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Dont Copy That Floppy: The IP Enforcement Dilemma in the United
States
Kevin Newman* ABSTRACT
The United States declared independence from Great Britain on
July 4, 1776. Even though the Founding Fathers never contemplated
the Infor-mation Age that now exists, property rights and
inventions were something that they believed needed protection. The
rapid technological developments of the past fifty years have led
to a concurrent rapid development of law to deal with them.
However, because of the swift pace of technology and in-novation,
laws do not always keep up with the times. In particular,
intellec-tual property laws have been behind the curve when it
comes to proper en-forcement and the protection of individual
rights. This Note seeks to clarify the current trend of
intellectual property law enforcement in the United States, compare
laws in the United States to similar statutes and approach-es in
certain foreign jurisdictions, and seeks to harmonize with
best-practice suggestions for the future. The United States, as the
center for in-novation, must develop reasonable and modern
intellectual property laws to continue as the world leader in
intellectual property development.
I. INTRODUCTION
The battle over how strictly to enforce intellectual property
(IP) protec-tions boiled over in 2012 with public outcry over
several bills pending in Congress.1 The Stop Online Piracy Act
(SOPA) in the United States House of Representatives (House)2 and
the Protect Intellectual Property Act
* Candidate for Juris Doctor, New England Law | Boston (2014).
B.A., History, Political Science, Boston College (2006). I would
like to thank the editors and associates of Volumes 39 and 40 for
their hard-work and dedication. In addition, I would like to thank
my family for their support. 1. Jordan Mallory, Events 2012: SOPA,
JOYSTIQ.COM (Jan. 2, 2013),
http://www.joystiq.com/2013/01/02/events-2012-sopa/. 2. Stop Online
Piracy Act, H.R. 3261, 112th Cong. (2001), available at
http://www.gpo.gov/fdsys/pkg/BILLS-112hr3261ih/pdf/BILLS-112hr3261ih.pdf
(last visit-ed Feb. 20, 2013).
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(PIPA) in the United States Senate (Senate)3 were both stopped
in their tracks by online activism and pressure by industry groups
that were op-posed to the heavy-handed approach taken by the
bills.4 Towards the end of the acrimonious debate, several
prominent members of Congress came out against the proposed
legislation.5 Even with a hard-fought victory over both of the
bills, the status quo and ad hoc approach to IP enforcement
re-mained in force in the United States.6
With no major overhaul of IP laws in almost a decade, there is
growing concern that the United States might begin to fall behind
in terms of IP de-velopment.7 Actions by other countries to enforce
IP laws have taken mul-tiple forms,8 so the United States must
adopt the best practices to make sure that it remains the leader in
IP development.9 In particular, the United States should consider
adopting a specialty court to deal exclusively with IP issues, as
Japan already does.10 At the same time, penalties in the United
States for IP enforcement are too harsh and exemptions are not
widespread or permanent.11 Even though the United States has made
progress in devel-oping ad hoc standards through the judicial
system,12 a standardized and
3. PROTECT IP Act of 2011, S. 968, 112th Cong. (2011), available
at
http://www.gpo.gov/fdsys/pkg/BILLS-112s968is/pdf/BILLS-112s968is.pdf
(last visited Feb. 20, 2013). 4. Press Release, Chairman of House
Judiciary Comm., Lamar Smith, Statement from Chairman Smith on
Senate Delay of Vote on PROTECT IP Act (Jan. 20, 2012) (on file
with author); see MPAA Chairman Christopher Dodd: SOPA and PIPA are
Dead, GAMEPOLITICS.COM (Oct. 10, 2012),
http://gamepolitics.com/2012/10/04/mpaa-chairman-christopher-dodd-sopa-and-pipa-are-dead#.USsFYzD_mSo.
5. Aaron Sekhri, Rep. Issa Discusses SOPA/PIPA, STANFORD DAILY
(Apr. 10, 2012), http://www.stanforddaily.com/2012/04/10/sopa/. 6.
See generally Copyright Term Extension Act, 17 U.S.C. 108,
203(a)(2), 301(c), 302, 303, 304(c)(2) (1998). 7. Kaori Kaneko,
Japan Seeks to Join U.S.-led Pacific Trade Talks, Reform Hopes
Rise, CHI. TRIBUNE (Mar. 15, 2013),
http://www.chicagotribune.com/news/sns-rt-us-trade-asiapacific-japanbre92e03f-20130314,0,3359451.story;
see also David Kravets, Copyright Chief Urges Congress to Produce
Next Great Copyright Act, WIRED.COM (Mar. 20, 2013),
http://www.wired.com/threatlevel/2013/03/next-great-copyright-act/.
8. See, e.g., Digital Economy Act, 2010, c. 24 (U.K.); Copyright
Modernization Act, S.C. 2012, c. 20 (Can.). 9. See, e.g., Global
Patent Filings Rose 6.6% in 2012, WIPO Reports, PHYS.ORG (Mar. 19,
2013), http://phys.org/news/2013-03-global-patent-rose-wipo.html.
10. INTELLECTUAL PROP. HIGH COURT,
http://www.ip.courts.go.jp/eng/aboutus/history/index.html (last
visited Mar. 16, 2013). 11. Digital Millennium Copyright Act, 17
U.S.C. 512, 1201-1205, 1301-1332 (1998). 12. See, e.g., Court
Jurisdiction, COURT JURISDICTION UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT,
http://www.cafc.uscourts.gov/the-court/court-jurisdiction.html
(last visited Mar. 16, 2013).
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unified system with a fairer method of IP enforcement must be
the ultimate goal.
This Note will argue that the current system of IP enforcement
in the United States is inadequate to meet the challenges of the
twenty-first centu-ry. In addition, the current system does not
sufficiently protect the First Amendment rights of ordinary
citizens.13 However, the United States should not implement a
completely different model. Instead, the United States should
develop a hybrid model that adopts best practices from around the
world, such as lighter civil and criminal penalties for
non-commercial infringers and a separate IP court system, while
maintaining an American identity that encompasses Article I and
Article III courts.14 Part II will provide a brief overview of both
the constitutional and statutory ba-ses for IP protection and
enforcement in the United States. Part III will ex-amine several
recent pieces of legislation that attempted to go too far in
protecting rights-holders at the expense of First Amendment
freedoms. Part IV will look to certain foreign jurisdictions and
how they deal with IP en-forcement problems. Part V will explain
the benefits that a hybrid system would bring to the IP enforcement
environment in the United States. Final-ly, Part VI will conclude
by laying out a roadmap for how the United States can best
implement a hybrid approach to IP enforcement.
II. OVERVIEW OF INTELLECTUAL PROPERTY LAW IN THE UNITED STATES
When the United States of America was established in the latter
half of
the eighteenth century,15 the Information Age was not even under
consider-ation.16 The Founders did not contemplate the implications
of computers and the Internet, though they did contend with
property rights and the pro-tection of inventions.17 The
Constitution laid out in particular language how these things might
be protected and set in motion the first IP enforce-ment
scheme.18
A. Constitutional Basis for Intellectual Property Protections
The Constitution makes clear that Congress has the ability to craft
legis-
13. See U.S. CONST. amend. I (stating no explicit protection for
free expression when using copyrighted works). 14. See infra Parts
V.A, V.B.1. 15. See generally THE DECLARATION OF INDEPENDENCE (U.S.
1776). 16. See, e.g., COMPUTER HIST. MUSEUM,
http://www.computerhistory.org/babbage/history/ (last visited Mar.
29, 2013) (explaining how the first attempts at a computer began
with Charles Babbage in the 1830s). 17. See, e.g., U.S. CONST. art.
I, 8, cl. 8; see also THE DECLARATION OF INDEPENDENCE para. 2 (U.S.
1776). 18. See U.S. CONST. art. I, 8, cl. 8; see also U.S. CONST.
amend. V.
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lation concerning inventions and ideas.19 In Article I, Section
8, Clause 8, Congress has the power [t]o promote the progress of
science and useful arts, by securing for limited times to authors
and inventors the exclusive right to their respective writings and
discoveries.20 This language was the work of two principal authors,
Charles Pinckney and James Madison.21 The Committee of Detail,
which was in charge of creating the appropriate lan-guage for
inclusion in the Constitution, agreed on this exact language.22 It
was then unanimously adopted by the Constitutional Convention
without debate.23
IP exists in three separate forms: patents, copyrights, and
trademarks.24 The Constitutional Convention explicitly protected
two of them: patents and copyrights.25 From Article I, Section 8,
Clause 8, the Supreme Court interpreted the protection of
copyrights to fall under the progress of sci-ence and patents to
fall under the useful arts.26 Trademarks, the third IP category,
eventually fell under the Commerce Clause.27 With the
estab-lishment of some form of IP protection in the Constitution,
it fell to Con-gress to implement the language as set out in
Article I.28
B. Statutory Basis for Intellectual Property Protections
Congress implemented Article I, Section 8, Clause 8, through a
series of
laws that would span almost two centuries.29 Even though
multiple laws addressed the issue of IP, the three main statutes
controlling the issue were the Copyright Acts of 1790 (1790 Act),30
1909,31 and 1976.32 The first, the 1790 Act, was modeled after a
similar statute in the United Kingdom called
19. U.S. CONST. art. I, 8, cl. 8. 20. Id. 21. WILLIAM F. PATRY,
COPYRIGHT LAW AND PRACTICE 23-25 (The Bureau of Nation-al Affairs,
Inc. 1994). 22. Id. 23. Id. 24. What Is WIPO?, WIPO.INT,
http://www.wipo.int/about-wipo/en/ (last visited Mar. 25, 2013).
