abstract. This Essay examines the recent rise of
originalist and textualist methods of analysis in the Supreme Court’s
intellectual-property jurisprudence. The features and failures of these
methods are examined by analyzing their application by the Court within three areas
of intellectual-property law. In all three areas, originalism and textualism have
led to perplexing and unsatisfactory results.
This
trend is grounded in the two methods’ broader deficiencies. Originalism and
textualism are attempts to find constraint in the law within a modernist
setting in which traditional foundations of objective knowledge and authority
have been undermined. Both methods are based on reification, the misguided
treatment of either concepts or social relations—both of which are inherently
dynamic and human-constructed—as inert objects or things in the world. By
treating dynamic legal relations and concepts as objects, originalism and
textualism detach the law from purpose, and therefore from both the social
reality it is supposed to govern and the human goals it is designed to serve.
The failure of legal reification is especially visible in the area of
intellectual property because of the intense dynamism of this field. This is
due to the fact that intellectual property is the embodiment, in law, of the
hyperdynamism of technological innovation that is inherent to capitalism.
Consequently,
intellectual-property law functions as a canary in a coal mine. This particular
legal field dramatically exposes the inadequacies of originalism and textualism
more generally. Addressing these inadequacies requires an alternative, dynamic
jurisprudence based on purpose, both in the field of intellectual property and
elsewhere in the law.
Introduction
Intellectual-property doctrine has taken a revanchist turn.
Recent intellectual-property cases in the Supreme Court—particularly, those at
the intersection of intellectual-property and constitutional law—have relied on
originalism to divine authoritative meaning from this nation’s history and
tradition of intellectual-property law. Some lower
courts are beginning to follow suit. Meanwhile, the
Supreme Court has embraced originalism’s cousin, textualism, which attempts to
extract meaning from plain text alone, in some of its intellectual-property
decisions over the last decade and a half. Alongside
these pure instances of originalism and textualism, other major
intellectual-property cases have combined elements from both methods in subtler
ways, too. What all these
cases have in common might be called a “jurisprudence of stasis”: a legal
method based on a search for fixed and stable meaning of intellectual-property
concepts and rules, whether in some focal point in the past or in some textual
essence.
This Essay analyzes this “static” turn in
intellectual-property jurisprudence through three sets of recent Supreme Court
cases that reveal the growth and harm of this trend. The argument is fourfold.
First, the jurisprudence of stasis is part of a search for stable foundations
for legal knowledge in a modernist world where all consensually shared
traditional epistemological and metaphysical foundations have lost their power.
Second, the search for fixed legal meaning in either history or text leads to
reification—the misconception that legal relations and legal concepts,
which are both inherently dynamic, are instead unchanging and inert. Third, while originalism and
textualism are untenable in general exactly because they reify what is dynamic
and ever-developing, they are conspicuously inadequate in the field of
intellectual property, where they often lead to manifestly unsatisfactory results.
Originalist and textualist reasoning in intellectual-property law provides a
glaring example of pointless and harmful reification, because
intellectual-property doctrine is the embodiment, in legal relations, of the
hyperdynamism of technology in a capitalist society. The rigidities of static
jurisprudence visibly break asunder when they encounter the inherent dynamism
of intellectual property. Fourth, the clear failures of the use of static
jurisprudence within intellectual-property law expose the failures of
originalism and textualism more generally and highlight the need for a better
alternative: a legal method that dynamically elaborates legal concepts in light
of their purpose.
Part I of this Essay provides a brief primer on the
distinctive attributes of intellectual-property law. Part II discusses three
clusters of Supreme Court cases that embody the recent rise of originalism and
textualism in this field—notably, regarding patent and copyright law—as well as
these cases’ analytic deficiencies and unfortunate results. Part III analyzes
the clash between these analytic methods’ reifying strategies and the
animating, dynamic purpose of intellectual-property law, and of law more
generally. The Conclusion summarizes the defects of the originalist and textualist
turn in intellectual property and offers a preliminary sketch of a
purpose-based alternative to it.
I. a hitchhiker’s guide to intellectual property
Intellectual-property law, like standard property law,
governs the social relations between people with respect to various external
objects or resources. These relations consist not of one
monolithic form, but of bundles of entitlements that are structured out of four
basic building blocks: privileges to use, rights to exclude, immunities from
expropriation, and powers to transfer. The field of intellectual property is distinguished within
broader property law in that these relations apply to intangible information
goods.
Such goods possess distinctive features that interact with various human interests
in a different way from tangible goods. These differences require a distinctive
structure of legal governance, in terms of common general principles of
intellectual-property law and variations within subfields of intellectual
property, based on the distinctive types of information goods they govern.
Three features of information goods play a primary role in
unifying the field and distinguishing its features from standard property law:
nonrivalry, nonexcludability, and lack of physical
boundaries. Nonrivalry means that the use of a resource by one does not
subtract from the like use of the same resource by another. The upshot of
nonrivalry is that the most basic purpose of property law—to govern conflicting
desires to use a resource—is largely an absent concern.
Nonexcludability means that it is
difficult to provide access to a resource to some while preventing access by
others. This feature
of information goods often leads to a low appropriability rate, meaning that
creators of such goods can internalize only a small fraction of their social
value. This low appropriability rate is the root of various normative
problems—most prominently, a difficulty in recouping the cost of creation—that
intellectual-property law seeks to address. Such an inability to recoup the
costs of creating an information good (incurred, for example, through research
and development of an invention, or the expense of producing a motion picture)
can lead to underproduction and inequitable compensation to those who create
these goods through their effort.
Intellectual property is one strategy for confronting these
normative problems. This strategy is based on granting the creators of
information goods the legal right to exclude others from using these goods in
certain ways. Intellectual-property rights are market-based mechanisms: the
legal right to exclude others empowers producers to charge marked-up market
prices for information goods and thereby appropriate a greater share of their
social value. The various downsides or “costs” of this rights-based
strategy emerge from the fact that the right to exclude inherently
compromises the advantages of nonrivalry. These downsides include restrictions
on access and use of information goods by both consumers and downstream
innovators; wasteful races to develop similar innovations triggered by the
rents held out by intellectual-property rights; and distortive diversion of
investment into protectable information goods and away from other useful social
activities whose rate of return is lower than that created by these rents. Put another
way, intellectual-property rights sacrifice one of the most attractive features
of information goods—nonrivalry—to encourage the creation of these goods in the
first place.
Information goods’ lack of physical boundaries adds another
distinctive feature of intellectual-property law. It complicates the ability to
craft, manage, and enforce the scope of the rights that the law confers. Unlike
property rights in tangible resources, the scope of intellectual-property
rights cannot be drawn by reference to physical boundaries of objects, which
triggers various alternative legal strategies for doing so that involve their
own unique challenges.
Just as these aspects of information goods make intellectual
property a distinctive legal field, they also shape its internal structural
divisions. The various subfields of intellectual property govern different
information goods that implicate and interact with various human interests.
