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Introduction
  • 1 Copyright in Daily Life: A Look at One Industry

  • 2 A Typical Dispute

    • 2.1 Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., 900 F.Supp. 1287 (C.D.Cal. 1995)

      1
      900 F.Supp. 1287 (1995)
      METRO-GOLDWYN-MAYER, INC., et al., Plaintiffs,
      v.
      AMERICAN HONDA MOTOR CO., INC., et al., Defendants.
      No. CV 94-8732-KN (Mcx).

      United States District Court, C.D. California.
      March 29, 1995.

      2

      [1290] Kaye, Scholer, Fierman, Hays & Handler, Pierce O'Donnell, Robert Barnes, Ann Marie Mortimer, Los Angeles, CA, for Plaintiffs Metro-Goldwyn-Mayer Inc. and Danjaq, Inc.

      3

      Amy D. Hogue, Julie G. Duffy, Pillsbury Madison & Sutro, Los Angeles, CA, for Defendants American Honda Motor Co., Inc. and Rubin Postaer and Associates.

      4

      ORDER RE: (1) MOTION FOR PRELIMINARY INJUNCTION; (2) MOTION FOR SUMMARY JUDGMENT

      5

      KENYON, District Judge.

      6

      Based on the papers submitted and the brief arguments presented at the March 13, 1995 hearing, the Court GRANTS Plaintiffs' motion for a preliminary injunction and DENIES Defendants' motion for summary judgment for the reasons set forth below.[1] Plaintiffs [1291] are ORDERED to post a bond in the amount of $6,000,000 for this preliminary injunction to issue.

      7

      The Court ORDERS that Defendants, their agents, employees, representatives, and all others purporting to work, or working, on their behalf, be, and by this order are, enjoined from continuing to infringe on Plaintiffs' copyrighted works by displaying or exhibiting in any manner, or causing to be displayed or exhibited in any manner, the Honda del Sol commercial which is the subject of this action, in any medium, including network or cable television or movie theaters.

      8
      I. Introduction
      9

      This case arises out of Plaintiffs Metro-Goldwyn-Mayer's and Danjaq's claim that Defendants American Honda Motor Co. and its advertising agency Rubin Postaer and Associates, violated Plaintiffs' "copyrights to sixteen James Bond films and the exclusive intellectual property rights to the James Bond character and the James Bond films" through Defendants' recent commercial for its Honda del Sol automobile. Plaintiffs' Opening Memo re: Preliminary Injunction Motion, at 3.

      10

      Premiering last October 1994, Defendants' "Escape" commercial features a young, well-dressed couple in a Honda del Sol being chased by a high-tech helicopter. A grotesque villain with metal-encased arms[2] jumps out of the helicopter onto the car's roof, threatening harm. With a flirtatious turn to his companion, the male driver deftly releases the Honda's detachable roof (which Defendants claim is the main feature allegedly highlighted by the commercial), sending the villain into space and effecting the couple's speedy get-away.

      11

      Plaintiffs move to enjoin Defendants' commercial pending a final trial on the merits, and Defendants move for summary judgment.

      12
      II. Factual Background
      13

      In 1992, Honda's advertising agency Rubin Postaer came up with a new concept to sell the Honda del Sol convertible with its detachable rooftop. For what was to become the commercial at issue, Rubin Postaer vice-president Gary Yoshida claims that he was initially inspired by the climax scene in "Aliens," wherein the alien is ejected from a spaceship still clinging onto the spacecraft's door. From there, Yoshida and coworker Robert Coburn began working on the story-boards for the "Escape" commercial. As the concept evolved into the helicopter chase scene, it acquired various project names, one of which was "James Bob," which Yoshida understood to be a play on words for James Bond. Yoshida Depo. at 45. In addition, David Spyra, Honda's National Advertising Manager, testified the same way, gingerly agreeing that he understood "James Bob to be a pun on the name James Bond." Spyra Depo. at 91.

      14

      While the commercial was initially approved by Honda in May 1992, it was put on hold because of financing difficulties. Actual production for the commercial did not begin until after July 8, 1994, when Honda reapproved the concept. Defendants claim that, after the initial May 1992 approval, they abandoned the "James Bob" concept, whiting out "James" from the title on the commercial's storyboards because of the implied reference to "James Bond." However, Plaintiffs dispute this assertion, pointing to the fact that when casting began on the project in the summer of 1994, the casting director specifically sent requests to talent agencies for "James Bond"-type actors and actresses to star in what conceptually could be "the [1292] next James Bond film."[3]

      15

      With the assistance of the same special effects team that worked on Arnold Schwarzenegger's "True Lies," Defendants proceeded to create a sixty- and thirty-second version of the Honda del Sol commercial at issue: a fast-paced helicopter chase scene featuring a suave hero and an attractive heroine, as well as a menacing and grotesque villain.

      16

      The commercial first aired on October 24, 1994, but was apparently still not cleared for major network airing as late as December 21, 1994. Plaintiffs first viewed the film during the weekend of December 17 and 18, 1994; they demanded that Defendants pull the commercial off the air on December 22; Defendants refused on December 23; and Plaintiffs filed this action on December 30, 1994. After a brief telephone conference with this Court on January 4, 1995, the Court allowed Plaintiffs to conduct expedited discovery in this matter.

      17

      On January 15, 1995, in an effort to accommodate Plaintiffs' demands without purportedly conceding liability, Defendants changed their commercial by: (1) altering the protagonists' accents from British to American; and (2) by changing the music to make it less like the horn-driven James Bond theme. This version of the commercial was shown during the Superbowl, allegedly the most widely viewed TV event of the year.

      18

      Plaintiffs filed the instant motion for preliminary injunction on January 23, 1995, and Defendants filed their summary judgment motion on February 21, 1995.

      19
      III. Legal Analysis
      20
      A. Plaintiffs' Preliminary Injunction Motion
      21
      1. The Preliminary Injunction Standard
      22

      In the Ninth Circuit, "[a] preliminary injunction may be granted if the moving party shows either (1) a combination of probable success on the merits and the possibility of irreparable harm, or (2) the existence of serious questions going to the merits, the balance of hardships tipping sharply in its favor, and at least a fair chance of success on the merits." Senate of State of California v. Mosbacher, 968 F.2d 974, 977 (9th Cir.1992). In essence, this test requires looking at two key elements in deciding whether an injunction should issue: the relative merits of the claim, and the relative harms to be suffered by the parties.

      23
      2. Merits Of Plaintiff's Copyright Infringement Claim
      24

      The required showing of likelihood of success on the merits is examined in the context of injuries to the parties and the public, and is not reducible to a mathematical formula. See, e.g., Dataphase Systems, Inc. v. C L Systems, Inc., 640 F.2d 109, 113 (8th Cir.1981) (rejecting idea that "likelihood" requires moving party to show better than 50-50 chance of prevailing on merits). To satisfy the "merits" prong of the preliminary injunction standard, Plaintiffs must show a "reasonable probability," at one end of the spectrum, or "fair chance," on the other, of success on the merits. Gilder v. PGA Tour, Inc., 936 F.2d 417, 422 (9th Cir.1991). Of course, a lesser showing of probability of success requires a greater showing of harm, and vice-versa. See, e.g., id. at 422-23.

      25

      A claim for copyright infringement requires that the plaintiff prove (1) its ownership of the copyright in a particular work, and (2) the defendant's copying of a substantial, legally protectable portion of such work. Pasillas v. McDonald's Corp., 927 F.2d 440, 442 (9th Cir.1991). "An author can claim to `own' only an original manner of expressing ideas or an original arrangement of facts." Cooling Systems and Flexibles, Inc. v. [1293] Stuart Radiator, Inc., 777 F.2d 485, 491 (9th Cir.1985). The plaintiff need only show that the defendant copied the protectable portion of its work to establish a prima facie case of infringement.

      26
      a. Plaintiffs' Ownership Of The Copyrights
      27

      Plaintiffs claim that the Honda commercial: (1) "infringes [P]laintiffs' copyrights in the James Bond films by intentionally copying numerous specific scenes from the films;" and (2) "independently infringes [P]laintiffs' copyright in the James Bond character as expressed and delineated in those films." Plaintiffs' Opening Memo, at 14.

      28

      Neither side disputes that Plaintiffs own registered copyrights to each of the sixteen films which Plaintiffs claim "define and delineate the James Bond character." Plaintiffs' Opening Memo re: Preliminary Injunction Motion, at 14. However, Defendants argue that because Plaintiffs have not shown that they own the copyright to the James Bond character in particular, Plaintiffs cannot prevail. Defendants' Opposition Memo re: Preliminary Injunction Motion, at 22 (citing Warner Bros. Pictures, Inc. v. Columbia Broadcasting System, Inc., 216 F.2d 945, 949-50 (9th Cir.1954), cert. denied, 348 U.S. 971, 75 S.Ct. 532, 99 L.Ed. 756 (1955) (evidence at bar suggesting that assignment from author to plaintiffs did not include copyrights to author's characters) [the Sam Spade case]). Specifically, Defendants claim that James Bond has appeared in two films in which Plaintiffs hold no copyright — "Casino Royale" and "Never Say Never Again" — and therefore, Plaintiffs cannot have exclusive rights to the James Bond character.

      29

      It appears that Defendants misconstrue Plaintiffs' claim. First, Plaintiffs do not allege that Defendants have violated Plaintiffs' copyright in the James Bond character itself, but rather in the James Bond character as expressed and delineated in Plaintiffs' sixteen films. To the extent that copyright law only protects original expression, not ideas,[4] Plaintiffs' argument is that the James Bond character as developed in the sixteen films is the copyrighted work at issue, not the James Bond character generally. See, e.g., Anderson v. Stallone, 11 U.S.P.Q.2d 1161, 1989 WL 206431, *6 (C.D.Cal.1989) (holding that Rocky characters as developed in three "Rocky" movies "constitute expression protected by copyright independent from the story in which they are contained"). Second, there is sufficient authority for the proposition that a plaintiff who holds copyrights in a film series acquires copyright protection as well for the expression of any significant characters portrayed therein. See, e.g., New Line Cinema Corp. v. Bertlesman Music Group, 693 F.Supp. 1517, 1521 n. 5 (S.D.N.Y.1988) ("Because New Line has valid copyrights in the Nightmare [on Elm Street film] series, it is clear that it has acquired copyright protection as well for the character of Freddy.") (emphasis added); Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 235 (2d Cir.1983) (same). And third, the Sam Spade case, 216 F.2d at 949-50, on which Defendants' rely, is distinguishable on its facts because Sam Spade dealt specifically with the transfer of rights from author to film producer rather than the copyrightability of a character as developed and expressed in a series of films.

      30

      Accordingly, Plaintiffs will likely satisfy the "ownership" prong of the test. See also infra discussion re: Plaintiffs' copyright ownership in context of summary judgment discussion, at 27-29.

      31
      b. What Elements Of Plaintiffs' Work Are Protectable Under Copyright Law
      32

      Plaintiffs contend that Defendants' commercial infringes in two independent ways: (1) by reflecting specific scenes from the 16 films; and (2) by the male protagonist's possessing James Bond's unique character traits as developed in the films.

      33

      Defendants respond that Plaintiffs are simply trying to gain a monopoly over the "action/spy/police hero" genre which is contrary to the purposes of copyright law. Specifically, Defendants argue that the allegedly infringed elements identified by Plaintiffs are not protectable because: (1) the helicopter [1294] chase scene in the Honda commercial is a common theme that naturally flows from most action genre films, and the woman and villain in the film are but stock characters that are not protectable; and (2) under the Ninth Circuit's Sam Spade decision, the James Bond character does not constitute the "story being told," but is rather an unprotected dramatic character.