25. See U.S. CONST. art. I, 8, cl. 8. 26. See generally Graham v.
John Deere Co., 383 U.S. 1 (1966). 27. See generally U.S. CONST.
art. I, 8, cl. 3. 28. See U.S. CONST. art. I, 8, cl. 18. 29. See
generally Act of May 31, 1790, ch. 15, 1, 1 Stat. 124 (1790)
[hereinafter 1790 Act]; Act of Mar. 4, 1909, ch. 320, 23-24, 35
Stat. 1080-1081 (1909) [hereinafter 1909 Act]; 17 U.S.C. 101-1332
(1976). 30. 1790 Act 1. 31. 1909 Act 23-24. 32. 17 U.S.C.
101-1332.
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the Statute of Anne.33 The 1790 Act protected books, maps, and
charts and dealt with any violations within the United States.34
Most notably, the Su-preme Court used this Act to move beyond the
common law of copyright that had developed over the past century or
so.35
After more than a century without a major restructuring of the
United States IP laws, President Theodore Roosevelt prodded
Congress into act-ing again.36 The Copyright Act of 1909 (1909 Act)
was the result of Con-gress work and in some ways was much more
progressive than the law that eventually passed in 1976.37 The main
thrust of the 1909 Act brought published works directly under the
control of federal law and left un-published works to state law.38
In addition, published works needed a copy-right notice affixed to
them, or they were considered part of the public do-main.39
Notably, the 1909 Act left out motion pictures until the Act was
amended in 1912.40
In the second-half of the twentieth century, the impetus fell on
the Unit-ed States to update its IP enforcement laws again.41
Compared to previous legislation, the Copyright Act of 1976 (1976
Act) was much more far-reaching.42 It was created in response to
the continuing pace of technologi-cal advancement but also to
fulfill the United States obligations under the Universal Copyright
Convention.43 The 1976 Act gave more protections to copyright
holders by allowing for the protection of fixed works as op-posed
to published works.44 It gave the holders specific rights to their
copyright,45 but allowed others to use the copyright through the
fair use doctrine.46 In addition, the 1976 Act generously extended
the length of
33. Stat. of Ann., 1710, 8 Ann., c. 19 (U.K.). 34. 1790 Act 1.
35. Wheaton v. Peters, 33 U.S. 591, 604 (1834). 36. Theodore
Roosevelt, President of the U.S., Fifth Annual Message (Dec. 5,
1905), in MESSAGES AND PAPERS OF THE PRESIDENTS 6973, 7011-12
(1913). 37. 1909 Act 23-24 (1909). 38. Id. 39. Id. 40. Id. (prior
to Townsend Amendment of 1912). 41. See, e.g., Kravets, supra note
7. 42. 17 U.S.C. 102 (1976). 43. United States Copyright Office: A
Brief Introduction and History, U.S. COPYRIGHT OFFICE INFO.
CIRCULAR, http://www.copyright.gov/circs/circ1a.html (last vis-ited
Feb. 23, 2013). 44. 17 U.S.C. 102. 45. Id. 106. 46. Id. 107 ([four]
factors to be considered [including] . . . [1] purpose and
charac-ter of the use . . . [2] nature of the [] work . . . [3]
amount and substantiality of the work used in relation to the . . .
whole . . . [4] effect of the use upon the potential market for or
value
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copyright holder rights.47 It gave authors a right for life plus
fifty years or, for any works published before 1978, a total of
seventy-five years.48 Even though several laws have been enacted
that supplement or modify certain provisions, this law is still the
basis for the United States IP laws.49
III. AD HOC APPROACH TO INTELLECTUAL PROPERTY LAW ENFORCEMENT IN
THE UNITED STATES
Even with the 1976 Act, the United States continually needs a
larger set of tools to conduct IP enforcement.50 The gradual
development of new technologies has pushed Congress to pass new
legislation and required the courts to decipher this complex
field.51 However, the lack of a unified ap-proach to IP enforcement
has slowly fragmented the regime.52 In addition, the 1976 Acts
balanced approach to the rights of IP holders and end users began
to tilt towards IP holders.53
A. Statutory Approach to IP Enforcement The primary approach the
United States takes when implementing addi-
tional IP enforcement provisions is through the legislative
process.54 While industry organizations, non-governmental
organizations (NGOs), and indi-vidual citizens are the normal
actors that drive legislation, the United States is also faced with
international obligations.55 In particular, the World Intel-lectual
Property Organization (WIPO), the successor to the United
Interna-
of . . . the copyrighted work.). 47. Id. 302. 48. Id. 49. David
Nimmer, Codifying Copyright Comprehensibly, 51 UCLA L. REV. 1233,
1320 (2004) (discussing the amount of amendments that were
incorporated into the 1976 Act and the numerous additions that were
made in the prior decade). 50. See Kravets, supra note 7. 51. See,
e.g., Leahy-Smith America Invents Act of 2011, Pub. L. No. 112-29,
125 Stat. 284-341 (2013). 52. See, e.g., Karen Redmond, District
Courts Selected for Patent Pilot Program, THIRD BRANCH NEWS (June
7, 2011),
http://www.uscourts.gov/News/NewsView/11-06-07/District_Courts_Selected_for_Patent_Pilot_Program.aspx
(explaining about program to give federal judges in specific
judicial districts training on how to speed up patent cases). 53.
Brian W. Carver, Why License Agreements Do Not Control Copy
Ownership: First Sales and Essential Copies, 25 BERKELEY TECH. L.J.
1887, 1890 (2010) (boilerplate [end-user license agreements] that
purport to restrict statutory rights [that users of copy-righted
works] have grown accustomed to . . . and [that] Congress intended
that [end-users] have them as part of [a] larger effort to craft a
balanced Copyright Act.). 54. See generally Kravets, supra note 7.
55. See generally U.S. CONST. art. II, 2-3.
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tional Bureau for the Protection of Intellectual Property
(BIRPI),56 has driven legislative development in the United States
so that it complies with treaty obligations.57
1. Digital Millennium Copyright Act The most pertinent example
of IP treaty obligations came from the
WIPO in the mid-1990s.58 The WIPO adopted the WIPO Copyright
Treaty and WIPO Performances and Phonograms Treaty at a diplomatic
confer-ence in December 1996.59 Partially in response to these
treaties, the United States enacted the Digital Millennium
Copyright Act (DMCA).60 The DMCA modified 17 U.S.C. 102 in part to
conform to almost every inter-national IP treaty created since the
late nineteenth century.61 The United States is a signatory to most
international treaties on IP protection,62 even though Congress
includes language limiting their effect.63 Specifically, Congress
limited the Berne Convention,64 the first major treaty on IP
pro-tection,65 to only cover copyrights that fell directly under
language estab-lished by Congress.66 It also limited the WIPO
Performances and Phono-graphs Treaty to only cover music.67
This type of language stands in contrast to 1201 of the DMCA.68
Spe-cifically, 1201 is called Anti-Circumvention Provisions and
deals with a range of actions prohibited under the Act.69 The Act
breaks down viola-
56. WIPO Treaties General Information, WIPO.INT,
http://www.wipo.int/treaties/en/general/ (last visited Feb. 22,
2013). 57. What Is WIPO?, supra note 24. 58. Id. 59. WIPO
Performances and Phonograms Treaty (WPPT), WIPO.INT,
http://www.wipo.int/treaties/en/ip/wppt/trtdocs_wo034.html (last
visited Feb. 22, 2013); WIPO Copyright Treaty, WIPO.INT,
http://www.wipo.int/treaties/en/ip/wct/trtdocs_wo033.html (last
visited Feb. 22, 2013). 60. Digital Millennium Copyright Act, 17
U.S.C. 512, 1201-1205, 1301-1332 (1998). 61. 17 U.S.C. 102. 62. See
generally WIPO-Administered Treaties, WIPO.INT,
http://www.wipo.int/treaties/en/ (last visited Mar. 15, 2013). 63.
104(c)-(d). 64. Id. 104(c). 65. WIPO A Brief History, WIPO.INT,
http://www.wipo.int/about-wipo/en/history.html (last visited Mar.
15, 2013). 66. 104(c). 67. Id. 104(d). 68. Id. 1201-1205. 69. Id.
1201.
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tions into either access-control or copy-control
circumvention.70 These would seem to be quite broad and harsh;
however, the Act also contains a significant number of
exceptions.71 These exceptions apply to minors, law enforcement
officers, researchers, and several other protected groups.72 In
addition, there is a special exemption created through a rulemaking
pro-ceeding, which allows for copyrighted materials to be
circumvented for non-infringing uses.73 This special exemption has
been a source of contro-versy because each one only lasts three
years.74 Both of these exceptions are limited in scope since a
later provision prevents it from being used as a defense against
other violations.75 While this Act has been used as an ex-ample of
rights holders overreaching,76 the number of exceptions raises the
possibility that harsh enforcement is not the main aim of the
legislation.77
2. Copyright Term Extension Act Even though the DMCA has some
redeeming qualities, such as the num-
ber of statutory exceptions, the Copyright Term Extension Act
(CTEA)78 was a step in the wrong direction for ordinary citizens.79
As it can be un-derstood from the Acts name, the main focus was
extending the amount of time rights holders could keep their works
copyrighted.80 This extension added twenty years to the existing
1976 Act.81 Therefore, works published before January 1, 1978 were
protected up to ninety-five years, and pub-lished works after that
date could be protected for at least the life of the au-thor plus
seventy years.82
Unlike previous pieces of legislation that dealt with IP
enforcement, the resistance to this bill was much larger than
before.83 In particular, the bills detractors began to call it the
Mickey Mouse Protection Act because of
70. Id. 1201(a)(2), (b)(1). 71. Id. 1201(d)-(j). 72. Id. 73. Id.
1201(b)-(c). 74. See id. 1201(c); see, e.g., Rebecca Greenfield,
The Ban on Cellphone Unlocking Has Gone Too Far, THE ATLANTIC (Mar.
8, 2013),
http://www.theatlanticwire.com/technology/2013/03/ban-cellphone-unlocking/62919/.
75. 1201(e). 76. See, e.g., Greenfield, supra note 74. 77. See,
e.g., 1201(a)(1) (specific exemption procedure). 78. See id. 108,
203(a)(2), 301(c), 302, 303, 304(c)(2). 79. See Keeping Copyright
in Balance, Editorial, N.Y. TIMES (Feb. 21, 1998),
http://www.nytimes.com/1998/02/21/opinion/keeping-copyright-in-balance.html.