These subfields, therefore, require different institutional arrangements—or
different crafting of the entitlement building blocks of property. The two
oldest and most important subfields of intellectual property, to which the
cases discussed in this Essay pertain, are patents and copyright. The
distinctive information good at the heart of patent law is knowledge of applied
technological innovations (inventions), while the focus of copyright is
expressive forms (works of authorship).
Intellectual property is a distinctively modern institutional
form. Although its exact beginning date is disputed, the earliest forms of
intellectual property—patents and copyright—started assuming their modern form,
as individual property rights conferred on producers, only about four hundred
years ago. These initial
forms of intellectual property—forms that were early shifts toward creators’
universal property rights in information—developed gradually out of earlier and
very different institutional arrangements, namely, ad hoc commercial
privileges.
The eighteenth century was an especially important period in
the early break of intellectual property from its premodern antecedents, and
its consolidation into distinct legal subfields organized around embryonic
concepts of property rights. The nineteenth century was
an even more fundamentally formative period, during which intellectual-property
regimes gradually developed many of the constitutive elements of their modern
form as full-fledged universal property rights in commodified information.
The discerning reader may have noticed the overlap of this
periodization—an early break with traditional institutional forms in the
eighteenth century, followed by a formative period in the nineteenth of fuller
elaboration and spread—with that of the history of capitalism. This overlap is
no coincidence. Intellectual property simply is a part of
capitalism—that is, an ensemble of social relations distinctive of modernity. At capitalism’s heart are
generalized markets: the dependence of all human needs on market exchange and
the subjection of increasing spheres of social life to market relations. The
constitutive unit of this system of social relations is the commodity form: the
treatment of all human goods as objects of market exchange, reducible to an
abstract and uniform measure of market value. Intellectual property is this
commodity form applied to information. That is, the rise of intellectual
property was an extension of the commodity form to the domain of information.
This extension happened not only with respect to consumer information goods,
but on the structural level as a constitutive unit—“the capital of the mind”—in
the basic infrastructure of the economy and business organization.
Thus, it is not surprising that the nineteenth century, which
was a crucial transformative period in the rise of industrial capitalism, was
also a period of formative change in intellectual property. Because
contemporary intellectual property is the embodiment of capitalism in the
information sphere, just as capitalist social relations are constantly evolving
(while retaining their distinctive character), intellectual property is marked
by the same dynamism. Before I return to
intellectual property’s inherent dynamism in Part III, I now turn to how the
jurisprudence of stasis has recently plagued intellectual-property law in the
Court.
II. three case studies: static intellectual-property
jurisprudence
Three lines of recent Supreme Court cases demonstrate the
different facets of the jurisprudence of stasis in intellectual property and
its failures, both analytic and substantive. First, Oil States Energy
Services, LLC v. Greene’s Energy Group, LLC is a classically originalist
decision. Both the
majority and the dissent answer the question of whether it is constitutional to
administratively review the validity of issued patent rights based on the
assumption that these rights have a stable public meaning traceable to the
Founding Era. Second, Star
Athletica, LLC v. Varsity Brands, Inc., an exemplar of a strict textualist
approach to statutory interpretation, attempts to craft a formal legal
framework for copyrightability of the design of “useful articles” based
entirely on a handful of words within the relevant statute. Finally, the Bilski
trio, a group of
patent-subject-matter-eligibility cases, is neither strictly originalist nor
textualist but instead embodies a softer, blended version of the two. In the
trio, the Court crafts a test for unpatentable subject matter based on an
assumption that central concepts in patent law are self-explanatory, with
meanings that are fixed by stable historical practice. Together, the cases in
this Part illustrate the distinctive features of the jurisprudence of stasis in
intellectual property: a search for objective constraints in judicial decision-making,
an assumption of inert stability both chronologically and semantically, and an
adamant determination to ignore the purpose of the law. They also reveal this
jurisprudence’s unfortunate result: the development of convoluted and seemingly
pointless doctrines that are, in practice, unworkable.
Before proceeding, a brief clarification is necessary. In the
analysis below, I use the terms originalism and textualism in a loose and
generic sense without differentiating the many varieties of each method. This approach is in line with the
Court’s own tendencies in the cases discussed, where little heed is often paid
to these distinctions. More importantly, my
critique of these methods is aimed not at their specific technical features,
but at their general assumptions about the law that are shared widely across
their different variants.
A. Institutions: Administrative Patent Review
Through an Originalist Lens
In Oil States, the Court reviewed the
constitutionality of inter partes review of issued patents. Inter partes
review is an administrative procedure that was enacted by a 2011 amendment to
the Patent Act. It allows
third parties to challenge the validity of issued patents and seek revocation
of the patentee’s rights after they have been granted, based on a limited
number of grounds. Inter partes reviews are
conducted by a quasi-judicial administrative tribunal called the Patent Trial
and Appeals Board, members of which are appointed by the Secretary of Commerce. This
administrative postgrant patent review is one of
several procedures Congress has enacted in order to streamline patent
litigation, lower the cost of challenging potentially invalid patents, avoid
flooding the courts with highly technical cases, and address related,
substantive patent policy concerns. These
procedures have also been controversial among many patentees, who claim that
the administrative regime is biased against them.
The appellant in Oil States argued that because inter
partes review grants judicial power to non-Article III judges, this form of
adjudication is not only biased but unconstitutional. This
challenge required the Court to determine where the patent lay within the
binary distinction of the constitutional doctrine of public and private rights.
If patents were “private rights,” then their grant and revocation needed to be
adjudicated by Article III courts. If, on the other hand, they were “public
rights,” Congress could entrust their adjudication to other institutions. Strikingly,
while the dissent and the majority were in sharp disagreement about the patent
right’s nature, both employed a common originalist framework to argue that the
nature of the right was determined and fixed two and a half centuries ago.
The majority opinion, written by Justice Thomas, found inter
partes review to be a matter of public rights. The opinion relied on the
assumption that patent rights have been stable in nature throughout their
history. For the Oil States majority, patents have always been a “grant
of a public franchise” and therefore “a matter between ‘the public, who are the
grantors, and . . . the patentee.’” Thomas traced
this purportedly inherent nature of patent rights back to the Founding era and,
even earlier, to the power of the Privy Council in England to revoke patents. Since the
Crown’s power to revoke patents was “a prominent feature of the English
system,” the opinion explains, “it was well understood at the Founding that a
patent system could include a practice of granting patents subject to potential
cancellation in the executive proceeding of the Privy Council.” This original
understanding of the right, to the majority, established that matters relating
to patent grants “‘from their nature’ can be resolved in multiple ways,”
including by administrative proceedings outside of Article III courts.
The Oil States dissent, written by Justice Gorsuch,
provides a mirror image of the majority opinion: the method of analysis is
identical, but history itself is reversed. The dissent states that “[t]he
Constitution’s original public meaning supplies the key” for distinguishing
private and public rights and avers that this public meaning was fully formed
by the time of the Founding. The only thing that flips
is that meaning itself. In Gorsuch’s history, while patents had begun as
“little more than feudal favors,” both freely issued and freely revokable by
the Crown, by the end of the eighteenth century, they had come to be viewed “as
a procompetitive means to secure to individuals the fruits of their labor and
ingenuity.” Crown
involvement and Privy Council revocation with respect to these private rights
had dissolved. Consequently,
American patentees “were thought to ‘hol[d] a
property in [their] invention[s] by as good a title as the farmer holds his
farm and flock.’” As a result, “it was widely
accepted that the government could divest patent owners of their rights only
through proceedings before independent judges.” In the
dissent’s telling of the history, the idea that issued patents were private
property rights, reviewable by courts alone, was set in stone at the Founding
and has “held firm for most of our history.” The vise-like
strength of this history renders administrative revocation of patent rights a
violation of the Constitution, as understood both in 1787 and today.