      34
      (1) Whether Film Scenes Are Copyrightable
      35

      In their opening brief, Plaintiffs contend that each of their sixteen films contains distinctive scenes that together comprise the classic James Bond adventure: "a high-thrill chase of the ultra-cool British charmer and his beautiful and alarming sidekick by a grotesque villain in which the hero escapes through wit aided by high-tech gadgetry." Plaintiffs' Opening Memo re: Preliminary Injunction Motion, at 20. Defendants argue that these elements are naturally found in any action film and are therefore unprotected "scenes-a-faire."[5]

      36

      Both sides provide expert testimony to support their claims that such scenes are distinctive or generic, and both sides question the qualifications — and hence, the testimony — of the others' experts.[6] Indeed, there is a notable difference in the backgrounds of the parties' experts. Plaintiffs' impressive array of James Bond experts includes: (1) Lee Pfeiffer, a writer and James Bond expert whose 1992 book is entitled "The Incredible World of 007" — he has appeared on many radio and television programs as a James Bond expert; (2) Richard B. Jewell, a professor at the USC School of Cinema-Television who recently taught a course on James Bond films in the Spring of 1994; (3) Mark Cerulli, a writer/producer at HBO who has written articles and film reviews of many of the Bond films; (4) Drew Casper, a professor and film historian at the USC School of Cinema-Television; and (5) Irwin Coster, president of Coster Music Research Enterprises, Inc. Defendants' less-impressive expert list includes: (1) Arnold Margolin, a writer and producer, who considers himself to be "conversant with the genre to which James Bond and his films belong," because he has been a fan of Bond films since 1959 and has written several screenplays in the "spy film" genre; and (2) Hal Needham, a movie director responsible for the "Cannonball Run" and "Smokey and the Bandit" comedy film series.

      37

      Plaintiffs' experts describe in a fair amount of detail how James Bond films are the source of a genre rather than imitators of a broad "action/spy film" genre as Defendants contend. Specifically, film historian Casper explains how the James Bond films represented a fresh and novel approach because they "hybridize[d] the spy thriller with the genres of adventure, comedy (particularly, social satire and slapstick), and fantasy. This amalgam ... was also a departure from the series' literary source, namely writer Ian Fleming's novels." Casper Decl., ¶ 9. Casper also states: "I also believe that this distinct melange of genres, which was also seminal ... created a protagonist, antagonist, sexual consort, type of mission, type of [1295] exotic setting, type of mood, type of dialogue, type of music, etc. that was not there in the subtype of the spy thriller films of that ilk hitherto." Id., ¶ 11. In addition, Professor Jewell and Lee Pfeiffer describe the aforementioned elements in more detail and how these are in essence copied by the Honda commercial.[7]

      38

      Based on Plaintiffs' experts' greater familiarity with the James Bond films, as well as a review of Plaintiffs' James Bond montage and defense expert Needham's video montage of the "action/spy" genre films, it is clear that James Bond films are unique in their expression of the spy thriller idea. A filmmaker could produce a helicopter chase scene in practically an indefinite number of ways, but only James Bond films bring the various elements Casper describes together in a unique and original way.

      39

      Thus, the Court believes that Plaintiffs will likely succeed on their claim that their expression of the action film sequences in the James Bond films is copyrightable as a matter of law.[8]

      40
      (2) Whether James Bond Character Is Copyrightable
      41

      The law in the Ninth Circuit is unclear as to when visually-depicted characters such as James Bond can be afforded copyright protection. In the landmark Sam Spade case, Warner Bros., 216 F.2d at 950, the Ninth Circuit held that the literary character Sam Spade was not copyrightable because he did not constitute "the story being told." The court opined: "It is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright." Id.

      42

      Two subsequent Ninth Circuit decisions have cast doubt on the continued viability of the Sam Spade holding as applied to graphic characters. In Walt Disney Productions v. Air Pirates, 581 F.2d 751, 755 (9th Cir.1978), cert. denied, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979), the circuit panel held that several Disney comic book characters were protected by copyright. In acknowledging the Sam Spade opinion, the court reasoned that because "comic book characters ... are distinguishable from literary characters, the [Sam Spade] language does not preclude protection of Disney's characters." Id. The Air Pirates decision may be viewed as either: (1) following Sam Spade by implicitly holding that Disney's graphic characters constituted the story being told; or (2) applying a less stringent test for the protectability of graphic characters. See Anderson, 1989 WL 206431, at *6-7 (identifying two views and citing 1 M. Nimmer, The Law of Copyright, § 2-12, at 2-176 (1988) (interpreting Air Pirates as limiting the "story being told" test to word portraits, not graphic depictions)). One rationale for adopting the second view is that, "[a]s a practical matter, a graphically depicted character is much more likely than a literary character to be fleshed out in sufficient detail so as to warrant copyright protection." Anderson, 1989 WL 206431, at *7. However, as one district court warned, "this fact does not warrant the creation of separate analytical paradigms for protection of characters in the two mediums." Id.

      43

      A second Ninth Circuit opinion issued in 1988 did little to clarify Air Pirates' impact on the Sam Spade test. In Olson v. National Broadcasting Co., 855 F.2d 1446, 1451-52 n. 6 (9th Cir.1988), the court cited with approval the Sam Spade "story being told" test and declined to characterize this language as [1296] dicta. Later in the opinion, the court cited the Air Pirates decision along with Second Circuit precedent,[9] recognizing that "cases subsequent to [the Sam Spade decision] have allowed copyright protection for characters who are especially distinctive." Id. at 1452. Olson also noted that "copyright protection may be afforded to characters visually delineation in a television series or in a movie." Id. However, later in the opinion, the court distanced itself from the character delineation test applied by these other cases, referring to it as "the more lenient standard[] adopted elsewhere." Id.

      44

      There have been no Ninth Circuit cases on the protectability of visually-depicted characters since Olson, and therefore, it behooves this Court to analyze James Bond's status under the Sam Spade/Olson/Ninth Circuit "story being told" test, as well as under the Air Pirates/Second Circuit "character delineation" test.

      45

      Predictably, Plaintiffs claim that under either test, James Bond's character as developed in the sixteen films is sufficiently unique and deserves copyright protection, just as Judge Keller ruled that Rocky and his cohorts were sufficiently unique. See Anderson, 1989 WL 206431, at *7-8. Plaintiffs point to various character traits that are specific to Bond — i.e. his cold-bloodedness; his overt sexuality; his love of martinis "shaken, not stirred;" his marksmanship; his "license to kill" and use of guns; his physical strength; his sophistication — some of which, Plaintiffs' claim, appear in the Honda commercial's hero.

      46

      On the other hand, Defendants assert that, like Sam Spade, James Bond is not the "story being told," but instead "has changed enormously from film to film, from actor to actor, and from year to year." Defendants' Opp. Memo re: Preliminary Injunction Motion, at 22. Moreover, Defendants contend that even if Bond's character is sufficiently delineated, there is so little character development in the Honda commercial's hero that Plaintiffs cannot claim that Defendants copied more than the broader outlines of Bond's personality. See, e.g., Smith v. Weinstein, 578 F.Supp. 1297, 1303 (S.D.N.Y.), aff'd, 738 F.2d 419 (2d Cir.1984) ("no character infringement claim can succeed unless plaintiff's original conception sufficiently developed the character, and defendants have copied this development and not merely the broader outlines").

      47

      Reviewing the evidence and arguments, the Court believes that James Bond is more like Rocky than Sam Spade — in essence, that James Bond is a copyrightable character under either the Sam Spade "story being told test" or the Second Circuit's "character delineation" test. Like Rocky,[10] Sherlock Holmes, Tarzan, and Superman,[11] James Bond has certain character traits that have been developed over time through the sixteen films in which he appears. Contrary to Defendants' assertions, because many actors can play Bond is a testament to the fact that Bond is a unique character whose specific qualities remain constant despite the change in actors. See Pfeiffer and Lisa, The Incredible World of 007, at 8 ("[Despite the different actors who have played the part] James Bond is like an old reliable friend."). Indeed, audiences do not watch Tarzan, Superman, Sherlock Holmes, or James Bond for the story, they watch these films to see their heroes at work. A James Bond film without James Bond is not a James Bond film. Moreover, as discussed more specifically below, the Honda Man's character, from his appearance to his grace under pressure, is substantially similar to Plaintiffs' Bond.

      48

      Accordingly, the Court concludes that Plaintiffs will probably succeed on their claim that James Bond is a copyrightable character [1297] under either the "story being told" or the "character delineation" test.

      49
      c. Defendants' Alleged Infringement
      50

      After identifying the scope of Plaintiffs' copyrightable work, the Court must focus on whether Defendants copied Plaintiffs' work. Since direct evidence of actual copying is typically unavailable, the plaintiff may demonstrate copying circumstantially by showing: (1) that the defendant had access to the plaintiff's work, and (2) that the defendant's work is substantially similar to the plaintiff's. Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir.1990).

      51
      (1) Access
      52

      To demonstrate access, the plaintiff must show that the defendant had "an opportunity to view or to copy plaintiff's work." Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1172 (9th Cir.1977). Access may not be inferred through mere "speculation or conjecture." Ferguson v. National Broadcasting Co., 584 F.2d 111, 113 (5th Cir.1978). There must be a reasonable possibility to view plaintiff's work, not just a bare possibility. See Meta-Film Associates, Inc. v. MCA, Inc., 586 F.Supp. 1346, 1355 (C.D.Cal.1984).

      53

      In this case, Plaintiffs contend that Defendants conceded access during the telephone conference with the Court on January 4, 1995. Defendants raise access as an issue, arguing that the inventor of the Honda commercial, Gary Yoshida, states in his declaration that he has never watched more than a few minutes of any one James Bond film, and that he got the idea for the commercial from the climax scene in "Aliens."

      54

      The Court notes that: (1) Yoshida's admission that he has at least viewed portions of the James Bond films on television; (2) the "Honda man's" having been referred to as "James Bob"; and (3) the casting director's desire to cast "James Bond"-type actors and actresses, are factors sufficient to establish Defendants' access to Plaintiffs' work. Moreover, the sheer worldwide popularity and distribution of the Bond films allows the Court to indulge a presumption of access. See, e.g., Warner Bros. Inc., 654 F.2d at 208 (holding that access to Superman character assumed based on character's worldwide popularity).

      55

      Thus, the Court concludes that Plaintiffs will probably succeed on their claim that Defendants had access to Plaintiffs' work.

      56
      (2) Substantial Similarity Test
      57

      The Ninth Circuit has established a two-part process for determining "substantial similarity" by applying both the "extrinsic" and "intrinsic" tests. Krofft, 562 F.2d at 1164-65. "The [Krofft] test permits a finding of infringement only if a plaintiff proves both substantial similarity of general ideas under the `extrinsic test' and substantial similarity of the protectable expression of those ideas under the `intrinsic test.'" Shaw, 919 F.2d at 1356 (emphasis in original). This "idea-expression" dichotomy is particularly elusive to courts and the substantial similarity test necessarily involves decisions made on a case-by-case basis. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) ("Obviously, no principle can be stated as to when an imitator has gone beyond the `idea,' and has borrowed its `expression.' Decisions must therefore inevitably be ad hoc.").

