Statute v. Constitution as IP Limiting Doctrine

In his forthcoming article, "Paths or Fences: Patents, Copyrights, and the Constitution," Derek Bambauer (Arizona), notices (and provides some data to support) a discrepancy in how boundary and limiting issues are handled in patent and copyright. He notes that, for reasons he theorizes, big copyright issues are often "fenced in" by the Constitution - that is the constitution limits what can be protected. But patent issues are often resolved by statute, because the Constitution creates a "path" which Congress may follow. Thus, he notes, we have two types of IP emanating from the same source, but treated differently for unjustifiable reasons.

The article is forthcoming in Iowa Law Review, and is posted on SSRN. The abstract is here:

Congressional power over patents and copyrights flows from the same constitutional source, and the doctrines have similar missions. Yet the Supreme Court has approached these areas from distinctly different angles. With copyright, the Court readily employs constitutional analysis, building fences to constrain Congress. With patent, it emphasizes statutory interpretation, demarcating paths the legislature can follow, or deviate from (potentially at its constitutional peril). This Article uses empirical and quantitative analysis to show this divergence. It offers two potential explanations, one based on entitlement strength, the other grounded in public choice concerns. Next, the Article explores border cases where the Court could have used either fences or paths, demonstrating the effects of this pattern. It sets out criteria that the Court should employ in choosing between these approaches: countermajoritarian concerns, institutional competence, pragmatism, and avoidance theory. The Article argues that the key normative principle is that the Court should erect fences when cases impinge on intellectual property’s core constitutional concerns – information disclosure for patent and information generation for copyright. It concludes with two examples where the Court should alter its approach based on this principle.

The article is an interesting theory piece that has some practical payoff.
One sign (to me at least) that the article is well-reasoned is that Professor Bambauer addresses all of the several reasons and explanations for the differences I could think of as I read the abstract and introduction. Of course, I'm biased! If you read it and think of something he hasn't addressed, I'm sure he'd like to hear about it.

The paper then argues normatively for how cases should be decided: where the boundary issue has to do with a core issue of the IP doctrine, then Constitutional fence building should be applied. While the paper engages in some quality analysis, this makes sense at an intuitive level: if you are going to use the Constitution to limit the scope of protection at all (not unanimously accepted), well, then, you should do so when it counts, rather than picking and choosing when to give Congress discretion. The article provides a couple examples of how this would operate in practice.

I suppose my one concern on a theoretical level is that the notion of "Constitutional fences" is awfully amorphous. The IP Clause is just a few words, and doesn't mention anything about ideas, expression, functionality, design, supremacy, or anything else. As a result, much of what we say are "fences" are really just policy choices we would make that are different than those supported by the broadest reading of the statutes and the text of the IP Clause it's self (hey, 120 years is a limited term, right?).

Professor Bambauer, recognizes this (of course - see my point above about reasoning), and is quite explicit normatively. His first normative point is that we may prefer countermajoritarian oversight of Congress. But I wonder whether that proves to much: when are courts to know whether oversight is necessary or not? Professor Bambauer implies that the thumb should be on the scale of the core feature "information generativity" in copyright, for example. So should we be doing empirical studies of information generativity for every boundary case? In patentable subject matter, the internet boomed during a period of heavy patenting of overly broad internet patents. Sure, there are fewer lawsuits today, but is there more innovation? I think the jury is out. And what of natural rights? The IP Clause is pretty clear that exclusive rights are the way to promote the progress - so why should the default be to fence out exclusive rights? Sure, that might be a policy preference, but a clearly mandated constitutional one (as opposed to one delegated to Congress)? While I think that the normative case is made really well here, but I think it begins with priors about the underlying nature of patent, copyright, and the constitution.

In all events, I found this an enjoyable, thought provoking read, and worth a look.