Pamela Samuelson
University of California, Berkeley - School of Law

The Supreme Court’s decision in Bilski v. Kappos made it clear that generalized methods of financial hedging are abstract ideas that are ineligible for patent protection. However, the Court left the framework for determining abstraction versus concreteness in future cases unclear, offered only “clues” for drawing such distinctions.

In this article, we attempt to provide the beginnings of such a framework. We start by discussing the clues we think are most likely to be useful to the Patent Office and the courts in developing a jurisprudence of abstractness as a disqualification from patent protection. We then discuss why, in light of these clues and in line with sound patent policy, business and service method innovations, while not categorically unpatentable, should still generally be excluded from patent protection as abstract ideas. Finally, we provide further support for this approach by suggesting that taking the clues of unpatentability seriously may facilitate administrative and judicial efficiency in reviewing patent claims when assessing whether they satisfy patent subject matter rules.

Parts I through V mainly provide a positive account of how fair use has been adjudicated in a variety of contexts and suggestions about factors that should be given greater or lesser weight in certain fair use policy clusters. Its articulation of the policy-relevant clusters into which the fair use cases typically fall should not, however, be understood as attempting to limn the outer bounds of fair use or to foreclose the development of new policy-relevant clusters. Part VI offers a more normative account of fair use as an integral and essential part of U.S. copyright law that can, in fact, encompass the wide range of fair uses discussed in the Article. It also recaps the key lessons from this Article's qualitative assessment of the fair use case law and points to some encouraging trends in recent cases.

A reverse notice and takedown regime would achieve for the anti-circumvention rules a comparable symmetry with the balance embedded in the ISP safe harbor rules. It would also effectuate the nascent, but not fully realized, legislative intent to permit public interest uses of technically protected digital content, while at the same time protecting copyright owners against circumvention of TPMs that would facilitate or lead to massive infringements. In the U.S., the most likely way to achieve this goal is through judicial interpretation of the anti-circumvention rules through case by case adjudication. In the EU, by contrast, member states could implement a reverse notice and takedown regime in the course of fulfilling their obligations under Article 6(4) of the Copyright Directive, which requires them to ensure that users of technically protected works can exercise certain public interest exceptions. Nations that have yet to implement the WCT may find our proposed reverse notice and takedown regime provides a far more balanced way to comply with the treaty than the approach being promoted by U.S. trade negotiators

Thirty years after enactment of the '76 Act, with the benefit of considerable experience with computer and other advanced technologies and the rise of amateur creators, it may finally be possible to think through in a more comprehensive way how to adapt copyright to digital networked environments as well as how to maintain its integrity as to existing industry products and services that do not exist outside of the digital realm.

The final section of the article shows that although courts in some cases, such as those involving parts numbering systems, have managed to reach sound results by invoking other copyright doctrines (such as lack of originality), courts should have engaged in straightforward applications of section 102(b)'s exclusion of systems, as some more recent cases have done. The mistakenly narrow interpretation given to Baker by the Nimmer treatise has also led some courts to misconstrue section 102(b) by protecting coding systems and yoga sequences when these elements should be beyond the scope of copyright protection. The article calls for renewed attention to the eight words of exclusion in section 102(b) and to the policies that underlie those exclusions.

The article asserts that Sony's generativity is due, in part, to the limited monopoly framework for analyzing copyright claims articulated by Justice Stevens in Sony, which contrasts starkly with the proprietarian framework used in Justice Blackmun's dissent.

Part I seeks to explain why conflicts between trade secrecy law and the First Amendment have thus far been relatively rare. It discusses limiting principles of trade secrecy law that mediate most free-speech-related tensions likely to arise when someone wants to disclose information that another claims as a trade secret.

Part II suggests that more conflicts between trade secret and First Amendment interests may occur, in part because of the increased use of mass-market licenses to keep information secret that would otherwise be lawful to acquire and disclose. It considers proposals to strengthen trade secret rights in response to threats to trade secrets posed by the global communications medium of the Internet. The stronger trade secret rights become, the more likely they are to come into conflict with First Amendment interests.

Part III criticizes the California Supreme Court's decision in DVD CCA v. Bunner for, among other things, its implicit adoption of the categorical immunity theory and its reliance on DVD CCA's assertion of property rights in its secrets in rejecting Bunner's First Amendment defense.

Part IV concludes that even though preliminary injunctions in informational trade secret cases are prior restraints, they are generally justified in ordinary cases. Yet the heavy presumption against prior restraints should apply to cases in which third parties who obtained the secret without wrongdoing seeks to disclose it publicly. Part IV considers a number of other First Amendment due process issues, such as whether the burden of proof in third-party disclosure cases should be higher than in the normal trade secret cases and whether appellate review of constitutionally relevant facts should be de novo when First Amendment defenses have been raised. Part IV proposes several principles to assist courts in grappling with First Amendment defenses in trade secrecy cases.

The essay explains why, notwithstanding these reservations, I persist in believing that mapping the public domain is a worthy endeavor and something akin to the maps of the public domain provided in the essay are useful policy tools. If one aspires to preserve the public domain through an international treaty, to take one example, one will need a rich conception of this domain, and a map may be a useful tool in developing consensus about protecting the public domain through a treaty. Maps are also useful in articulating various values that different parts of the public domain serve and why preserving the public domain is in the public interest.

To clarify the proper roles of patent and copyright in protecting the fruits of intellectual labor, the Baker opinion introduced a new framework for analyzing copyright claims. It directed courts to consider whether the defendant had copied the author's description, explanation, illustration, or depiction of a useful art (such as a bookkeeping system) or ideas, or had only copied the useful art or ideas themselves. In the absence of a patent, the useful art depicted in a work, along with its ideas, could be used and copied by anyone, even in directly competing works. Any necessary incidents to implementing the art (e.g., blank forms illustrating use of the system) could likewise be used and copied by second comers without fear of copyright liability.

The Baker opinion's rich analysis of the roles of copyright and patent in protecting intellectual creations has, over the past 125 years, spawned at least eight significant copyright doctrines, including four codified in the Copyright Act of 1976, as well as a few enduring controversies.

Also much disputed is the constitutionality of database protection legislation proposed in Congress akin to the new intellectual property regime created in the EU that confers on publishers an exclusive right to control extraction and reuse of data from databases. The Court in Feist insisted that the U.S. Constitution required a creativity-based standard for copyright (and presumably for copyright-like) protection of databases. While the Supreme Court did not accept the extension of the principles of Feist for which Eldred argued, it did not abjure Feist. Hence, EU-style database protection may be unconstitutional. Eldred also suggests that higher First Amendment scrutiny may be required when assessing changes to the traditional contours of intellectual property law, such as EU-style database protection and the DMCA anti-circumvention rules, calling into question the Second Circuit's decision in Universal City Studios v. Corley. Even if such laws can surmount facial challenges to their constitutionality, the article gives examples of "as applied" challenges likely to be successful.