The two historical accounts are so diametrically opposed that
one of them must be wrong. In fact, they both are. The majority and dissent
alike present distorted visions of the historical development of patents
produced by a shared house of mirrors. Far from having a settled institutional
form, patents were in a state of deep flux at the end of the eighteenth
century. Far from a period of stability, the nineteenth century was a period of
profound change for patents.
The emergence of the modern patent from the beginning of the
seventeenth century to the end of the nineteenth century was in line with a
historical process that Karl Polanyi described as “The Great Transformation”;
in this case, specifically, the transformation was of privileges into universal
legal rights. Historically, patents were
privileges—granted for a range of subject matter, including, but not limited
to, technological innovations—and granting them was an overtly political act.
The Crown exercised its discretionary and plenary power to confer on specific
individuals these tailored monopolies (as well as other privileges), justifying
them through ad hoc judgments that the privileges would promote the public
good. During the
political upheavals of the seventeenth century in England, the common law and
the 1624 Statute of Monopolies placed restrictions on the royal prerogative to
issue such grants and began differentiating invention patents as a distinct
category of royal monopoly grants. However,
notwithstanding de facto trends of standardization, the basic institutional
form of patent grants as privileges persisted. The American
colonies continued in this tradition, developing their own variant of ad hoc
legislative privilege grants for technological inventions. After
American independence, the same institutional form persisted on the state
level, even as a new ideological justification for patents as property rights
that encourage economic productivity began to take hold.
Thus, the first federal patent regime emerged at a time of
flux. Bureaucratic
inertia drifted toward standardization, and ideological appeals to property
rights gathered force, but patents remained privilege grants. The early U.S.
patent system reflected this fluidity. The Intellectual Property Clause of the
Constitution, while referring to the rights of inventors, did not create patent
rights but simply conferred power on Congress and demarcated its limits. The first
patent regime, created by statute in 1790, was a generalized republican version
of the familiar privilege system in which Americans were steeped. Some today
still anachronistically describe this 1790 regime as having been an examination
system, in which applicants were entitled to a patent as a matter of right once
a bureaucratic arm of the state examined and certified that the invention
satisfied a uniform set of requirements. In reality,
the 1790 statutory scheme followed the traditional privilege pattern by vesting
the so-called “Patent Board” with plenary and discretionary power to issue
patents when it judged that such grants would serve the public good, as long as
certain obligatory requirements, such as novelty of the invention and its
proper disclosure in writing, were satisfied.
The privilege scheme fell out of favor only gradually.
Initially, this happened through a steadily widening rift between the formal
legal scheme and actual practice. During the short, three-year life of the
first patent regime, practical and ideological pressures pushed practice toward
standardization. Despite its
plenary power, the Board’s actual work quickly evolved to focus on ascertaining
the standard legal requirements for patentability, such as the novelty of the
invention, rather than evaluating the social impact of specific inventions. It was a
period of deep institutional ambiguity: while the formal regime was still
rooted in the privilege tradition, the actual practice of the Board was
shifting toward a rights framework.
This gradual shift explains what some commentators see as a
“strange” development following the rapid collapse of the 1790 regime. Beginning in
1793, when a new statute eliminated the Board, and for almost a half century
afterward, the United States moved to a registration system under which patents
were issued on demand, subject only to the satisfaction of minimal formalities. In this
system, the center of gravity for determining the validity of patent grants
migrated to the courts. These institutions tended to impose greater
standardization and focus on certifying substantive patentability requirements,
rather than evaluating the social value of inventions. Nevertheless, even
during this period, the process of change was gradual. It involved competing
approaches of some judges who saw their role as limited to certifying that the
requirements for the issuance of a patent as a matter of right were met, and of
others who still echoed the privilege understanding of patents by reviewing the
social value of the inventions they covered. Thus, the
registration era was, in fact, not a strange anomaly, but an intermediary stage
in the transition of patents from ad hoc privileges to universal rights.
The 1836 Patent Act, which created the nation’s first real
examination system, was a crucial moment in this process. The new
regime marked a clearer shift toward a patent-rights framework. This system was
born out of Jacksonian hostility to special privileges and a congressional
conviction that there was “no better way of measuring out appropriate rewards
for useful inventions, than, by a general law, to secure to all descriptions of
persons, without discrimination, the exclusive use and sale, for a given
period, of the thing invented.” Through this rising
formal-equality understanding, patents fully became rights in the modern sense:
standard entitlements conferred universally upon satisfaction of uniform
conditions and leaving all evaluation of social value to markets. However, this
shift did not entail eliminating the Executive’s involvement in patent grants.
On the contrary, the 1836 Act created the Patent Office as a subdivision of the
State Department, with a corps of examiners and a fixed procedure, an early
harbinger of the administrative state.
Even more fundamentally, on the conceptual level, the full
transformation of patents into rights and their growing bureaucratization went
hand in hand. As a staunch supporter of this new outlook explained in the
magazine Scientific American in 1852, “Give us broad, just, and workable
laws . . . none of your special systems, where favors are
sought for and obtained by particular parties in a particular manner.” The goal of
bureaucratic examination was to produce exactly such universal rights through
an administrative system in which “[w]e care not who the applicant is, let him
be Jew or Gentile”—a system that certifies standard requirements, generates
secure titles, and puts all on formally equal footing to obtain their reward
through the market.
By the end of the nineteenth century, the conversion of
patents into property rights was complete, and all traces of the old privilege
system were gone. However, far from declining, the patent bureaucracy expanded,
and its central role became integral to the new practice and concept of patents
as rights. The volume of applications that the Patent Office handled
multiplied, necessitating rapid growth. Increasingly, the Office hired legal
professionals and formalized its procedures. Patent
jurisprudence came to be focused on the text of the claims in patent documents,
which delimited the conferred rights. The
bureaucratic process of producing these texts through interaction between
examiners and professional drafters of claims came to be seen as a core feature
of the patent property system: a process of bureaucratic rationality based on
“accuracy, precision, and care.” In line with this process,
the patent bureaucracy came to be seen as “an organized system, with
well-settled rules,” which produced formalized
claims of ownership that were “examined, scrutinized, limited, and made to
conform” to uniform requirements.
The actual history of patents makes the attempts in Oil
States to determine the nature of the right through divining a stable
meaning of patents—whether throughout U.S. history, or even at the exact moment
of the Founding—a hopeless venture. There was no stable institutional structure
and understanding of these rights, either at the Founding or in the preceding
period. The picture is one of deep transformation. Within this dynamic
development, private property rights and administrative involvement were not
seen as opposite alternatives. Rather, as patents gradually assumed the
institutional form of modern property, an inherent and constitutive element of
this form—both in practice and conceptually—was deep administrative involvement
in validating the rights and defining their scope.