80. 108, 203(a)(2), 301(c), 302, 303, 304(c)(2). 81. Id. 82. Id.
83. See, e.g., Keeping Copyright in Balance, supra note 79.
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the extensive lobbying done by the Walt Disney Company.84 An
editorial in the New York Times also came out against it,
indicating that a balance needed to be maintained between rights
holders and the public domain.85 Nevertheless, Congress unanimously
passed the legislation, and President Clinton signed it into
law.86
3. Stop Online Piracy Act & Protect Intellectual Property
Act The balance between rights holders and end users went out the
window
when the Stop Online Piracy Act (SOPA)87 and the Protect
Intellectual Property Act (PIPA)88 were introduced in the 112th
Congress.89 SOPA in particular went well beyond what was normally
being done for IP enforce-ment in the United States.90 One of the
main provisions was directed at in-ternet service providers (ISPs)
and would have required them to comply with orders from the
Department of Justice, other law enforcement agen-cies, or
copyright holders to stop linking to websites that hosted
infringing content.91 This section would also have extended to
search engines and would have required them to stop linking to
websites that were supposedly infringing on copyright holder rights
as well.92 A separate provision under SOPA would have criminalized
the streaming of copyrighted content for the first time with
penalties of up to five years in prison.93 Certain revisions were
made to the Bill while the House Judiciary Committee debated it,
with a major change narrowing the scope of the legislation to
foreign web-sites.94
The companion legislation for SOPA, PIPA, was introduced almost
at
84. Lawrence Lessig, Copyrights First Amendment, 48 UCLA L. REV.
1057, 1065 (2001). 85. Keeping Copyright in Balance, supra note 79.
86. 17 U.S.C. 108, 203(a)(2), 301(c), 302, 303, 304(c)(2). 87. Stop
Online Piracy Act, H.R. 3261, 112th Cong. (2011), available at
http://www.gpo.gov/fdsys/pkg/BILLS-112hr3261ih/pdf/BILLS-112hr3261ih.pdf
(last visit-ed Feb. 20, 2013). 88. PROTECT IP Act of 2011, S. 968,
112th Cong. (2011), available at
http://www.gpo.gov/fdsys/pkg/BILLS-112s968is/pdf/BILLS-112s968is.pdf
(last visited Feb. 20, 2013). 89. Bill Chappell, Q&A: Congress,
SOPA, and a Fight over the Web, NATL PUB. RADIO (Jan. 18, 2012),
http://www.npr.org/2012/01/18/145423947/q-a-sopa-congress-and-a-fight-over-the-web.
90. See, e.g., id. 91. H.R. 3261. 92. Id. 93. Id. 94. Id.
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the same time in the United States Senate (Senate).95 It had
similar provi-sions and, like the Bill in the House, substantial
support when it was intro-duced.96 One of the main features of the
Bill was the use of domain name system (DNS) filtering.97 This
meant that after a copyright holder filed a complaint or the
Department of Justice obtained an in rem court order, the site
could be wiped from the Internet.98 The site would be accessible
through its internet protocol address, but this would have made the
site much harder to access.99 Soon after it was introduced in the
Senate, Sen. Ron Wyden (D-OR) put a hold on the legislation because
of significant privacy concerns.100 Like the sponsors in the House,
the sponsors in the Senate tried to modify the Bill to appease
certain interest groups and smooth its passage.101 However, unlike
other bills that passed with little to no opposition at all,
neither of these bills came to a vote, not even in
com-mittee.102
These two pieces of legislation were supposed to be the next
step in IP enforcement in the United States.103 Lobbying groups
such as the United States Chamber of Commerce, the Motion Picture
Association of America (MPAA), and most major media conglomerates
supported this legisla-tion.104 Usually this would mean fairly
smooth passage because such a broad coalition tends to indicate no
major opposition.105 Unlike the 1976 Act or the DMCA, there was
broad opposition to SOPA and PIPA that ranged from citizen advocacy
groups106 to major online companies.107 The
95. Dan Mitchell, The Conniption Around IP and Copyright Law,
CNN MONEY (May 20, 2011),
http://tech.fortune.cnn.com/2011/05/20/the-conniption-around-ip-and-copyright-law/.
96. PROTECT IP Act of 2011, S. 968, 112th Cong. (2011), available
at
http://www.gpo.gov/fdsys/pkg/BILLS-112s968is/pdf/BILLS-112s968is.pdf
(last visited Feb. 20, 2013). 97. Id. 98. Id. 99. Id. 100. Press
Release, Senior Senator from Or., Ron Wyden, Wyden Places Hold on
Pro-tect IP Act (May 26, 2011) (on file with author). 101. SOPA
Protests Shut Down Web Sites, WASH. POST (Jan. 17, 2012),
http://www.washingtonpost.com/politics/2012/01/17/gIQA4WYl6P_story_1.html.
102. Smith, supra note 4. 103. See SOPA Protests Shut Down Web
Sites, supra note 101. 104. Kate Spence, A Broad Coalition Indeed!,
MOTION PICTURE ASSN OF AM. (May 12, 2011, 3:19 PM),
http://blog.mpaa.org/BlogOS/post/2011/05/12/A-Broad-Coalition-Indeed!.aspx.
105. See, e.g., Randy Alfred, Oct. 28, 1998: President Signs New
Copyright Law, WIRED (Oct. 28, 2008),
http://www.wired.com/science/discoveries/news/2008/10/dayintech_1028.
106. Gautham Nagesh, Tea Party Group Slams Online Copyright Bill,
THE HILL (Sept.
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protests led to support from abroad108 and comparisons to how
autocratic regimes filter the internet or block it entirely.109 At
the forefront of these protests was the fight to protect privacy
and the First Amendment rights of free speech and free
expression.110 The balance that had been maintained since the 1976
Act had completed its shift toward rights holders and left end
users holding the bag.
Even with the apparent defeat of these bills, there continues to
be addi-tional pieces of legislation that are trying to do similar
things such as DNS filtering and internet protocol address blocking
with a twist.111 This means that the coalition that opposed the
previous bills must be vigilant in protect-ing citizens privacy
rights and their right to free expression. The Internet has been an
open platform for a long time, and the United States has been at
the forefront in attempting to beat back efforts to stifle
innovation or es-tablish more control.112 Therefore, the balance
between rights holders and end users at the legislative level must
be restored. Rights holders need to be able to profit from their
works, but ordinary citizens should still be allowed to use them in
a fair way and eventually access them freely in the public domain.
With this balance, the United States would serve as a model for
other nations wishing to allow for open access but not so open as
to cheat publishers and artists out of any profit at all. The way
to get there is not as easy as it seems. While the legislative
approach has been steadily moving in the direction of rights
holders and needs to be counterbalanced, the judi-cial approach has
been anything but consistent.113
26, 2011),
http://thehill.com/blogs/hillicon-valley/technology/183999-overnight-tech-tea-party-group-slams-online-copyright-bill.
107. Steven Musil, Wikipedia to Join Web Blackout Protesting SOPA,
CNET (Jan. 16, 2012),
http://news.cnet.com/8301-1023_3-57359763-93/wikipedia-to-join-web-blackout-protesting-sopa/.
108. See, e.g., Gregory Ferenstein, Why Theres No Mass Protest Over
Government Surveillance, TECHCRUNCH (Mar. 14, 2013),
http://techcrunch.com/2013/03/14/why-theres-no-mass-protest-over-government-surveillance/.
109. John Palfrey, SOPA and Our 2010 Circumvention Study, PHILLIPS
ACADEMY ANDOVER,
http://jpalfrey.andover.edu/2011/12/22/sopa-and-our-2010-circumvention-study/
(last visited Feb. 23, 2013). 110. Musil, supra note 107. 111.
Stephen Lendman, Destroying Online Privacy: Cyber Intelligence
Sharing and Protection Act (CISPA) Is Back, GLOBALRESEARCH (Feb.
21, 2013),
http://www.globalresearch.ca/destroying-online-privacy-cyber-intelligence-sharing-and-protection-act-cispa-is-back/5323758.
112. Eric Engleman, Internet Under Assault by Censoring UN,
Regulator Says, BLOOMBERG (Feb. 5, 2013),
http://www.bloomberg.com/news/2013-02-05/un-internet-oversight-should-be-fought-by-u-s-lawmakers-say.html.
113. Compare Eldred v. Ashcroft, 537 U.S. 186 (2003) (upholding
CTEAs constitu-tionality), with Feist Publns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340 (1991) (stating im-
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202 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
B. Judicial Approach to IP Enforcement Article III courts are
always hard at work interpreting the machinations
of Congress and the President.114 The Supreme Court has tackled
the Copy-right Clause more than once115 and has also interpreted it
in light of the on-slaught of increasingly complex IP
legislation.116 Every time the United States updated its IP laws,
the case law that preceded it was largely swept aside, except for
some core principles.117 In addition, the rulings of the Court were
not always uniform, and changed depending on the Courts
composition.118 There are a few cases in particular that might warm
the hearts of those who value open-source,119 but others that will
lead those same people to decry that the Court is in the pocket of
big business.120 The only real thread drawn from the following
cases is that the United States approach to IP law is
fragmented.
1. Wheaton v. Peters The Supreme Courts first major encounter
with IP, and the Copyright
Clause in particular, was in Wheaton v. Peters in 1833.121 This
case con-cerned the unauthorized publishing of Henry Wheatons
Supreme Court re-ports that he compiled between 1816 and 1827.122
Wheaton asserted that his works were protected under the common law
of copyright, but the Court rejected this argument.123 The Court
explained that unpublished works are protected under the common law
but published works require a
portance of originality for a copyrighted work). 114. See
generally Caseload Statistics 2011, U.S. COURTS,
http://www.uscourts.gov/Statistics/FederalJudicialCaseloadStatistics/FederalJudicialCaseloadStatistics2011.aspx
(last visited Feb. 14, 2014). 115. Joe Mullin, How a Supreme Court
Ruling May Stop You from Reselling Just About Anything, ARS
TECHNICA (Oct. 28, 2012),
http://arstechnica.com/tech-policy/2012/10/a-supreme-court-clash-could-change-what-ownership-means/.
