Power.pdf

(Cite as: 37 Harv. J. on Legis. 45)
Harvard Journal on LegislationWinter, 2000 *45 THE PROPER SCOPE OF THE COPYRIGHT AND PATENT POWER
Copyright 2000 President and Fellows of Harvard College; Robert Patrick In 1998, Congress passed the Sonny Bono Copyright Term Extension Act, extending the durationof copyright protection from the life of the author plus fifty years to the life of the author plus seventyyears. The constitutionality of this extension has been challenged on First Amendment and othergrounds. In this Essay, the authors argue that the language of Article I, Section 8, Clause 8 containsjudicially enforceable limits on Congress's power to protect intellectual property and suggest that the1998 Extension Act exceeds those limits.
Property, these days, is increasingly likely to be intellectual property (IP). As more and more peoplemake their living in the "information economy," intellectual property sounds like a more and morereasonable proposition. As one of our law professors once said, "I used to think that all property wastheft--but that was before I had anything worth stealing." As an increasing amount of society's wealth is tied up in intangible assets, strong, clear property
rights can make a good deal of sense. But it is also possible to have too much of a good thing, and our
society is in danger of reaching that point. Recent scholarship suggests as much: a growing body of
literature details the expansion of particular doctrines, [FN1] the rising burden of IP-related
transaction costs, [FN2] or the pressing need for collective *46 institutions to mediate between
individual firms and the mushrooming pile of IP rights they must traverse to do business. [FN3]
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In this Essay, we approach one part of this problem at the source. We argue that there are limits onCongress's power to create and extend intellectual property interests. Such limits are "internal" in thesense that they are the result of the very same constitutional provision giving rise to Congress's powerin the first place, the Copyright and Patent Clause of the Constitution which grants the power "Topromote the Progress of Science and useful Arts, by securing for limited Times to Authors andInventors the exclusive Right to their respective Writings and Discoveries." [FN4] We argue that the language of the Copyright and Patent Clause may restrict some of Congress's morefar-reaching efforts at promoting intellectual property in recent years, particularly in passing ad hocextensions of copyrights and patents for the benefit of individual companies. We then suggest someapproaches that courts might take in evaluating, and perhaps striking down, congressional actions inthis area.
In one sense, there is nothing novel about our approach. From the earliest days of our nation to thepresent era, courts have repeatedly stressed that Congress's intellectual property powers under theCopyright and Patent Clause are limited. Courts, however, have been somewhat reticent when thequestion of defining those limits has arisen. We hope to encourage a less deferential approach in thefuture.
One characteristic of legally granted monopolies is their tendency to be misused by those in power.
The grant of a legal monopoly, after all, constitutes an easy way for the state--or those in control ofstate power--to reward friends without spending state money. [FN5] *47 Not surprisingly, the grant of monopolies becomes particularly attractive to politically embattled
leaders faced with government revenues that are inadequate for their purposes. Monopolies for
intellectual property are not immune from this tendency. Indeed, our modern system of copyrights and
patents arose in reaction to exactly this state of affairs. Cries of unfair influence led English subjects
to protest the grant of royal monopolies under Queen Elizabeth I and King James I:
[In the late sixteenth century,] malpractices began to creep in that were to bring [the patent system]
into disrepute and ultimately threaten its existence . [Finally,] a bill in 1624 [was] enacted as the
Statute of Monopolies.
Courtiers who extorted large sums from petitioners as the price of advancing their claims were
roundly condemned. But most offensive of all was the granting of monopoly powers in established
industries . to courtiers whom the crown could not otherwise afford to reward.
These abuses parliament sought to eradicate in 1624 by the restriction of letters patent, conferring
monopoly powers, to first inventors alone. The validity of royal licenses would henceforth be liable
to trial at common law, and anyone aggrieved by them could sue for relief. [FN6]
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The Founding Fathers did not forget this history lesson. The constitutional clause enabling Congress
to pass patent laws explicitly states that patents shall be granted to "inventors" for their "discoveries"
and that these grants shall be "for limited times." [FN7] Thus, the grant of copyright and patent power
in the Constitution was intended to provide a positive incentive for technological and literary progress
while avoiding the abuse of monopoly privileges. [FN8] As Joseph Story put it:
It is beneficial to all parties, that the national government should possess this power; to authors and
inventors, because, otherwise, they would be subjected to the varying laws and systems of the different
states on this subject, which would impair, and might even destroy the value of their rights; to the
public, as it will promote the progress of science and the useful arts, and admit the people at large,
*48 after a short interval, to the full possession and enjoyment of all writings and inventions without
restraint .
It has been doubted, whether [C]ongress has authority to decide the fact, that a person is an author
or inventor in the sense of the [C] onstitution, so as to preclude that question from judicial inquiry. But,
at all events, such a construction ought never to be put upon the general terms of any act in favour of
a particular inventor, unless it be inevitable. [FN9]
Story's characterization seems to mesh with our own: that the general evils of monopoly areovercome, in this specific instance, by the benefits accruing to the public from encouraging authorsand inventors to create and invent, and to make their works public. Story makes another importantpoint in discussing congressional power: he doubts that Congress has the power to make the questionof authorship or invention a purely legislative one, beyond judicial review, and is suspicious ofspecial--as opposed to general--legislation on the subject.
General legislation, of course, often requires administration, and even before the drafting of the
Constitution, the need for a special patent administration was becoming apparent. This was due in no
small part to the controversy over steamboat patents raging at the time. [FN10] In the 1770s and 1780s
two rival inventors, James Fitch and Charles Rumsey, each claimed invention of a workable
steamboat. [FN11] As was the custom in colonial times, they sought protection for their inventions at
the state level. [FN12] The result was that, as each presented his case to a new state legislature,
conflicting and overlapping monopolies were granted. [FN13] To *49 clarify their rights, each
inventor sought special legislation from the federal government, then operating under the Articles of
Confederation. [FN14]
The situation rapidly became quite confused, and the factors surrounding each inventor's claim werehotly disputed. The battle for credit as to priority of invention was fought in individual meetings witheach state's representatives, as well as by publishing pamphlets purporting to set forth the "true" storyof the steamboat's invention. [FN15] Even George Washington became involved as a supporter ofRumsey. [FN16] But because the status of federal grants at the time was unclear, not much progresswas made. Nevertheless, the steamboat case, with its complex facts pleaded to inexpert legislators, Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
was an important impetus behind the call for a uniform national patent system in the Constitution andthen in the first Congress. Consequently, the 1790 Patent Act was among the first orders of businesstaken up in the new federal legislature. [FN17] The steamboat case shows, among other things, that the complicated and idiosyncratic factsassociated with patent disputes are ill-suited to resolution in a legislative forum. Busy legislators,with little expertise in steamboat technology, were called upon to resolve a complex dispute betweenrival claimants based on little more than their innate sense of justice. And John Fitch, a somewhatuntutored frontiersman, always felt that the better connected and courtlier James Rumsey had a distinctadvantage in the arena of legislative influence. [FN18] Both the real and potential unfairness of suchan ad hoc approach was understood at the time to militate in favor of the creation of a nonpoliticalsystem. [FN19] In tracing the next step in the development of a professional, specialized patent agency, the
experience of Thomas Jefferson is instructive. He was the only President to serve as a patent
examiner, something that speaks volumes about the perceived importance *50 of patent scrutiny two
centuries ago. [FN20] As Secretary of State, Jefferson devoted a great deal of energy to examining the
patent applications that came before him. It soon became apparent, however, that a Secretary of State--
even one as interested in technology as Jefferson--simply lacked the time to do the job properly.
