitation was addressed apply with equal force to both the Federal Government and the States. When Congress grants an exclusive right or monopoly, its effects are pervasive; no citizen or State may escape its reach. As we have noted, however, the exclusive right granted by a State is confined to its borders. Consequently, even when the right is unlimited in duration, any tendency to inhibit further progress in science or the arts is narrowly circumscribed. The challenged statute cannot be voided for lack of a durational limitation. 120 Nonetheless, this understanding of preemption in intellectual property is too cramped. It fails to account for the Supreme Court's more capacious understanding generally of preemption to include conflict preemption. 121 Recall that conflict preemption can arise when "state law stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress." 122 Pursuant to application of this doctrine, it is possible in the context of intellectual property for states to be preempted from doing that which even Congress cannot do. Why? A robust explanation requires an understanding of the IP Clause's balance that flows particularly from the possibility of conflict preemption. As evaluated above, the patent and copyright laws created pursuant to the IP Clause's authority effectuate (distinct) constitutionally mandated balances between incentives to creators and benefit to the public in the name of promoting progress of science and useful arts. 123 It is the IP Clause itself that requires a balance within certain bounds, which the patent and copyright laws implement. 124 As such, state laws that upset this balance, say, by prolonging the duration of copyright or patent rights serve as a critical and preempted obstacle to the effectuation of Congress's powers pursuant to the IP Clause, as enacted in federal law. 125 As Maureen O'Rourke 119 Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). 120 Goldstein, 412 U.S. at 560-61. This discussion can be read consistently with the view I espouse herein, that state laws within the IP Clause's preemptive scope are preempted if they upset the IP Clause's balance, as effectuated by a federal law. A reasonable way to understand this excerpt is as suggesting that states' contraventions of the means specified in the IP Clause do not necessarily upset the balance implemented in federal laws, although they might in particular cases. 121 Supra text accompanying note 47. 123 Supra text accompanying notes 24-37. 124 Supra text accompanying notes 26-30. 125 Cf. Ginsburg, supra note 96, at 361 ("Under [a] view of the statute [that not protecting ideas/facts leaves them free to be copied], Congress has occupied the field of information protection: copyright covers the presentation of recognizes in the copyright context, an obstacle can arise when state law interferes with the federal "striking [of] a balance between providing an incentive to create through the grant of a limited statutory monopoly in the form of copyright and maintaining the free flow of the information on which such creativity is built." 126 And as Jane Ginsburg notes with regard to protection of factual content in informational works, "the states could continue to protect information, so long as state regulation does not interfere with the general federal copyright scheme." 127 Seen in this light, the IP Clause serves an important role in analyzing preemption. It is the provision that confers the authority under which Congress acts. As such, ascertaining copyright and patent laws' reach to preempt state laws requires reading these federal laws in light of the constitutional provision authorizing them. As the Supreme Court articulated in another context, "the mere grant of . . . power to Congress did imply a prohibition on the states to exercise the same power; . . . it is not the mere existence of such a power, but its exercise by Congress, which may be incompatible with the exercise of the same power by the states." 128 Similarly, Laurence Tribe recognizes the importance to preemption analysis of the constitutional power for Congress's legislation, coupled with the Supremacy Clause. 129 Highlighting the IP Clause's role in preemption analysis takes cognizance of the IP Clause's express set of constitutional balances for a particular purpose as a source of legislative power. It supplements and provides more texture to the not infrequent scholarly refrain that preemption analysis ought to account for the statutory balances that Congress made. 130 Although its jurisprudence seems somewhat confused, the Supreme Court has said as much in each of its preemption decisions on federal legislation enacted pursuant to the IP Clause. In those decisions, from Sears and Compco through Bonito Boats, it emphasizes that state laws are invalidated only if they (fall within the IP Clause's preemptive scope and) upset the balance implemented in statutes enacted pursuant to the IP Clause. 131 In this light, a state law extending federal patent protection by one year would be preempted because it both falls within the IP Clause's preemptive scope and upsets the balance effectuated by patent law. But a state law forbidding the creation or distribution of obscenity likely would not, even if it upsets the balance information (selection and arrangement), and no law may cover the information content itself. State protection of facts would therefore conflict with the congressional free-copying policy."). But see Livingston v. van Ingen, 9 Johns. 507 (N.Y. 1812) (Kent, J.) ("[A] patentee under the act of congress may have the time of his monopoly extended by the legislature of any state, beyond the term of fourteen or twenty-eight years allowed by that law. Congress may secure, for a limited time, an exclusive right throughout the union; but there is nothing in the constitution to take away from the states the power to enlarge the privilege within their respective jurisdictions. The states are not entirely devested of their original sovereignty over the subject matter; and whatever power has not been clearly granted to the union, remains with them."). of copyright law by diminishing the incentives to creators of certain types of works, because it lies outside the IP Clause's preemptive scope. And a state law likely located within the Clause's preemptive scope-say, one providing a more robust right of attribution to creators-might not be preempted if it does not sufficiently disturb copyright law's balance between creators and the public interest. In sum, state laws within the IP Clause's preemptive scope are preempted only when they disrupt the constitutionally mandated balance, as legislated in a particular federal law. In fact, even Judge Hand's position in Capitol Records, which most observers understand as incompatible with this view of the IP Clause's important, but more limited, role in preemption analysis, can be read to support this take. Judge Hand's view might say more about his construction of congressional intent than his view of the IP Clause's standalone preemptive effect. That is, Judge Hand seemed to be of the view that each time Congress legislated pursuant to the IP Clause, everything it did not protect but could have protected pursuant to the full reach of the Clause was, at least constructively, a conscious omission. 132 In this light, he can readily be understood as thinking that any state laws protecting those omitted items upset the statutory balance created in light of the IP Clause's balance, rather than just the IP Clause standing alone. Key to conflict preemption in intellectual property as just set out is an assessment of congressional intent-whether textually, structurally, or purposively-about the particular balance Congress sought to achieve between creators' and public entitlements. 