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Monday, October 09, 2006

Research Canons: Intellectual Property

Our next subject matter for the research canons project is Intellectual Property.  (See here for a discussion of the research canons project, including some newly added categories, dates, and links to previous installments.)  Please comment on the books and articles that are essential to a new academic in the field.

It might be helpful to discuss whether there are separate works for copyright, trademark, and patent law, or whether there are certain books and articles that cut across the three subfields.

Posted by Matt Bodie on October 9, 2006 at 01:33 AM in Research Canons | Permalink


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Tracked on Oct 10, 2006 12:34:18 AM


For more on trademark, Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 YALE L.J. 1165 (1948), reprinted in 108 YALE L.J. 1619

Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687 (1999)

Robert C. Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 WIS. L. REV. 158

Mark McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame Law Review (2007)

I would want to add something on moral rights to this list, but I'm not sure what offhand.

Posted by: Rebecca Tushnet | Aug 12, 2007 7:52:59 AM

I realize this is coming in a bit late, but I am little surprised that Rich's writings have not been suggested. 14 Fed. Cir. B.J. 1 - 227 (issue 1) contains reprints of many of Rich's articles and speeches that cover a variety of topics from patentability to anti-trust. I personally have relied heavily upon it for understanding the background of the 1952 patent act, as well as the importance of precision in language. See, e.g., Escapign the Tyranny of Words - Is Evolution in Legal Thinking Impossible?, 14 Fed. Cir. B.J. 193

Posted by: P.A. | Oct 18, 2006 9:15:35 AM

I may be missing the essence of this discussion, but any IP professor should have a copy of P.J. Federico's Commentaries on the 1952 Patent Act. Should be mandatory reading for anyone sitting on the CAFC.

I found a copy at http://ipmall.info/hosted_resources/lipa/patents/federico-commentary.asp

Posted by: John Roethel | Oct 12, 2006 7:59:48 PM

For better or worse, the most important trademark piece ever written was Frank Schechter, The Rational Basis of Trademark Protection

Posted by: Mark McKenna | Oct 11, 2006 10:45:43 PM

Just a few additions, for what they're worth:

- David Lange's article Recognizing the Public Domain, 44 Law & Contemp. Probs. 147 (1981) deserves to be on this list for starting the discussion on the public domain.

- Peter Jaszi and Martha Woodmansee's work on authorship set the stage for some of Boyle, et al's work on the role of the romantic author in the development of IP law and policy. Maybe the book they edited, The Construction of Authorship, (Duke University Press 1994)?

- Melville Nimmer's Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?, 17 UCLA L. REV. 1180 (1970) and Paul Goldstein, Copyright and the First Amendment, 70 COLUM. L. REV. 983(1970) provide an important foundation for those, like Benkler and Netanel, who are working through the sticky intersection of IP and the 1st Amendment.

- Jerome Reichman's work on liability rules, including Of Green Tulips and Legal Kudzu: Repackaging Rights in Subpatentable Innovation, 53 Vanderbilt Law Review 1743 (2000); actually, there seems to be a pretty strong bias so far on the list toward domestic texts. In a field that is increasingly global, perhaps something like the edited volume from Reichman and Keith Maskus, International Public Goods and Transfer of Technology Under a Globalized Intellectual Property Regime(Cambridge University Press, 2005), deserves to be included in the canon as a phenomenal source of writings on international IP across all manner of specific inquiries.

Posted by: IP enthusiast | Oct 10, 2006 3:07:56 PM

To aspiring again,
Yes, those are all valid points. It's a very difficult question as to whether a loose canon is evidence of underdevelopment or openmindedness. On the one hand, as Christine Korsgaard has noted in the history of philosophy, much of the power of the English philosophical tradition lies in its long tradition of scholars willing to build on and revise past contributions. On the other hand, sometimes a tight canon is a symbol of insularity and scholasticism (in the worst sense of that term).

I do like the open source nature of this project, and many of the contributions made above.

Posted by: Frank Pasquale | Oct 10, 2006 2:41:36 PM

It would be a short and impoverished canon indeed if it included only works that no one had criticized. There are, to be sure, abundant critiques of Jaffe & Lerner available both on- and off-line (as indeed there are with many of the other authors listed above; Boyle's Shamans is unabashedly Marxian in its attitude towards property, but it's hard to deny him "canonical" status). Whatever one's opinion of J&L's book, I don't think one can simply ignore it, particularly when Congress seems to be seriously considering enacting one of their primary policy recommendations. But hey, this is an open-source project; keep J&L off your own personal list of canon literature if you wish. And perhaps we could even persuade you to suggest an additional reference or two.