      58
      (a) Extrinsic Test
      59

      The "extrinsic" test compares specific, objective criteria of two works on the basis of an analytic dissection of the following elements of each work — plot, theme, dialogue, mood, setting, pace, characters, and sequence of events. Shaw, 919 F.2d at 1359. Evidence is usually supplied by expert testimony comparing the works at issue. Because the extrinsic test relies on objective analytical criteria, "this question may often be decided as a matter of law." Krofft, 562 F.2d at 1164.

      60

      Here, both Plaintiffs' and Defendants' experts go through specific analyses of the similarities in ideas between the James Bond films and the Honda commercial. Plaintiffs contend that the commercial illegally copies specific protected portions of the James Bond films and the James Bond character itself. Defendants claim that the commercial depicts a generic action scene with a generic hero, all of which is not protected by [1298] copyright. Alternatively, Defendants argue that they did not copy a substantial portion of any one James Bond work to be liable for infringement as a matter of law.

      61

      Viewing Plaintiffs' and Defendants' videotapes and examining the experts' statements, Plaintiffs will likely prevail on this issue because there is substantial similarity between the specific protected elements of the James Bond films and the Honda commercial: (1) the theme, plot, and sequence both involve the idea of a handsome hero who, along with a beautiful woman, lead a grotesque villain on a high-speed chase, the male appears calm and unruffled, there are hints of romance between the male and female, and the protagonists escape with the aid of intelligence and gadgetry; (2) the settings both involve the idea of a high-speed chase with the villain in hot pursuit; (3) the mood and pace of both works are fast-paced and involve hi-tech effects, with loud, exciting horn music in the background;[12] (4) both the James Bond and Honda commercial dialogues are laced with dry wit and subtle humor; (5) the characters of Bond and the Honda man are very similar in the way they look and act — both heros are young, tuxedo-clad, British-looking men with beautiful women in tow and grotesque villains close at hand; moreover, both men exude uncanny calm under pressure, exhibit a dry sense of humor and wit, and are attracted to, and are attractive to, their female companions.

      62

      In addition, several specific aspects of the Honda commercial appear to have been lifted from the James Bond films:

      63

      (1) In "The Spy Who Loved Me," James Bond is in a white sports car, a beautiful woman passenger at his side, driving away down a deserted road from some almost deadly adventure, when he is suddenly attacked by a chasing helicopter whose bullets he narrowly avoids by skillfully weaving the car down the road at high speed. At the beginning of the Honda commercial, the Honda man turns to his companion and says, "That wasn't so bad"; to which the woman replies, "Well, I wouldn't congratulate yourself quite yet" — implying that they had just escaped some prior danger. Suddenly, a helicopter appears from out of nowhere and the adventure begins.

      64

      (2) In "Dr. No.," the villain has metal hands. In the Honda commercial, the villain uses his metal-encased hands to cling onto the roof of the car after he jumps onto it.

      65

      (3) In "Goldfinger," Bond's sports car has a roof which Bond can cause to detach with the flick of a lever. In the Honda commercial, the Honda del Sol has a detachable roof which the Honda man uses to eject the villain.

      66

      (4) In "Moonraker," the villainous henchman, Jaws, sporting a broad grin revealing metallic teeth and wearing a pair of oversized goggles, jumps out of an airplane. In the Honda commercial, the villain, wearing similar goggles and revealing metallic teeth, jumps out of a helicopter.

      67

      (5) In "The Spy Who Loved Me," Jaws assaults a vehicle in which Bond and his female sidekick are trying to make their escape. In the Honda commercial, the villain jumps onto the roof of the Honda del Sol and scrapes at the roof, attempting to hold on and possibly get inside the vehicle.

      68

      (6) In "You Only Live Twice," a chasing helicopter drops a magnetic line down to snag a speeding car. In the Honda commercial, the villain is dropped down to the moving car and is suspended from the helicopter by a cable.[13]

      69

      [1299] In sum, the extrinsic ideas that are inherent parts of the James Bond films appear to be substantially similar to those in the Honda commercial.[14]

      70
      (b) Intrinsic Test
      71

      The "intrinsic" test asks whether the "total concept and feel" of the two works is also substantially similar. Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir.1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1753, 84 L.Ed.2d 817 (1985). This is a subjective test that requires a determination of whether the ordinary reasonable audience could recognize the Defendants' commercial as a picturization of Plaintiffs' copyrighted work. See Berkic v. Crichton, 761 F.2d 1289, 1292 (9th Cir.), cert. denied, 474 U.S. 826, 106 S.Ct. 85, 88 L.Ed.2d 69 (1985).

      72

      Because this is a subjective determination, the comparison during the intrinsic test is left for the trier of fact. This would involve showing the Honda commercial to the members of the jury so that they may compare the same with the sixteen Bond films at issue. Viewing the evidence, it appears likely that the average viewer would immediately think of James Bond when viewing the Honda commercial, even with the subtle changes in accent and music.

      73

      As in this Court's Jaws opinion, Universal, 543 F.Supp. at 1141, the Court finds that Defendants' attempt to characterize all of the alleged similarities between the works as scenes-a-faire to be unavailing. There are many ways to express a helicopter chase scene, but only Plaintiffs' Bond films would do it the way the Honda commercial did with these very similar characters, music, pace, and mood.[15] Plaintiffs are therefore likely to prevail on the "intrinsic test."

      74
      (3) Independent Creation
      75

      After the plaintiff has satisfied both the "access" and "substantial similarity" prongs of the test, the burden then shifts to the defendant to show that the defendant's work was not a copy but rather was independently created. Kamar Int'l, Inc. v. Russ Berrie and Co., 657 F.2d 1059, 1062 (9th Cir.1981).

      76

      Defendants claim that their commercial was independently created, as evidenced from the Yoshida declaration stating that he was inspired not by James Bond, but by "Aliens." Moreover, Defendants claim that their intent is irrelevant in determining whether their commercial infringes or not.

      77

      Plaintiffs raise two points in response: (1) there is other evidence before the Court to suggest that Honda never abandoned the idea of using James Bond as the basis for its commercial — for example, the casting director's notes, Yoshida's reference in his deposition to the Honda Man as "James," etc.; and (2) this evidence of intent is relevant to counter Defendants' claim of independent creation. See, e.g., New Line Cinema, 693 F.Supp. at 1530.

      78

      For the reasons discussed above, Defendants' evidence is neither very strong nor credible; it is highly unlikely that Defendants will be able to show that they created their commercial separate and apart from the James Bond concept. Accordingly, Plaintiffs should prevail on this issue.

      79
      (4) The Fair Use Doctrine
      80

      Finally, as a separate defense to copyright infringement, Defendants claim that their use of Plaintiffs' work is protected under the fair use doctrine, which protects parodies, for example. Under the Supreme Court's recent decision in Campbell v. Acuff-Rose Music, Inc., ___ U.S. ___, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994), a subsequent work may not infringe on an original upon examining the following four-prong statutory factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational [1300] purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use on the potential for, or value of, the copyrighted work. See also Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 547, 105 S.Ct. 2218, 2223, 85 L.Ed.2d 588 (1985) (citing 17 U.S.C. § 107). The Court shall analyze each factor in turn below.

      81

      First, the Court must look to whether Defendants' use is of a commercial nature and whether, and to what extent, the infringing work is transformative of the original. Id., ___ U.S. at ___, 114 S.Ct. at 1171. In Campbell, the Supreme Court noted that a purported parody would not be protected if it is "commentary that has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh...." Id., 114 S.Ct. at 1172. Here, Plaintiffs contend that the Honda ad is completely commercial in its nature and does not comment on the earlier Bond films. Defendants claim that their commercial is a parody on the action film genre, and further, is more than simply a commercial because of its artistic merit. On balance, Plaintiffs should prevail on this issue — the Supreme Court in Campbell notes that "[t]he use ... of a copyrighted work to advertise a product, even in parody, will be entitled to less indulgence under the first factor of the fair use enquiry, than the sale of the parody for its own sake...." 114 S.Ct. at 1174. See also Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F.Supp. 826, 832 (S.D.N.Y.1990) (beer commercial copying music video); D.C. Comics, Inc. v. Crazy Eddie, Inc., 205 U.S.P.Q. 1177 (S.D.N.Y.1979) (commercial copying Superman).

      82

      Second, the Court must recognize that "some works are closer to the core of intended copyright protection than others," and thus are more deserving of protection. Campbell, ___ U.S. at ___, 114 S.Ct. at 1175 & cases cited therein (e.g. fictional works are closer to the core than fact-based works). Plaintiffs view their films as just such core-predictable work, while Defendants see their work as generic, spy thriller fare. Again, Plaintiffs should prevail on this issue because their work has created its own unique niche in the larger "action film" genre.

      83

      Third, the Court must look to the quantitative and qualitative extent of the copying involved. A parodist may appropriate only that amount of the original necessary to achieve his or her purpose. See Fisher v. Dees, 794 F.2d 432, 438 (9th Cir. 1986). The amount that may be used diminishes the less the purpose is to critique the original and the more that the parody serves as a substitute for the original. Campbell, ___ U.S. at ___, 114 S.Ct. at 1176. Plaintiffs claim that the Honda commercial is a total appropriation; Defendants describe the two versions of their commercial as "de minimis" appropriation, if at all. Plaintiffs should prevail on this issue: as mentioned above, the brevity of the infringing work when compared with the original does not excuse copying.

      84

      And fourth, the Court must measure "`the effect of the use upon the potential market for or value of the copyrighted work.'" Campbell, 114 S.Ct. at 1177 (citing 17 U.S.C. § 107(4)). The task is to distinguish between "`biting criticism [that merely] suppresses demand [and] copyright infringement [which] usurps it.'" Id., 114 S.Ct. at 1178 (citing Fisher, 794 F.2d at 438). Where the appropriation involves "mere duplication for commercial purposes," market harm is presumed. Id., ___ U.S. at ___, 114 S.Ct. at 1177. Plaintiffs allege that "one of the most commercially lucrative aspects of the copyrights is their value as lending social cachet and upscale image to cars" and that Defendants' commercial unfairly usurps this benefit. Plaintiffs' Opening Memo re: Preliminary Injunction Motion, at 32. Defendants counter that Plaintiffs present no evidence that their commercial will dissuade viewers from watching the Bond films. Plaintiffs should win on this issue as well; it is likely that James Bond's association with a low-end Honda model will threaten its value in the eyes of future upscale licensees.

      85

      It is clear from the foregoing discussion that Plaintiffs will likely succeed on this issue [1301] and Defendants will be unable to show fair use or parody.

      86
      3. Balance Of Relative Harms
      87

      It is well-settled in this circuit that once a copyrightholder has shown a likelihood of success on the merits based on access and substantial similarity, irreparable injury is presumed, warranting a preliminary injunction. See, e.g., Universal, 543 F.Supp. at 1139. Irreparable injury is presumed because the copyright owner's right to exploit its work is unique. Robert Stigwood Group, Ltd. v. Sperber, 457 F.2d 50, 55 (2d Cir.1972).

      88

      As discussed above, Plaintiffs have established a likelihood of success on the merits and therefore, the Court presumes irreparable injury. Moreover, the Court notes that Plaintiffs have shown they have been specifically harmed by the continued airing of Defendants' commercial in two ways: (1) prolonged lost licensing revenue (purportedly in the millions of dollars); and (2) dilution of the copyrights' long-term value. The latter is especially true given Plaintiffs' own deal with BMW for a special movie tie-in in conjunction with Plaintiffs' release of the first James Bond movie in six years, "Goldeneye" — a fact undisputed by Defendants. See Stolber Depo., at 81:9-84:2. Indeed, the Court can very well imagine that a majority of the public, upon viewing the Honda commercial and a future BMW ad, would come to the conclusion that James Bond was endorsing two automobile companies. Such a scenario would drastically decrease the long-term value of Plaintiffs' James Bond franchise.