133 In fact, many Supreme Court decisions that commentators see as missteps frequently are critical principally of the Court's particular assessments of congressional intent with regard to the balance. Pertinently, Goldstein troubles some for its conclusion that states might protect a class of articles-there, sound recordings-for an unlimited amount of time in apparent contravention of the balance set out in the IP Clause. 134 Such concerns-colorable, to say the least-seem to lie less with Goldstein's analysis of the IP Clause's reach on its own than with its restrictive reading of congressional intent not to protect sound recordings to conclude that state protection of them did not upset the constitutionally authorized, statutorily implemented balance for copyright. Similarly, Kewanee troubles many for its conclusory reasoning that very few would choose trade secrecy protection over patent protection when both are available, in light of empirical evidence to the contrary. 135 One might quibble with Aronson in much the same way, with regard to whether requiring a promisor to pay royalties when a patent did not issue prevented free use of something in the public domain in a way that upsets the balance set out by the IP Clause, as implemented in the patent laws. 136 As the Supreme Court underscored in Kewanee, a preemption analysis must include an examination of the relevant federal and state laws' underlying purposes and how they might conflict with one another. 137 The general difficulties of divining congressional intent, 138 however, prompted a group of federal appellate judges reporting on preemption to recognize that the need to assess this intent "suggests a great[] potential for unpredictability and instability in the law." 139 Pertinently, they observe how hard it is to draw any clear conclusions as to obstacle preemption: "It is unclear when, if ever, Congress has not balanced and compromised in enacting legislation. If every state law affecting one of the many interests reconciled by a particular federal statute were preempted under a delicate balance theory, there would seem to be little if any room for state regulatory authority." 140 . This problem is less severe in the context of intellectual property because, when exercising its power under the IP Clause, Congress is legislating a balance between author and public entitlements, in light of the more general balance set out in the IP Clause. As such, the frequently articulated concern that judges are ill-equipped to make broad policy decisions that tend to arise in preemption cases generally 141 is diminished to some extent by the IP Clause itself. As Justice Douglas recognized in dissent in Kewanee, the Clause "expresses the activist policy which Congress has enforced by statutes. It is that constitutional policy which we should enforce, not our individual notions of the public good." 142 In that vein, even when congressional intent as to the precise balance struck is less than clear, unlike other areas of law, judges ought to feel at greater ease making equitable policy-sussing out the negative space that Congress desired be left free in the context of its positive rights conferred by statute-due to the constitutional mandate of the IP Clause. 143 Abrams, supra note 16, at 510. Id. at 527; Bauer, supra note 19, at 108; Bohannan, supra note 130, at 617. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989). Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896). Id.; see also Eldred v. Ashcroft, 537 U.S. 186, 204-08 (2003). See generally Fromer, supra note 3. E.g., Bonito Boats, 489 U.S. at 146 ("From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy."). Id. at 151; see also Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974). Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230-31 (1964).Electronic copy available at: https://ssrn.com/abstract=2194755 Electronic copy available at: https://ssrn.com/abstract=2194755 Id. at 203; accord Caleb Nelson, Preemption, 86 VA. L.REV. 225, 226-27 (2000). Although the Supreme Court has suggested that there is a general presumption against federal preemption of state law, Viet Dinh makes the case that the Supremacy Clause's setup of preemption confers no such presumption but instead requires particularized evaluations in each different statutory context, if not a presumption in favor of preemption. Viet D. Dinh, Reassessing the Law of Preemption, 88 GEO. L.J.2085, 2087, 2094-98 (2000). Dinh suggests as well that Congress's power to preempt state laws expressly must come, if it exists at all, not from the Supremacy Clausewhich is a choice-of-law rule-but in an affirmative grant of power, such as the Commerce or IP Clause. Id. at 2088-91. Electronic copy available at: https://ssrn.com/abstract=2194755 Electronic copy available at: https://ssrn.com/abstract=2194755 See Tom W. Bell, Misunderestimating Dastar: How the Supreme Court Unwittingly Revolutionized Copyright Preemption, 65 MD. L. REV. 206, 228-32 (2006) (describing a possible recent shift away from this trend); Rothman, supra note 21, at 208. Goldstein, 412 U.S. at 553. Miller, supra note 1, at 749. Supra text accompanying note 42. Goldstein, 412 U.S. 546, 555 (1973) ("The clause . . . describes both the objective which Congress may seek and the means to achieve it. The objective is to promote the progress of science and the arts. . . . To accomplish its purpose, Congress may grant to authors the exclusive right to the fruits of their respective works."). Fromer, supra note 3. U.S. CONST. amend. X. This invocation of the Tenth Amendment, however, ought not to imply that the states have plenary power over all means not conferred on Congress to effectuate the goal of promoting progress of science and useful arts. Because the limitation of means in the IP Clause is done with the purpose of effectuating a balance between creators' incentives and public benefit, upsetting the particular balance implemented by Congress is a direct affront to federal law and ought to be preempted. Infra Part 2. Cf. Sandeen, supra note 8, at 353 ("Since the basic issue of a preemption analysis is whether a state law interferes with the purposes of federal law, it would seem that a comparison of the two laws is enough. However, as common sense and the record of the Supreme Court's intellectual property preemption jurisprudence indicates, this approach does not work in IP preemption cases because the required analysis is dependent upon knowing the nature of the information sought to be protected. "). Ginsburg, supra note 96, at 360-61 (speculating as to this possibility); cf. Daniel Farber, Federal Preemption of State Law: The Current State of Play, available at http://papers.ssrn.com/papers.cfm?abstract_id=1740043(suggesting this possibility generally, rather than in the context of the IP Clause).Electronic copy available at: https://ssrn.com/abstract=2194755 Electronic copy available at: https://ssrn.com/abstract=2194755 6 7 35 U.S.C. § 154(a). 8 Sharon K. Sandeen, Kewanee Revisited: Returning to First Principles of Intellectual Property Law To Determine the Issue of Federal Preemption, 12 MARQ. INTELL. PROP. L. REV. 299, 335 (2008). 9 17 U.S.C. § § 101, 102(a). 101 Abrams, supra note 16, at 517; accord Miller, supra note 1, at 746; Pollack, supra note Error! Bookmark not defined., at 301.102 Bonito Boats, 489 U.S. at 165.