Once the mirage of a fixed meaning of patents dissolves, the
remaining alternative is to ask not what patents have always been since the
Founding era, but what they have become. The way to answer the question of the
constitutionality of administrative inter partes review is not by appeal to an
illusory, unchanged nature of patents as property rights or franchise grants,
but rather an inquiry about the purpose of this legal regime. One must inquire
about the purpose of administrative-review proceedings within the modern
framework of patents and how it interacts with any plausible purpose of the distinction
in Article III jurisprudence between private and public rights. As will be
discussed further in the Conclusion, understanding purpose is necessary
not just to understand the meaning of patents, but also the meaning of all
intellectual-property law, and indeed all law in general.
B. Imagine: A Textualist Approach to Copyright’s
Useful-Article Doctrine
Star Athletica—a challenge to the copyrightability of a
stripes and chevrons design of a cheerleader uniform—highlights the mode of
textualist statutory analysis that is originalist constitutional analysis’s
twin. The decision
was an attempt by the Supreme Court to craft a workable legal test for the
application of the “useful-article doctrine” in copyright law. The
useful-article doctrine governs the applicability of copyright to aesthetic
features of industrial design, such as the pleasing shape of a cellphone or
ornamental aspects of a belt buckle. In charting
the extent to which such elements can be copyrightable subject matter, the
Copyright Act states:
[T]he design of a useful
article . . . shall be considered a [copyrightable]
pictorial, graphic, or sculptural work only if, and only to the extent that,
such design incorporates pictorial, graphic, or sculptural features that can be
identified separately from, and are capable of existing independently of, the
utilitarian aspects of the article.
How to separate the aesthetic and functional aspects of a
useful article—particularly where these features of the relevant product are
physically inseparable—has troubled federal courts for decades. The challenge produced many elusive
legal formulas and inconsistencies in the case law. In Star
Athletica, the Court rode in for the rescue, aiming to announce, once and
for all, a clear and workable separability test.
The result was dismal. The case produced three opinions—a
majority, a dissent, and a concurrence. Each is thoroughly textualist,
purporting to derive its legal analysis directly from the plain text of the
statute. And each is more perplexing than the next. It appears that the
decision left the useful-article doctrine in even greater shambles than before.
The majority opinion, written by Justice Thomas, expressly
disregards any analysis of the statute’s purpose, stating that the Court must
“begin and end our inquiry with the text,” and taking pleasure in rejecting any
perspective on the doctrine informed by the purpose or legislative history of
the Copyright Act. From this inquiry emerged a
two-pronged test for extending copyright protection to the design features of
useful articles. To be
copyrightable, the feature must be one that “can be perceived as a two- or
three-dimensional work of art separate from the useful article,” and that
“would qualify as a protectable pictorial, graphic, or sculptural work either
on its own or in some other medium if imagined separately from the useful
article.”
The exact reasoning that led the majority to its test is not
entirely clear because the opinion offers very little such reasoning. The
opinion appears to assume that the two-pronged test simply follows inevitably
from parts of the statutory text. It associates the first prong of the test
with an “identification requirement” found in the statutory language that
requires the existence of pictorial, graphic, or sculptural features that “can
be identified separately from” the utilitarian aspects of a useful article. The second
prong of the test is then associated with an “independent-existence”
requirement based on the statutory language that requires that the features
“are capable of existing independently of, the utilitarian aspects of the
article.” Other than
adding two weak supporting arguments to this explanation, the majority seems to
have heeded its own advice to begin and end any reasoning with the text.
The fatal flaw of the majority’s test is not primarily that
it is elusive or subjective in application. It is that the test is completely
unworkable in principle. As the dissent points out, any aesthetic feature can
be “imagined” as a separate pictorial or sculptural work, especially when
embedded in some other medium. The shape of a canoe or
chainsaw blades can be easily imagined as sculptural works when embodied in
marble. Thus,
contrary to the entire logic of the doctrine, a test that was supposed to
provide guidance on when aesthetic features of useful articles are protectable,
if taken to its logical extreme, leads to the conclusion that all such features
are always protectable.
The dissent, written by Justice Breyer, sharply criticizes
the Court, and then crafts its own version of the “imagine” test. Like the Court,
the dissent apparently derives it test directly from the text—specifically, the
statutory language that requires aesthetic features to be such that they can be
“identified separately” from the utilitarian aspects. The dissent
is not strictly textual in the formal sense, as its reasoning draws on sources
external to the statutory text, such as legislative history and Copyright
Office materials. However, it suffers from
the same methodological flaws as Justice Thomas’s textualism. The dissent bases
its legal test solely on the text of the statute, albeit interpreting this text
through a wider contextual lens. It engages with extratextual sources only to
better reveal meaning supposedly hidden in the text itself, rather than to
consider the broader purpose of the law.
This mode of analysis is similar to that of the majority,
resulting in a similar, albeit revised, test. Justice Breyer’s alternate test
consists of “two exercises, one physical, one mental.” First, one
must inquire about physical separability—whether the design features can “be
physically removed from the article” without impairing its function—in which
case the feature is protectable. Second, one
must engage in an adjusted version of the majority’s “imagine” exercise. One must try
to “conceive of the design features separately without replicating a picture of
the utilitarian object,” an exercise that, if successful, leads to the
conclusion of conceptual separability and copyrightability of the relevant
features.
Breyer’s amended test is an improvement. It attempts to take
seriously the basic logic of the doctrine by adopting some criterion that can
render some aesthetic features of useful articles protectable while denying
copyright to others. However, it fails to consider or explain why its criterion
is the correct one for the distinction—or at all plausible in the first place.
The added element that gives some bite to the imagine test—the qualification of
not mentally replicating an image of the useful article—is a Ptolemaic
epicycle. It is an ad hoc, unprincipled adjustment of the conceptual apparatus
designed to ensure plausible results. As such, the adjustment, as the majority
points out, generates confounding and seemingly baseless outcomes in some
cases. These are,
however, just symptoms. Their underlying cause is yet another version of a
puzzling imagine test, now adjusted ad hoc to generate somewhat better results.
The short concurrence by Justice Ginsburg takes yet another
path. This path seems to be a form of implied textualism: Ginsburg’s doctrinal
analysis discusses the text of several statutory provisions and little else. According to
Ginsburg, the case did not require an application of the separability test at
all “because the designs at issue are not designs of useful articles.” Instead, the
designs are “themselves copyrightable pictorial or graphic works reproduced
on useful articles.” In simple terms, the concurrence
argued that the uniforms’ designs are much like a preexisting, standalone
pictorial work (for example, a cartoon image of Bart Simpson) that is then “reproduced
on useful articles” (for example, a print of Bart Simpson on a T-shirt). The
Copyright Act gives the copyright owner the right to exclude the reproduction
of such standalone works in or on useful articles, and such reproduction, in
itself, does not make the work a part of the useful article. Just like
the Bart Simpson print, the design was never part of the useful article, and
therefore, it is not subject to the separability test.