[FN21] In response to this problem, a new patent system was enacted in 1793 that allowed inventors
to register their patents in Washington without examination, leaving questions of patent validity to the
courts. [FN22] This, too, proved unworkable as the system became flooded with spurious patents.
[FN23] The final step in establishing today's patent system came in 1836, when the forerunner of
today's Patent Office was established to examine each application and pass on its merits. [FN24]
Taken together, the steamboat example and Jefferson's experience demonstrate that there isconsiderable wisdom behind the notion of a patent system with administrative regularity. Such asystem is not only fairer to applicants and more regular in its results, but also--because professionalpatent examiners are likely to be far more expert than legislators, judges, or Secretaries of State--moreefficient.
II. THE POLITICAL ECONOMY OF PATENT EXTENSIONS Nobel prize-winner Douglass North has argued that governments very rarely define property rights
in ways that maximize economic growth. [FN25] Great Britain, in this view, was fortunate enough to
evolve efficiency-enhancing institutional structures (including property rights) that in turn set the stage
for economic growth. [FN26] Such is the case, North argues, with the emergence of modern patent
systems. [FN27] For North, the sovereign abuses of monopoly *51 grants in the sixteenth and early
seventeenth centuries are examples of wealth-reducing property rights. [FN28] The Anglo-American
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patent systems that succeeded the old monopoly privileges, on the other hand, exemplify the brighter,pro-growth side of the property rights picture. [FN29] North's view is consonant with two other traditions in constitutional theory that bear on this Essay:(1) the view, associated with legal historians J. Willard Hurst and Stanley I. Kutler, that theConstitution embodies a spirit of economic dynamism and growth; [FN30] and (2) the more recent"public choice"-inspired literature describing the Constitution as a bulwark against rent-seeking[FN31] by special interests.
A. Economic Dynamism and Growth Perspective The economic dynamism perspective is best exemplified by Stanley I. Kutler's famous account of the
Charles River Bridge case. [FN32] Kutler described this cornerstone case as a contest between the
forces of the privileged and well-positioned holders of an old state charter to operate a ferry crossing
and the dynamic new forces that led a group of entrepreneurs to propose building a bridge. [FN33]
Faced with the choice of upholding the original charter against a claim of impairment of state contracts
and allowing the new bridge, the Supreme Court chose the latter. [FN34] The general lesson was the
defeat of the entrenched charter-holders' rent-seeking and the liberation of vigorous economic forces
of *52 change. [FN35] Kutler's antinomic title--"Privilege and Creative Destruction"--describes what
is at stake in many proposals to extend intellectual property rights. Our appeal is to maintain the early
nineteenth-century, pro-growth conception of the Constitution. [FN36]
B. Public Choice Literature on Rent-Seeking The second literature, on public choice, sees the Constitution as a mechanism designed to preventwell-organized interest groups from obtaining special favors from the government. [FN37] Inscholarship extending back to the mid- 1980s, authors such as Jonathan Macey have argued that theConstitution was designed primarily as a bulwark against rent-seeking. It is tempting to agree withsome of Macey's critics, however, and argue that the Constitution did not enact James Buchanan's TheCalculus of Consent. [FN38] Cass Sunstein, in particular, sees the Constitution as a "republican"means of transcending interests, rather than simply a well-oiled mechanism for reconciling them.
[FN39] But for our purposes, it is not necessary to enter deeply in this debate. Regardless of whetherthe Copyright and Patent Clause represents a larger theme in the design of the Constitution, it doeslimit one specific congressional power. This limit originated in British analogues that were explicitlydesigned to eliminate rent-seeking abuses. In at least this context, the limit on Congress, and the abusesthat informed it, dictate a concrete constitutional approach.
Against this backdrop, we claim that the constitutional footing for intellectual property protection Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
was constructed with inherent *53 limitations, as well as with a grant of power. The specific language
("to promote progress," and "for limited times"), the history, and the context of the Clause dictate that
the congressional power to create property rights does not extend to nonproductive rent-seeking.
Congress exceeds its authority to grant property rights when those rights do not promote progress, or
are not sufficiently limited in time. Members of Congress should keep this in mind when considering
the many bills for "private relief" and term extensions that they now receive. And, failing that, the
courts must exercise their authority to enforce constitutional limits on the Copyright and Patent power.
To ignore this duty is to risk the kinds of abuses that threatened the economic progress of seventeenth-
century Britain, and to turn our backs on the historical transformation of ad hoc grants of rent-seeking
privileges into rule-based systems for recognizing intellectual property rights.
This history is of particular relevance now, as special legislation extending individual patent terms
has become more common. Occasionally, efforts to secure such legislation overreach, as when Swiss
pharmaceutical giant Hoffman-LaRoche attempted to sneak a patent extension rider covering its drug
Toradol into legislation providing relief for Midwest flood victims. [FN40] However, they sometimes
succeed, as when G.D. Searle slipped language extending the patent on its drug Daypro into an
emergency budget bill. [FN41] Nor is the matter limited to patents: the Disney copyright on Mickey
Mouse was poised to enter the public domain in 2003, but the Walt Disney Company decided that
procuring legislation extending that copyright for an additional twenty years was to be its "highest
priority." [FN42] The Disney request was folded into a general bill that recently became law, *54 and
is thus not a classic private bill. [FN43] Still, some experts fear that in today's freewheeling political-
funding culture it will not be long until a copyright-reliant company discovers the magic of private
intellectual property protection. [FN44] Such departures from the norm could well become the norm,
with wealthy corporate interests securing by legislative influence what they would not be able to
obtain in the normal course of business.
Such extensions raise the standard political collective action problem: the gains to the drugcompanies or Disney (even after subtracting political contributions and lobbying costs) are enormousand obvious, while the additional harms to consumers are relatively small on a per-person basis andnot at all obvious. This is the classic situation in which economic theory tells us government will beover-responsive to the entreaties of well-organized parties: [S]mall groups have a greater likelihood of being able to organize for collective action, and canusually organize with less delay, than large groups. It follows that the small groups in a society willusually have more lobbying . power per capita . than the large groups. [FN45] This phenomenon certainly has been appreciated by politicians regardless of their degree ofeconomic training, yet what is seldom appreciated is that success in organizing a special interest andpursuing its claims costs society in several ways. In addition to redistributing wealth from society tothe small group (in the case of patent extensions, from consumers to the patentee), successful special-interest organizing also increases the likelihood that others similarly situated will seek their own Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
special legislation. As Jonathan Rauch puts it:
In the economy, as in nature, a parasite is set apart from a mere freeloader by its ability to force its
target to fend it off. This is the sense in which transfer-seekers are, not so loosely speaking, parasitic:
they are not only unproductive themselves, they also force other people to be unproductive . A bad
stockbroker or a pesky real-estate agent can take *55 your money if you do hire him, but only a
transfer-seeker can take your money if you don't hire him. [FN46]
Thus, political parasites are a double danger: they not only pursue their own self-interested agenda,but also force others into a political "arms race" to protect their own interests. "What is peculiar aboutthe parasite economy, then, is its ability to suck in resources that people would rather investelsewhere. Activism on one side draws counteractivism on another." [FN47] And, of course, effortsaimed at the political redistribution of wealth make society poorer, not richer. To the extent thatpeople are investing in lobbyists, lawyers, and public relations firms instead of, say, research anddevelopment, they are foregoing investments that might benefit society as a whole. In the language ofthe economic literature on "rent seeking" that describes these behaviors, one must consider "theresource costs of individuals seeking privileges from the government." [FN48] As this literature makes clear, the decision to shift resources in the direction of lobbying is quiterational if there is even a modest chance of success. When the return on lobbying is greater than theaverage returns on research and development expenditures, lobbying may well turn out to be the morelucrative investment option.