B. The Clause's Role in Statutory Preemption

Abrams, supra note 16, at 510.

Goldstein, 412 U.S. at 553.

Miller, supra note 1, at 749.

Supra text accompanying note 42.

Fromer, supra note 3.

U.S. CONST. amend. X.


The Internet of Things We Don’t Own?

" The Internet of Things We Don’t Own? ," Comm. ACM (ACM/New York, N.Y.) , May 2016, at 36

"The Internet of Things We Don’t Own?," *Comm. ACM (ACM/New York, N.Y.)*, May 2016, at 36

Jason M. Schultz, The Internet of Things We Don't Own?, Comm. ACM, May 2016, at 36

Who will control the 'ordinary pursuits of life' in the digital economy? consumer goods, even electronic ones, was largely governed by two areas of law: property and contract. The good was a piece of property. The purchase agreement was a contract. Apart from the occasional equipment rental or lease, if money changed hands, the good went home with its new owner. Quid pro quo. Even goods subject to other laws, such a copyright or patent, generally fell within this framework. As patent or copyright owners sold off individual books, movies, or machines, the law would "exhaust" any remaining intellectual property rights in that particular copy, prohibiting the IP owner, in the words of the U.S. Supreme Court, from interfering with the rights of purchasers to use it "in the ordinary pursuits of life." That meant the purchaser could use the item as she saw fit and then dispose of it, including reselling it, under whatever conditions she chose. These exhaustion rules originated from the long-standing common law regime of personal property, which generally forbids subjecting objects to ongoing restrictions, especially restrictions on resale. ARS, REFRIGERATORS, TELEVI-SIONS, wristwatches. When we buy these everyday objects, we rarely give much thought to whether or not we own them. We pay for them, we possess them, we wear them or put them in our garages or on our shelves, so we have very little reason to question their legal status or their loyalties. Yet in the last decade or so, we have witnessed a subtle and effective shift to cede control over our purchases, especially when they contain software. It began with digital content. Movies started telling us where and when they could be played. Soon our music informed us how many devices it would live on. Then our library books began to automatically re-encrypt themselves on the date they became overdue. Now our phones will not allow us to delete certain apps; our televisions listen for when we take a bathroom break, and mattresses can keep tabs on where we slept last night. The integration of such smart product features with ubiquitous network connectivity, microscopic sensors, large-scale analytics, social informa-tion sharing platforms, and cloud storage has created a new generation of embedded systems, the Internet of Things (IoT). It is not like the Internet we once knew, and it is not a particularly new idea: embedded computing systems have been around for decades. But the speed of adoption and the diverse capacities of these devices are unprecedented. The For example, just last year, farmers found out that many of them may no longer own the equipment they purchased, including even vehicles such as tractors and combine harvesters. Even the iconic John Deere tractor now contains no less than eight control units-hardware and software components that regulate various functions, ranging from running the engine to adjusting the armrest to operating the hitch. When tractors were purely mechanical, farmers could easily maintain, repair, and modify their own equipment as needed. But now, software stands in their way. Tired of losing revenue to industrious farmers who repaired their own tractors or bargain hunters who took their equipment to an independent repair shop, John Deere decided to interpose a software layer between farmers and their tractors, claiming it retained ownership and that farmers merely had "an implied license for the life of the vehicle to operate the vehicle." John Deere is not alone. Other vehicle manufacturers including Ferrari, Ford, General Motors, and Mercedes-Benz are finding new ways to use tech-But that approach is under threat. Digital goods have pushed us away from traditional legal models, and, drawing from the world of software, now come with ubiquitous "Terms of Service" that few if any of us read. Within the dense legalistic language of these documents, IoT manufacturers and distributors are quietly attempting to shift the rules of ownership. For example, many now claim we do not own our phones, our cars, or even our televisions: we are merely "licensing" them. Others assert that when our devices break, it is illegal for anyone other than the manufacturer to diagnose the problem, let alone fix it. And others go even further, claiming any data captured by the device belongs to them and not the users who bought the device and created that data. And while users and consumer advocates have generally pushed back on these assertions, device manufacturers continue to push this view of the world upon us. The exact origin of this shift is difficult to pinpoint, but one significant moment in its early history was the introduction of the iPhone on January 9, 2007. Steve Jobs told the assembled crowd, "Today, Apple is going to reinvent the phone." Like nearly every Apple product, the iPhone user experience was carefully choreographed and tightly controlled. What Jobs did not tell the crowd was that Apple's legal strategy to maintain ownership and control of the devices in our pockets and purses was equally choreographed and controlled. Eleven days after the iPhone debuted, a group of skillful Apple enthusiasts decided to test its technological and legal limits by "jailbreaking" the phone. This led to a cycle where Apple would upgrade its systems to break the jailbreak and the jailbreakers would upgrade their breaks to free their phones from the upgrade. This battle over who "owns" the device continues to this day, with Apple insisting that "iPhone users are licensees, not owners, of the copies of iPhone operating software." As