      89

      In response, Defendants assert that aside from the fact that Plaintiffs will not prevail on the merits of their claim, the balance of equities tips in Defendants' favor for three reasons: (1) Plaintiffs have waited too long before seeking an injunction — Defendants began airing the commercial on October 24, 1994, Plaintiffs did not complain until mid-December 1994 and did not move for a preliminary injunction until January 23, 1995; (2) Plaintiffs have waived their rights to equitable relief by not objecting to the use of the Bond character in "Cannonball Run," "Casino Royale," and "Never Say Never Again"; and (3) unlike Plaintiffs' speculative losses, Defendants have already poured in over $6 million into the Honda commercial ($2 million in production costs plus $4 million in media placement) and stand to lose much more because of the seasonal sales of the Honda del Sol,[16] should the injunction issue.

      90

      All three of Defendants' arguments fail because: (1) Plaintiff's counsel states in his declaration that the commercial was not approved by any of the major networks as of December 21, 1994, and therefore, Plaintiffs' discovery of the commercial during the weekend of December 17-18, 1994 was reasonable; (2) Plaintiffs did not equitably waive their rights in the James Bond character as to "Cannonball Run" (an obvious parody), "Casino Royale" (Ian Fleming had sold the rights to "Casino Royale" before Plaintiffs acquired their movie rights to make their 16 films and Plaintiffs do not claim that the James Bond character in "Casino Royale" is the same as theirs), and "Never Say Never Again" (Plaintiffs tried to assert their rights in a British court, but the court allowed for the release of "Never Say Never Again" as a remake of Plaintiffs' "Thunderball");[17] and (3) the amount of Defendants' alleged loss, while relevant to determining the size of the bond Plaintiffs must post, does not change the Court's conclusion that the injunction should issue based on its finding that Plaintiffs are likely to prevail on their copyright claim.

      91
      B. Defendants' Summary Judgment Motion
      92

      As stated above, Defendants move for summary judgment on Plaintiffs' copyright infringement claim on three grounds: (1) Plaintiffs are not the exclusive owners of the elements of the James Bond character they seek to protect; (2) Plaintiffs' alleged similarities [1302] are not protected by copyright; and (3) their commercial is not substantially similar to any of Plaintiffs' films or characters.[18]

      93
      1. The Summary Judgment Standard
      94

      Under Rule 56(c) of the Federal Rules of Civil Procedure, a court may grant summary judgment upon finding that "there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.Proc. 56(c). Under Rule 56, a non-moving party must set forth specific facts showing that there exists a genuine issue of material fact for trial. See Kaiser Cement Corp. v. Fischbach and Moore, Inc., 793 F.2d 1100, 1103-04 (9th Cir.), cert. denied, 479 U.S. 949, 107 S.Ct. 435, 93 L.Ed.2d 384 (1986). Any inferences to be drawn from the underlying facts must be viewed in the light most favorable to the party opposing the summary judgment motion. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986).

      95
      2. Defendants' Motion Fails On Its Merits
      96
      a. Plaintiffs Own The Copyrights To The James Bond Character As Well As The 16 Films At Issue
      97

      Defendants first contend that Plaintiffs do not exclusively own a copyright in "James Bond" because this visually-depicted character appeared in at least three other productions: the film and television versions of "Casino Royale" and the film version of "Never Say Never Again." Defendants primarily argue that because Plaintiffs admit that the James Bond character in "Never Say Never Again" is exactly the same character depicted in Plaintiffs' 16 films, Plaintiffs do not have exclusive ownership, under Krofft, of the James Bond character as expressed and delineated in these films.

      98

      Defendants' arguments fail for several reasons. First, the Krofft case does not stand for the proposition that a copyright-holder must have "exclusive" ownership of the copyright at issue, but only "ownership" of such a right. Krofft, 562 F.2d at 1162. Indeed, if this were the case, joint ownership of copyrights could never be recognized — in fact, Plaintiffs herein assert co-ownership of these rights. Second, as stated above, ownership of a copyright in a film confers copyright ownership of any significant characters as delineated therein. And third, any claim that Plaintiffs abandoned or waived their rights in the James Bond character must be accompanied by a showing of an "intentional relinquishment of a known right with knowledge of its existence and the intent to relinquish it." United States v. King Features Entertainment, Inc., 843 F.2d 394, 399 (9th Cir.1988).

      99

      There is no evidence to suggest that Plaintiffs have ever relinquished their rights to the James Bond character as expressed in their films. First, Plaintiffs do not assert that the character in either of the two "Casino Royale" productions is the same as their James Bond portrayal;[19] and second, Plaintiffs heavily litigated their right to enjoin "Never Say Never Again" from ever being made — the fact that Plaintiffs lost that litigation does not mean that they waived their copyright claims, and Defendants have not cited, nor is the Court aware of, any case that stands for this proposition.[20]

      100

      [1303] Thus, based on the evidence before it, the Court FINDS as a matter of law that Plaintiffs own the copyright to the James Bond character as expressed and delineated in their 16 films.

      101
      b. The Alleged Similarities Between The Works Are Protected By Copyright
      102

      Next, Defendants claim, as they did in opposing Plaintiffs' preliminary injunction motion, that the similarities between the works alleged by Plaintiffs are not protectable under copyright law. Defendants' arguments are largely repetitive of those made and discussed above; however, Defendants also argue that, as a matter of law, Plaintiffs' works are entitled to only "thin" protection based on Defendants' citation to cases wherein courts have required nearly identical copying for the copyrightholder to prevail. See, e.g., Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442-44 (9th Cir.1994), cert. denied, ___ U.S. ___, 115 S.Ct. 1176, 130 L.Ed.2d 1129 (1995) (requiring copying of computer program to be nearly identical because Apple had freely licensed 90% of allegedly infringing program); Worth v. Selchow & Righter Co., 827 F.2d 569, 572 (9th Cir. 1987), cert. denied, 485 U.S. 977, 108 S.Ct. 1271, 99 L.Ed.2d 482 (1988) (requiring greater showing of similarity between factually-based works as opposed to between works of fiction).

      103

      But as Plaintiffs correctly point out, Defendants' cases are distinguishable on their facts and as a matter of policy. While it is understandable to require less protection of expressions of factual events or widely-licensed computer programs, conversely, it is important that this Court require greater protection for original works of fiction and the expression of the characters contained therein.

      104

      Thus, the Court FINDS that the instant case, which involves a careful visual delineation of a fictional character as developed over sixteen films and three decades, requires greater protection of the fictional works at issue than that accorded more factually-based or scientific works.

      105
      c. Issues Of Material Fact Exist Precluding This Court From Concluding That The Works Are Substantially Similar
      106

      Finally, Defendants contend that the Honda commercial is not substantially similar — both extrinsically and intrinsically — to Plaintiffs' protected works. The Court FINDS, for the reasons set forth above, that Plaintiffs have presented sufficient expert testimony[21] on the extrinsic test to create a [1304] triable issue as to whether the ideas expressed in the Honda commercial are substantially similar to those protected ideas that appear in Plaintiffs' films.

      107

      Moreover, because it finds that summary judgment is inappropriate under the extrinsic test, the Court is further precluded from granting summary judgment under the intrinsic test, because, at bottom, the jury must make a factual determination as to whether the Honda commercial captures the total "concept and feel" of Plaintiffs' Bond films. As the Ninth Circuit explained in Shaw: "Because each of us differs, to some degree, in our capability to reason, imagine, and react emotionally, subjective comparisons of literary works [and films] that are objectively similar in their expression of ideas must be left to the trier of fact." 919 F.2d at 1361.

      108

      IT IS SO ORDERED.

      109

      [1] During a February 10, 1995 telephone conference with counsel, the Court proposed that the parties proceed to an expedited trial on the merits in lieu of proceeding on Plaintiffs' preliminary injunction motion. Plaintiffs were receptive to the idea, but Defendants suggested instead that they be allowed to file a motion for summary judgment, and that the Court issue a ruling on both Plaintiffs' and Defendants' motions simultaneously. The Court agreed to this procedure and calendared these two motions for March 13, 1995.

      110

      [2] Defense counsel argued at the hearing that the villain's arms were normal and merely gloved. The Court's review of the commercial indicates that at the very least, the gloves contained some sort of metal in them as indicated by the scraping and clanging sounds made by the villain as he tries to get into, and hold onto, the Honda's roof.

      111

      [3] Defendants respond that this decision was solely the casting director's, and that the director was actually instructed to look for "The Avengers"-type actors. This assertion is belied by the fact that: (1) even if this is true, Defendant Rubin Postaer must have had knowledge about this because they were in charge of the overall project; (2) Plaintiffs' "Avengers" experts, Brian Clemens and David Rogers, state in their declarations that the Honda characters bear no resemblance to the "Avengers" but closely mimic "James Bond"; and (3) during his deposition, Yoshida kept on referring to the Honda protagonist as "James," which suggests that Rubin Postaer never really abandoned the concept.

      112

      [4] Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1109-10 (9th Cir.1970).

      113

      [5] Situations, incidents, or events that naturally flow from a common theme, or setting or basic plot premise are "scenes-a-faire." See, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931); 3 M. & D. Nimmer, Nimmer on Copyright, § 13.03[B][4], at 13-80-82 (1994) (discussing scenes-a-faire doctrine). In Universal City Studios v. Film Ventures International, Inc., 543 F.Supp. 1134, 1141 (C.D.Cal.1982), this Court granted a preliminary injunction to the copyright holders of "Jaws" finding that they were likely to prevail on the issue of intrinsic substantial similarity against the movie "Great White," another shark-attack film. In so doing, the Court rejected the defendants' characterization of the plaintiffs' expression of ideas as unprotectable scenes-a-faire: "The Court rejects Defendants' overly expansive view of that which falls within the unprotected sphere of general ideas and scenes a faire, and instead adopts Plaintiffs' characterization of that which constitutes the expression of ideas." Id. at 1141. It appears that in this case, as in Universal, Defendants are attempting to claim that all elements of the commercial are unprotected, and therefore, the commercial as a whole is non-infringing. This Court rejected this approach in Universal, and does so here as well.

      114

      [6] As discussed and agreed upon by the parties during the February 10, 1995 telephone status conference, the Court stated that it would not rule specifically on each of the myriad objections interposed by both parties, but would instead refer to the experts' declarations when helpful and admissible.

      115

      [7] In response, Defendants' expert Needham suggests that the three 1960s British television series "The Avengers," "The Saint," and "Danger Man" are precursors of the Bond films and that the Bond films copy from them. Furthermore, expert Margolin goes through an extrinsic test analysis of the differences between Plaintiffs' films and the Honda commercial.

      116

      In rebuttal, Plaintiffs present the declarations of: (1) Brian Clemens, who produced many episodes of "The Avengers" and "Danger Man," as well as having worked on "The Saint"; and (2) David Rogers, a leading authority on "The Avengers" and Patrick McGoohan, the star of "Danger Man." Both experts state that no part of the Honda commercial resembles either the "The Avengers," "Danger Man," or "The Saint," and that the commercial is a copy of a James Bond film.