Justice Ginsburg’s opinion, however, provides no insight into
how to distinguish between standalone works that are merely reproduced in or on
a useful article, and those that are an essential part of it. For example,
what distinguishes the Bart Simpson print reproduced on a T-shirt, which
Ginsburg presumably would consider copyrightable, from a blueprint of an
intricate machine that is then reproduced “in” a working embodiment of that
machine, which Ginsburg presumably would not? The troubling difficulty is that
any aesthetic feature of a useful article can start its life as a standalone
pictorial or sculptural work and only then be reproduced on or in a useful
article. A design embodied in shoes may originate in a diagram, and an
innovative engine shape can originate in a sculptural model. How should
one separate the sheep of standalone works that are merely reproduced in or on
a useful article, from the goats of aesthetic designs of useful articles? The
concurrence offers deafening silence as an answer.
The three opinions in Star Athletica represent three
variants of textualism: overt (by the majority), silent (by the concurrence),
and despite itself (by the dissent). Each tries to derive a workable legal test
to a challenging doctrinal question by discovering it in the text of the
statute alone. Again, the Court relies on a false assumption of constancy. The
originalism animating Oil States falls prey to a false assumption of
historical constancy—the premise that institutions and their social
understanding are fixed and stable both in a particular moment and over time.
In contrast, Star Athletica’s textualism succumbs to a false
assumption of semantic constancy—the notion that fixed meaning is hidden within
a text and must be simply uncovered from it. All three opinions in the case
reach perplexing results because each prioritizes form over function. They
refuse to engage with the useful-article doctrine dynamically—to treat its
proper understanding not as a fixed meaning that is hidden in and must be
recovered from texts, but as a concept that requires development and
elaboration in light of its underlying purpose. While the
majority is the only one to expressly reject the relevance of purpose, all
three opinions studiously avoid appealing to the purpose of the useful-article
doctrine and of the statutory text on separability.
The rigid textualism of Star Athletica is a
particularly bitter irony in a case where the statutory text itself expressly
declares the purpose of the rule embodied in it: guaranteeing, in the specific
context of industrial design, that copyright protection extends only to the
proper subject matter of this field—expressive rather than functional aspects. As the
statute puts it, immediately prior to stating the separability test, the
animating principle is that industrial design (“works of artistic
craftsmanship”) should only fall within the domain of copyright “insofar as
their form but not their mechanical or utilitarian aspects are concerned.”
C. Abstractions: Soft Textualism and Originalism in
Patent Subject-Matter-Eligibility Law
The third line of cases pertains to the Court’s
reinvigoration of subject-matter-eligibility principles for patents. The
reasoning of these decisions embodies, in a loose fashion, the core assumptions
of originalism and textualism: the constancy of legal institutions across time
and the fixity of the meaning of laws, as hidden within legal texts.
More formal originalist or textualist methods are absent from
these cases because there is no text, either constitutional or statutory, whose
meaning is to be discovered in public understanding or plain words. Since the
1790 Patent Act, the patent statutes have remained silent on what subject
matter is not patentable, despite stating what subject matter is
patentable. However,
from the outset of the modern Anglo-American patent system, English and
American courts developed principles of subject-matter eligibility that have
become part and parcel of patent jurisprudence. Three
categories of unpatentable subject matter have emerged: natural principles,
natural phenomena, and abstract ideas.
For decades after the 1981 case Diamond v. Diehr,
which held that under certain conditions, computer programs can be patentable
subject matter, the Supreme Court remained
silent on subject-matter eligibility. It left doctrinal development in the
hands of the Federal Circuit, which was established in 1982 and given exclusive
appellate jurisdiction over patent-law cases from federal district courts. During this
time, the eligibility doctrine was plagued by erosion, instability, and opacity
to the extent that some doubted whether any subject-matter bar to patentability
should exist or even did exist. Then, in the
2010s, the Supreme Court reentered the arena with the aim of reaffirming and
clarifying the doctrine, beginning with Bilski v. Kappos. As in Oil
States and Star Athletica, the results were highly problematic.
In the new vintage of decisions, the Court developed a novel
two-step test for patent eligibility, known as the Alice test. The test
is applied to patent claims—the written text in which patentees define the
scope of their rights. First, a court must “determine whether the claims at
issue are directed” to subject matter in one of the three patent-ineligible
categories. If so, the
court must then determine whether the claim involves an “inventive concept,”
such that the additional elements of the claim “‘transform the nature of the
claim’ into a patent-eligible” one, rather than leaving the claim as a clever
attempt to patent the ineligible subject matter itself. The claim is
only patent eligible if it contains such an “inventive concept.”
Readers who struggle to understand what exactly the Alice test
requires can take comfort in not being alone. There is widespread agreement
among a sea of commentators that the new patent-eligibility test is hard to
understand, provides little guidance, and leaves the law in a state of incoherence
and disarray. David Kappos, the former head of the
Patent and Trademark Office, described the state of the doctrine in the wake of
the Bilski decision as “a real mess,” and mused that one “could actually
use much stronger language.”
The reason for the legal test’s poor performance is its
meager substance. It is nearly an empty tautology. The test
simply mandates asking whether the claimed subject matter is within one of the
unpatentable subject-matter categories and then whether enough was added to
transform it into a concrete invention. In the absence of further guidance on
what constitutes an inventive concept, it left “enshrouded in mystery” what subject
matter falls within the three ineligible categories, why it would fall within
them, and what constitutes an “inventive step” allowing it to become eligible. What little
guidance exists within the decisions is limited to ad hoc reasoning and aphorisms
about why specific added elements do not salvage ineligible claims.
The source of the strange impoverishment of the Alice
test is its implied reliance on originalist and textualist assumptions. The
reasoning of the Bilski trio sounds in originalism, as it assumes a
stable meaning of the categories of unpatentable subject matter that remains
constant through time. Partly responsible for this assumption is the Court’s
insistence on pretending to reconcile two centuries of irreconcilable
precedents created at different times and under conflicting views. However, the assumption of
chronological constancy goes even deeper. The Bilski trio seems to take
for granted that the unpatentable-subject-matter categories have uniform and
unchanging public meanings. The Court appears to believe that what is
considered a “principle of nature” today is what has always been understood to
be a principle of nature. The historical record is
different. From the early days of the U.S. patent system, there was broad
agreement that natural principles cannot be owned, while application of
natural principles (which, on some level, is the essence of all inventions)
forms the proper subject matter of patents. And yet,
this shared premise was always accompanied by sharp and widespread disagreement
about what each of these two categories—natural principles versus their
application—meant or included. This discord existed both
at particular moments and even more so across time, as yesterday’s obvious
“natural principles” became today’s ownable applications.