116. Compare 1790 Act (half a page), with 17 U.S.C. 101-1332 (over
200 pages). 117. See, e.g., Wheaton v. Peters, 33 U.S. 591 (1834)
(sweeping aside common law of copyright for published works but
maintaining it for unpublished works). 118. Compare id. (IP lawyer
on the court), with Eldred, 537 U.S. at 186 (no IP exper-tise on
the court). 119. See Kirtsaeng v. John Wiley & Sons, Inc., 133
S. Ct. 1351, 1356, 1371 (2013) (holding that a non-geographical
reading of a provision of the Copyright Act is appropriate, which
allows the resale of academic textbooks without consideration of
the parties coun-tries of residence). 120. See generally Eldred,
537 U.S. 186. 121. Wheaton, 33 U.S. at 593. 122. Id. at 593-94.
123. Id. at 595-96.
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modicum of formality for protection.124 The most distinguishing
factor the Court indicated was that rights holders would need to do
something extra in order to have their works preserved in the
future.125 Therefore, rights hold-ers would need to follow the
command of the copyright laws in place at the time,126 the
Copyright Act of 1831.127 If rights holders chose not to go the
extra mile, the work would become part of the public domain.128
2. In re Trade-Mark Cases The Supreme Court examined another
field of IP law when it addressed
the issue of where trademarks fall within the Constitution in In
re Trade-Mark Cases.129 The Court consolidated three cases that
dealt with fraudu-lent marks for whiskey and champagne.130 The
parties were charged under a federal law prohibiting the
counterfeiting of trademarks.131 The petition-ers argued that the
Copyright Clause of the Constitution was the basis for the law.132
However, the Court found that the power of Congress to deal with
trademarks was limited to commerce with foreign nations or the
Indi-an tribes.133 This narrow reading of the Commerce Clause134
prevented Congress from regulating trademarks within the United
States for several decades.135 However, the Court did succeed in
deciding where trademarks fit within the Constitution,136 thereby
showing that the Founders wanted to protect all types of IP.137
3. Feist Publications, Inc. v. Rural Telephone Service Co. Over
a century later, the Supreme Court wrestled with a seminal case
under the 1976 Act.138 Feist Publications (Feist) wanted access
to Rural Telephone Companys (Rural Telephone) phone directory in
order to com-
124. Id. at 593-94. 125. Id. at 660-61. 126. See generally id.
127. Act of Feb. 3, 1831, ch. 16, 1, 16, 4 Stat. 436, 439 (1831).
128. See, e.g., Wheaton, 33 U.S. at 660-61. 129. In re Trade-Mark
Cases, 100 U.S. 82 (1879). 130. Id. at 82-83. 131. Id. at 83. 132.
See id. at 93; see also U.S. CONST. art. I, 8, cl. 8. 133.
Trade-Mark Cases, 100 U.S. at 96. 134. See U.S. CONST. art. I, 8,
cl. 3. 135. Lanham Act, 15 U.S.C. 1051-1072, 1091-1096, 1111-1127
(1946) (modern law that replaced the Trademark Acts of 1881 and
1905). 136. Trade-Mark Cases, 100 U.S. at 93-97. 137. See U.S.
CONST. art. I, 8, cl. 3, 8. 138. Feist Publns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340 (1991).
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204 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
pile a larger directory.139 Feist decided to copy some of Rural
Telephones directory after they were denied access to it.140 Rural
Telephone eventually sued for copyright infringement upon finding
out that Feist copied the di-rectory.141 In its opinion though, the
Court decided that this was not in-fringement at all.142 After
explaining that facts cannot be copyrighted, the Court further
clarified that copyrightable materials must be original.143 As the
Supreme Court articulated in its opinion, [t]he standard of
originality is low, but it does exist.144 Rural Telephone did not
meet this standard be-cause its compiled data was not composed in a
creative way.145 With this decision, the Supreme Court maintained
the existing balance between rights holders and end users by
refusing to either change the standard of originality or make facts
copyrightable.146
4. Eldred v. Ashcroft The Supreme Court took a decidedly
different approach to IP law when
it was presented with a challenge to CTEAs constitutionality.147
CTEAs main goal was to extend copyright protections for new and
existing copy-rights by an additional twenty years.148 Several
groups challenged the law as a violation of the Copyright
Clause.149 The Supreme Court decided that the CTEA was
constitutional and was a natural progression of copyright law from
prior legislation.150 The Court reasoned that if the CTEA was
un-constitutional, all previous copyright laws would be
unconstitutional as well.151 While the petitioners challenging the
law conceded that future copyrights were acceptable under the CTEA,
they argued that current ones could not be squared into the
language of limited times.152 However, the Court looked to patent
law for guidance.153 In patent law, a field similar to copyright,
Congress may properly increase the length of patent terms.154
139. Id. at 342-43. 140. Id. at 343. 141. Id. at 344. 142. Id.
at 364. 143. Id. at 361. 144. Id. at 362. 145. Id. at 362-63. 146.
See generally id. 147. Eldred v. Ashcroft, 537 U.S. 186 (2003).
148. Id. at 193. 149. Id. 150. Id. at 194. 151. Id. at 194-96. 152.
Id. at 199-201 (quoting U.S. CONST. art. I, 8, cl. 3, 8). 153. Id.
at 201-03. 154. Id.
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Analogizing this to copyright law, the Court reasoned that if
the same constitutional grant of authority could cover patents, it
could cover copy-rights as well.155
After reasoning that the CTEA was passed during a time of great
techno-logical and economic change, the Court said that the law was
within Con-gresss scope of authority along with being a rational
and proper use of its authority.156 This decision was very
different from previous cases because it tilted the balance
significantly away from end users.157 Future copyright holders
should be entitled to a period where their work remains
protect-ed.158 At the same time, current copyright holders were
given an extra twenty years before their works entered the public
domain.159 In order to provide proper balance between the two
groups, it is helpful to look abroad.160
IV. COMPARATIVE APPROACHES TO INTELLECTUAL PROPERTY LAW The
current United States IP system is fragmented and
inefficient.161
When problems arise and solutions cannot be found within the
borders of the United States, it is always possible to look abroad
for additional inspira-tion.162 The best places to begin looking
are modern, industrialized nations that have dealt with IP issues
for some significant length of time.163 Cana-da, Great Britain, and
Japan all have methods that the United States can use to develop a
more effective system of IP enforcement.164
155. Id. at 202-03. 156. Id. at 206-08. 157. Compare Eldred, 537
U.S. at 186 (holding CTEA constitutional even though it extends
existing copyrights by another 20 years), with Feist Publns, Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (holding no copyright
infringement if there is no originality to the created work). 158.
See, e.g., Eldred, 537 U.S. at 194. 159. See generally 17 U.S.C.
108, 203(a)(2), 301(c), 302, 303, 304(c)(2) (2006). 160. See, e.g.,
Copyright Modernization Act, S.C. 2012, c. 20 (Can.); see also
Digital Economy Act, 2010, c. 24 (U.K.). 161. See generally
Caseload Statistics 2011, supra note 114. 162. See, e.g., Chosaku
Kenhou [Copyright Act], Law No. 48 of 1970, as last amended by Act
No. 65 of 2010 (Japan). 163. Number of Global Patent Filings
Recovers in 2010, UN Agency Reports, UNITED NATIONS NEWS CENTRE
(Feb. 9, 2011),
http://www.un.org/apps/news/story.asp?NewsID=37498&Cr=patents&Cr1
(explaining how patents in a number of industrialized nations have
rebounded). 164. See, e.g., Law No. 48 of 1970, as last amended by
Act No. 65 of 2010 (Japan); S.C. 2012, c. 20 (Can.); Digital
Economy Act, 2010, c. 24 (U.K.).
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206 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
A. Canadas IP Law The first place that the United States should
look to for best practices
abroad is Canada.165 Canadas main IP law, the Copyright Act of
Canada of 1921, was amended in 1988 and 1997.166 Canada recently
updated its IP laws when it passed the Copyright Modernization Act
of 2012.167 Similar to other pieces of IP legislation, the
Copyright Modernization Act sought to both expand the boundaries of
fair use, or fair dealing as it is called in Can-ada, while also
requiring internet service providers (ISPs) to forward any notice
of possible infringement to their subscribers.168 The law also
capped damages for non-commercial infringement at $5,000.169
Several of these provisions drew opposition from the International
Intellectual Property Al-liance (IIPA),170 which represents various
media interests and is based in the United States.171 In
particular, the IIPA felt that the statutory damages cap was too
low and that ISPs were not given an incentive to deliver
in-fringement letters to subscribers.172 Even though the IIPA has
brought sig-nificant pressure against the Canadian government, no
changes to the law are anticipated.173
The United States and Congress principally should look to Canada
for certain aspects of future copyright legislation. In particular,
the $5,000 stat-utory damage cap would better protect end users
from burdensome fines for minor or inadvertent infringement.174 The
fact that it drew opposition from the IIPA is an indication that
rights holders are not happy,175 but at the same time, an ordinary
citizen would likely be deterred from pirating IP if they had to
pay up to $5,000 for each offense.176 When compared to the United
States, the cap is considered much more reasonable because the DMCA
allows for civil penalties ranging from $200 to $25,000 and
crimi-nal penalties from $500,000 to $1,000,000 along with five to
ten years in
165. See, e.g., Michael Geist, Policy Laundering Lies Behind
Ottawas Support for Trade Treaties: Geist, TORONTO STAR (Mar. 22,
2013),
http://www.thestar.com/business/tech_news/2013/03/22/policy_laundering_lies_behind_ottawas_support_for_trade_treaties_geist.html.
