Fromer: Expressive Incentives in Intellectual Property

Are the current incentive structures in American patent and copyright law reaching their maximum utilitarian potential? In her recent article Expressive Incentives in Intellectual Property, 98 Virginia Law Review 1745 (2012), Professor Jeanne Fromer (New York University School of Law) suggests that traditional reliance on pecuniary interests leaves untapped potential in maximizing the effectiveness of intellectual property law in terms of spurring creativity and invention. She proposes using expressive incentives—incentives reflecting the moral-rights interests of creators—perhaps instead of traditional pecuniary incentives, to optimize intellectual property laws in a utilitarian framework.

According to Fromer, contrary to popular belief utilitarian and moral-rights theories are not irreconcilable, and intellectual property law presents many areas where both can be applied complementarily. Expressive incentives appeal to the strong moral-rights interests that creators’ have in their work and reflect both labor-desert and personhood theories of property. Labor-desert theory suggests that creators are particularly keen on protections that reward their hard work, while personhood theory suggests usefulness of protections that respect work-product as an extension of the creator’s personality. Because many expressive incentives are relatively cost free to society but very valuable to creators as suggested by these theories, expressive incentives are likely to bolster the utilitarian goals of the intellectual property system. Professor Fromer examines several areas in which expressive incentives in copyright and patent law already seem to be at work. She likewise suggests promising areas in which expressive incentives might be most influential.

Attribution

Professor Fromer believes that the most promising expressive incentive might be the right attributing a protected work to its creators. Appealing to creators’ strong personhood interests, attribution can both bolster a creator’s reputation, and establish a visible and concrete link between the creator and the work. While a stronger reputation can certainly provide traditional pecuniary incentives such as better and higher paying job opportunities, attribution also expresses creators’ central value to their work, and highlights their creation as an extension of the self. Empirical work shows that, in order to receive attribution for their work, creators are willing to accept less financial compensation for licensing their intellectual property rights.

While attribution has the potential to augment or even replace existing traditional pecuniary incentives, Fromer explains that current American patent and copyright laws only faintly provide for attribution. Patent law requires that all inventors be named in an invention’s patent application and issued patent, and the recent America Invents Act allows corrections to attribution errors without any repercussion to patent rights. Attribution has also survived the shift in practice away from granting employees ownership of patent rights in their inventions, preserving the public ideal that inventions are the product of individual effort and personal genius. However, this indirect form of attribution conveys the inventor information only to those who see the relevant patent, rather than to everyone who views or even uses the actual invention.

Attribution is even weaker in American copyright law, as there is no general requirement that authors be identified as a condition for copyright protection. While copyright registration does require indirect attribution by listing the work’s authors, registration is not necessary to secure copyright protection. Furthermore, American copyright law’s work-for-hire doctrine requires that the employer be listed as the author without any attribution to the individual creator. This class of works likely comprises at least half of all copyright registrations. While the employer may wield some creative control over a work made for hire, Fromer believes that the erasure of the employee-writer from copyright law likely underrepresents the degree of personhood and labor interests the individual creator has in these works. By contrast, French copyright law allows only a natural person to be an author, precluding the American work-for-hire doctrine.

Because it seems likely to be a valuable expressive incentive, attribution is useful for further exploration as a motivator for creation. By implementing some bright-line attribution rule linking individual creators to their works at a relatively low cost to society, Fromer believes that a carefully designed attribution right might be a useful incentive for intellectual property laws to provide, perhaps even replacing some other pecuniary incentive.

Duration

From the perspective of authors, copyright duration is arguably copyright law’s most important component, and a duration structure keyed on authors’ lifetime is an important expression of authors’ personhood interests. The structure identifies authors’ personal importance to their works and also enables authors to build their reputations during their lifetimes. Fromer shows that a statistically equivalent fixed duration might not offer the same kind of incentive to create given the lack the recognition given to authors and the absence of an assurance of lifetime protection. While it facially seems unfair that an author with a longer life expectancy will be given a longer duration of protection, it is likely that this superficial criticism is substantially outweighed by the moral-rights interest satisfied by a guaranteed lifetime protection. Fromer suggests that that more research must be done to explore the potential that using the life-plus-years structure might provide in made-for-hire scenarios.

Right of Reversion

Authors are given a termination right, so that after giving notice they may terminate any grant of a copyright from thirty-five to forty years from the grant date. While it is infrequently invoked and does not apply in made-for-hire situations, this right of reversion may still provide a useful expressive incentive. By allowing authors to regain control of their creations, this right expresses solicitude for the personhood, labor, and possessory interests authors have in their works. This right of reversion might then provide the expressive incentive of control to authors who believe that they should still retain their moral rights over their work, even when they have contracted away their rights.