This, of course, is only from the firm's point of view. From society's point of view, any expenditure
on lobbying that might instead have been invested in research and development is a loss. This is due
to the fact that the return from lobbying accrues only to the patent holder, while the return from
research and development accrues in good part to society as well. Studies consistently show that, at
least for major technological advances, society as a whole gains a very large share of the total value
generated by an invention. [FN49] Indeed, it is the need for firms to capture *56 some of the value they
create through research and development that lies at the heart of private property rights over inventions
in the first place. Where lobbying activities are concerned, there is no need to ensure a fair return to
firms--the nature of the activity dictates that most of the returns will accrue to them in any event.
This point can be pushed a bit further, for the contrast between a patent system and individualrequests for patent extensions is quite striking. Patents encourage new things, while requests for patentextensions attempt to preserve old markets. Patents are forward-looking, growth-oriented,entrepreneurial-- almost (if such a word can apply to a legal construct) optimistic in nature. Bycontrast, many requests for special treatment are backward-looking, fearful of losing ground, andpessimistic or reactionary in character. Why protect yesterday's breakthroughs for a longer period ifthere is something new just around the corner? Obviously, efforts to protect old discoveries seem mosturgent as excitement about new ones ebbs. Putting aside economic theory, this attitude of impending Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
decline is perhaps the most discouraging thing about such requests; they betray the very spirit of thepatent system.
III. TAKING THE COPYRIGHT AND PATENT CLAUSE SERIOUSLY And perhaps more than just its spirit. For while the Copyright and Patent Clause was certainly
drafted without the benefit of modern economic theory, the concerns it embodies mesh closely with
the analysis above. Monopolies are bad for the public welfare, both because they impose a
"deadweight loss" on society and because they encourage the sort of special- interest maneuvering that
consumes valuable resources and tends to corrupt the political system. Although monopolies are
generally undesirable, monopolies that "promote the progress of science and the useful arts" by
securing to inventors and authors property rights "for a limited time" are the exception. They are
monopolies that pay *57 their own way with new knowledge and creation. The competition that they
inspire--because of their limited character--serves the public good by sponsoring invention and
creation, rather than competition aimed at corrupting the public's representatives.
Indeed, these sentiments were also held by the Framers, judging from an exchange between JamesMadison and Thomas Jefferson. Jefferson wrote to Madison arguing in favor of a provision outlawinggovernment-created monopolies, and repeated his position in a second letter: "It is better . to abolish. Monopolies, in all cases, than not to do it in any." [FN50] Madison did not quite disagree, but rather argued that monopolies for intellectual property were aspecial case. As Madison put it, "With regard to Monopolies they are justly classed among the greatestnuisances in Government. But is it clear that as encouragements to literary works and ingeniousdiscoveries they are not too valuable to be wholly renounced?" [FN51] Of course, for Madison'sargument to hold, the monopolies in question must in fact serve as "encouragements" and not simplyas political rewards. If the latter, they would seem to be more accurately classed with Madison's"nuisances." For this to be true, of course, the monopolies must be those described in the Copyright and PatentClause. They must be "for a limited time" because part of the public's payback is that the invention orcreation will eventually enter the public domain. They must also be reasonably calculated to "promotethe progress of science and the useful arts," meaning that they must bear some relationship tocreativity, not simply political clout.
As the Supreme Court put it in Graham v. John Deere Co.: The [Copyright and Patent] [C]lause is both a grant of power and a limitation . It was writtenagainst the backdrop of the practices-- eventually curtailed by the Statute of Monopolies--of theCrown granting monopolies to court favorites in goods or businesses which had long before been Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
enjoyed by the public. The Congress in the exercise of the patent power may not overreach the
restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly
without regard to the innovation, advancement or *58 social benefit gained thereby. Moreover,
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. Innovation,
advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent
system which by constitutional command must "promote the Progress of . useful Arts." This is the
standard expressed in the Constitution and it may not be ignored. [FN52]
This passage clearly states a principle latent in other Supreme Court cases: Congress may not obviate
settled administrative practices by overriding constitutional requirements for protection, such as
originality in copyright law [FN53] or non-obviousness in patent law. [FN54] Not to put too fine a
point on it, this means that special legislation extending the patents and copyrights of favored
individuals or corporations is often a dubious constitutional proposition. Arguably, at least, legislation
extending a particular copyright or patent fails both prongs of the test. First, as an ad *59 hoc (actually,
a post hoc) reward, it seems unlikely to "promote the progress of science and the useful arts." [FN55]
Second, as an extension of a previously granted patent or copyright, it undercuts any constitutionally
significant notion of "limited time."
With respect to the first of these failings, two issues are important. First, the value of intellectualproperty is that it encourages authors, inventors, and investors, to take risks "on the front end" withthe expectation of reaping profits later. A post hoc reward, granted on the basis of legislative whimor influence, is unlikely to provide such encouragement as effectively as a regularized system. Thevagaries of the political process dictate that extensions will not always be available, and that whenthey are, they may not always be granted for the most significant inventions or copyrighted works.
[FN56] In addition, an important aspect of the copyright and patent system's promotion of creativitylies in the way it ensures that ideas will eventually enter the public domain. Walt Disney, after all,drew on public- domain folk tales when he created such classics as Snow White and Cinderella.
Presumably, future creators will draw on Disney's work once it enters the public domain. The sameis true of pharmaceutical research, or any other field of technology in which cumulative invention isthe rule. Such opportunities are frustrated by legislation that keeps creative or inventive works out ofthe public domain for years or decades beyond those needed to encourage innovation.