166. Copyright Act of Canada, R.S.C. 1985, c. L-42 (Can.). 167.
Copyright Modernization Act, S.C. 2012, c. 20 (Can.). 168. See
generally id. 169. Id. 170. Geist, supra note 165. 171. See
generally INTL INTELL. PROP. ALLIANCE, http://www.iipa.com/ (last
visited Mar. 16, 2013). 172. Geist, supra note 165. 173. Id. 174.
See Copyright Modernization Act, S.C. 2012, c. 20 (Can.). 175. See
Geist, supra note 165. 176. See S.C. 2012, c. 20 (Can.).
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prison.177 In terms of penalties, the United States should learn
that effective deterrence of minor offenders does not require
massive fines.
B. United Kingdoms IP Law The United Kingdom is another country
in which IP issues have become
important to the nations economic future.178 This is
demonstrated in Par-liaments passage of the Digital Economy Act of
2010.179 Some of the Acts methods were slightly controversial but
regulations are not finalized yet.180 One of the more controversial
portions would have allowed for the Secretary of State, with the
approval of the other branches of government, to completely block
access to a web site if it appears to contain a large amount of
infringing works.181 This was viewed by many as overreaching and
British citizens reacted accordingly.182 Based on the response the
Brit-ish government received from citizens183 and that it was
passed with Tory support while the Labour Party was still in
control, Parliament repealed the most offending aspects of the
Act.184 The British public, not any specific interest group,
brought this change through grassroots activism.185
This later move by American citizens to stop SOPA and PIPA
parallels the movement by the British public to eliminate a
controversial section in a piece of legislation.186 The other major
parallel between the American and British responses is the
engagement of the British press and how it contin-ues to publish
stories specifically about the Digital Economy Act.187 Con-tinued
engagement is necessary to make sure that similar legislation does
not materialize and slip through the cracks.188 In addition to
these similari-
177. 17 U.S.C 1203-1204 (2006). 178. See, e.g., Change to UK
Patents Act Removes Infringement for Use of Clinical Trial Data,
INTELLECTUAL PROP. WATCH (Feb. 27, 2013, 1:01 AM),
http://www.ip-watch.org/2013/02/27/change-to-uk-patents-act-to-remove-infringement-for-use-of-clinical-trial-data/.
179. See Digital Economy Act, 2010, c. 24 (U.K.). 180. See
generally Digital Economy Act, THE GUARDIAN,
http://www.guardian.co.uk/technology/digital-economy-act (last
visited Mar. 16, 2013). 181. Digital Economy Act, 2010, c. 24,
17-18 (U.K.). 182. See Repeal Digital Economy Act, YOUR FREEDOM,
http://yourfreedom.hmg.gov.uk/repealing-unnecessary-laws/repeal-digital-economy-act
(last visited Mar. 16, 2013). 183. See id. 184. Government Drops
Website Blocking, BRITISH BROAD. CORP. (Aug. 3, 2011),
http://www.bbc.co.uk/news/technology-14372698. 185. Repeal Digital
Economy Act, supra note 182. 186. See generally Mallory, supra note
1; Musil, supra note 107. 187. See generally THE GUARDIAN, supra
note 180. 188. See generally Lendman, supra note 111.
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ties, the new Act also provides for a judicial appeals process
that allows for subscribers accused of infringing copyrights to be
considered innocent until the process is exhausted.189 This new
standard would likely prevent an in-nocent internet users
reputation from being damaged if their wireless net-work was
inadvertently left open.190 Once again, the United States should
take what the British have done into account when crafting new
legislation, along with listening to the American people.
C. Japans IP Law One interesting and recent aspect of IP
enforcement began in Japan only
a few years ago.191 The Diet, or national legislature of Japan,
passed a bill creating the Intellectual Property High Court (IP
Court) (Chiteki Zaisan Koutou Saibansho) () in June 2004.192
However, this court was a new addition to an already existing
system.193 Starting in 1950, the Tokyo District Court began to set
aside a specific division to deal with IP issues.194 This
eventually expanded to five divisions within the court that now
deal exclusively with IP.195 In addition, the Osaka District Court,
located in Central Japan, also hosts two divisions that deal
entirely with IP cases.196 These two cities represent the main
centers for commerce and IP development in the country;197 hence
the presence of IP courts to deal with cases in an efficient
manner.198 The IP Court was partially created in re-sponse to the
economic malaise in Japan and works to deal with patent cas-es in
an efficient manner.199 It is considered separate from the Supreme
Court of Japan (Saikou Saibansho) () and has its own inde-pendent
authority.200
The United States should utilize similar techniques as those in
the Japa-nese system. Japans government recognized early on that IP
would be im-
189. Digital Economy Act, 2010, c. 24 (U.K.). 190. See generally
id. 191. See generally Press Release, World Intellectual Prop.
Org., Strong Growth in De-mand for Intellectual Property Rights in
2012 (Mar. 19, 2013) (on file with author). 192. INTELLECTUAL PROP.
HIGH COURT, supra note 10. 193. Id. 194. Id. 195. Id. 196. Id. 197.
See generally Staff Writers, For Tokyo, Osaka Voters, Election
Revolved Around Economy, JAPAN TIMES (Dec. 17, 2012),
http://www.japantimes.co.jp/news/2012/12/17/national/for-tokyo-osaka-voters-election-revolved-around-economy/.
198. INTELLECTUAL PROP. HIGH COURT, supra note 10. 199. Id. 200.
Id.
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portant for the future.201 The country doubled-down on such a
prospect when the economic bubble burst and sent the country into a
recession it has not yet fully recovered from.202 One thing that
has changed between these two periods is the amount of patents that
Japan now possesses.203 The eco-nomic power that Japan and Japanese
industry have amassed since the post-war period has enabled them to
possess a large number of patents.204 The IP Court allows Japanese
and foreign companies to deal with Japan Patent Office (JPO)
rulings in an efficient way and to solve other related patent
disputes.205 By considering IP as a form of economic power and
making sure that IP issues can be dealt with quickly,206 Japans
approach is likely having a positive effect.207 The United States
would do well to implement a similar system in order to more
efficiently deal with patent and other IP cases.
V. HOW A HYBRID APPROACH BENEFITS THE UNITED STATES Since the
United States founding, the nations leaders have worked to
adopt best practices when doing so would be advantageous to the
national interest.208 Ideas that originated outside of North
America include the adoption of common law for the American court
system, a bicameral legis-lature, and a strong executive for
passing and implementing legislation.209 The development of civil
and political rights for women also did not begin in the United
States.210 Therefore, history indicates that it is in the best
in-
201. Id. 202. Id. 203. UNITED NATIONS NEWS CENTRE, supra note
163. 204. See generally JAPAN STATISTICAL YEARBOOK 2013,
http://www.stat.go.jp/english/data/nenkan/index.htm (last visited
Mar. 17, 2013). 205. INTELLECTUAL PROP. HIGH COURT, supra note 10.
206. Id. 207. See, e.g., IP Protection in Japan, IP AUSTL.,
http://www.ipaustralia.gov.au/understanding-intellectual-property/ip-for-business/doing-business-overseas/ip-protection-in-japan/
(last visited Mar. 17, 2013) (explaining the bene-fits of doing IP
work in Japan to Australian citizens). 208. See Kay Lazar, Doctors
and Patients Could Decide who Gets Medical Marijuana Under Draft
Mass. Rules, BOSTON.COM (Mar. 29, 2013),
http://www.boston.com/whitecoatnotes/2013/03/29/doctors-and-patients-could-decide-who-gets-medical-marijuana-under-draft-mass-rules/BGIADLbsh9BA45LUGFqB3M/story.html
(explaining how the Massachusetts Department of Public Health took
best practices from 17 other states in developing the states
medical marijuana laws). Compare 1790 Act, with Stat. of Ann.,
1710, c. 19 (Eng.). 209. Compare U.S. CONST. art. I, with The Bill
of Rights, 1689, 1 W. & M., c. 2 (Eng.). 210. See ELLEN CAROL
DUBOIS, WOMAN SUFFRAGE AND WOMENS RIGHTS 28 n.47 (NYU Press 1998);
see also P. Orman Ray, Womens Suffrage in Foreign Countries, 12 AM.
POL. SCI. REV. 469, 469 (1918).
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210 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
terest of the United States to adopt reforms and practices
embraced in other countries when it is advantageous to do so.211
Following this course of ac-tion would provide rights holders with
a fairer and more efficient systemthrough the adoption of a unified
dispute resolution system and guaranteed protection for new IP.212
On the other hand, end users would have the free-dom to use their
devices without fear of running afoul of infringement laws.213 This
begins with implementing a better system of dealing with IP
enforcement at the federal level and making sure that future
legislation bal-ances the interests of rights holders and end
users.
A. Integration of Best Practices The United States is in a
position to select from and adapt effective IP
enforcement practices already established and tested in other
countries.214 One way to do this would be to create a special court
system that can deal with IP cases. At the moment, the United
States Court of Appeals for the Federal Circuit (Federal Circuit)
is in charge of dealing with patent cases on appeal from federal
district courts.215 The quality of work coming from the circuit is
admirable, but the caseload is already heavy,216 and the Feder-al
Circuit deals with a myriad of other types of cases in addition to
patent cases.217 In terms of setting up a court system to deal with
IP cases, the United States has three viable options: Article III
courts,218 Article I courts,219 or a hybrid of the two.220
1. Option One: The Article III Courts The first option that
Congress might consider is authorizing the creation
of a new Article III court with limited jurisdiction.221 The
courts jurisdic-tion would be limited to IP.222 The question then
becomes whether it is
211. See generally Lazar, supra note 208. 212. See generally
Kravets, supra note 7. 213. See generally id. 214. See generally
U.S. CONST. art. I, 8, cl. 3, 18. 215. COURT JURISDICTION UNITED
STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT, supra note 12.