Similarly, as noted by other scholars, the opinions of the Bilski
trio are marked by “a superficial textual wilderness.” The analysis
appears to silently assume that a fixed meaning of rich legal concepts such as
“abstract ideas,” “natural phenomena,” or “processes,” is simply hidden in the
textual labels. One needs only to look hard enough at this text, perhaps with a
glance at a dictionary, and the meaning shall be discovered. However, as
will be discussed in the next Part, the reality is that these are purposive
concepts. They were created and used to serve certain human aims within the
social spheres of science and technology that they govern. As a result, the
meanings of these concepts are not stable objects hidden in texts, but dynamic
human constructs that can only be understood through the dynamic exercise of
purposive elaboration. The one thing that the new subject-matter eligibility
decisions lack is any such purposive analysis.
III. intellectual-property dynamism
What is going on here? The Roberts Court has repeatedly set
out to craft coherent and clear doctrine in crucial areas of intellectual
property. Time and again, its decisions in the field have instead resulted in
poor reasoning, confused and opaque doctrine, and sometimes undesirable
normative outcomes. The consistent factor in these failures is the Court’s
originalist and textualist methods.
Oil States’s originalism results in two conflicting
accounts of the original and supposedly unchanged understanding of patents. The
focus of both accounts on discovering the true and clear meaning of patents at
the Founding puts them out of touch with the actual development of patents,
either at that moment or over their longer history. At the same time, both
accounts fail to consider either the point of the bureaucratic property system
of patents as it developed or this system’s interaction with Article III
jurisprudence’s own purposes in separating public and private rights. What is
offered instead is two competing just-so stories. Both distort the history of
patents, and neither provides any basis for future substantive development of
this area of law.
Star Athletica’s insistence on discovering the correct
meaning of the separability test in the statutory text alone leads to three
opinions that are each blind to what the concepts in the text set out to
achieve. The purpose of the distinction between separable aesthetic features
and those that are inseparable from utilitarian ones—to ensure that copyright
only protects its proper subject matter of expressive forms rather than
functional elements—completely disappears from the picture. The result is
competing but equally perplexing tests that require future courts to engage in
speculative mental exercises of the imagination. Courts are left with little
meaningful understanding of what the doctrine is and how to apply it, other
than through hunches and unprincipled, ad hoc analogies.
The Bilski trio is based on a softer blend of both of
the above assumptions: that the meaning of unpatentable subject-matter
categories has been fixed in public understanding from the beginning of
American law and throughout the centuries, and that textual labels carry latent
within them this self-evident meaning. The result is an extremely rigid legal
formula for the patentability test, bordering on being tautological. This
framework also fails to sufficiently connect the test to the substantive aims
of the law of subject-matter eligibility. Unsurprisingly, the effect of the Alice
test is similar to that of Star Athletica: courts have been left
with little guidance on how to apply the doctrine, consequently forcing them to
manipulate the Alice test’s formalities in an ad hoc and undisciplined
manner.
The pattern is clear. The search for fixed meanings in either
plain text or history crowds out any attempt to understand what the law is
about and what it is designed to achieve. The result is a deficient legal
doctrine both normatively and in the doctrine’s ability to guide future
application or development. Are there deeper causes to this dynamic of the
jurisprudence of stasis? Does the spectacular magnitude of its failure in these
cases have anything to do with the setting of intellectual property?
This Part argues that the failures of the jurisprudence of
stasis are rooted in a futile search for objective foundations to law in fixed
sources of legal knowledge, sources that supposedly do not require any
consideration of the substantive human aims the law is designed to achieve.
This search leads to misconstruing legal relations as inert, while they are, in
fact, dynamic and ever developing, as a matter of both social reality and its
human understanding. The Court’s use of these methods is pervasive in the
modern era. However, the utilization of the methods within intellectual
property is particularly prone to exposing their failures with crisp clarity.
The Court’s intellectual-property decisions clash directly with the distinctive
dynamism of the field of intellectual property in a capitalist society, thereby
highlighting the weaknesses of the jurisprudence of stasis more generally.
A. Two Reifications
The unfortunate results of the Court’s intellectual-property
decisions are traceable to their analytic methods. Originalism and textualism
are the law’s response to what Morton J. Horwitz has called “the destabilizing
force of modernism.” Modernism has undermined many
established sources of foundational meaning and truth: religion, nature,
tradition, and universal reason. By causing
and revealing an absence of an objective foundation on which to ground
knowledge, it has left in its wake both epistemic and normative crises of
authority. In American
law, this crisis has been particularly severe after a series of devastating
attacks by legal realism and its progeny on legal formalism’s claim to
neutrality. These
attacks brought to the surface, with urgency, a concern pervasive in American
legal culture: that law is no different from politics.
There appear to be two possible reactions to the modernist
crisis of authority in law: embrace disintegration (also known as
“indeterminacy”) or find some fixed “external” object in which to ground a
stable meaning of law. The former reaction is that of
mainstream Critical Legal Studies. Textualism and originalism are of
the latter kind. Put another way, they are the
outgrowth of a desperate search for constraint, for a method in which there is
a fixed and unchanging thing “out there” that is “the law.” And that is precisely their fatal flaw:
reification.
Reification is the misguided treatment of something that is
dynamic and developing as a “thing” or a fixed object in the world. The concept is key in critical
theory’s analysis of capitalist society. It first arose in Karl Marx’s
discussion of the fetishism of commodities—the way in which capitalism makes
the value of commodities appear to be a relation between the objects
themselves, thereby obscuring the dynamic social relations between people that
constitute this value.
Later theorists, most importantly Georg Lukács, expanded the
concept to all aspects of social life in capitalism. Once the
social relations of production are reified by the ever-expanding commodity
form, human life itself and all of its facets become subject to the same logic
of misconceiving dynamic human relations and powers as features of static,
natural objects. For example, Lukács saw modern
bureaucracy as a clear case of reification spreading beyond the sphere of
commodity exchange. Bureaucracy, he argued,
reduces people to abstract officials and cases and relies on formal, calculable
procedures and rules, thereby eliminating all qualitative and personal factors. As a result,
modern bureaucratic practice makes complex human relations appear as if they
were natural objects controlled by their own rules of “ghostly objectivity,”
while human purposes and conflicts drop from view. Indeed, not
only social relations but also human thinking itself becomes reified when
people come to experience it as dominated by immutable external constraints
rather than as human-made and changeable. For both
social relations and human thought, the two central elements of reification are
first, misconceiving something that is humanly created as part of the natural
order of nonhuman objects, and second, misconceiving something that is dynamic
and changing as static and fixed. The upshot is that reification produces false
naturalization, thingification, and denial of human
agency. The social order and human thought are the province of human agency and
are subject to change by people in the service of their needs and goals. When
reified, however, both appear to be natural or external objects that place
fixed constraints on human agency.
As in other fields of human society, reification is pervasive
in law. All forms of
legal formalism involve reification because they reduce the law to manipulation
of certain verbal and logical forms that operate as constraints supposedly
independent of either human shaping of concepts or social realities. Textualism
and originalism are different brands of legal formalism in this broad sense.
They involve the two kinds of reifications, that of social relations and that
of human thought (or semantic concepts).