Second, special legislation extending patents and copyrights does violence to the constitutional time
limits that apply to the grant of intellectual property rights. Patents and copyrights are granted for a
"limited time." The length of that time, of course, is discretionary, and Congress has fixed copyright
and patent *60 terms at varying lengths throughout our history. [FN57] Yet while the length of the
generally applicable term is largely at Congress's discretion (including, under the Patent Act in effect
for part of the nineteenth century, a renewal term), once the patent or copyright has been granted we
know the length of its maximum "limited time." When the term is subsequently extended, that "limit"
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is abolished because, in principle, there is no reason that it cannot be extended more than once. Cananyone doubt that now that Disney has the twenty-year extension on Mickey Mouse that it wanted, itwill be back in 2023 asking for another? If the language of the Clause is to mean anything, the grantof an intellectual property right that can be extended by special, post hoc legislation can hardly beconsidered "limited" for constitutional purposes. [FN58] Just how radical is our proposal? On the one hand, it would appear to call into question a
longstanding practice. A Library of Congress study commissioned in 1984 shows that modest numbers
of patent extensions have been part of the patent scene almost from the time of the first Patent Act in
1790. [FN59] But the study also shows that most requests for patent extensions traditionally have
been denied. [FN60] Of the few that were successful, the lion's share involved cases of government
infringement. [FN61] Before contemporary doctrine softened the impact of traditional principles of
sovereign immunity, inventors were forced to make special requests for relief when their inventions
were, in effect, taken by the government for some public purpose. [FN62] A large group of such
requests came, for example, in the aftermath of World War II. [FN63] Inventors argued that they had
allowed and even encouraged royalty-free government use of valuable war technologies until the war
was over, which in some cases meant that *61 the patent in question had expired before any
compensation could be earned. [FN64]
It is likely that such requests would today take the form of claims for compensation under the TakingsClause of the Fifth Amendment. Under this approach fair compensation would be paid for the pastvalue of the invention used by the government, and there would be no need for a prospective extensionof the patent term.
The 1984 Library of Congress Report is instructive for another reason: it recounts in detail a
tradition of congressional unease with the legislation of private patent bills. In particular, the Report
shows that Congress consistently acted to consolidate related special requests into new administrative
practices, beginning with the first Patent Act itself, which pre-empted a number of special requests
for the reward of particular inventions (including the Rumsey-Fitch dispute referred to earlier).
[FN65] A similar consolidation occurred in the early nineteenth century when the process of ruling
on many particular requests for private relief was replaced with an administrative procedure that
would determine which patents should be extended for a single, final, seven-year term. [FN66]
Congress pre-empted another category of special relief when it passed an amendment to the Patent Act
permitting alien citizens to file patent applications. [FN67] In each case, the evolution of ad hoc
legislation into a system of regularized procedures subject to judicial review recapitulated the
evolution of the modern patent system from its origins as a tangle of royal privileges. [FN68] The
emergence of administrative regularity does not necessarily show that Congress considered special
legislation *62 unconstitutional under the Copyright and Patent Clause. [FN69] But it certainly shows
consistent congressional doubts regarding the wisdom of excessive legislative treatment. It is our view
that the Framers shared these doubts and imposed implicit limits on copyrights and patents.
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It is true, of course, that the extension of existing copyrights and patents differs in one way from thediscredited practice outlawed by the Statute of Monopolies. Under the old English system, monarchsrewarded court favorites with monopolies on goods that, in the Supreme Court's words, "had longbefore been enjoyed by the public." [FN70] When a patent or copyright is extended, on the other hand,it deals with goods that have previously been ""enjoyed by the public" only in accordance with thepatent- or copyright- holder's monopoly.
This distinction, however, is not as great as it may seem. In fact, the extension of a patent or copyright
interest prospectively removes items from the public domain. When a patent or copyright is granted,
the creation in question will automatically--by action of law--enter the public domain when the patent
or copyright expires. Prior to that grant, the public has no right to the creation in question; the owner
could have kept it as a trade secret and secured protection of indefinite length. Upon the granting of
a patent or copyright, however, the statutory protection is vested, as is, arguably, the entry of the
creation into the public domain when the protection expires. In many cases business plans will be
drawn based on that expiration. And even when they are not, it is not too fanciful to characterize the
movement *63 of the protected interest into the public domain as creating a remainder interest in the
public. In this sense, the extension of an already-granted patent or copyright, by depriving the public
of the remainder interest it already holds by statute, is in fact the deprivation of a right "enjoyed by
the public." Indeed, a number of rules and doctrines in patent and copyright law are designed precisely
to protect the public's "reliance interest" in fixed expiration dates. [FN71]
We would be remiss if we did not answer one other possible objection to our argument: can'tCongress just extend patents and copyrights by invoking the Commerce Clause, thus rendering ourargument beside the point? Certainly some commentators have argued that, in the absence of theCopyright and Patent Clause, Congress would have the power to create a patent and copyright systemunder its authority to regulate commerce among the several states. [FN72] There is much to this position, but as a criticism of our approach it has one key failing. Instead of theabsence of a copyright and patent clause, we have the presence of the Copyright and Patent Clause.
That Clause is generally understood to serve as a limit on congressional power, not simply a grantthereof. To allow Congress to do things under its general commerce power that it is forbidden to dounder its specifically applicable copyright and patent power would in essence read the Copyright andPatent Clause out of the Constitution. Such an approach could hardly be said to be faithful to the textof the Constitution or the intent of the Framers.
Nor is this observation merely an example of academic curmudgeonism at work. We grant that, at
least in the post-Wickard [FN73] era, one could argue that Congress possesses the *64 power to
regulate intellectual property under the Commerce Clause. The Supreme Court rejected a similar
argument made with regard to the bankruptcy power in Railway Labor Executives Association v.
Gibbons. [FN74] "[I]f," said the Court, "we were to hold that Congress had the power to enact
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nonuniform bankruptcy laws pursuant to the Commerce Clause, we would eradicate from theConstitution a limitation on the power of Congress to enact bankruptcy laws." [FN75] "To holdotherwise," the Court continued, "would allow Congress to repeal the uniformity requirement fromArt. I, § 8, cl. 4, of the Constitution." [FN76] The same argument should apply to efforts to overridethe restrictions imposed upon Congress by the Copyright and Patent Clause.
As should be obvious, we believe that special legislation to extend copyrights and patents forindividuals or corporations should receive the strictest of scrutiny from the courts.
There is an additional value to our approach. As humorist P.J. O'Rourke has said, when buying andselling are controlled by legislation, the first things to be bought and sold will be legislators. Controlof corruption was an important goal of our constitutional system, and there is no doubt that the Framersbelieved that a system of limited and enumerated powers was a significant check on corruption. Therealso seems little doubt that copyright and patent extension bills--granted almost uniformly to wealthycorporations and big contributors, rather than to struggling basement inventors--constitute exactly thekind of corruption that the limits in the Copyright and Patent Clause were designed to prevent.
As a result, we believe that courts should strictly scrutinize laws extending copyrights and patents
that have already been granted. Although it would be difficult, and probably impossible, *65 to
formulate a satisfactory per se rule, we suggest some factors that courts should consider. The first
might be called the "extent of the extension"--how many companies or individuals qualify, and how
long is the extension? The fewer who benefit, the greater is the likelihood that the extension represents
special-interest graft of the sort that the Copyright and Patent Clause was intended to prevent. The
longer the extension, the greater is the inroad it represents into the "limited time" prescribed by the
Copyright and Patent Clause.
Similarly, statutes that set up a regularized process for extending patents-- without naming thebeneficiaries explicitly (or implicitly via too-narrow criteria) [FN77]--are far less suspect than thosethat merely set up a procedure whereby the Patent and Trademark Office may extend patents held upby lengthy regulatory (typically, Food and Drug Administration) review. [FN78] Where extensionsare based on some specific and identifiable government error (say a failure to notify a patentee thata patent has been granted, or inordinate delay in processing claims), they are less suspect than theywould be if based on other considerations.