contested ownership over smartphones has become more of a mainstream debate, the battle over IoT ownership has moved into more traditional pursuits of ordinary life. viewpoints consumer expectations play an important role in transactions, especially those involving physical objects. The Supreme Court has come close to weighing in on the issue in some of its recent patent and copyright cases, but has not given us a definitive rule. Even the Copyright Office has avoided opining, for example, choosing to grant smartphone jailbreakers an exemption from anti-circumvention liability under copyright law's fair use doctrine instead of declaring them owners with the right to modify embedded software. Recently, Congress has taken more action with Rep. Blake Farenthold introducing the You Own Devices Act (YODA), both houses beginning to examine the possibility of updating the copyright exhaustion rules for the digital age, and Senators Grassley and Leahy specifically asking the Copyright Office to analyze "how copyright shapes our interactions with software in things we own." The Commerce Department also recently issued a White Paper expressing concerns for consumers and the market if IoT manufacturers begin placing restrictions on the freedom to resell devices. But while many of these voices are asking good questions, none have provided the answers we need. To find the answers, we will need to have a more open and honest conversation about ownership-in the courts, in Congress, and in the technical communities that are designing the IoT ecosystem. Hiding these conflicts and questions in shadowy TOS and embedded firmware code will only further confuse consumers and courts and ultimately complicate instead of clarify the rules we want when it comes to our ability to enjoy the ordinary use of these objects, including our ability to use them privately, to customize them to our needs, and even to part with them as we please. Jason Schultz (SchultzJ@exchange.law.nyu.edu) is Professor of Clinical Law at New York University's School of Law. The argument in this column is further explored in the author's forthcoming book The End of Ownership: Personal Property in the Digital Economy (MIT Press, Fall 2016), with co-author Aaron Perzanowski. nology and law to weaken the property interests of drivers. These efforts take a number of forms-DRM that prevents repair and customization, software that monitors and controls your driving, even restrictions on vehicle resale. The car, once a symbol of freedom and independence, is increasingly a tool for control. Modern cars, much like John Deere's tractors, rely on dozens of electronic control units. Access to the software code on those control units is necessary for many common repairs. The code is also crucial if a driver wants to change the default tuning of her vehicle to get more horsepower or better fuel efficiency from the engine, the ambition of a growing group of car purchasers concerned about the environment calling themselves "eco-modders" and "hyper-milers." Yet under the ownership rules of the auto manufacturers, these hobbyists run the risk of becoming copyright infringers. Such shifts in the battle over IoT ownership are also reaching into the security and safety research communities. As our vehicles incorporate greater computational systems with increased complexity, independent testing of their safety and security will increasingly require access to the copyrighted code inside them. Under the traditional law of personal property ownership, all researchers had to do was purchase a vehicle and then test it; manufacturers had no power to object other than to void the warranty. Despite Ford recalling half a million vehicles due to software glitches, Chrysler recalling 1.4 million vehicles because their infotainment systems were vulnerable to hackers, and notorious scandals such as the Volkswagen's "Defeat Device" that allowed it to cheat on emissions tests for diesel vehicles, we see more and more automakers claiming the code inside our cars is proprietary and access to it without their authorization is illegal. Consumer advocates have pushed back against these efforts, passing a Right to Repair law in Massachusetts and pressuring manufacturers to negotiate a Memorandum of Understanding with aftermarket repair shops and part suppliers that allows those businesses access to diagnostic information for repair and replacement purposes. But this does not cover automobile owners. Nor are our children immune from this shift. Most children have imaginary friends and/or play with dolls. And while we are often surprised at the intensity of these relationships, we have historically understood they were private and ephemeral. Not anymore. Mattel's new WiFi-enabled Hello Barbie doll comes fully equipped with a built-in microphone and a cloud-based machine learning system to "personalize" your child's experience. However, what Barbie won't tell you or your child is that every single word or sound made in her presence will be recorded and transmitted back to Barbie's ML master archive for research purposes. In order to discover that, you would have to read her online Privacy Policy and Terms of Use. With the introduction of this capacity in our children's toys and other home devices such as the Nest thermostat and the Samsung "listening" Smart-TV, the sense of privacy and autonomy we used to enjoy in our homes and with the objects we owned has become yet another contested space in the IoT era. So what does the law have to say about the question of IoT ownership? To date, neither the courts nor Congress have resolved the question. In general, the courts are split on the exact rules for who "owns" embedded copyrighted media, including software. Some have taken a somewhat technocratic approach, simply deferring to whatever words the maker puts in her license or TOS, regardless of whether or not those words accurately reflect the realities of the transaction. Other judges, however, have been more cautious, recognizing that So what does the law have to say about the question of IT ownership?