      117

      [8] Of course, these film sequences would be only "scenes-a-faire" without James Bond. It is Bond that makes a James Bond film as the following section bears out.

      118

      [9] The Second Circuit has adopted an alternate test for determining whether dramatic characters are protectable under copyright law. In the landmark case of Nichols, 45 F.2d at 121, the court held that copyright protection is granted to a character if it is developed with enough specificity so as to constitute protectable expression. This has been viewed to be a less stringent standard than Sam Spade's "story being told" test.

      119

      [10] See Anderson, 1989 WL 206431, at *7 (discussing copyrightability of Rocky characters).

      120

      [11] See Warner Bros. Inc. v. American Broadcasting Cos., 654 F.2d 204, 208-09 (2d Cir.1981) (comparing Superman and the "Greatest American Hero" character and concluding that they are not substantially similar).

      121

      [12] In Shaw, the Ninth Circuit noted, in comparing two screenplays, that the fact that both works were "fast-paced, have ominous and cynical moods ..., and are set in large cities," did not weigh heavily in the panel's analysis because "these similarities are common to any action adventure series." 919 F.2d at 1363. Nonetheless, this situation in the case at bar is different because the mood, setting, and pace of Plaintiffs' and Defendants' works can be visually compared, as opposed to merely compared in the abstract.

      122

      [13] See also Complaint, ¶ 30. Plaintiffs identify a seventh similarity that is less compelling, but nonetheless interesting: In "Diamonds Are Forever," Sean Connery, playing James Bond, wears a toupee to cover his, by then, balding pate, a fact widely reported in the media and repeated in the Bond literature. In the Honda commercial, once the car's roof flies off flinging the villain into the air, the woman remarks, "Don't you just love the wind through your hair?," to which the man replies, "What I have left."

      123

      [14] Contrary to Defendants' implications, as a matter of law, the fact that the commercial is not a full-length movie does not preclude a finding of copyright infringement. See, e.g., New Line Cinema, 693 F.Supp. at 1526-27 (comparing music video to film series); Krofft, 562 F.2d at 1161-62 (comparing TV series to commercials).

      124

      [15] During the hearing, defense counsel pointed out several differences — the fact that the "Honda man" was blonder than Bond, the fact that the commercial was more "sepia" in tone than the Bond films, etc. — that appear to this Court to be largely immaterial differences that would not be immediately apparent to the average viewer.

      125

      [16] See Spyra Decl. in Opposition to Preliminary Injunction Motion, ¶¶ 6-7.

      126

      [17] Plaintiffs also adequately explain the existence of a very Bond-like Diet Coke commercial that appears in Needham's film montage. Apparently, Plaintiffs contacted Coke after the spot aired, demanding that it cease and desist; Coke agreed without Plaintiffs having to resort to litigation.

      127

      [18] Defendants also move to have Plaintiffs' remaining counts for false endorsement, false designation of origin, dilution of trademark and unfair competition, unfair business practices, and intentional and negligent interference with prospective business advantage, dismissed on the ground that these claims "rest on alleged substantial similarity between the Honda commercial and Plaintiffs' works...." Defendants' Opening Memo re: Summary Judgment Motion, at 33. However, because the Court DENIES Defendants' summary judgment motion as to the "substantial similarity" issue, the Court need not reach the further issue of whether the remaining counts should be dismissed.

      128

      [19] Moreover, as mentioned above, Plaintiffs recognize that author Ian Fleming had sold the movie rights to "Casino Royale" prior to Plaintiffs' obtaining their rights to make their sixteen Bond films.

      129

      [20] Aside from Krofft, the only other case Defendants cite is Sam Spade, 216 F.2d at 949-50, for the proposition that "[u]nder basic principles of copyright law, all other uses of the James Bond character affect the plaintiff's claim to ownership." Defendants' Opening Memo re: Summary Judgment, at 10. However, nowhere in that opinion does the Ninth Circuit make such a pronouncement; in fact, Plaintiffs correctly characterize Sam Spade as holding that "a copyrightholder [] cannot waive or abandon the protection afforded to a copyright absent an express contractual provision to that effect." Plaintiffs' Opposition Memo re: Summary Judgment Motion, at 26 n. 10. This proposition is fairly gleaned from the case and is consistent with the Ninth Circuit's holding in King Features, 843 F.2d at 399. Also, Sam Spade factually dealt with the idea that an author did not give up his copyrights to a character unless he specifically waived them. This case does not involve Plaintiffs asserting that Ian Fleming, the James Bond author, can no longer claim a copyright to the James Bond character; rather, this action involves Plaintiffs' right to assert a valid copyright claim against third parties without licenses or rights to the James Bond character based on Plaintiffs' specific delineation and development of the character in their 16 films.

      130

      [21] Aside from the numerous declarations on file that address the "substantial similarity" issue, Plaintiffs also submitted several other expert declarations, including ones from: (1) Sir Kingley Amis, author of The James Bond Dossier; (2) Professor Tony Bennett, author of Bond and Beyond: the Political Career of a Popular Hero; and (3) John Cork, author of James Bond in the '90s, a character bible for Danjaq to use with future James Bond films. Defendants object to all of these declarations on similar grounds as before: these experts won't assist the trier of fact, lack of foundation, lack of personal knowledge, etc. Again, by the February 10, 1995 agreement, the Court may rely on these declarations as it sees fit.

      131

      Defendants also move to strike Ann Marie Mortimer's declaration and the exhibits attached thereto because Plaintiffs allegedly failed to turn over these documents relevant to the two motions at issue: "Although aware of the fact that ownership and enforcement of their rights would be an issue in these motions, [P]laintiffs failed to produce the agreements pursuant to which [P]laintiffs obtained any ownership rights or copyrights or any files relating to their efforts to enforce the alleged rights in the James Bond character against others.... Now, however, at the eleventh hour, and after forcing [D]efendants to respond to a motion for preliminary injunction, [P]laintiffs have provided the Court with relevant documents." Defendants' Objection to Mortimer Decl., at 3 (emphasis and citations omitted).

      132

      The Court DENIES this request for the following reasons: First, when Plaintiffs initially responded to Defendants' interrogatories and document requests, Plaintiffs objected on the ground that these requests were overbroad or irrelevant. Because Defendants concede in their summary judgment motion that Plaintiffs own the rights to the sixteen films at issue here, the Court does not believe that Plaintiffs intended to deliberately withhold these documents from the defense; it appears instead that Plaintiffs honestly did not believe ownership to be a contested issue. Second, Defendants have not been prejudiced by this allegedly "late" production of Plaintiffs' evidence of ownership because Defendants clearly knew, as the Court knew, as early as February 6, 1995 (when Plaintiffs filed their reply papers in the preliminary injunction proceeding) that Plaintiffs had claimed ownership of the sixteen films and had asserted their rights in the James Bond character against other entities. Even though Plaintiffs did not produce these documents until February 27, 1995, Defendants had notice that Plaintiffs had asserted these claims; in other words, if Defendants needed to review these documents prior to that time, they could have moved to compel production, and yet they did not. As it is, Defendants had a week to analyze these documents in time to file their reply papers by March 6, 1995. Finally, and most importantly, Defendants do not contest the substantive importance or validity of the exhibits attached to the Mortimer declaration; they simply contend that the Court should not consider these documents because they were not turned over earlier. In light of the foregoing, the Court does not believe there was any gamesmanship on Plaintiffs' part here, nor was there any undue prejudice to Defendants because Plaintiffs did not file the Mortimer exhibits until February 27, 1995.

    • 2.2 Honda Del Sol Commercial (Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., 900 F.Supp. 1287 (C.D.Cal. 1995))

  • 3 William Fisher, "Theories of Intellectual Property" in Stephen Munzer, ed., New Essays in the Legal and Political Theory of Property (Cambridge University Press, 2001), Section III.A.

    1
    THEORIES OF INTELLECTUAL PROPERTY
    2

    William Fisher[*]

    3

    from: Stephen Munzer, ed., New Essays in the Legal and Political Theory of Property (Cambridge University Press, 2001), 168-199

    4

    The term "intellectual property" refers to a loose cluster of legal doctrines that regulate the uses of different sorts of ideas and insignia. The law of copyright protects various “original forms of expression,” including novels, movies, musical compositions, and computer software programs. Patent law protects inventions and some kinds of discoveries. Trademark law protects words and symbols that identify for consumers the goods and services manufactured or supplied by particular persons or firms. Trade-secret law protects commercially valuable information (soft-drink formulas, confidential marketing strategies, etc.) that companies attempt to conceal from their competitors. The “right of publicity” protects celebrities’ interests in their images and identities.

    5

    The economic and cultural importance of this collection of rules is increasing rapidly. The fortunes of many businesses now depend heavily on intellectual-property rights. A growing percentage of the legal profession specializes in intellectual-property disputes. And lawmakers throughout the world are busily revising their intellectual-property laws.[1]

    6

    Partly as a result of these trends, scholarly interest in the field has risen dramatically in recent years. In law reviews and in journals of economics and philosophy, articles deploying "theories" of intellectual property have proliferated. This essay canvasses those theories, evaluates them, and considers the roles they do and ought to play in lawmaking.

    7
    I. A Preliminary Survey
    8

    Most of the recent theoretical writing consists of struggles among and within four approaches. The first and most popular of the four employs the familiar utilitarian guideline that lawmakers’ beacon when shaping property rights should be the maximization of net social welfare. Pursuit of that end in the context of intellectual property, it is generally thought, requires lawmakers to strike an optimal balance between, on one hand, the power of exclusive rights to stimulate the creation of inventions and works of art and, on the other, the partially offsetting tendency of such rights to curtail widespread public enjoyment of those creations.

    9

    A good example of scholarship in this vein is William Landes' and Richard Posner's essay on copyright law. The distinctive characteristics of most intellectual products, Landes and Posner argue, are that they are easily replicated and that enjoyment of them by one person does not prevent enjoyment of them by other persons. Those characteristics in combination create a danger that the creators of such products will be unable to recoup their "costs of expression" (the time and effort devoted to writing or composing and the costs of negotiating with publishers or record companies), because they will be undercut by copyists who bear only the low "costs of production" (the costs of manufacturing and distributing books or CDs) and thus can offer consumers identical products at very low prices. Awareness of that danger will deter creators from making socially valuable intellectual products in the first instance. We can avoid this economically inefficient outcome by allocating to the creators (for limited times) the exclusive right to make copies of their creations. The creators of works that consumers find valuable – i.e., for which there are not, in the opinion of consumers, equally attractive substitutes – will be empowered thereby to charge prices for access to those works substantially greater than they could in a competitive market. All of the various alternative ways in which creators might be empowered to recover their costs, Landes and Posner contend, are, for one reason or another, more wasteful of social resources.  This utilitarian rationale, they argue, should be—and, for the most part, has been—used to shape specific doctrines within the field.[2]