One possible approach to the constitutional test we advocate would be to examine a proposedextension from the hypothetical perspective of an author or inventor who is at the very outset of hisor her creative work--that is, to ask: could the term of protection possibly serve as additional Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
motivation to set pen to paper, or to sit down at the lab bench? Or does it stretch out so far in time that
the latter years of the term are irrelevant to any potential creator? This approach essentially translates
proposed patent extensions into the "present value" calculations familiar to accountants. The
constitutional rationale for such an approach is simple: the phrase "to promote the progress of science
and the *66 useful arts" is inherently prospective. It states a utilitarian, incentive-based rationale for
intellectual property protection. If the term of protection could not, under any plausible set of
assumptions, serve as an incentive, it fails the constitutional requirement of a forward-looking grant
of property rights. [FN79] When the absence of a plausible incentive is joined by the presence of firm-
specific legislation, the conclusion must be that the proposed bill amounts to rent-seeking, pure and
simple. [FN80] Since we know--based on the closely contemporaneous experience of British abuses
of the patent monopoly--that the Framers wanted to avoid just such abuses, we also know that these
extensions fail the constitutional test. [FN81]
One argument typically made on behalf of patent extensions is that the invention in question has
contributed enormously to the general social welfare. [FN82] This is joined in many cases by the
assertion that for one reason or another the inventor has not received a commensurate or adequate
reward. [FN83] Both arguments *67 beg the question whether Congress has the authority to exercise
independent judgment in individual cases. By settling on a generally available patent term (the current
statutory source for which, incidentally, has built-in relief for excessive administrative delay),
[FN84] Congress has exercised its constitutional role of "securing" rights via a systematic
administrative procedure. To grant perpetual patents or copyrights would clearly violate the
Constitution's "for limited times" language, even if Congress thought the default statutory term an
inadequate reward in a particular case. The same limits on Congress's ability to "balance" social costs
and benefits (under the watchful eyes of a bevy of well-heeled lobbyists) are latent in the remaining
language and historical context of the Copyright and Patent Clause. Surely progress will not be
"promoted" if every successful invention spawns a lobbying effort aimed at patent extension. And just
as surely, the British experience of the late sixteenth and early seventeenth centuries was in the minds
of the Framers as they adopted a prudent, limited form of state-backed monopoly for significant
"writings and discoveries."
The key in all these cases is to ensure that Congress is living up to its constitutional duty as spelledout in the Copyright and Patent Clause. Taking this duty and its corresponding limit on congressionalpower seriously will no doubt require judicial interpretation, just as determining the extent ofCongress's power under the Commerce or Bankruptcy Clauses has required extensive judicialinterpretation. [FN85] This task should be easier here than it has been elsewhere, however, becauseof the relatively clear history and text of the Copyright and Patent Clause.
As the Supreme Court has made clear in cases like United States v. Lopez, [FN86] constitutional
limitations do matter, and it is *68 the job of courts to locate and enforce those limitations. The
Supreme Court has already recognized such limitations in the Copyright and Patent Clause. Enforcing
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these limitations will not only uphold both the letter and the spirit of the Clause, but will also removeone source of persistent corruption from the legislative arena.
[FNa1]. Wilson, Sonsini, Goodrich & Rosati Professor of Law and Technology, Boalt Hall Schoolof Law, University of California at Berkeley. B.A., Carnegie Mellon University, 1981; J.D., Yale LawSchool, 1985.
[FNaa1]. Professor of Law, University of Tennessee. B.A., University of Tennessee, 1982; J.D., YaleLaw School, 1985.
The authors would like to thank Brannon Denning, Jack McCall, Carol Parker, Tom Plank, andEdward C. Walterscheid for some helpful comments. Lori Ritter provided excellent researchassistance.
[FN1]. See, e.g., Kenneth L. Port, The Illegitimacy of Trademark Incontestability, 26 IND. L. REV.
519 (1993) (arguing that since 15 U.S.C. § 1115(b) speaks of a conclusive presumption of thetrademark holder's "ownership of the mark," trademark incontestability creates what is in effect anunprecedented property right in trademarks).
[FN2]. See, e.g., Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? TheAnticommons in Biomedical Research, 280 SCIENCE 698, 700 (1998).
[FN3]. See Robert P. Merges, Contracting into Liability Rules: Intellectual Property Rights andCollective Rights Organizations, 84 CAL. L. REV. 1293, 1301 (1996).
[FN4]. U.S. Const. art. I, § 8, cl. 8.
[FN5]. See Robert P. Merges, The Economic Impact of Intellectual Property Rights: An Overview andGuide, 19 J. CULTURAL ECON. 103, 110-11 (1995). For an account featuring this factor in thegenesis of our own intellectual property regime, see Edward C. Walterscheid, To Promote theProgress of Science and Useful Arts: The Background and Origin of the Intellectual Property Clauseof the United States Constitution, 2 J. INTELL. PROP. L. 1, 34-35 (1994) [[hereinafter To Promotethe Progress of Science].
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[FN6]. CHRISTINE MACLEOD, INVENTING THE INDUSTRIAL REVOLUTION: THE ENGLISHPATENT SYSTEM, 1660-1800 (1988), 14-15.
[FN7]. U.S. Const. art. I, § 8, cl. 8.
[FN8]. See id. (setting forth Congress's power to grant copyrights and patents in order to "Promotethe Progress of Science and the Useful Arts").
[FN9]. Joseph Story, Commentaries on the Constitution of the United States § § 558-559 (Ronald D.
Rotunda & John E. Nowak eds., 1987).
[FN10]. The following account draws on JAMES THOMAS FLEXNER, STEAMBOATS COMETRUE: AMERICAN INVENTORS IN ACTION (1944).
[FN11]. See id. at 73-76 (discussing Fitch) and 66-69 (discussing Rumsey).
[FN12]. See id. at 87-100 (describing various state patents granted in Virginia, Pennsylvania, NewYork, and Delaware).
[FN13]. See Walterscheid, To Promote the Progress of Science, supra note 5, at 22-23: Although the states in their individual capacities had sought to provide some form of limited-termexclusive rights to inventors and authors, by early 1787 the defects in the state copyright and patentcustoms were obvious. The most singular defect was that states only could legislate with respect totheir own territory. Thus, state patents and copyrights could be infringed with impunity in adjoiningstates. Obtaining multiple state patents or copyrights was time consuming, expensive, and frequentlyfrustrating. Moreover, consistency in terms and conditions varied from state to state. With regard topatents, no guarantee of consistency from patent to patent existed even within a particular state becauseeach patent required a private legislative act. Furthermore, what a state could grant, it could also takeaway, and on occasion did so.
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[FN14]. See id. at 124 (discussing Fitch's proposed bill before Congress in 1787 and 1788).
[FN16]. See id. at 82 (describing Washington's influence in obtaining state protection, and his rolein Rumsey's steamboat company).
[FN17]. See P.J. Federico, Operation of the Patent Act of 1790, 18 J. PAT. OFF. SOC'Y 237, 240(1936).
[FN18]. See Flexner, supra note 10, at 132-33.