Law and Technology The Internet of Things We Don't Own?


" The Jeffersonian Model of U.S. Cultural Property Law ," 2024 Tutela & Restauro [Prot. & Restoration] (Monografie 1, Supplemento [Monograph 1 Supp.], The Italian Law of Cultural Heritage: A Dialogue with the United States) 155

"The Jeffersonian Model of U.S. Cultural Property Law," 2024 *Tutela & Restauro [Prot. & Restoration]* (Monografie 1, Supplemento [Monograph 1 Supp.], The Italian Law of Cultural Heritage: A Dialogue with the United States) 155

Christopher Jon Sprigman, The Jeffersonian Model of U.S. Cultural Property Law, 2024 Tutela & Restauro [Prot. & Restoration] (Monografie 1, Supplemento) 155

During this conference, we have heard a lot about the history of Italian cultural heritage law, how it applies, and about the institutions that apply it. I want to add to the conversation by setting the Italian approach to cultural heritage into a global context. Specifically, I want to compare the Italian model of cultural heritage with the approach that has been taken in the United States, which, for reasons you will soon understand, I will call the Jeffersonian model. On Sept. 6, 1789, Thomas Jefferson wrote from Paris to his closest friend, James Madison. Madison was engaged at that moment in drafting what would become the U.S. Constitution. Though it stands as the longest letter he is known to have written, Jefferson's Sept. 6 letter to Madison focused on a single question: whether one generation has the power to bind another. This question, Jefferson said, «seems never to have been started either on this or our side of the water. Yet it is a question of such consequences as not only to merit decision, but place also, among the fundamental principles of every government» 1 . On this question Jefferson's views were firm. «The earth», he wrote, «belongs to the living, and not to the dead» 2 . The living, and not the dead. This meant, Jefferson argued, that the living generation owes no special allegiance to the laws passed by the previous generation -if we decide to keep those laws, that is our choice, but there should be no presumption that old laws should continue in effect. More directly relevant to the questions of culture we are discussing at this conference, Jefferson argued that copyrights should expire after what today we would consider quite a short period of nineteen years. Jefferson even declared that every constitution should expire after the same short period. Note that Madison did not take his friend's advice. In fact, quite the opposite: the American Constitution he drafted put the dead firmly in charge. The U.S. Constitution is arguably the most difficult on the planet to amend. And both the document itself and the broader system of U.S. constitutionalism (i.e., the norms and practices that fill out the document's outlines) that it undergirds are replete with anti-democratic features: e.g., the unrepresentative U.S. Senate and Electoral College, life tenure for federal judges, or the supermajority required to pass ordinary legislation over a Senate filibuster. These elements cement the decisions of the dead in place; they deprive the living of the capacity for choice. But set that all aside, and focus on Jefferson's maxim. The proposition that the earth belongs to the living helps us understand the U.S. approach to cultural heritage. The Italian law we have been talking about at this conference is, of course, built on a 'cultural heritage' model. As a lawyer, I do not understand cultural heritage laws as merely identifying and cataloguing important historical artworks and other cultural artifacts. Cultural heritage laws take action by identifying and restricting the public's use of cultural property. This is done through some form of regulation or intellectual property right. Cultural heritage law as it works out in practical terms is almost inevitably about cultural restriction. I want to contrast this with the Jeffersonian model, which understands cultural heritage not primarily as a thing to be protected, but as a thing to be used. This model, as Jefferson would have it, is concerned primarily with the interests of the living -specifically, in producing today's culture, drawing on the past but also reworking it in ways that may preserve or may destabilize the past. This model is largely indifferent to and perhaps in practice even hostile to cultural particularism and to the stability of any particular culture. The role of IP rights, in this model, is not to preserve old culture. It is to encourage people to make new culture. Now, here I want to emphasize two important points. The differences between the cultural heritage model and the Jeffersonian model are not black and white. These are models that overlap. Both see a role for preservation. Both see an important interest in public access. But the two models place their emphases differently. The second point we must immediately acknowledge is that one cannot argue that either of these two models is in some sense 'right' or 'wrong.' The different models grow out of deep differences in how we understand what leads to human flourishing. The cultural heritage model situates individuals within a particular culture; it is based on the notion that some well-defined group identity is central to an individual's flourishing. On the other hand, the Jeffersonian model is both more cosmopolitan and more present-focused. Which one of these models is more attractive to you has do to with your underlying