216. Caseload Statistics 2011, supra note 114. 217. COURT
JURISDICTION UNITED STATES COURT OF APPEALS FOR THE FEDERAL
CIRCUIT, supra note 12 (explaining that in addition to patent
cases, it deals with appeals from various Article I tribunals like
the U.S. Court for Federal Claims and statutory sections such as
Section 211 of the Economic Stabilization Act of 1970). 218. See
id. art. III, 1. 219. See U.S. CONST. art. I, 1. 220. See id. 221.
See id. 222. See generally What is Intellectual Property?, WIPO,
http://www.wipo.int/about-
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necessary to create a parallel system of courts or only have a
single court to deal with all of these cases. Due to the increasing
IP caseload in the federal court system,223 a two- or three-tiered
system would be better at dealing with the needs of rights
holders.224 Once again, this presents two options, either an
approach that allows for a final appeal to the Supreme Court with
IP district and appellate courts, or creating a high court that
deals only with IP cases and creating an intermediate appellate
level below it.225
The latter option would retain the ability of federal district
courts to re-view IP cases, but vest final authority in a high
court as the ultimate arbi-ter.226 One problem with creating a
separate high court for IP cases would be the loss of existing
precedent established by the Supreme Court in IP case law.227
However, this could be remedied by having the IP High Court adopt
existing Supreme Court precedent when it begins to issue
opin-ions.228 Having more than one high court in the judicial
hierarchy might seem strange, but other countries, including ones
with federal systems like the United States, have done so without
negative consequences.229 Follow-ing this latter option would also
prevent extensive duplication of courts at the federal district
level, since IP courts would likely need to mirror exist-ing
districts if they were created.230 This would maintain a certain
level of judicial independence for the existing Article III courts
and provide com-fort for businesses and individual rights holders
that might have a familiari-ty with the existing system.231 If need
be, a party that wished to appeal an adverse decision at the
district court level could have the option of choos-ing either the
specialty IP courts or the normal Article III courts.232 The IP
courts expertise would likely convince most rights holders to bring
their
ip/en/ (last visited Mar. 15, 2013). 223. See generally Caseload
Statistics 2011, supra note 114. 224. See generally INTELLECTUAL
PROP. HIGH COURT, supra note 10. 225. See, e.g., id. 226. See U.S.
CONST. art. III, 2. 227. See generally U.S. CONST. art. III. 228.
See id. 2. 229. See, e.g., The Position of the Federal Court of
Justice in the German Court Sys-tem, DER BUNDESGERICHTSHOF,
http://www.bundesgerichtshof.de/EN/FCoJ/TaskOrganisation/PositionFCoJ/positionFCoJ_node.html
(last visited Mar. 15, 2013). 230. See generally District Courts,
U.S. COURTS,
http://www.uscourts.gov/FederalCourts/UnderstandingtheFederalCourts/DistrictCourts.aspx
(last visited Mar. 28, 2013). 231. See, e.g., How the Federal
Courts Work Civil Cases, U.S. COURTS,
http://www.uscourts.gov/FederalCourts/UnderstandingtheFederalCourts/HowCourtsWork/CivilCases.aspx
(last visited Mar. 28, 2013). 232. See generally District Courts,
supra note 230.
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212 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
cases before those courts over time.233 The former option,
allowing for a final review of an IP court decision
before the Supreme Court, is the other popular approach.234 The
Supreme Court would retain jurisdiction over IP cases and their
precedent would re-main the law of the land.235 At the same time, a
parallel system of IP dis-trict and circuit courts would deal with
IP cases.236 However, unlike a mir-roring of the entire federal
court system, IP courts could be placed in areas where IP cases
normally occur.237 Since Members of Congress would like-ly be
territorial as to the placement of new courthouses,238 one district
court might appropriately be placed in every existing federal
circuit.239 In the current climate of budget cuts and austerity,240
the IP district courts could even be placed within existing federal
courthouses to keep costs low.241 As for the IP circuit courts,
geography and volume of IP cases should be the main factors when
choosing locations.242 This would likely entail placing courts in
New York, Chicago, Denver, Los Angeles or San Francisco, and one in
Dallas, Houston, or Austin.243 All of these cities have existing
feder-al district courts and most have federal circuit courts as
well.244 This would limit the existing number of venues, but still
provide a level of efficiency and convenience for the vast majority
of rights holders.245
If Congress chose to initiate either of these systems, the
creation of these new courts would not be unprecedented at the
federal level.246 The United States currently has an Article III
court that deals exclusively with interna-tional trade.247 Prior to
this, the United States created the Court of Customs
233. See generally INTELLECTUAL PROP. HIGH COURT, supra note 10.
234. See generally U.S. CONST. art. III, 2. 235. See id.; see also
Marbury v. Madison, 5 U.S. 137, 173-74 (1803). 236. See generally
INTELLECTUAL PROP. HIGH COURT, supra note 10. 237. Caseload
Statistics 2011, supra note 114. 238. See generally Court Finder,
U.S. COURTS, http://www.uscourts.gov/Court_Locator.aspx (last
visited Mar. 15, 2013). 239. Id. 240. See, e.g., Federal Judiciary
Braces for Broad Impact of Budget Sequestration, U.S. COURTS, (Mar.
12, 2013),
http://news.uscourts.gov/federal-judiciary-braces-broad-impact-budget-sequestration.
241. See, e.g., id. 242. See generally Caseload Statistics 2011,
supra note 114. 243. See generally id. 244. Court Finder, supra
note 238. 245. See generally Caseload Statistics 2011, supra note
114. 246. See Federal Courts Improvement Act of 1982, 28 U.S.C. 1
(2012). See generally UNITED STATES COURT OF INTERNATIONAL TRADE,
http://www.cit.uscourts.gov/ (last visited Mar. 25, 2013). 247.
Payne-Aldrich Tariff Act, ch. 6, 29, 36 Stat. 11, 105-06
(1909).
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Appeals in 1909248 under the auspices of the Payne-Aldrich
Tariff Act.249 This courts name was changed to the Court of Customs
and Patent Ap-peals in 1929 after it received jurisdiction over
appeals from the United States Patent Office.250 Even though the
Supreme Court declared this court to be an Article I court in
1929,251 Congress eventually made it an Article III court in
1956.252 The Court of Customs and Patent Appeals was eventu-ally
abolished in 1982.253 Even so, the United States has precedent for
the creation of a court dealing with IP issues.254 It might prove
difficult to es-tablish Article III courts,255 so Article I courts
are another option.
2. Option Two: The Article I Courts The next option that
Congress should consider would be the creation of
an Article I court.256 Article I courts, also called legislative
courts because they are created by Congress, have a long history in
the United States.257 While they originally were created for
territories that had not entered the Union yet,258 the nature of
these courts changed over time.259 Today, a lot of these courts
exist inside administrative agencies or the military.260 One in
particular that applies to IP is the Trademark Trial and Appeal
Board (TTAB).261 The TTAB resides within the United States Patent
and Trade-mark Office (USPTO) and deals with a number of
trademark-related cas-es.262 This type of arrangement could be
expanded through the establish-
248. UNITED STATES COURT OF INTERNATIONAL TRADE, supra note 246.
249. Id. 250. Id. 251. See generally Ex parte Bakelite Corp., 279
U.S. 438 (1929). 252. UNITED STATES COURT OF INTERNATIONAL TRADE,
supra note 246. 253. Federal Courts Improvement Act of 1982, 28
U.S.C. 1 (2012). 254. See UNITED STATES COURT OF INTERNATIONAL
TRADE, supra note 246; see also 28 U.S.C. 1. 255. Compare U.S.
CONST. art. III, 1 ([I]n such inferior Courts as the Congress may
from time to time ordain and establish.), with Editorial, A Model
to End Washington Grid-lock: Mexico, CHRISTIAN SCI. MONITOR (Mar.
24, 2013)
http://www.csmonitor.com/Commentary/the-monitors-view/2013/0324/A-model-to-end-Washington-gridlock-Mexico.
256. See generally U.S. CONST. art. III, 1. 257. Id. 258. See
generally Am. Ins. Co. v. 356 Bales of Cotton, 26 U.S. 511 (1828).
259. See id. at 512-13. 260. See N. Pipeline Constr. Co. v.
Marathon Pipe Line Co., 458 U.S. 50, 63-64 (1982). 261. TRADEMARK
TRIAL AND APPEAL BOARD,
http://www.uspto.gov/trademarks/process/appeal/ (last visited Mar.
16, 2013). 262. Id.
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214 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
ment of a Patent Trial and Appeal Board (PTAB) out of the USPTO
and a Copyright Trial and Appeal Board (CTAB) out of the United
States Copy-right Office (USCO).263 In order to increase
efficiency, it would be best if they were combined into an
Intellectual Property Trial and Appeal Board (IPTAB). This court
would have jurisdiction over all IP cases in the United States and
serve to deal with disputes that arise over rights issues.264 All
IP would fall under IPTABs jurisdiction as an Article I court
because the government keeps records and decides the rightful
owners of patents, copy-rights, and trademarks.265 This would
likely require the merging of the USPTO and the USCO, which could
be reborn as the United States Intel-lectual Property Office
(USIPO).266
With the USIPO in place and IPTAB becoming the place for appeals
of decisions related to patents, trademarks, and copyrights, the
next focus would need to be on further appeals.267 Article I courts
do not have final authority on most matters, and therefore usually
require some sort of re-view process before a federal court.268 At
the moment, TTAB allows for appeals to either a federal district
court or the Federal Circuit.269 In order for IPTAB to pass
constitutional muster, it would likely need to have a sim-ilar
method of appeal.270 Because of the expertise of the Federal
Circuit with patent matters,271 it would be advisable for IPTAB to
also allow ap-peals to the Federal Circuit. By creating IPTAB and
making sure that peti-tioners can appeal to the Federal Circuit or
another Article III court, the Ar-ticle I court option would
increase efficiency and provide rights holders with appropriate due
process in case of a denial from the new USIPO.272
3. Option Three: The Hybrid Approach The final option available
for Congress to implement positive aspects of
foreign IP legal systems is the implementation of a hybrid
approach involv-
263. See generally U.S. COPYRIGHT OFFICE,
http://www.copyright.gov/ (last visited Mar. 16, 2013); UNITED
STATES PATENT AND TRADEMARK OFFICE, http://www.uspto.gov/ (last
visited Mar. 16, 2013). 264. See U.S. CONST. art. III, 1-2. 265.