    10

    A related argument dominates the same authors' study of trademark law. The primary economic benefits of trademarks, they contend, are (1) the reduction of consumers' "search costs" (because it's easier to pick a box of "Cheerios" off the grocery shelf than to read the list of ingredients on each container, and because consumers can rely upon their prior experiences with various brands of cereal when deciding which box to buy in the future) and (2) the creation of an incentive for businesses to produce consistently high-quality goods and services (because they know that their competitors cannot, by imitating their distinctive marks, take a free ride on the consumer good will that results from consistent quality). Trademarks, Landes and Posner claim, also have an unusual ancillary social benefit: they improve the quality of our language. By increasing our stock of nouns and by “creating words or phrases that people value for their intrinsic pleasingness as well as their information value,” they simultaneously economize on communication costs and make conversation more pleasurable. To be sure, trademarks can sometimes be socially harmful—for example by enabling the first entrant into a market to discourage competition by appropriating for itself an especially attractive or informative brand name. Awareness of these benefits and harms should (and usually does), Landes and Posner claim, guide legislators and judges when tuning trademark law; marks should be (and usually are) protected when they are socially beneficial and not when they are, on balance, deleterious.[3]

    11

    The second of the four approaches that currently dominate the theoretical literature springs from the propositions that a person who labors upon resources that are either unowned or “held in common” has a natural property right to the fruits of his or her efforts – and that the state has a duty to respect and enforce that natural right. These ideas, originating in the writings of John Locke, are widely thought to be especially applicable to the field of intellectual property, where the pertinent raw materials (facts and concepts) do seem in some sense to be “held in common” and where labor seems to contribute so importantly to the value of finished products.[4]

    12

    A good illustration of this perspective is Robert Nozick's brief but influential discussion of patent law in Anarchy, State, and Utopia.[5] After associating himself with Locke's argument, Nozick turns his attention to Locke's famously ambiguous "proviso" –­the proposition that a person may legitimately acquire property rights by mixing his labor with resources held "in common" only if, after the acquisition, "there is enough and as good left in common for others."[6] Nozick contends that the correct interpretation of this limitation ("correct" in the senses (a) that it probably corresponds to Locke's original intent and (b) that, in any event, it is entailed by "an adequate theory of justice") is that the acquisition of property through labor is legitimate if and only if other persons do not suffer thereby any net harm. "Net harm" for these purposes includes such injuries as being left poorer than they would have been under a regime that did not permit the acquisition of property through labor or a constriction of the set of resources available for their use —but does not include a diminution in their opportunities to acquire property rights in unowned resources by being the first to labor upon them. Construed in this fashion, the Lockean proviso is not violated, Nozick argues, by the assignment of a patent right to an inventor because, although other persons' access to the invention is undoubtedly limited by the issuance of the patent, the invention would not have existed at all without the efforts of the inventor. In other words, consumers are helped, not hurt, by the grant of the patent. Nozick contends, however, that fidelity to Locke's theory would mandate two limitations on the inventor's entitlements. First, persons who subsequently invented the same device independently must be permitted to make and sell it. Otherwise the assignment of the patent to the first inventor would leave them worse off. Second, for the same reason, patents should not last longer than, on average, it would have taken someone else to invent the same device had knowledge of the invention not disabled them from inventing it independently. Although Nozick may not have been aware of it, implementation of the first of these limitations would require a substantial reform of current patent law—which, unlike copyright law, does not contain a safe harbor for persons who dream up the same idea on their own.

    13

    The premise of the third approach —derived loosely from the writings of Kant and Hegel—his that private property rights are crucial to the satisfaction of some fundamental human needs; policymakers should thus strive to create and allocate entitlements to resources in the fashion that best enables people to fulfill those needs.  From this standpoint, intellectual property rights may be justified either on the ground that they shield from appropriation or modification artifacts through which authors and artists have expressed their "wills" (an activity thought central to “personhood”) or on the ground that they create social and economic conditions conducive to creative intellectual activity, which in turn is important to human flourishing.[7]

    14

    In perhaps the most fully developed argument of this sort, Justin Hughes derives from Hegel's Philosophy of Right the following guidelines concerning the proper shape of an intellectual-property system. (a) We should be more willing to accord legal protection to the fruits of highly expressive intellectual activities, such as the writing of novels, than to the fruits of less expressive activities, such as genetic research. (b) Because a person's "persona"—his "public image, including his physical features, mannerisms, and history"—is an important "receptacle for personality," it deserves generous legal protection, despite the fact that ordinarily it does not result from labor. (c) Authors and inventors should be permitted to earn respect, honor, admiration, and money from the public by selling or giving away copies of their works, but should not be permitted to surrender their right to prevent others from mutilating or misattributing their works.[8]

    15

    The last of the four approaches is rooted in the proposition that property rights in general—and intellectual-property rights in particular—can and should be shaped so as to help foster the achievement of a just and attractive culture. Theorists who work this vein typically draw inspiration from an eclectic cluster of political and legal theorists, including Jefferson, the early Marx, the Legal Realists, and the various proponents (ancient and modern) of classical republicanism.[9] This approach is similar to utilitarianism in its teleological orientation, but dissimilar in its willingness to deploy visions of a desirable society richer than the conceptions of “social welfare” deployed by utilitarians.

    16

    A provocative example may be found in Neil Netanel's recent essay, "Copyright and a Democratic Civil Society." Netanel begins by sketching a picture of "a robust, participatory, and pluralist civil society," teeming with "unions, churches, political and social movements, civic and neighborhood associations, schools of thought, and educational institutions." In this world, all persons would enjoy both some degree of financial independence and considerable responsibility in shaping their local social and economic environments. A civil society of this sort is vital, Netanel claims, to the perpetuation of democratic political institutions. It will not, however, emerge spontaneously; it must be nourished by government. In two ways, copyright law can help foster it.

    17

    The first is a production function. Copyright provides an incentive for creative expression on a wide array of political, social, and aesthetic issues, thus bolstering the discursive foundations for democratic culture and civic association. The second function is structural. Copyright supports a sector of creative and communicative activity that is relatively free from reliance on state subsidy, elite patronage, and cultural hierarchy.

    18

    Promotion of these two objectives does not require that we retain all aspects of the current copyright system. On the contrary, Netanel suggests, they would be advanced more effectively by a copyright regime trimmed along the following lines: The copyright term should be shortened, thereby increasing the size of the "public domain" available for creative manipulation. Copyright owners' authority to control the preparation of "derivative works" should be reduced for the same reason. Finally, compulsory licensing systems should be employed more frequently to balance the interests of artists and "consumers" of their works.[10]

    19

    Other writers who have approached intellectual-property law from similar perspectives include Keith Aoki, Rosemary Coombe, Niva Elkin-Koren, Michael Madow, and myself.[11] As yet, however, this fourth approach is less well established and recognized than the other three. It does not even have a commonly accepted label. To describe a closely analogous perspective developed in the context of land law, Greg Alexander suggests the term "Proprietarian" theory.[12] I find more helpful the phrase, “Social Planning Theory."

    20
    II. Explaining the Pattern
    21

    Those, then, are (in order of prominence and influence) the four perspectives that currently dominate theoretical writing about intellectual property: Utilitarianism; Labor Theory; Personality Theory; and Social Planning Theory. What accounts for the influence of these particular approaches? In large part, their prominence derives from the fact that they grow out of and draw support from lines of argument that have long figured in the raw materials of intellectual property law—constitutional provisions, case reports, preambles to legislation, and so forth.

    22

    The dependence of theorists on ideas formulated and popularized by judges, legislators, and lawyers is especially obvious in the case of utilitarianism. References to the role of intellectual-property rights in stimulating the production of socially valuable works riddle American law. Thus, for example, the constitutional provision upon which the copyright and patent statutes rest indicates that the purpose of those laws is to provide incentives for creative intellectual efforts that will benefit the society at large.[13] The United States Supreme Court, when construing the copyright and patent statutes, has repeatedly insisted that their primary objective is inducing the production and dissemination of works of the intellect.[14]  A host of lower courts have agreed.[15]

    23

    References to the importance of rewarding authors and inventors for their labor are almost as common. Proponents of legislative extensions of copyright or patent protection routinely make arguments like: "Our American society is founded on the principle that the one who creates something of value is entitled to enjoy the fruits of his labor."[16] The United States Supreme Court often uses a similar vocabulary. For example, Justice Reed ended his opinion in Mazer v. Stein with the solemn statement: "Sacrificial days devoted to . . . creative activities deserve rewards commensurate with the services rendered."[17] Lower court opinions and appellate arguments frequently take the same tack.[18]

    24

    Until recently, the personality theory had much less currency in American law.  By contrast, it has long figured very prominently in Europe. The French and German copyright regimes, for example, have been strongly shaped by the writings of Kant and Hegel. This influence is especially evident in the generous protection those countries provide for "moral rights"—authors' and artists' rights to control the public disclosure of their works, to withdraw their works from public circulation, to receive appropriate credit for their creations, and above all to protect their works against mutilation or destruction.  This cluster of entitlements has traditionally been justified on the ground that a work of art embodies and helps to realize its creator’s personality or will. In the past two decades, "moral-rights" doctrine—and the philosophic perspective on which it rests—have found increasing favor with American lawmakers, as evidenced most clearly by the proliferation of state art-preservation statutes and the recent adoption of the federal Visual Artists Rights Act.[19]

    25

    Finally, deliberate efforts to craft or construe rules in order to advance a vision of a just and attractive culture—the orientation that underlies Social Planning Theory—can be found in almost all of the provinces of intellectual property law. Such impulses underlie, for example, both the harsh response of most courts when applying copyright or trademark law to scatological humor and the generally favorable treatment they have accorded criticism, commentary, and education. Social-planning arguments also figure prominently in current debates concerning the appropriate scope of intellectual-property rights on the Internet.[20]

    26

    To summarize, one source of the prominence of utilitarian, labor, personality, and social-planning theories in recent theoretical literature is the strength of similar themes in judicial opinions, statutes, and appellate briefs. But two circumstances suggest that such parallelism and resonance cannot fully explain the configuration of contemporary theories. First, there exist in the materials of intellectual-property law several important themes that have not been echoed and amplified by a significant number of theorists.  Many American courts, for example, strive when construing copyright or trademark law to reflect and reinforce custom—either customary business practices or customary standards of "good faith" and "fair dealing."[21] That orientation has deep roots both in the common law in general and in the early-twentieth-century writings of the American Legal Realists.[22] Yet few contemporary intellectual-property theorists pay significant attention to custom.[23] Much the same can be said of concern for privacy interests. Long a major concern of legislators and courts,[24] protection of privacy has been given short shrift by contemporary American theorists.

    27

    The second circumstance is that, in legislative and judicial materials, arguments of the various sorts we have been considering typically are blended. Here, for example, is the preamble to Connecticut's first copyright statute:

    28

    Whereas it is perfectly agreeable to the principles of natural equity and justice, that every author should be secured in receiving the profits that may arise from the sale of his works, and such security may encourage men of learning and genius to publish their writings; which may do honor to their country, and service to mankind . . ..[25]

    29

    Two hundred years later, in the Harper & Row case, the Supreme Court took a similar line:

    30

    We agree with the Court of Appeals that copyright is intended to increase and not to impede the harvest of knowledge. But we believe the Second Circuit gave insufficient deference to the scheme established by the Copyright Act for fostering the original works that provide the seed and substance of this harvest. The rights conferred by copyright are designed to assure contributors to the store of knowledge a fair return for their labors.[26]

    31

    Fairness, incentives, culture-shaping—in these and countless other passages, they swirl together. In contemporary theoretical writing, by contrast, such themes are typically disentangled and juxtaposed.

    32

    How can we account for these two respects in which intellectual-property theory deviates from extant legal materials? The answer seems to be that the theorists are seeing the law through glasses supplied by political philosophy. In contemporary philosophic debates, natural law, utilitarianism, and theories of the good are generally seen as incompatible perspectives.[27] It is not surprising that legal theorists, familiar with those debates, should separate ideas about intellectual property into similar piles.