beliefs about the relative importance of individual autonomy versus group identity, and about the virtues of more rapid cultural change versus relative cultural stability. Reasonable people, of course, differ on these points, and I am in no position to argue with you or anyone here. That said, if you want to understand the Jeffersonian model, you could not do better than to look at a picture of Monticello, the house that Jefferson, at age twenty-six already an accomplished architect, designed for himself. Or, you can look at University of Virginia's Rotunda, which he also designed and modeled on the Pantheon in Rome. You see that Jefferson is drawing, as of course the Romans did, heavily from Greek classical architecture, to which we might refer as an element of Greece's cultural heritage. But Jefferson did not think of Greek classical architecture in those terms. In Greek classical architecture he saw the power of human rational intellect. But he did not think that quality was Greek, or that Greek classical architecture in some way belonged to Greek culture. Jefferson was an enlightenment universalist. He saw this culture as the inheritance of humankind. Now, I have to acknowledge that Jefferson surely did not follow in his own life all of the principles he espoused. He was a universalist who wrote in the Declaration that «[w]e hold these truths to be self-evident, that all men are created equal, that they are endowed by their creator with certain unalienable rights, that among these are life, liberty and the pursuit of happiness». And at the same time, he owned slaves. Let me leave off with history and turn now to the ways in which the different models cash out in terms of laweither law regulating cultural property, or the absence of law regulating it. Note that I am not focusing primarily on physical artifacts, though I think the case for cultural property as national property is often more complex than some will acknowledge. I will tell just a quick story to illustrate that. This story will also move us along to the question I am most interested in, which is how a cultural property framework should think about intangible cultural goods. Back in 2018 I received a call from an American artist with a legal problem. The problem was related to some artworks the artist created based on pictures she had seen of a Neolithic ivory sculpture called the Venus of Brassempouy. Here is a picture of the Venus sculpture, which was carved about 25,000 years ago from a piece of wooly mammoth ivory. It was found in a cave outside a small town in southwest France and is now on display at the French National Archeological Museum, near Paris (fig. 1). And now here is a picture of what the American artist did with the Venus (fig. 2). The artist wanted my help because a representative of the French National Museum of Archeology was emailing her demanding that she stop selling her artwork. Use of the image of the Brassempouy Venus for commercial purposes, the museum representative said, was an impermissible use of cultural property and was against French law. I wrote back to him, telling him very politely that he had no claim whatsoever in an American court. I never heard back. So, is this artifact the cultural property of France? I think the case is weak. Other than the fact that the sculpture was found in a cave located (barely) within the borders of the modern French state, nothing about the artwork would make it especially relevant to French culture, as opposed to the culture of any other nation, or indeed of human culture as a whole. Think for a moment of the name given to the sculpture -the Venus -that is a Roman name for a Greek goddess. The name speaks to the fact that this sculpture, and, perhaps most importantly, how we see it, is at odds with any conception of cultural heritage based on national identity. Jefferson would have understood this. Obviously, the 25,000-year-old Venus of Brassempouy is a polar case; less ancient artworks and artifacts are more justifiably identified as the heritage of a nation, as we understand that term now. But where is the dividing line? At what point does the antiquity of an artifact begin to make identification with the nation -a modern conceptionmore difficult? I want to focus, using a specific example, on that question. Is Giovanni Bellini an Italian painter? Or a Venetian one? Or, is there a reason to think that Bellini is part of a wider cultural heritage that flows across national borders, as Jefferson believed Greek classical architecture to be? As best we can tell, Giovanni Bellini was born in Venice, spent all of his eighty-five years there, and never traveled further than Mantua, less than 160 km away. You might respond that Bellini's localism does not matter: if Bellini is Venetian, then the job of the Italian government is to protect his works by anchoring them down in Venice. But that does not entirely answer the question either, because the problem is not only about geography. It is also about time (fig. 3). The man depicted in this Bellini painting, Leonardo Loredan, was one of the most consequential doges in the history of the Venetian Republic. An inhabitant of 15th-century Venice would have understood Bellini's portrait through the lens of Loredan's political career. In particular, Bellini's Venetian contemporaries would be familiar with the decisive role Loredan played in preserving the Venetian Republic in two wars -one against the Ottomans, the other against the Pope. Both wars