Originality

Copyright law’s originality requirement sets a minimal threshold of creativity, which Fromer shows has a miniscule effect on the vast actual set of copyrightable works. The traditional view is that originality is a restriction ensuring that a work merely arranging raw factual data is not protected under copyright law. Fromer, however, views originality as an expressive incentive, telling authors that works infused with their personality will be protected. Furthermore, the independent creation requirement expresses a strong solicitude for authors’ personhood interests in their works. This is most aptly demonstrated by the example of an independently created, identical, subsequent version of a famous poem. When the original poem has not been copied, this subsequent version could still receive copyright protection. This communicates to authors that copyright law exalts solicitude for expression of personality over concerns that identical works should not receive protection. As Justice Holmes put it, personality contains something singular and “irreducible, which is one man’s alone.”

First to Invent

One of the more prominent provisions of the America Invents Act is the switch from the first-to-invent system to a first-to-file system, and in this regard U.S. patent law will more closely align with most every other country in the world. While international harmonization and reduction in administrative costs have driven the move towards first-to-file, Fromer notes that many commentators opposed the switch and points out a general discomfort with the fairness of first-to-file systems. The notion that it is fair to vest patent rights in the first to invent stems from inventors’ strong personhood and labor interests, including reputation and self-concept. Thus, according to Fromer, the shift to a first-to-file system has significantly diminished what was likely an important expressive incentive, especially among small firms and individual inventors.

Written Description Requirement

As with copyright law’s originality requirement, patent law’s written description requirement is traditionally viewed as a restriction. Some critics suggest that requiring any further description of the invention beyond enablement only really serves to limit the patentable scope of the claims, and that such limitation may provide courts with an ad hoc tool to strike down disfavored claims. Fromer, however, notes that the written-description requirement may provide more expressive utility than is recognized. Among other personhood and labor interests, inventors may have a strong interest in controlling the shape of their reputation, which they can execute via the particular description of the invention they associate so closely with their self-concept.

Integrity and Adaptation

Fromer also demonstrates how expressive incentives can be harmful to intellectual property’s utilitarian goals. Authors and artists possess strong feelings of ownership with regard to their works, and the right to prevent their works from modification (or mutilation) by others presents a strong expressive incentive to original creators. While copyright law broadly grants original creators integrity rights to prevent modifications to their work, the countervailing societal interest in allowing valuable modifications by subsequent creators must be properly balanced. The fair use doctrine attempts to achieve this balance, but according to Fromer has proved insufficient to properly protect the competing interests in modifying works. While some potential fixes have been proposed, the current state of this balance of expressive interests, according to Fromer, is overprotective of original authors’ integrity interests, at the expense of subsequent creators’ interests in modifying works to benefit society. This imbalance exemplifies the harm that overly broad grants of expressive incentives can have on intellectual property law.

Exclusive Rights and Alienability

Another important balance of expressive incentives is between protecting creators’ rights of exclusivity while allowing free alienability of creative works. Forbidding alienability can harm society by restricting the availability of valuable works, but liberal alienability might harm creators and discourage creation. Patent and copyright law have maintained some protective limitations for creators while trying to minimize the effects of these limitations on alienability. One example in copyright law is the termination right that authors retain even after an otherwise complete transfer of rights in a work. Another example is that there must be a writing for transfers of rights in both patents and copyrights, which additionally requires a signature. The cautionary function of the writing rule ensures additional reflection by creators before relinquishing expressive or pecuniary protections in their work. Fromer suggests these prudent limitations strike the proper balance between alienability of works and protection of creators, and that a broadening of such protections upsetting this delicate balance could produce harmful effects on the social utility derived from intellectual property creation.

Conclusion

This article shows that prudent implementation of expressive incentives can encourage the creation of valuable patentable and copyrightable works at a minimal cost to society. Indeed, this article reveals that intellectual property law harmonizes moral rights and utilitarian theories much more than is typically thought. Building on these points, Fromer suggests the importance of further empirical work analyzing the precise ways in which different incentives impact creative output and societal utility. An important finding would determine when pecuniary incentives might be replaced by expressive ones, which would reduce societal cost in the utilitarian framework.

Fromer posits a reconceptualized role of incentives in intellectual property law, where the law provides creators with choices of incentives packages spanning a spectrum ranging from heavily pecuniary to principally expressive. These incentive packages would all be designed to maximize social utility. By doing so, Fromer has challenged traditional understandings of incentive structures underlying intellectual property law and provided deep insights into the impact that expressive incentives can achieve. The framework she has proposed could spark significant progress in the optimization of intellectual property law.

Drafted by Alex Young (AlexY@smu.edu), research assistant to Professor Sarah Tran, and a 2015 Juris Doctor candidate at SMU Dedman School of Law. While Professor Tran is on leave, Professor David Taylor is supervising her research assistants. Alex received his B.S. in Mechanical Engineering from the University of Virginia. Prior to law school, he worked as a patent examiner for the USPTO.