[FN19]. See Edward C. Walterscheid, Priority of Invention: How the United States Came to Have a"First-to-Invent" Patent System, 23 AM. INTELL. PROP. L. ASS'N Q.J. 263, 265 (1995) [hereinafterWalterscheid, Priority of Invention].
[FN21]. See Edward C. Walterscheid, Patents and the Jeffersonian Mythology, 29 JOHNMARSHALL L. REV. 269, 293 (1995) (quoting a letter from Jefferson describing the burdens ofpatent examination duty).
[FN22]. See id. at 292-97 (describing the origin and passage of the 1793 Act).
[FN23]. See Edward C. Walterscheid, The Winged Gudgeon--An Early Patent Controversy, 79 J. Pat.
& Trademark. Off. Soc'y 533 (1997) (describing the origins of the 1836 Act).
[FN24]. See Patent Act of July 4, 1836, ch. 357, § 6,5 Stat. 117, 119; see also Edward C.
Walterscheid, To Promote the Progress to Useful Arts: American Patent Law and Administration,1787-1836 (Part 1), 79 J. PAT. & TRADEMARK OFF. SOC'Y 61 (1997).
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[FN25]. See DOUGLASS C. NORTH & ROBERT PAUL THOMAS, THE RISE OF THE WESTERNWORLD: A NEW ECONOMIC HISTORY 147-48 (1973).
[FN28]. See id. at 148-49. Cf. WILLIAM J. BAUMOL, ENTREPRENEURSHIP, MANAGEMENT,AND THE STRUCTURE OF PAYOFFS 1 (1995) (arguing that entrepreneurs will innovate eitherproductively or, alternatively, via rent-seeking schemes, depending on the incentives they face).
[FN29]. See DOUGLASS C. NORTH, STRUCTURE AND CHANGE IN ECONOMIC HISTORY164- 65 (1981) ("It is only with the Statute of Monopolies in 1624 that Britain developed a patentlaw.").
[FN30]. See STANLEY I. KUTLER, PRIVILEGE AND CREATIVE DESTRUCTION: THECHARLES RIVER BRIDGE CASE (1971); JAMES WILLARD HURST, LAW AND ECONOMICGROWTH (1964).
[FN31]. Economists define "rent" as a supra-normal return, i.e., revenue higher than would benecessary to justify a given investment, taking into account a "normal" level of profit. See Alan W.
Evans, On Monopoly Rent, 67 LAND ECON. 1, 2-4 (1991). Rent-seeking is the expenditure ofresources in an effort to capture these supra-normal returns; lobbying for special legislative privilegesis a classic example. See JAMES M. BUCHANAN ET AL., TOWARD A THEORY OF THE RENT-SEEKING SOCIETY 7 (1980).
[FN32]. STANLEY I. KUTLER, PRIVILEGE AND CREATIVE DESTRUCTION: THE CHARLESRIVER BRIDGE CASE (1971).
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[FN34]. See Charles River Bridge v. Warren Bridge, 36 U.S. (11 Pet.) 420 (1837).
[FN35]. Cf. Robert E. Mensel, Privilege Against Public Right: A Reappraisal of the Charles RiverBridge Case, 3 DUQ. L. REV. 1 (1994) (arguing that the Charles River Bridge case introducedJacksonian themes of economic dynamism and democratic egalitarianism into constitutionaldiscourse).
[FN36]. Cf. Charles K. Rowley et al. eds., Rent-Seeking in Constitutional Perspective, in THEPOLITICAL ECONOMY OF RENT-SEEKING 447, 462-63 (1988).
[FN37]. See Jonathan R. Macey, Promoting Public-Regarding Legislation Through StatutoryInterpretation: An Interest Group Model, 86 COLUM. L. REV. 223, 247-50 (1986) (discussing waysin which the structure of the Constitution impedes rent-seeking by interest groups); Robert D. Tollison,Symposium on the Theory of Public Choice: Public Choice and Legislation, 74 VA. L. REV. 339(1988) (giving an overview of the "economic theory of legislation").
[FN38]. JAMES BUCHANAN & GORDON TULLOCK, THE CALCULUS OF CONSENT (1962).
[FN39]. See, e.g., Cass Sunstein, Naked Preferences and the Constitution, 84 COLUM. L. REV. 1689,1690-91 (1984).
[FN40]. Roche Taradol Patent Language Removed from Senate Appropriations Bill., PINK SHEET,May 12, 1997, Vol. 59, Issue 19, available in 1997 WL 16952572.
[FN41]. Jim Drinkard, Drug Firm Seeking Rider on Flood Relief; Hoffman- LaRoche Finds Friendsin Senate, CINCINNATI ENQUIRER, May 3, 1997, at B10.
[FN42]. The Hotline (American Pol. Network), Aug. 12, 1998, at 41. See also Steve Zeitlin,Strangling Culture with a Copyright Law, N.Y. TIMES, Apr. 25, 1998, at A15 ("Dennis Karjala, lawprofessor at the University of Arizona, has noted that under the new law our roly-poly Santa Claus, Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
originally created by the 19th-century cartoonist Thomas Nast, would not have gone into the publicdomain until 1973. Even the United States Government would have had to pay royalties to use Nast'sUncle Sam in all of this century's wars. Just as Uncle Sam and Santa eventually became part of thepublic domain, available for anyone to use in any season, so eventually should Mickey Mouse andBugs Bunny take their places in our free-to-all pantheon of cultural icons.").
[FN43]. See The Sonny Bono Copyright Term Extension Act, Pub. L. No. 105- 298, 112 Stat. 2827(1998).
[FN44]. Cf. United Christian Scientists v. First Church of Christ, 829 F.2d 1152, 1166 (D.C. Cir.
1987) (invalidating private copyright bill for certain works of the Christian Science religion, but underthe Establishment Clause, rather than under the Copyright and Patent Clause).
[FN45]. MANCUR OLSON, THE RISE AND DECLINE OF NATIONS 41 (1982).
[FN46]. JONATHAN RAUCH, DEMOSCLEROSIS: THE SILENT KILLER OF AMERICANGOVERNMENT 72-73 (1994).
[FN47]. Id. at 75. See also Glenn Harlan Reynolds, Is Democracy Like Sex?, 48 VAND. L. REV.
1635 (1995) (discussing costs to society of transfer- seekers and ways constitutional structure mayreduce such costs); Glenn Harlan Reynolds, Chaos and the Court, 91 COLUM. L. REV. 110 (1991)(same).
[FN48]. THRAINN EGGERTSSON, ECONOMIC BEHAVIOR AND INSTITUTIONS 278 (1990).
[FN49]. See, e.g., Zvi Griliches, Research Expenditures, Education, and the Aggregate AgriculturalProduction Function, 54 AM. ECON. REV. 961, 961 (1964) (asserting that the social rate of returnon agricultural research is at least 150% greater than the private rate of return to the researchers);Robert E. Evenson & Yoav Kislev, Research and Productivity in Wheat and Maize, 81 J. POL.
ECON. 1309, 1309 (1973) (arguing that the social return is up to 300% greater than private return);Edwin Mansfield et al., Social and Private Rates of Return from Industrial Innovations, 91 Q.J.