carried potentially existential consequences for the city-state. Under Loredan's skillful and altogether ruthless leadership, Venice was able to negotiate a peace treaty with the Ottomans, and to keep most of the papal lands it had earlier seized. In Loredan's discipline and canniness, a 15th-century Venetian would see a reflection of Venice's cardinal virtues, as understood and promoted to the world by Venetians themselves. We must ask now how a modern Venetian might understand this portrait. Surely as a beautifully executed painting. But does it speak to the modern Venetian as part of his or her 'cultural heritage'? Loredan's dogeship, and the wars he fought, are deep in the past. Of course, the consequences of those long-ago struggles are still relevant to modern Venetians. But the consequences are likewise relevant, I would argue, to everyone in the west. The Venetian Republic's struggle against papal authority was one theatre in a broader European struggle -sustained over centuries, often intensely violent -which pitted secular against religious authority. And, of course, those struggles fed politico-religious conflicts that sent waves of Italian and European immigrants and refugees to the New World. So, in this web of interconnected historical and political threads, whose cultural heritage is Bellini? Venice's, surely. But also, Rouen's, and Amsterdam's and Hamburg's and New York's. The tendency to equate cultural heritage with national heritage is a blunt way of understanding any of the important questions that cultural heritage raises. That equation tends to underplay the ways in which, at least in the west, particular artworks and artifacts are drawing from, and contributing to, intellectual currents that are flowing across European borders, either the borders of the time or the ones we know now. My take-away here is that even with respect to tangible cultural artifacts, the foundations of cultural heritage law based in national heritage are shakier than they may appear at first to be. This is not to say that nations do not have reasons to promulgate and enforce such laws. The presence of artistic treasures on a government's territory is part of a government's prestige. And when it becomes a focus of tourism, art is also an economic asset. These are all perfectly valid interests that support rules about the disposition of tangible cultural artifacts. But they probably do not support as pervasive a set of rules as the Italian system imposes. The difficulties deepen when we turn to intangible cultural heritage, and the cultural property rules that cover intangibles (figs. 4-5). Here you see two packets of cheese -one from Greece and marked 'feta,' the other from Bulgaria, and marked, quite unhelpfully, 'Bulgarian Sheep's Cheese.' I say unhelpfully because the Bulgarian cheese was until quite recently marked feta. And that is a defensible label for it, given that like the Greek cheese it is made of sheep milk, it is made by the same process, and it is made in a region of Bulgaria that borders Greece, where many of the people are ethnically Greek, and where many speak the Greek language. It is a branch of cultural heritage law that forced the Bulgarian cheesemakers to re-label their cheese. That law is the international regime of geographic indications, or GIs. GIs are source-identifiers, akin to collective trademarks, that designate a given geographic location as the sole legitimate source of a good on the basis of a conclusion that a particular good is part of the cultural heritage of a particular place. Well-known examples include Bordeaux (for wine) and Parmesan (for cheese). The notion, roughly, is that some combination of the physical characteristics of a region (referred to as terroir) plus local knowledge yields distinctive products. Use of the name with products from another location, this line of reasoning goes, is simply misleading to consumers. And this is why we see the Bulgarian cheese re-labeled, in a way that makes it difficult for consumers to understand what, in fact, it is. There are many conceptual and practical difficulties with the protection of GIs. First is that the empirical evidence for the centrality of terroir is, to put it charitably, thin. Of course, soil and climate contribute to the taste of wine, or cheese. But the idea that a particular terroir is unique, that it cannot be replicated anywhere else in the world, would be a surprise to the Portuguese immigrants who since the 16th century have been making quite excellent Port wine in South Africa's Western Cape region. As with the Bulgarian cheese re-labeling forced by Greek claims of cultural heritage, the South African wine has been re-labeled (often with uninformative names like 'Cape Vintage,' or 'Cape Tawny') in response to Portuguese claims of cultural heritage. It is important to note that for wine and spirits GIs, the legal prohibition is not simply against false identification of the geographic origin of the wine in the bottle. The prohibition extends to comparison or reference. It would be illegal, for example, for the South African producers to refer to their product as 'Cape Port' or even as 'Port-style fortified wine,' even if the producers use the grapes and the methods traditional to the Douro region of Portugal. One suspects that the broad scope of the prohibition is not really about cultural heritage. It is about the desire of the traditional producers to limit competition. It is perhaps not surprising that, in general, it