    33

    One additional circumstance also likely plays a part: Many contemporary intellectual-property theorists also participate in similar arguments about the appropriate shape of property law in general. In that arena, there is now a well-established canon of rival perspectives, again drawn in large part from Anglo-American political philosophy.  Labor theory, utilitarianism, and personality theory are the primary contenders.[28] We should not be surprised to see them replicated in the context of intellectual property.

    34
    III. Gaps, Conflicts, and Ambiguities
    35

    Lawmakers are confronted these days with many difficult questions involving rights to control information. Should the creators of electronic databases be able to demand compensation from users or copyists? What degree of similarity between two plots or two fictional characters should be necessary to trigger a finding that one infringes the other? Should computer software be governed by copyright law, patent law, or a sui generis legal regime? Should we expand or contract intellectual-property protection for the configurations of consumer products? Should time-sensitive information (e.g., sports scores, news, financial data) gathered by one party be shielded from copying by others?  Many other, similar problems demand attention.

    36

    The proponents of all four of the leading theories of intellectual property purport to provide lawmakers with answers to questions of these sorts. In other words, they understand their arguments to be, not merely systematic accounts of the impulses that have shaped extant legal doctrines, but guides that legislators and judges can use in modifying or extending those doctrines in response to new technologies and circumstances. Unfortunately, all four theories prove in practice to be less helpful in this regard than their proponents claim. Ambiguities, internal inconsistencies, and the lack of crucial empirical information severely limit their prescriptive power. Subsections III.A. – III.D., below, explore those limitations. Section IV contends that the theories nevertheless have considerable value.

    37
    A.
    38

    The first task in developing a utilitarian theory of intellectual property is translating the Benthamite ideal of the "greatest good of the greatest number" into a more precise and administrable standard. Most contemporary writers select for this purpose either the "wealth-maximization" criterion, which counsels lawmakers to select the system of rules that maximizes aggregate welfare measured by consumers' ability and willingness to pay for goods, services, and conditions,[29] or the "Kaldor-Hicks" criterion, under which one state of affairs is preferred to a second state of affairs if, by moving from the second to the first, the "gainer" from the move can, by a lump-sum transfer, compensate the "loser" for his loss of utility and still be better off.[30]

    39

    This preliminary analytical maneuver is vulnerable to various objections. First, the wealth-maximization and Kaldor-Hicks criteria, though similar, are not identical, and much may turn on the choice between them. Next, skeptics commonly object to both criteria on the grounds that they ignore the incommensurability of utility functions and bias analysis in favor of the desires of the rich, who, on average, value each dollar less than the poor. Finally, some economists and political theorists who draw inspiration from the rich tradition of utilitarianism contend that both criteria (but especially the first) define social welfare too narrowly and would prefer a more encompassing analytical net. But because these objections are by no means limited to the field of intellectual property and because they have been well aired elsewhere, I will not pause to explore them here.[31]

    40

    Assume that we are comfortable with at least one of these criteria as our beacon.  How might it be applied to intellectual-property law? What system of rules, in other words, will most improve social welfare? It turns out that there are at least three general ways in which we might try to answer that question:[32]

    41

    1. Incentive Theory. The first and most common of the three approaches is well illustrated by William Nordhaus’ classic treatment of patent law.[33] Norhaus was primarily concerned with determining the optimal duration of a patent, but his analysis can be applied more generally. Each increase in the duration or strength of patents, he observed, stimulates an increase in inventive activity. The resultant gains to social welfare include the discounted present value of the consumer surplus and producer surplus associated with the distribution of the intellectual products whose creation is thereby induced. At the same time, however, social welfare is reduced by such things as larger administrative costs and larger deadweight losses associated with the higher prices of intellectual products that would have been created even in the absence of the enhanced incentive. Ideally, patent duration or strength should be increased up to the point where the marginal benefits equal the marginal costs.[34]

    42

    2. Optimizing Patterns of Productivity. Many years ago, Harold Demsetz argued that the copyright and patent systems play the important roles of letting potential producers of intellectual products know what consumers want and thus channelling productive efforts in directions most likely to enhance consumer welfare.[35] In the past decade, a growing group of theorists has argued that recognition of this function justifies expanding the copyright and patent systems. In Paul Goldstein's words:

    43

    The logic of property rights dictates their extension into every corner in which people derive enjoyment and value from literary and artistic works.  To stop short of these ends would deprive producers of the signals of consumer preference that trigger and direct their investments.[36]

    44

    Won’t adoption of this strategy impede public dissemination of intellectual products?  Not at all, say the proponents of this approach. Sales and licenses will ensure that goods get into the hands of people who want them and are able to pay for them. Only in the rare situations in which transaction costs would prevent such voluntary exchanges should intellectual-property owners be denied absolute control over the uses of their works -­either through an outright privilege (such as the fair-use doctrine) or through a compulsory licensing system.[37]

    45

    3. Rivalrous Invention. The final approach is related to but distinguishable from the second. Its objective is to eliminate or reduce the tendency of intellectual-property rights to foster duplicative or uncoordinated inventive activity. The foundation for this approach was laid by a group of economists, led by Yoram Barzel, who over the last three decades have explored the ways in which competition among firms complicates the impact of the patent system upon inventive activity.[38] This body of literature has sensitized legal theorists to three stages in the inventive process at which economic waste can occur. First, the pot of gold represented by a patent on a pioneering, commercially valuable invention may lure an inefficiently large number of persons and organizations into the race to be the first to reach the invention in question. Second, the race to develop a lucrative improvement on an existing technology may generate a similar scramble for similar reasons at the "secondary" level. Finally, firms may try to "invent around" technologies patented by their rivals—i.e., to develop functionally equivalent but non-infringing technologies—efforts that, although rational from the standpoint of the individual firm, represent a waste of social resources. Heightened awareness of these risks has prompted legal scholars to search for possible reforms of intellectual property law—or of related doctrines, such as antitrust law—that would mitigate the dissipation of resources at these various sites.[39]

    46

    Serious difficulties attend efforts to extract from any one of these approaches answers to concrete doctrinal problems. With respect to incentive theory, the primary problem is lack of the information necessary to apply the analytic. To what extent is the production of specific sorts of intellectual products dependent upon maintenance of copyright or patent protection? With respect to some fields, some commentators have answered: very little. Other monetary or nonmonetary rewards—such as profits attributable to lead time, inventors’ opportunities to speculate in markets that will be affected by the revelation of their inventions, the prestige enjoyed by artistic and scientific innovators, academic tenure, and the love of art—would be sufficient to sustain current levels of production even in the absence of intellectual-property protection.[40] Other commentators sharply disagree.[41] The truth is that we don't have enough information to know who is right. Empirical work has suggested that patent law has been more important in stimulating innovation in certain industries (e.g., pharmaceuticals and chemicals) than in others, but has failed to answer the ultimate question of whether the stimulus to innovation is worth its costs.[42] With respect to forms of intellectual-property protection other than patents, we know even less.

    47

    Even if we were able to surmount this enormous hurdle—and concluded that society would be better off, on balance, by supplying authors and inventors some sort of special reward—major sources of uncertainty would remain. Is an intellectual-property system the best way of providing that reward or might it be better, as Steven Shavell and Tanguy van Ypersele have recently suggested, for a government agency to estimate the social value of each innovation and pay the innovators that sum out of tax revenues?[43] If the former, how far should creators' entitlements extend? Should they include the right to prepare "derivative works"? To block "experimental uses" of their technologies? To suppress their inventions? Some scholars continue to seek the data necessary to begin to answer questions of this sort. Most have given up the game, despairing of acquiring the kinds of information one would need.[44] Almost everyone agrees that such information is not yet at our disposal. Until it is, lawmakers will gain little guidance from the first variant of the utilitarian approach.

    48

    Theorists who seek to optimize patterns of productivity confront less severe information problems. To be sure, they are obliged to make difficult judgments—often with thin data—on such questions as whether the failure of creators to license certain uses of their works results from the fact that such uses are worth less to consumers than preventing them is worth to creators (in which case, the absence of licenses is socially desirable) or from excessively high transaction costs (in which case, the creators should be compelled to grant licenses—for free or for a governmentally determined fee). But inquiries of this sort are not as frighteningly complex as those that confront incentive theorists. However, scholars and lawmakers who take this road confront an additional problem: What is the set of productive activities the incentives for which we are trying to adjust? For the reasons sketched above, if we confine our attention to intellectual products, the optimal legal doctrine may be one that confers upon creators a very generous set of entitlements. Only thereby will potential producers be provided refined signals concerning how consumers wish to make use of which sorts of intellectual products. However, as Glynn Lunney has argued, if we expand our frame of reference, that solution proves highly problematic.[45] In virtually no field of economic activity are innovators empowered to collect the full social value of their innovations. The elementary schoolteacher who develops a new technique for teaching mathematics, the civil-rights activist who discovers a way to reduce racial tension, the physicist who finds a way to integrate our understandings of gravity and quantum mechanics—all of these confer on society benefits that vastly exceed the innovators' incomes. Enlarging the entitlements of intellectual-property owners thus might refine the signals sent to the creators of different sorts of fiction, movies, and software concerning consumers' preferences, but would lead to even more serious overinvestment in intellectual products as opposed to such things as education, community activism, and primary research.  Unfortunately, Lunney's proposed response to this problem—reducing copyright protection until the creators of entertainment receive rewards no greater than the returns available to innovators in other fields—would sacrifice most of the economic benefits highlighted by Demsetz and Goldstein. The optimal solution is thus far from clear.

    49

    Theorists bent on avoiding redundant inventive activity have problems of their own. The most serious difficulty arises from the fact that reducing social waste at one stage of the inventive process commonly increases it at another. Thus, for example, in the leading article in this subfield, Edmund Kitch highlighted the advantages of granting to the developer of a pioneering invention an expansive set of entitlements, thereby enabling him or her to coordinate research and development dedicated to improving the invention, thus reducing the dissipation of rents at the secondary level.[46] However, as Robert Merges argues, granting generous patents on pioneering inventions will exacerbate rent dissipation at the primary level. An even greater – and more socially wasteful – number of persons or firms will now race to be the first to develop pioneering patents. Mark Grady and Jay Alexander have developed an ingenious theory for determining which of these dangers is more salient in particular cases.[47] Primary inventions that have only modest social value but that "signal" a large potential for improvement are likely to draw potential improvers like flies. To cut down on the swarms, the developer of the primary invention should be granted a broad patent of the sort commended by Kitch. Primary inventions with large social value but minimal "signalling" power should, instead, be given only narrow patents—to reduce the risk of duplicative activity at the primary level. Finally, and most surprisingly, socially valuable inventions so well conceived they cannot be improved upon should be given no patents whatsoever, thereby discouraging rent dissipation at both levels. This typology, though intriguing, has many defects, both practical and theoretical. To begin with, it is difficult to determine in advance which inventions “signal” possibilities for improvement. Next, what are we to do with cases in which the invention at issue is of a type that both is highly socially valuable (thus creating a danger of waste at the primary level) and signals a large number of improvements (thus creating a danger of waste at the secondary level)? Finally, Robert Merges and Richard Nelson point out that efforts, through broad patent grants, to mitigate rent dissipation at the secondary level may have serious economic side effects. Instead of enabling the original inventor to coordinate efficiently the exploitation of the technology, it may lead to "satisficing" behavior[48] and an inefficiently narrow focus on improvements related to the primary inventor's principal line of business.[49] In short, a combination of limited information and theoretical tensions render this third approach just as indeterminate in practice as the other two.[50]

    50

    Even if the difficulties specific to each of the three economic approaches could be resolved, an even more formidable problem would remain: there exists no general theory that integrates the three lines of inquiry. How should the law be adjusted in order simultaneously (i) to balance optimally incentives for creativity and concomitant efficiency losses, (ii) to send potential producers of all kinds of goods accurate signals concerning what consumers want, and (iii) to minimize rent dissipation? To date, no theorist has even attempted to answer this overarching question. Until that challenge is successfully met, the power of the utilitarian approach to provide guidance to lawmakers will be sharply limited.[51]

    51
    B.
    52

    Similar difficulties afflict efforts to apply labor theory to intellectual property.  The problems begin at the threshold. As was true of utilitarianism, it is not altogether clear that the labor theory supports any sort of intellectual-property law. The source of the difficulty is ambiguity in Locke's original rationale for property rights—from which this entire theory springs. Why exactly should labor upon a resource held "in common" entitle the laborer to a property right in the resource itself? Scattered in Chapter 5 of the Second Treatise can be found six related but distinguishable answers to that question.