ECON. 221, 221 (1977) (concluding that the social rate of return on 17 major products was between77% and 150% greater than the private rate of return); Timothy F. Bresnahan, Measuring the Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
Spillovers from Technical Advance: Mainframe Computers in Financial Services, 76 AM. ECON.
REV. 742, 753 (1986) (demonstrating very large social gain from mainframe computers, 1.5 to 2.0orders of magnitude above cost of inventing them).
[FN50]. Letter from Thomas Jefferson to James Madison (July 31, 1788), in 13 THE PAPERS OFTHOMAS JEFFERSON, 1788, at 442-43 (Julian P. Boyd ed., 1958).
[FN51]. Letter from James Madison to Thomas Jefferson (Oct. 17, 1788), in 14 THE PAPERS OFTHOMAS JEFFERSON, 1788-1789, at 17 (Julian P. Boyd ed., 1956).
[FN52]. 383 U.S. 1, 5 (1966) (citation omitted). In Graham the Court did not discuss the copyrightprovision, "which we omit as not relevant here." Id. at 5 n.1. There seems to be no reason forinterpreting the provision differently given the parallel structure of the clause. The quoted passage is in stark contrast to the early views of Justice Story, who wrote (in his capacityas a circuit judge): The [constitutional] power is general, to grant to inventors; and it rests in the sound discretion ofcongress to say, when and for what length of time and under what circumstances the patent for aninvention shall be granted. There is no restriction, which limits the power of congress to enact, [onlyto] where the invention has not been known or used by the public. Blanchard v. Sprague, 3 Fed. Cas. 648, 650 (Case No. 1,518) (C.C.D.Mass. 1839). We are indebtedto Edward C. Walterscheid for this citation.
[FN53]. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 359 (1991) (holding thatcopyrights in factual compilations, such as phone directories, are invalid under the "originality"requirement of the Constitution).
[FN54]. See 35 U.S.C. § 103 (1998). See also Trademark-Cases, 100 U.S. (10 Otto) 82, 94 (1879)(invalidating Trademark Act passed by Congress under Copyright and Patent Clause authority ofConstitution): [A trademark] is often the result of accident rather than design, and when under the act of Congressit is sought to establish it by registration, neither originality, invention, discovery, science, nor art isin any way essential to the right conferred by that act. If we should endeavor to classify it under thehead of writings of authors, the objections are equally strong. In this, as in regard to inventions,originality is required. And while the word writings may be liberally construed, as it has been, toinclude original designs for engravings, prints, &c., it is only such as are original, and are founded in Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
the creative powers of the mind. The writings which are to be protected are the fruits of intellectuallabor, embodied in the form of books, prints, engravings and the like. Cf. San Francisco Arts & Athletics, Inc. v. United States Olympic Comm'n, 483 U.S. 522, 532 (1987)("There is no need in this case to decide whether Congress ever could grant a private entity exclusiveuse of a generic word.").
[FN55]. It must be admitted, though, that at least under some theories of innovation, mega-awards tohighly successful inventors may serve as the primary spur to further invention and innovation. Formore on this "home run" theory of invention, see F.M. Scherer, The Innovation Lottery (June 25,1998), paper presented at NYU Law School Conference on Intellectual Products: Novel Claims toProtection and Their Boundaries, Florence, Italy (June 25, 1998) (on file with the authors).
[FN56]. See, e.g., Library of Congress, Congressional Research Service, The History of PrivatePatent Legislation in the House of Representatives, Jan. 31, 1978, reprinted in Hearings on PrivatePatent Litigation (H.R. 2882) before the House Committee on the Judiciary, Subcomm. On Courts,Civil Liberties, and the Admin. Of Justice, 98th Cong., 2d sess. (Sept. 13, 1984) (written by ChristineP. Benagh), at 97, 102 [hereinafter Library of Congress Report] (patent extension denied to OliverEvans, a very important early nineteenth century inventor; yet granted for many minor inventions).
[FN57]. See ROBERT P. MERGES ET AL., INTELLECTUAL PROPERTY IN THE NEWTECHNOLOGICAL AGE, 131 n.23 (1997); William F. Patry, The Copyright Term Extension Act of1995: Or How Publishers Managed to Steal the Bread from Authors, 14 CARDOZO ARTS & ENT.
L.J. 661, 669-79 (1996) (reviewing history of copyright term up until 1995).
[FN58]. Cf. Joseph A. Lavigne, Comment, For Limited Times? Making Rich Kids Richer Via theCopyright Term Extension Act Of 1996, 73 U. DET. MERCY L. REV. 311, 313 (1996) (arguing thatthe copyright term extension under GATT amendments in 1996 violated the "for a limited time"language of the Copyright and Patent Clause).
[FN59]. See Library of Congress Report, supra note 56, at 102.
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[FN65]. See id. at 101; Edward C. Walterscheid, Priority of Invention, supra note 19, at 265(describing disposition of Rumsey-Fitch dispute under 1790 Patent Act).
[FN66]. See Act of July 4, 1836, ch. 361, § 18, 5 Stat. 117, 124-25 (1846) (granting a seven-yearextension for patentees who showed they had failed to obtain "reasonable remuneration for the time,ingenuity, and expense [[of the invention], and the introduction thereof into use."). The 1836 Actreflected its Jacksonian origins in that it established, in the words of Jacksonian Senator Ruggles, nota "regal prerogative" but "a general law . without discrimination." Report of the Select CommitteeAppointed To Take into Consideration the State and Condition of the Patent Office, 24th Cong., 1stsess. (1936), reprinted in 6 NEW AMERICAN STATE PAPERS, SCIENCE AND TECHNOLOGY47 (1973).
[FN67]. See Library of Congress Report, supra note 56, at 103, (noting that between 1808 and 1836,when the law was changed, Congress passed eighteen special acts allowing aliens to file patentapplications).
[FN68]. See id. at 104 ("The principal reasons underlying the passage of the earlier private patentbills [i.e., from 1790 to 1836] had been addressed through general legislation.").
[FN69]. Indeed, a Congressional Report from 1879 details a number of convincing prudential reasonsto deny private patent bills, but does not express the opinion that such extensions are unconstitutionalin general. Private bills of various kinds have been upheld as constitutional. See, e.g., Williams v.
Norris, 25 U.S. (12 Wheat.) 117 (1827) (holding the Court has no jurisdiction over an essentiallyprivate act under state law that does not raise federal constitutional issues); United States v.
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Gettysburg Electric Realty Co., 163 U.S. 427 (1896) (upholding constitutionality of private bill to payclaims on government under expired and later renewed sugar bounty acts). And indeed, there are somevery old cases upholding private patent extensions in the face of constitutional challenges. See Evansv. Jordan, 13 U.S. (9 Cranch) 199, 203-04 (1815); Evans v. Weiss, 8 Fed. Cas. (No. 4,572)(C.C.D.Pa. 1809); Evans v. Robinson, 8 Fed. Cas. (No. 4,571) (C.C.D.Md. 1813) (all involvingcongressional statutes extending patents of Oliver Evans). Note that in each case, however, objectionof the special bill was premised on the Constitution's prohibition of ex post facto laws, not on thecopyright and patent clause. Note also that Thomas Jefferson strenuously objected to the outcome inthese cases. See Letter from Thomas Jefferson to Issac McPherson (Aug. 13, 1813) in THEWRITINGS OF THOMAS JEFFERSON, at 326-27 (A.A. Lipscomb ed., 13th ed., 1903). We thankEdward C. Walterscheid for the cites and information in this footnote.