Posted by: Tim Armstrong | Oct 10, 2006 1:47:32 PM

The Jaffe/Lerner book? The same book that's been near-universally panned as completely ignorant and offbase throughout the patent blogosophere?

Interesting definition of "canon" you've got there.

Posted by: IP Student | Oct 10, 2006 1:29:13 PM

Frank Pasquale writes: "A field like IP is less like philosophy/con law (where there is a clear canon and scholarship can focus on new commentary on it and reworkings of it), and more reliant on the most recent good information we have on what legal rules actually generate good policy results."

I agree with this to a point--IP in the United States is based on the utilitarian rationale in the Constitution, and any discussion of American IP law should probably be informed by which laws produce the results most consistent with that... so of course rapidly changing technology will make this goal into something of a moving target. But can't most of the same things be said of antitrust law? http://prawfsblawg.blogs.com/prawfsblawg/2006/09/research_canons_10.html
I suppose IP law runs into new problems more often than other fields, but there is a basic framework in place that has undergone relatively little change and that should probably be understood before one begins to say that a new case is "off the map" somehow.

It could be that IP law has less of a "canon" because it's underdeveloped.

Or it could be that I'm bringing up things better suited for a different discussion. Thanks to all who have posted. This thread has been quite informative.

Posted by: aspiring again | Oct 10, 2006 12:48:33 PM

To aspiring future IP prof,

This is a pretty fast moving field. The technology moves so quickly that lots of stuff can quickly become dated. So a reliable canon of the "tried and true" is pretty hard to come by. The books mentioned above are probably as close as you're going to come to it.

The list I've provided may just look like "what I've read recently that I think is good." But in patent especially, we're only recently getting very good empirical work. (In fact, I've seen many articles rely on Machlup's work in the 1950s and 1960s to make arguments.) Same holds for copyright. A field like IP is less like philosophy/con law (where there is a clear canon and scholarship can focus on new commentary on it and reworkings of it), and more reliant on the most recent good information we have on what legal rules actually generate good policy results.

For this reason alone, Michael Carroll's work on "Uniformity Costs in IP" (American U. L. Rev.) is highly recommended. It's an excellent argument for tailoring IP law to different industries, situations, and users. Yes, it just came out last year, but that does not mean it fails to articulate a perspective that will heavily influence scholarship for years to come.

Posted by: Frank Pasquale | Oct 10, 2006 9:23:24 AM

Thank you, Prof. Boyden. That's very helpful.

This is a bit more along the lines of what I expected the canons project to be about. I took a constitutional theory class in law school, and it included stuff from Scalia, Tribe, Ely, Dworkin, Akhil Amar, Rebecca Brown, McConnell, Bickel, Larry Kramer the Federalist Papers, etc. After reading that stuff, I felt like I had some grounding in the subject, could understand the current debates a lot better, and take a shot at participating intelligently.

It would be nice to have a similar idea of what material in the IP field would provide similar grounding. Thanks again for the "copyright classics." I'll try to read them soon. I've seen a few of those (Leval's in particular) cited frequently in the cases.

Posted by: aspiring future IP prof | Oct 9, 2006 5:14:49 PM

Aspiring, you may be interested in the syllabus for Randy Picker's course last spring, Antitrust and IP Policy Seminar: Copyright Classics, which focused on a more narrow set of "classics" but probably there's some overlap.

Posted by: Bruce Boyden | Oct 9, 2006 3:21:56 PM

As someone who's actually interested in this "canons" project, might I suggest that people post "canonical" stuff, rather than "my favorite stuff I've read lately"?

I'm a bit skeptical about whether much of this stuff falls in the former category. From my brief exposure to the field, I think a fair amount of Lessig, Lemley, and Posner's work is probably "canonical," and if anyone's gotten out of law school without reading INS v. AP from the early part of last century, they probably should... Robert Merges also for patent stuff. Also, Rivette & Kline's "Rembrandts in the Attic" seems to be getting a lot of discussion (see the original post on the canons project suggesting that the project aims to help people who might be at a conference and be asked "of course, you're familiar with X's work in this field...?" by letting junior profs know who "X" might be in these questions)

What's on nearly every IP professor's bookshelf?

This is an intriguing project, but the main contributors appear to be the bloggers themselves, and some 2006 Penn Law grad. This is an ambitious project and potentially very helpful to a lot of people, but forgive me if I'm a little frustrated.

Posted by: aspiring future IP prof | Oct 9, 2006 2:22:05 PM

I'm hardly the person to be advising junior scholars on what the canon is, but I'd also suggest:

Wendy Gordon, Fair Use as Market Failure, 82 Colum. L. Rev. 1600 (1982)
Pierre Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990)
Stephen Breyer, The Uneasy Case for Copyright, 84 Harv. L. Rev. 281 (1974)

I love Copyright's Highway, but I'm not sure I would describe it as "canonical." Also, I'm not sure forthcoming books can fit in that category either, although they might be hotly anticipated. Same with blogs and such, although I suppose it's not impossible.