See generally N. Pipeline Constr. Co., 458 U.S. at 50. 266. See
sources cited supra note 263. 267. See generally U.S. CONST. art.
III, 2. 268. See generally N. Pipeline Constr. Co., 458 U.S. at 50.
269. TRADEMARK TRIAL AND APPEAL BOARD, supra note 261. 270. See
generally id. 271. COURT JURISDICTION UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT, supra note 12. 272. See Mathews v.
Eldridge, 424 U.S. 319, 335 (1976) (determining the appropriate
level of due process required through a three-part test). See
generally U.S. CONST. amend. V (Due Process Clause).
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ing both Article I and Article III courts. Unlike the previous
two options, new structures would need to be created within both
administrative agen-cies and the judiciary.273 This would likely
involve housing the USIPO and IPTAB within the Department of
Commerce in order to create an effective Article I mechanism.274
Instead of allowing for appeals of IPTAB decisions to the Federal
Circuit, the appeal would be made to a United States Court of
Intellectual Property (USCIP).275 This Article III court would be
on par with the United States Court of International Trade (USCIT),
which has subject matter jurisdiction over certain trade issues
that arise from selected federal agencies.276 It would act as the
court of last resort for IP cases com-ing out of the USIPO.277
Therefore, rights holders would have the option of going through
Article I mechanisms and still have a right to appeal to the
USCIP.278 End users could still bring cases against rights holders
in federal court and retain the ability to appeal to the Supreme
Court or, if the law changed,279 to the USCIP as well. This would
likely lower the amount of cases clogging the federal courts
significantly.280 Utilizing one of these op-tions would serve to
streamline the enforcement and adjudication of IP law in the United
States and provide more expeditious justice for both end users and
rights holders.
B. Balancing the Interests of Rights Holders and End Users After
setting up a system that would run more efficiently and deal
solely
with IP cases, the enforcement and legislative side of the
equation would have to change as well.281 The current legal regime
for IP law is a thicket of complex laws that has grown increasingly
convoluted over time.282 At the same time as the laws have grown
more complex, the balance between rights holders and end users has
disappeared.283 The United States must fix
273. See generally U.S. CONST. art. III, 1. 274. See N. Pipeline
Constr. Co. v. Marathon Pipe Line Co., 458 U.S. 50, 63-64 (1982).
275. See generally UNITED STATES COURT OF INTERNATIONAL TRADE,
supra note 246. 276. Id. 277. See generally U.S. CONST. art. III,
2. 278. See, e.g., TRADEMARK TRIAL AND APPEAL BOARD, supra note
261. 279. See generally U.S. CONST. art. III, 2. 280. Caseload
Statistics 2011, supra note 114. 281. See, e.g., 17 U.S.C. 501-513
(1976) (enforcement provisions under the 1976 Act). 282. Compare
1790 Act (half a page), with 17 U.S.C. 101-1332 (over 200 pages).
283. Compare 17 U.S.C. 302 (1976) (setting a temporal limit on
copyrights after Jan-uary 1, 1978 to life of the author plus 50
years after the authors death), with Eldred v. Ash-croft, 537 U.S.
186, 206-08 (2003) (upholding the CTEA that extended the temporal
limit to life of the author plus 70 years after the authors
death).
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this balance in order to provide end users with more protection
and also al-low for the public to enjoy older works in the public
domain. There are cer-tain areas that Congress or the courts should
focus on in order to balance the system. In particular, the focus
should be: reforming the penalties used to enforce the system;
allowing for older, protected materials to enter the public domain
earlier; and strengthening the rules promulgated by the Li-brarian
of Congress (Librarian) to allow for additional exemptions under
the DMCA.284
1. IP Law Penalty Reform One of the main ways in which Congress
should better balance the rela-
tionship between rights holders and end users is to reform the
penalties im-posed for IP law violations.285 Over the past decade
or so, news stories have been written about how ordinary Americans
have been hit with exor-bitant penalties for violating IP laws.286
This coincided with the rise of peer-to-peer networks that have
both legitimate and illegitimate uses.287 The Recording Industry
Association of America (RIAA) in particular takes a very aggressive
stance in dealing with supposed violators of their mem-bers IP.288
However, some of the tactics used by the RIAA are extremely harsh
and border on harassment.289 In addition, cases brought against
indi-vidual violators greatly overvalue the IP that the rights
holders are seeking to protect.290
An approach that would put the RIAA and similar groups in a
better light would be for Congress to establish a two-tier penalty
system.291 The
284. See generally 17 U.S.C. 1201(a)(1). 285. See generally 17
U.S.C. 1203-1204. 286. 17 U.S.C. 1201-1205 (laying out penalties
for violations of the statute); see, e.g., Awkward Download Laws
Make Music-Sharing Case a Travesty, Bos. Globe, Dec. 14, 2009, at
A18 (jury verdict awarded $675,000 to the recording industry
against an individual who shared 30 songs). 287. See, e.g., George
H. Pike, Copyright Alert System to Warn, then Punish, Peer-to-Peer
File Sharing, INFO. TODAY, INC. (Mar. 14, 2013),
http://newsbreaks.infotoday.com/NewsBreaks/Copyright-Alert-System-to-Warn-then-Punish-PeertoPeer-File-Sharing-88397.asp.
288. See, e.g., Kravets, supra note 7. 289. See, e.g., Eliot Van
Buskirk, Reddit Co-Founder Goes Off on RIAA at SXSW, Ad-vocates
Internet Access, BILLBOARD (Mar. 8, 2013),
http://www.billboard.com/biz/articles/news/digital-and-mobile/1551239/reddit-co-founder-goes-off-on-riaa-at-sxsw-advocates.
290. See, e.g., Brad Hill, Editorial, RIAA Takedown Requests and Ad
Complaints are Missing Opportunity, ENGADGET (Feb. 18, 2013),
http://www.engadget.com/2013/02/18/riaa-takedown-requests-and-ad-complaints-are-missing-an-opportunity/.
291. But see 17 U.S.C. 1203-1204.
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lower tier would focus on violators that did not intend to
violate the law or only pirated a small amount of IP.292 The upper
tier would focus on sites that host large amounts of pirated
content or violators that have pirated sig-nificant amounts of IP
intentionally.293 The penalties for the lower tier would be fines
below $10,000 and would scale depending on how much was pirated.294
On the other hand, the upper tier would have fines up to $500,000
for egregious violators and upwards of one million dollars for site
operators.295 The upper tier would also include imprisonment of up
to five years.296 These numbers for the upper tier are similar to
the ones in the DMCA, and therefore would be easy to implement.297
Cooperation with law enforcement should be a factor considered
during sentencing and lead to probation or house arrest when
appropriate.298 Also, in order to encour-age settlement for the
lower tier, there should be mandatory pre-trial set-tlement offers
to boost efficiency within the federal courts.299
An alternative approach that would complement the two-tier
penalty sys-tem would be encouraging rights holders to embrace the
new digital envi-ronment we live in.300 The explosion in popularity
of mobile devices and broadband Internet access has led to advances
in digital delivery sys-tems.301 The market has also matured and
allowed for digital rights man-agement (DRM) to fall by the wayside
as consumers have been given more freedom.302 The rise of the
iTunes store for Apple devices,303 the increas-ingly large Kindle
library for Amazons e-reader,304 and the large and pro-
292. But see id. 293. But see id. 294. But see id. 295. But see
id. 296. See id. 297. See generally id. 298. But see id. 299. But
see id. 300. See, e.g., Sir Martin Sorrell, Business Must Embrace
This Digital Revolution, THE TELEGRAPH (UK) (Mar. 16, 2013),
http://www.telegraph.co.uk/finance/comment/9934918/Business-must-embrace-this-digital-revolution.html.
301. See, e.g., Senate Approves Measure That Supports Broadband
Access for Rural Areas, ALEXANDRIA ECHO PRESS (Mar. 25, 2013),
http://www.echopress.com/event/article/id/103083/group/News/. 302.
See, e.g., Chris Kohler, SimCity Blackout is Just One More DRM
Disaster, WIRED (Mar. 8, 2013),
http://www.wired.com/gamelife/2013/03/simcity-outage/. 303. E.g.,
Bryan M. Wolfe, Apples iTunes Store Accounts for 60 Percent of
World-wide Digital Music Revenues, APPADVICE (Feb. 27, 2013),
http://appadvice.com/appnn/2013/02/apples-itunes-store-accounts-for-60-percent-of-worldwide-digital-music-revenues.
304. E.g., Brad Tuttle, Amazon Prime: Bigger, More Powerful, More
Profitable Than
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218 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
gressively more user-driven Steam service run by Valve Software
for com-puter games are just a few examples.305 Even older IP has
been given new life, at least in the realm of computer games, with
the creation and success of Good Old Games.306 The future of IP is
moving to a digital realm that offers rights holders the
opportunity to not only have control over their IP, but also have
the ability to make money and provide end users with signifi-cant
value.307 Current IP rights holders should fully embrace the
digital revolution and try to place their IP onto as many sites and
services as pos-sible before existing copyrights expire.308
2. Accelerate the Entrance of Older IP into the Public Domain
Another way in which Congress can better balance the relationship
be-
tween the two groups is to reform copyright laws to allow for
older IP to enter the public domain faster.309 Currently, the
controlling law is the CTEA.310 The extensions given to existing IP
called for an additional twen-ty years of protection.311 Companies
have an interest in keeping iconic IP out of the public domain
because it still has value in the present day.312 However, the
Copyright Clause was not intended to allow Congress to pass laws
that indefinitely extend further copyright protections.313
In order to prevent rights holders from maintaining copyrights
far be-yond their intended shelf-life, Congress must either amend
or rescind the CTEA.314 According to the laws sponsors, one of the
reasons for passing it was to make sure that the United States kept
up with the European Union (EU), which directed their member-states
to establish a baseline copyright length.315 While it is important
that the United States remains competitive
Anyone Imagined, TIME (Mar. 18, 2013),
http://business.time.com/2013/03/18/amazon-prime-bigger-more-powerful-more-profitable-than-anyone-imagined/.