[FN71]. See, e.g., 35 U.S.C. § 154(c)(2)(A) (Supp. 1998) (failing to provide for remedies againstinfringers whose activities began before or within six months of passage of Act extending patent termfrom 17 years from patent grant to 20 years from patent filing); 17 U.S.C. § 104A (Supp. 1998)(giving "reliance parties" a grace period of 12 months to end uses of previously uncopyrighted workswhose copyrights were restored under 1995 amendments to the Copyright Act).
[FN72]. U.S. Const. art I, § 8, cl. 3. Cf. Chamberlin v. Uris Sales, Inc., 150 F.2d 512 (2d Cir. 1945).
Indeed this very theory underlies recent bills aimed at protecting computer databases under copyright-like federal law. See Collections of Information Antipiracy Act, H.R. 2652, 105th Cong. (1998).
[FN73]. The high-water mark of congressional power under the Commerce Clause is often said to beWickard v. Filburn, 317 U.S. 111 (1942). In Wickard, the Court upheld the regulation of wheat grownupon a farmer's own land and consumed upon his property by his family and livestock as an exerciseof Congress's power to regulate commerce among the several states--the theory being that such wheattook the place of wheat that would otherwise be purchased on the interstate market for wheat. But seeUnited States v. Lopez, 514 U.S. 549, 559-60 (1995) (stressing that the regulation in Wickard waseconomic in character, and that so was wheat growing, and denying that this logic might render thecommerce power effectively unlimited). For more on the limits imposed by Lopez see David B. Kopeland Glenn H. Reynolds, Taking Federalism Seriously: Lopez and the Partial-Birth Abortion Ban Act,30 Conn. L. Rev. 59 (1997) (arguing that Congress may not regulate abortion practices under thecommerce power).
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[FN77]. Cf. 35 U.S.C. § 155A (Supp. 1998) (granting a very specific ""general" extension, applyingfor example to a patent for a product "which . if during regulatory review . the [FDA] notified thepatentee, by letter dated February 20, 1976, that such product's new drug application was notapprovable . [but] the [FDA] approved, by letter dated December 18, 1979, the new drug applicationfor such product .''). This was a patent extension for the drug Lopid, manufactured by Warner-Lambert Pharmaceuticals, Inc.
[FN78]. Compare 35 U.S.C. § 156 (Supp. 1998), codifying Pub. L. No. 100- 418, § § 9201-9202,102 Stat. 1107 1569-70; S. Rep. No. 83, 100th Cong., 1st sess. (1987) (describing reasons for speciallegislative relief for Lopid) with Drug Price Competition and Patent Term Restoration Act of 1984,codified at 35 U.S.C. § 156 (Supp. 1998) (regular extension procedure for general classes of patents).
See generally Richard M. Cooper, Legislative Patent Extensions, 8 FOOD & DRUG L.J. (1993)(reviewing legislative history of Lopid Bill, and arguing that private bills such as this are well-accepted, constitutional, and in effect, a growth industry).
[FN79]. Extensions only serve as an incentive if they are anticipated at the time a work is created;given how rare they are, this is unlikely. And for many proposed extensions, particularly in thecopyright realm, an additional term of protection adds next to nothing in present value terms becauseof the powerful effect of discounting over time. See, e.g., Stewart Sterk, Rhetoric and Reality inCopyright Law, 94 MICH. L. REV. 1197, 1223 n.115 (1996) (demonstrating the effects of discountingover time).
[FN80]. Of course, there must be some room for the classic case of a private bill to relievegovernment oversight or mistake. See Library of Congress Report, supra note 56, at 105 n.101(affording patent protection where Patent Office had misplaced patent application); id. at 106(restoring patent invalidated as a result of judicial corruption). One way to preserve this traditionalcongressional safety valve, while at the same time cutting off rent-seeking, is to characterize the Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
government oversight as a taking and grant compensation under the Fifth Amendment.
[FN81]. At the same time, it is clear that even a general intellectual property statute should beinvalidated if it extends protection for an absurdly long period. For a good example of proposedlegislation that would surely qualify for this treatment, consider a proposal made in the U.S. Houseof Representatives. The Hon. Mrs. Sonny Bono (R-Cal.) wanted Congress to extend the copyright termto forever minus one day. See 144 CONG. REC. H9952 (daily ed. Oct. 7, 1998), reprinted in 56 PAT.
TRADEMARK & COPYRIGHT J. (BNA) 740 (1998). One recently filed complaint even alleges thata series of recent copyright term extensions violate the Constitution. See Hiawatha Bray, Net PublisherChallenges Law; Harvard Law Faculty, Firm Join Copyright Fight,'' BOSTON GLOBE, Jan. 13, 1999,at C1.
[FN82]. See Library of Congress Report, supra note 56, at 105 (requesting patent extension for SamuelColt's invention of the revolver); U.S. Senate Committee on the Judiciary, Subcommittee on Patents,Copyrights and Trademarks, Patent Extension Hearing, 102d Cong., (1991) at 9 [hereinafter 1991Senate Extension Hearings] (1991 Senate Extension Hearings statement of Sen. John Glenn in supportof S. 1506, "A Bill to Extend the Term of the Olestra Patents, and for Other Purposes": "Olestra maybe one of the most important food additives in history").
[FN83]. See Library of Congress Report, supra note 56, at 104-05 (describing numerous extensionsgranted to inventors who alleged they had not sufficiently recouped investments); 1991 SenateExtension Hearings, supra note 82, at 281 (declaring that a ten-year patent extension is required forthe Olestra food additive in order to justify needed investment in manufacturing facilities).
[FN84]. See 35 U.S.C. § 154(b) (Supp. 1998) (granting extensions for excessive patent examinationtime and appeals of rejected applications).
[FN85]. Cf. Richard Posner, The Constitution as an Economic Document, 56 GEO. WASH. L. REV.
4, 10 (1987) (pointing out that it may be difficult for the judiciary to tell the difference between rent-seeking and efficiency-enhancing legislation: "[C]ourts cannot readily identify purely redistributivelegislation, in part because much redistributive legislation may be defensible on efficiency groundsby reference to problems of social peace, free-rider problems, and so forth."). Of the enumeratedgrounds, only free riding could plausibly create difficulties for a judge sorting redistributive fromefficient private IP legislation. Note that Congress presumably strikes the appropriate balance betweenappropriation and free riding when it sets the uniform term of protection under copyright and patent Copr. West 2002 No Claim to Orig. U.S. Govt. Works (Cite as: 37 Harv. J. on Legis. 45)
law. See generally Thomas E. Plank, The Constitutional Limits of Bankruptcy, 63 TENN. L. REV. 487(1996).
[FN86]. 514 U.S. 549 (1995) (striking down the Gun-Free School Zones Act as outside Congress'sCommerce Clause power). See also, e.g., City of Boerne v. Flores, 521 U.S. 507 (1997) (strikingdown Religious Freedom Restoration Act as outside Congress's Fourteenth Amendment enforcementpower).
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