Textualism reifies by focusing on the text, a set of
signifiers, and purporting to discover in it fixed, “plain” meanings through
various technical procedures. In doing so, it holds that
these signifiers are the law itself. The trouble is that what matters is not
the signifiers themselves (“text”) but the concepts they represent. And
concepts are never given, nor do they lie hidden, readymade, and waiting to be
discovered. Concepts are human instruments for making sense of the world, and
as such, they are always dynamically forged in relation to other concepts. Legal concepts exist to shape and
govern human behavior in society to achieve certain desired purposes. Because
of this, elaborating the law’s meaning requires developing its concepts in
light of their purposes—the desired human goals they are meant to achieve.
Textualism’s reification is a search for fixed essences in signifiers plucked
from a supposed “heaven of legal concepts,” when what is needed is dynamic
development of concepts guided by purpose as applied to specific contexts.
Originalism is often understood as a theory of communicative
meaning. It argues that the meaning of legal concepts is determined by
reference to its understanding by a particular audience at a specific time. To that
extent, originalism, like textualism, reifies legal concepts. Although this
manner of reification of concepts is not identical—originalism freezes meaning
by privileging one possible understanding based on its proximity to the
concept’s initial elaboration, rather than claiming to find meaning in texts
alone—it is subject to a similar critique. Distinctly,
however, originalist analysis often does not emphasize past semantic meanings
but rather focuses on past enacted social relations. The meaning of a
particular legal concept is often inferred not so much from what the Founding
generation said but rather from how they behaved. In cases such as Oil
States, where there is no specific legal text whose disambiguation
would direct the Court’s result, the original meaning is derived directly from
how people enacted in their social lives specific legal relations—namely,
patents. This brand
of originalism consequently reifies not concepts, but social relations. Legal
relations—a subset of social relations—are viewed as fixed essences that are
constant across time. However, social relations, including
legal relations (or institutions), are inherently dynamic. They develop and
change over time. Treating social relations as fixed objects blinds the Court
to the wisdom of the adage that “[t]he life of the law” is “experience,” rather
than “logic.” It detaches
the law from the actual, dynamic, and developing social relations that it is
supposed to shape.
What connects the failure of both reifications—that of
concepts and that of social relations—is their total disregard of purpose.
Purpose is the linchpin holding together the enterprise of the elaboration of
law as social relations designed to achieve social human ends. Purpose is what
directs the dynamic forging of legal concepts in a particular context without
unspooling their meaning into indeterminacy. Purpose is
also the guide that allows for meaningful connections between the elaboration
of legal concepts and ever-changing social relations.
Without purpose to guide it, legal analysis—whether in the
originalist or textualist vein—not only results in poor normative outcomes but
also becomes pointless itself. For what is the point of finding the meaning of
law, either in essences assumed to be hidden in texts or in social relations
postulated to be inert, if neither source has anything to do with achieving the
human purposes the law is designed to obtain?
B. The Legal Relations of Technological Dynamism
What does intellectual property have to do with all of this?
Is there a reason why the failure of the jurisprudence of stasis embodied in
originalist and textualist reifications is so manifestly monumental in this
area of the law? Many years ago, Horwitz argued that the nineteenth-century
rise of “intangible forms of wealth,” protectable by intellectual property,
challenged the “physicalist” conception of property that dominated classical
legal thought and ultimately hurried the collapse of that mode of legal
thinking.
Today, intellectual property poses an analogous challenge to
the Roberts Court’s fixation on originalism and textualism. The reason is that
intellectual property is the embodiment in legal form of the social relations
of information innovation, relations which take on a particularly dynamic shape
in capitalism. The connection between
technological dynamism in capitalism and the dynamism of intellectual-property
law is most readily apparent in the area of patents because this field is about
property rights in applied technological knowledge. However, the point is also
applicable to copyright law and its distinct subject matter of expression,
where capitalism’s profit drive is equally at work. Even in this area where
technological information itself is not the object of property, technological
dynamism propelled by the profit drive is at play: new technologies constantly
create new forms and outlets for expression, open up new markets, cultivate new
demand, and disrupt established business models. Consider,
for example, the new vistas, economic disruptions, and deep social
challenges—indeed, challenges to the very concepts of art and creation—brought
about by the recent rise of expression-producing artificial intelligence. The
hyperdynamism of technological innovation, intensively germane to intellectual
property, lays bare the failings of reifying concepts and social relations. The
wooden legal reasoning of the jurisprudence of stasis and the banishment of
purpose from the Court’s intellectual-property cases, when applied to the
rapidly changing social relations to which intellectual-property law pertains,
generate results that are not only undesirable, but often perplexing.
Rapid technological innovation is a uniquely modern
phenomenon that marks a sharp discontinuity with earlier human history. This
dynamism is unique to the historically specific moment of capitalism exactly
because the engine that drives rapid innovation is distinctive to capitalist
social relations. Unlike other historical periods, technological development in
capitalism is intense, sustained, and structurally necessary. The structural
imperative to innovate arises from the distinctive features of the system’s
generalized market relations, wherein firms compete to survive, with the sole
aim of generating profit for its own sake. There is
consequently constant pressure to develop new innovations that reduce cost,
increase productivity, satisfy human needs, and create new ones.
In this race, obtaining an innovative edge promises increased profits through
temporary rents and compels other firms to catch up or perish. At the same time, markets are
increasingly “disembedded” from any social goal other
than profit maximization, thereby removing any constraint on the drive to
innovate.
The resultant dynamic is intense technological innovation
marked not by smooth progression and equilibrium but by discontinuities and
cycles of “creative destruction,” wherein new technologies and the systems
built around them dramatically displace their predecessors. Because
these dynamics are driven by the structural imperative to increase private
profit via rents, there is no guarantee that the technological innovation it
spurs consistently increases overall well-being, and even less so the
attainment of other social goals.
This distinctly capitalist, intense technological dynamism is
mirrored in the field of intellectual property, which embodies in legal
relations these same social dynamics. In modern society, this field has become
the primary legal relation by which innovators internalize the value of their
informational innovations through market prices. The result
is constant and intense pressure on intellectual-property law to evolve so that
producers can appropriate the value of their technological innovation. Dynamic
change is thus the very heart of intellectual-property law, which is the law of
technological dynamism in a capitalist society.
The upshot of intellectual-property dynamism is deep
incompatibility with the jurisprudence of stasis on two different levels. One
level pertains specifically to originalism. This method of analysis conflicts
with the modern character of intellectual-property law as the commodified form
of information goods. During the Founding era, intellectual property still bore
many of the vestiges of its earlier institutional form as privileges. It was
only by the late nineteenth century, parallel to the development of industrial
capitalism, that intellectual property assumed its fully commodified form,
supporting a full-fledged, market-based regime of rights. Between
these periods, the character of intellectual property underwent not only an
expansion, but also a deep metamorphosis. Patents and
copyrights were one set of legal relations in 1790 and quite another in 1890.
Consequently, intellectual property dramatically brings to the surface a
general difficulty of originalism. Regardless of the normative value of the
method’s result, its analysis is based on a world incommensurable with our own. It defies
reason to extrapolate from what Americans said and how they behaved in regard
to patents in 1790, when they were still embedded in a hybridized system of
privileges and rights, in order to determine what patents are today, when they
govern and form a vastly different system of fully market-oriented,
rights-based, bureaucratic property relations.