305. E.g., WELCOME TO STEAM, http://store.steampowered.com/ (last
visited Mar. 14, 2013). 306. See GOOD OLD GAMES,
http://www.gog.com/ (last visited Mar. 14, 2013). 307. See, e.g.,
Sorrell, supra note 300. 308. See, e.g., id. 309. See, e.g., Jani
Ihalainen, Sherlock Holmes is in the Public Domain, At Least
Par-tially, IP IUSTITIA (Jan. 5, 2014, 11:22 PM),
http://www.ipiustitia.com/2014/01/sherlock-holmes-is-in-public-domain-at.html.
But see 17 U.S.C. 108, 203(a)(2), 301(c), 302, 303, 304(c)(2). 310.
Id. 311. Id. 312. See, e.g., Kirtsaeng v. John Wiley & Sons,
Inc., 133 S. Ct. 1351 (2013). 313. See Eldred v. Ashcroft, 537 U.S.
186, 199-201 (2003); see also U.S. CONST. art. I, 8, cl. 8. 314.
See U.S. CONST. art. I, 8. 315. Eldred, 537 U.S. at 198; see S.
REP. NO. 104-315, at 1 (1996).
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against other nations,316 there is no compelling reason for the
CTEA be-yond keeping up with the EU.317 Other major industrialized
nations, while signing onto WIPO treaties, had not gone farther in
enforcing IP laws.318 Instead of further extending copyright
protections, the United States should modify the CTEA so that it
only applies to new IP.319 If this is not done, the CTEA should be
rescinded and the 1976 Act should hold sway.320
In addition to changing the law, the Supreme Court would have to
over-turn their decision in Eldred.321 It would not be difficult to
find the proper reasoning for doing so because the case already has
two dissents.322 How-ever, it would require the Supreme Court to
have an existing case or con-troversy in order to render the
appropriate verdict.323 Combining the dis-sents of Justices Stevens
and Breyer in Eldred would create a cohesive argument that shows
how Congress in passing CTEA went beyond the boundaries of the
Copyright Clause.324 Congress should be able to write and pass
legislation related to future patents and copyrights, as per the
Copyright Clause,325 but it should not be able to continually
extend protec-tions ad infinitum.326 The Copyright Clause should
not be twisted in order for corporations to continually have a
monopoly over the use of certain im-ages, musical scores, or other
related works.
The delay of IP entering the public domain is even worse when
dealing with works that combine several different elements that can
all be separate-ly copyrighted, such as movies.327 One other way in
which the public do-main would benefit from IP law reform would be
changing the way that movies and video games in particular operate
in terms of copyright.328 At the moment, the movie Its a Wonderful
Life is in the public domain.329
316. See, e.g., The Economy: Cheer Up, THE ECONOMIST (Mar. 16,
2013),
http://www.economist.com/news/special-report/21573229-political-gridlock-may-be-bad-americas-economy-says-edward-mcbride.
317. See, e.g., Civil Society Statement No Copyright in the EU-US
Trade Agreement!, INFOJUSTICE (Mar. 18, 2013),
http://infojustice.org/archives/29025. But see S. REP. NO. 104-315,
at 1. 318. See generally WIPO Treaties General Information, supra
note 56. 319. But see 17 U.S.C. 108, 203(a)(2), 301(c), 302, 303,
304(c)(2). 320. See generally 17 U.S.C. 101-1332. 321. See Eldred
v. Ashcroft, 537 U.S. 186, 221-22 (2003). 322. Id. at 222, 242-43
(Stevens, J., dissenting) (Breyer, J., dissenting). 323. U.S.
CONST. art. III, 2. 324. Eldred, 537 U.S. at 242-43 (Stevens, J.,
dissenting) (Breyer, J., dissenting). 325. U.S. CONST. art. I, 8,
cl. 8. 326. Eldred, 537 U.S. at 222 (Stevens, J., dissenting). 327.
See generally 17 U.S.C. 101-1332. 328. See generally id. 329. Todd
VanDerWerff, Its a Wonderful Life Shows the Unending Cost of
Being
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220 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
This has actually been the case since 1975 when the rights
holder failed to renew its copyright.330 However, while the movie
is technically in the pub-lic domain, this only applies to the film
images, not to the short story on which it was based.331 In
addition, the musical score is also copyrighted separately.332 This
prevents the movie from fully entering the public do-main because
the script and musical score cannot be used without permis-sion
from the original rights holders.333 While it would be unfair for
the rights holder of a story to be combined with a movie, it is
equally unfair for end users to be unable to enjoy a movie, such as
Its a Wonderful Life, be-cause each element of a work can be
copyrighted separately.334 Therefore, it would be prudent for
Congress to allow for joint copyrights that combine all of the
elements of a movie, play, or video game into a single
copy-right.335 This would protect all of the interested parties in
a complete work, while still allowing for the public to eventually
have complete access to it when the single copyright period is
over.336 Stories adapted for movies, plays, and video games would
still retain their own separate copyright, but the story within the
complete work would enter the public domain once the copyright
period expires.337 This would ensure that copyright holders
re-ceive just compensation for their hard work, while eventually
allowing for end users to appreciate the original work and
interpret it in their own way.
3. Modify Exemption Rules Promulgated by the Librarian of
Congress
The final way in which Congress should ensure that the balance
between rights holders and end users is restored would be to modify
how exemption rules are treated by the Librarian.338 These
exemption rules first appeared in the DMCA.339 The Librarian is
given the power to promulgate rules suggested by the public and
vetted through comments by the Registrar of
Good, ONION AVCLUB (Dec. 21, 2012),
http://www.avclub.com/articles/its-a-wonderful-life-shows-the-unending-cost-of-be,90139/.
330. Id. 331. Bob Thomas, Christmas Classic had an Unpromising
Start, July 3, 1997,
http://www.reelclassics.com/Movies/Wonlife/wonlife-article.htm.
332. Id. 333. See generally id. 334. Id. 335. But see 17 U.S.C.
101-122. 336. 17 U.S.C. 108, 203(a)(2), 301(c), 302, 303,
304(c)(2). 337. But see 17 U.S.C. 101-122, 302. 338. See 17 U.S.C.
1201(a)(1). 339. Myron Hecht, Reconciling Software Technology and
Anti-Circumvention Provi-sions in the Digital Millenium [sic]
Copyright Act, 8 UCLA L.J. & TECH. 1, 12 (2004).
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Copyrights (Registrar).340 In a sense, the Registrar and the
Librarian work in tandem as a quasi-administrative agency; they
hold hearings, leave open the proceedings to public comments, and
issue final rules.341 The only issue is that these rules only last
for three years.342 The rules are only promulgat-ed if they have a
substantial adverse effect on the ability to use copy-righted works
in a non-infringing manner.343
These stringent standards have led to only twelve exemptions
under the DMCA since 2000.344 This must be changed, especially
since there is growing frustration with the process.345 While the
procedure is generally acceptable, the standard should be changed
in order to allow for additional, legitimate exemptions.346
Changing the substantial standard to a reason-able one might be
possible, with additional safeguards such as a limited right of
protest that can be sent to the Registrar to verify that it is a
proper exemption.347 In addition, eliminating the three year
exemption limit would go a long way towards protecting end
users.348 At the same time, this still allows rights holders to
eliminate cumbersome exemptions that might harm their interests.349
In the end, it is imperative to find a balance between rights
holders and end users, and following through on some of these
sug-gestions would be an excellent start.
VI. CONCLUSION The IP issue has been present in one form or
another since the beginning
of the United States of America.350 Throughout its history, the
battle be-tween rights holders and end users has been waged in both
the courts and in Congress.351 However, with the rise of the
Digital Age, the balance has slowly shifted towards rights holders.
The reforms outlined in the previous sections are a starting point
for a more balanced approach to IP enforce-
340. 17 U.S.C. 1201(a)(1). 341. Id. 342. Id. 343. Id. 344. See
generally U.S. COPYRIGHT OFFICE, supra note 263. 345. See, e.g.,
Donald Robertson, Copyright Office Fails to Protect Users From
DMCA, FREE SOFTWARE FOUND. (Oct. 26, 2012),
http://www.fsf.org/blogs/licensing/copyright-office-fails-to-protect-users-from-dmca.
346. See, e.g., Greenfield, supra note 74. 347. See generally 17
U.S.C. 1201(a)(1). 348. See generally id. 349. See, e.g.,
Greenfield, supra note 74. 350. See, e.g., U.S. CONST. art. I, 8,
cl. 8. 351. Compare Eldred v. Ashcroft, 537 U.S. 186 (2003)
(decision favoring rights hold-ers), with Kirtsaeng v. John Wiley
& Sons, Inc., 133 S. Ct. 1351 (2013) (decision favoring end
users).
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222 CRIMINAL AND CIVIL CONFINEMENT [Vol. 40:191
ment and reform in the United States. The vast majority of end
users will not pirate copyrighted material as long as they receive
value and open ac-cess to what they purchase. It is also true that
a majority of citizens would support actions to make sure that the
most egregious violators are properly punished for their
transgressions. By utilizing best practices from abroad, the United
States must transform its IP structure into a more efficient and
equal system. Only by doing so can the United States continue to be
a great country in which to do business and establish copyrights,
trademarks, and patents, while supporting a free and open society
that encourages the use of the public domain.