Posted by: Bruce Boyden | Oct 9, 2006 1:58:05 PM

A few possible additions to Frank's excellent list (and thanks for the recommendation of Info/Law):

- Goldstein, Copyright's Highway
- Patterson, Copyright in Historical Perspective
- Kaplan, An Unhurried View of Copyright (recently republished together with a collection of commentaries on the work under one cover)
- Landes & Posner, The Economic Structure of IP Law
- Jaffe & Lerner, Innovation and its Discontents

It's hard to have a cover-the-waterfront list of books on IP without anything on digital rights management or the DMCA, but I think we're all still waiting for the definitive work to be produced (although the DMCA obviously gets a great deal of attention from many of the authors on Frank's list). I happen to like the one-volume collection of essays edited by Becker, et al., "Digital Rights Management: Technological, Economic, Legal, and Political Aspects," although nearly all the contributors are European and they obviously come at the subject a little differently, even when discussing U.S. law. The EFF's annually updated "Unintended Consequences" essay is a good sourcebook on DMCA issues, as is chillingeffects.org. And I still seem to find lots of occasions to cite Nimmer's "A Riff on Fair Use under the DMCA," although it's probably getting rather dated.

Posted by: Tim Armstrong | Oct 9, 2006 11:20:08 AM

Oh, for blogs I forgot sivacracy.net, featuring Ann Bartow, Siva Vaidhyanathan, and many interesting co/guest-bloggers.

Posted by: FRank | Oct 9, 2006 8:18:08 AM

Just off the top of my head....


1) Larry Lessig, Code
2) Jessica Litman, Digital Copyright
3) Yochai Benkler, Wealth of Networks
4) Terry Fisher, Promises to Keep
5) James Boyle, Shamans, Software, and Spleens
6) ---, Expanding the Boundaries of IP (edited collection)
7) Burk and Lemley on the patent system (forthcoming book)
8) Bessen and Meurer on the patent system (forthcoming book)
9) Varian and Shapiro, Information Rules
10) Richard Lanham, The Economics of Attention
11) Tyler Cowen, Good and Plenty

1) Julie Cohen's works on the intersection of IP and privacy (including Subject as Object)
2) Margaret Jane Radin's work on propertization in cyberspace
3) Pam Samuelson and Susanne Scotchmer on reverse engineering
4) James Boyle on information economics
5) Brett Frischmann on IP as infrastructure
6) Lemley/Dogan on search costs in trademark vs. Dinwoodie/Janis on Contextualism in TM (great example of controversies in methodology in IP Scholarship)
7) Lemley, Property, IP, and Free Riding
8) Michael Carrier on Cabining IP through a Property Pardigm
9) Tom Bell on Fared Use
10) Julie Cohen, Lochner in Cyberspace: The New Economic Orthodoxy of "Rights Management," 97 MICH. L. REV. 462 (1998)
11) James Boyle, A Theory of Law and Information: Copyright, Spleens, Blackmail, and Insider Trading, 80 CAL. L. REV. 1413 (1992)
12) Mark A. Lemley & David McGowan, Legal Implications of Network Economic Effects, 86 Cal. L. Rev. 479 (1998).
13) Eben Moglen's article on free software in First Monday
14) Any recent Posner opinion on copyright; available at Project Posner
15) Barton Beebe's empirical work on fair use in copyright/substantial similarity in trademark
16) Tim Wu, Copyright's Communications Policy
17) LEmley and Frischmann, Spillovers
18) Goldman, Deregulating Relevancy in TM

1) PUblic Knowledge policy blog
2) Info/Law at Harvard
3) Rebecca Tushnet's 43b blog
4) Copyfight (though not very active lately)
5) Patently-O
6) Fire of Genius (patent)
7) Trademark blog (Schwimmer?)
8) LawMeme at Yale
9) Patry on copyright
10 Madisonian.net (full disclosure--I blog there!)

1) AALS PAnel on Cultural Approaches to IP (featuring Cohen, Katyal, Scafidi)
2) Stanford Cultural Environmentalism Conference, and CIS podcasts (including Dave Levine's HEarsay CUlture show)
3) Yale A2K conference (if any of that is podcast!)
4) Duke Conference on the public domain, published in LAw & Contemp Problems
5) Harvard Berkman center series of podcasts

But really, this is a pretty random list; I've just tried to give a "taste" of the authors driving the big debates.

Posted by: Frank | Oct 9, 2006 8:16:41 AM

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