The second level of incompatibility afflicts both originalist
and textualist flavors of static jurisprudence. The dynamism of intellectual
property creates an ever-growing gulf between reified versions of the law and
the social relations to which the law pertains. While this gulf is not unique
to intellectual property—in fact, it is the most fatal flaw of reified legal
reasoning in general—the intense dynamism of the field exposes it in a dramatic
fashion. The failing goes well beyond the familiar and frequent problem of
technology-specific legal rules rendered obsolete by technological change. Instead, it
amounts to a fundamental disconnect between law and the social relations to
which it applies.
For example, in the context of the useful-article doctrine,
to understand how to separate the aesthetic and utilitarian features of a
consumer product, one must resort to purpose and changing social context. To
analyze this legal distinction, one must have some idea of the developing
practices of industrial design, what the law attempts to achieve with respect
to them through the distinction, and why it seeks to deny protection to
utilitarian features. The same is true with respect to patent’s subject-matter-eligibility
doctrine, particularly the question of what distinguishes unpatentable “natural
principles” from patentable inventions. To meaningfully answer this question,
one must have some notion of modern realities of research and development—which
are vastly different than those of, say, 1800—and how they relate to patent
law’s animating goal of allowing ownership of some kind of knowledge pertaining
to the physical and natural world but not of other kinds. Such inquiries cannot
be undertaken by searching for answers hidden in reified texts or social
practices assumed to be frozen in time. As illustrated by the Court’s recent
intellectual-property jurisprudence, one ignores these caveats at the risk of
producing both questionable results and incoherent and nebulous legal
reasoning.
As noted by Horwitz three decades ago, intellectual property
undermined one legal fallacy, physicalism, by illuminating the fact that all
property is a social rather than physical relation. Now, the field may
destabilize other legal fallacies, too. The absurd results that emerge from
applying originalism and textualism to intellectual-property law illustrate,
with striking clarity, the fundamental error of these methods of analysis. The
intense dynamism of the law of intellectual property is exceptional in degree,
not in kind. All law governs evolving social relations. As such, its concepts
require dynamic elaboration, not discovery in inert text or frozen social
practice. In this way, intellectual property may act as a sensitive
seismograph; because of its inherent dynamism, it is often the field to
indicate most dramatically the failures of all strategies of legal reification,
writ large.
Conclusion: Toward A Jurisprudence Of Purpose
I have argued that the recent vintage of Supreme Court
originalist and textualist decisions in intellectual property exposes the
inadequacy of these methods. Originalism and textualism are untenable attempts
at legal reification of concepts and social relations that are inherently
dynamic. Intellectual-property law floods the failures of these methods with
bright diagnostic light. It does so because it embodies in legal relations the
intense technological dynamism of capitalism, a dynamism which clashes
conspicuously with the stagnationist frame of the two
methods. The general turn to originalism and textualism is a response in law to
the modernist crisis—a desperate search for constraint in a world where all
foundational grounding of knowledge has been swept away. The failure of these
methods may appear to leave as the only alternative the other common response
to the modernist crisis, espoused by mainstream Critical Legal Studies: embrace
legal indeterminacy and concede that law is no different from politics. That would
be a mistake. Indeterminacy offers a poor substitute for reification, and it is
precisely the terror of its dark cloud that further fuels the turn to
originalism and textualism.
Is there a viable alternative to the polarities of
reification and indeterminacy? What would the analysis of the cases that have
been discussed in this Essay look like under such an alternative? It is
impossible to develop adequately here an alternative approach and its
application. However, it is possible to offer a preliminary sketch of the
direction they should take.
Such an alternative methodology follows directly from this
Essay’s critique of the jurisprudence of stasis. Originalism and textualism
fail because they reify. They take as given and fixed, either in text or some
historical fact, the meaning of legal rules. What
matters, however, is not text or words, but the concepts they embody, which are
not pregiven objects, but tools for human thinking that are always constructed
to serve human purposes. As such, the meaning of
concepts is not fixed and contained, but is always fluid and shaped dynamically
in relation to other concepts, in light of the purpose at hand. In the case
of law, the purpose is the shaping and governance of social life to serve
desirable human goals and interests through the distinctive forms of legal
relations. It follows
that the method of applying and giving meaning to legal sources should be
based, not on trying to discover the fixed meaning of texts, but on dynamically
developing the concepts embodied in them. This elaboration should be sensitive
to the internal concerns and distinctive institutional tools of the relevant
field as well as mindful of the area of social life it governs.
To bring this abstract sketch down to earth, consider how
this kind of analysis should look with respect to each of the cases discussed
in this Essay. To analyze Oil States’s question of whether inter partes
review is constitutionally permissible under Article III, one would first have
to provide an account, not of what patents have always been, but of what they
have become. Specifically, one would need an account of modern patents as a
system of property rights that features a robust administrative component, a
relatively secure title, and a predictable scope. One would then need to
develop an account of the purpose of administrative patent-review proceedings
within this system. Next, one would need to incorporate a distinct, plausible
account of the purpose of Article III jurisprudence, including its ban on
certain nonjudicial decision-making, and how the distinction between private
and public rights should be understood in light of this purpose. Finally, the
two accounts would have to be combined to evaluate the permissibility of
administrative inter partes review.
The separability test at the heart of Star Athletica
should be fashioned by reference to copyright’s basic subject-matter concepts,
their application to the modern field of industrial design, and the purpose of
the useful-article doctrine as derived from such principles. Here, the purpose
of the doctrine is rather clear, not to mention expressly stated in the
statute: to create a filter that ensures that copyright protection is applied
only to the subject matter for which it was designed (expressive forms) and not
to functional elements. The conceptual contours of
the separability test should be drawn by reference to this purpose, as well as
the context of modern industrial design, where the different kinds of subject
matter are often closely entangled, rather than on the basis of strange mental
exercises of the imagination.
Finally, to make sense of the unpatentable subject-matter
categories at issue in the Bilski trio, one must have an account of the
purpose of these categories. This analysis would need to be richer and more
illuminating than the general allusions offered in the trio to the need to keep
free the basic building blocks of scientific and technological innovation. One would
need to develop an account of the modern social system of technological
research and development. From this account, one would have to reason which
activities within this system are best supported by marked-up market prices via
property rights, which should rely on other sources of financing, and why. One
would then take a step back to conceptualize the categories of unpatentable
subject matter and the overarching patent-eligibility test, then use this
functional analysis to ensure that the final test tracks the channeling purpose
of the subject-matter-eligibility doctrine.
The recent textualist and originalist turn in intellectual
property is not good news for the field. As reflected in the poor results of
the cases discussed in this Essay, intellectual-property law will not be well
served by extensive use of these methods. However, these failures may serve a
useful purpose: that of a canary in a coalmine. The stark failure of the
jurisprudence of stasis in this area, due to its direct clash with intellectual-property
law’s dynamism, should be taken as a warning against the rise of this
jurisprudence elsewhere in the law.
William
C. Conner Chair in Law, University of Texas School of Law. I would like to
thank Yochai Benkler, Willy Forbath, and Talha Syed for priceless advice and
invaluable feedback.