is the Europeans who have worked to enforce these rules upon the New World, and it is the New World, most often, that has resisted. To be clear, all GIs do is bar the use of certain descriptive words or place-names. They do not bar the mimicking of style, taste, or appearance. In other words, wine called Chablis, but not made in Chablis, runs afoul of the GI rule. But nothing stops a winemaker in Australia from making a wine that tastes like Chablis -Gis mean that they cannot call it Chablis, or something that employs the name as a comparator, like 'Chablis-style.' The result is consumer confusion, which is precisely what the law claims it is trying to avoid. The confusion is created by, and indeed is intended by, this branch of cultural heritage law. If I had my way these rules would be scaled back substantially. I would, at a minimum, permit competitors to use the place-name to compare or refer to, the traditional product. To inform consumers, in other words, that the South African fortified wine they are looking at on the wine store shelf will in fact taste like port -however forcibly the proponents of terroir might insist otherwise. I want to talk about another aspect of resistance to cultural property regulation, having to do with the Walt Disney Company's famous mouse, Mickey. Mickey Mouse is an interesting and timely case. The copyright term in the United States is, as it is in the EU, the life of the author plus seventy years. That is, to be blunt, absurdly long. A term that long is, in terms of its present economic value, barely distinguishable from a perpetual term. The U.S. Constitution specifically forbids perpetual copyright terms, providing that copyrights may only be granted for 'limited times.' And yet in a 2003-decision, Eldred v. Ashcroft, the U.S. Supreme Court permitted Congress to lengthen the copyright term from life-plusfifty to life-plus-seventy because even though the longer term is nearly perpetual in economic terms it is, the court said, mathematically finite. Despite the length of the term, Mickey's copyright, or more precisely, the copyright on the original version of him, is set to expire in 2024. Which raises the question whether we should continue after copyright expires to regulate Mickey Mouse as a form of American cultural property, which surely he is. In my view, the Supreme Court has already answered that question, and the answer is no. In 2003, the same year in which it approved longer copyright terms in the Eldred case, the Supreme Court decided another case, Dastar v. 20th Century Fox, which is arguably of greater longterm consequence. In that case, the Court inquired into whether an artistic work for which the copyright term had expired could be protected perpetually by trademark law -i.e., protected on the grounds that people had come to recognize the work as coming from a particular source, and allowing it to be reproduced by competitors would confuse consumers about the source of the product. If you apply that concern to Mickey Mouse, it is pretty clear at this point that people identify the image with the Walt Disney Company, and if we apply trademark law, Mickey would be protected by the law as Disney's cultural heritage, even when the copyright term has expired. The Supreme Court said that trademark does not work that way. The Court noted that the Constitution requires copyright terms to be limited, and that it would not interpret trademark law in a way that would prevent artistic works like Mickey Mouse from moving into the public domain. So, when Mickey's copyright runs out in 2024, the mouse will be, as the great Justice Louis Brandeis once put it, «free as air to common use». Although the Dastar decision has not been understood this way in the U.S., it is, I would submit, a decision about cultural heritage. It is, to be more precise, a decision that permits the public to access an important part of America's cultural heritage, and, if they wish, to exploit it, and even to destabilize and subvert its meaning. The decision thus reinforces the skeptical American approach to the entire enterprise of constructing cultural heritage through cultural property rules. Our nation's cultural heritage is, to borrow a phrase, for the living. With that said, let me end this speech by returning to a story from America's founding. I already spoke about Thomas Jefferson. I want to end with a mention of John Adams, one of the most important figures in the founding and the second president of the United States. Adams and Jefferson were what we today in American slang would describe as 'frenemies.' It was Adams who persuaded Jefferson to take on the task of the Declaration of Independence, because, Adams later said, Jefferson was simply the better writer. The two men later fell out over party politics before reconciling late in life. In one of the most unlikely incidents of the founding era, both men died on July 4, 1826, the 50th anniversary of the signing of the Declaration that Adams had provoked and Jefferson had drafted, at the risk of both men's lives. On his deathbed, more than 500 miles north of the bed in Monticello where Jefferson lay dying, Adams' last words were «Jefferson lives». Adams was mistaken. But in another sense, he was right. In America's approach to cultural heritage and cultural property, Jefferson lives. The author thanks the conference organizers for their hospitality and their work in organizing a wonderful event.

The Jeffersonian model of U.S. cultural property law