    53

    (1) "Natural reason" tells us that men have "a right to their Preservation," and the only practicable way in which they can sustain themselves is by individually "appropriating" materials necessary to provide them food and shelter.[52]

    (2) Religious obligation reinforces the foregoing proposition. God did not merely give the Earth to man in common, but "commanded" him to "subdue" it—i.e., "improve it for the benefit of Life"—which man can do only by both laboring upon it and appropriating the fruits of that labor.[53]

    (3) Intuitions regarding self-ownership point in the same direction. Each person plainly has "a Property in his own Person," including the "Labour of his Body, and the Work of his Hands." It seems only natural that whatever he mixes that Labour with should belong to him as well.[54]

    (4) The moral value of work reinforces the foregoing insight. God gave the World to "the Industrious and Rational, … not to the Fancy or Covetousness of the Quarrelsom and Contentious." It is thus fitting that the former acquire, through their labour, title to that which they labor upon.[55]

    (5) A sense of proportionality and fairness also figures in the inquiry.  Most of the value of things useful to men derives not from the value of the raw materials from which they are made, but from the labour expended on them. It is thus not "so Strange" that, when determining whether ownership should be assigned to the worker or the community, the individual "Property of labour should be able to over­balance the Community of Land."[56]

    (6) Finally, Locke relies throughout the chapter on an imagery of productive transformation. By labouring upon unclaimed land or other resources, the worker changes them from wild to domestic, from raw to cultivated, from chaotic to ordered, from pointless to purposeful. The self-evident desirability of that transformation supports a reward for the worker.[57]

    54

    Whether Locke's theory provides support for intellectual property depends upon which of these various rationales one regards as primary. If, for example, one sees arguments 4 and 5 as the crux of the matter, then the Second Treatise would seem to provide strong support for most sorts of intellectual property. After all, most authors and inventors work hard, and their intellectual labor typically is a far more important contributor to the total value of their creations than the raw materials they have employed. On the other hand, if arguments 1 and 2 are stressed, the case for intellectual-property rights is far weaker. As Seana Shiffrin shows, crucial to these two arguments is the proposition that certain articles essential to life, such as food, cannot be enjoyed in common; "their use must, of necessity, be exclusive."[58] Yet intellectual products plainly are not like that. Not only is access to them typically not necessary for survival, but they can be used by an infinite number of persons, simultaneously or in sequence, without being used up.

    55

    Whether Locke's theory provides support for any intellectual-property rights is thus uncertain. It depends on which aspects of Locke's original theory are dominant.  Locke did not say, and no interpreter of his work has yet provided us a convincing way of ascertaining his original intent.[59] Assume, however, that we somehow surmount the barricade identified by Shiffrin and conclude that intellectual labor does give rise to a natural entitlement to its fruits—an entitlement that the state must recognize and enforce.  Other difficulties await us.

    56

    Perhaps the most formidable is the question: What, for these purposes, counts as "intellectual labor"? There are at least four plausible candidates: (1) time and effort (hours spent in front of the computer or in the lab); (2) activity in which one would rather not engage (hours spent in the studio when one would rather be sailing); (3) activity that results in social benefits (work on socially valuable inventions); (4) creative activity (the production of new ideas). The first of the four may be closest to Locke's original intent, but he was not focusing on intellectual labor. Justin Hughes has shown that serious arguments can be made in support of the both the second and the third. And Lawrence Becker reminds us how important the fourth is to our images of deserving authors and inventors.[60]  No grounds on which we might select one or another are readily apparent.

    57

    Unfortunately, our choice among these four options will often make a big difference. The third, for instance, suggests that we should insist, before issuing a patent or other intellectual-property right, that the discovery in question satisfy a meaningful "utility" requirement; the other three would not. The second would counsel against conferring legal rights on artists who love their work; the other three point in the opposite direction. The fourth would suggest that we add to copyright law a requirement analogous to the patent doctrine of "nonobviousness"; the others would not. In short, a lawmaker's inability to choose among the four will often be disabling.

    58

    Similar troubles arise when one tries to apply Locke's conception of "the commons" to the field of intellectual property. What exactly are the raw materials, owned by the community as a whole, with which individual workers mix their labor in order to produce intellectual products? At least seven possibilities come to mind:

    59

    (a) the universe of “facts”;[61]

    (b) languages—the vocabularies and grammars we use to communicate and from which we fashion novel intellectual products;

    (c) our cultural heritage—the set of artifacts (novels, paintings, musical compositions, movies, etc.) that we "share" and that gives our culture meaning and coherence;

    (d) the set of ideas currently apprehended by at least one person but not owned by anyone;

    (e) the set of ideas currently apprehended by at least one person;

    (f) the set of all "reachable" ideas – that is, all ideas that lie within the grasp of people today;

    (g) the set of all "possible ideas" – that is, all ideas that someone might think of.[62]

    60

    When applying the Lockean argument to intellectual property, it will often make a difference which of these options one selects. For example, option (c) is difficult to reconcile with contemporary copyright and trademark law, under which much of our cultural heritage – Mickey Mouse, "Gone with the Wind," the shape of a Coke bottle – is owned, not by the community, but by individual persons or organizations; options (a) and (b) present no such difficulty. Patent law is consistent with option (d) but not (e) -­insofar as it permits ownership of many extant "ideas." Copyright law, which (at least formally) does not allow the ownership of any "ideas" (only distinctive ways of "expressing" them) meshes comfortably with either (d) or (e). As Justin Hughes has shown, the Lockean "sufficiency" proviso can be satisfied fairly easily if one chooses option (f)—on the theory that the deployment of most ideas enables other people to "reach" an even larger set of ideas and thus enlarges rather than subtracts from the commons. By contrast, if one adopts option (g)—as both Wendy Gordon and Robert Nozick appear to do—the sufficiency proviso becomes a good deal more constraining (a topic to which we will return in a minute). Which is the correct approach? Who knows?[63]

    61

    Suppose we arbitrarily select one interpretation—say, option (d). Trying to fit it into the Lockean analytic quickly gives rise to three additional, related problems. First, the act of mixing labor with a piece of the commons does not, under any of the various extant intellectual-property regimes, work the way Locke supposed real-property law works. When one mixes one's physical labor with a plot of virgin land, one should acquire, Locke suggested, a natural right not merely to the crops one produces but to the land itself. By contrast, when one mixes one's intellectual labor with an existing idea, one acquires a property right only to the "original" or "novel" material one has generated, not to the idea with which one began. Second, the set of entitlements one acquires does not have the kind of exclusivity Locke apparently attributed to real-property rights.[64] For example, the issuance of a patent on a better mousetrap prevents others from making that mousetrap, but not from reading the patent and using the information contained therein to make an even better mousetrap. The issuance of a copyright on a novel prevents others from copying it but not from reading it, discussing it, parodying it, etc. Finally, Locke suggested that the property rights one acquires through labor upon resources held in common do and should last forever—i.e., are alienable, devisable, and inheritable indefinitely.[65]   Most intellectual-property rights, by contrast, sooner or later expire.

    62

    One might respond that none of these observations indicates that the application of labor-desert theory to intellectual property is indeterminate. They indicate merely that intellectual-property law would have to be radically revised to conform to the Lockean scheme. Perhaps. But the scale of the necessary revision is daunting. Is it plausible—on Lockean or any other premises—that by working to express in distinctive form the idea that infidelity usually corrodes a marriage, one would acquire ownership of the idea itself? Is it plausible that, by registering the trademark "Nike," one could prevent others from using it in any way – including reproducing it in an essay on intellectual property?  If not, then what set of more limited entitlements would satisfy the obligation of the state to "determine" and "settle" natural property rights? Locke's argument contains few clues.

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    We have not exhausted, unfortunately, the troubles associated with the "sufficiency" proviso. Some of the commentators who have sought to harness Locke's argument to intellectual property have seen little difficulty in the requirement that a laborer leave "as much and as good" for others. Justin Hughes, for example, emphasizes the myriad ways in which the expansion of the set of available ideas stimulated by intellectual property improves the lot of everyone. Robert Nozick, as suggested above, sees the sufficiency proviso as somewhat more constraining, but has identified to his satisfaction a way of structuring patent law that avoids violating it. Wendy Gordon, by contrast, construes the proviso as a much more serious limitation on the scope of intellectual-property rights. Conferring monopoly privileges on the creators of intellectual products, she claims, can hurt more than help the public. Take the word "Olympics.” If the term did not exist, we would have contrived other ways to communicate the notion of periodic amateur international sports competitions untainted by ideology or warfare. But because the word does exist, we have become dependent on it. No other word or collection of words quite captures the idea. Consequently, if we now prohibit "unauthorized" uses of the word – for example, in connection with the "Gay Olympics" or on a T-shirt highlighting the hypocritical way in which the ideal has been applied in recent years—we have left the public worse off than if the word never existed.  Fidelity to the Lockean proviso (and to a more general "no-harm" principle that runs through Locke's work), Gordon insists, requires that we withhold property rights in situations such as these. Once again, a wide range of interpretations of an important component of Locke's theory is available, and no one member of the set seems plainly superior to the others.[66]

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    We come, finally, to the well-known problem of proportionality. Nozick asks: If I pour my can of tomato juice into the ocean, do I own the ocean? Analogous questions abound in the field of intellectual property. If I invent a drug that prevents impotence, do I deserve to collect for 20 years the extraordinary amount of money that men throughout the world would pay for access to the drug? If I write a novel about a war between two space empires, may I legitimately demand compensation from people who wish to prepare motion-picture adaptations, write sequels, manufacture dolls based on my characters, or produce T-shirts emblazoned with bits of my dialogue? How far, in short, do my rights go? Locke gives us little guidance.[67]

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    C.
    66

    Private property rights, argue contemporary personality theorists, should be recognized when and only when they would promote human flourishing by protecting or fostering fundamental human needs or interests. The first step in the application of this perspective to intellectual property is identification of the specific needs or interests one wishes to promote. As Jeremy Waldron has argued, a wide variety of interests might be deemed fundamental, each of which arguably could be advanced by a system of property rights. Here are some:

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    (1) Peace of Mind. An exclusive right to determine how certain resources shall be used might be thought essential to avoid moral exhaustion—the sense of guilt that arises from awareness that one's actions, one's use of the commons, disadvantages countless other people.[68]

    (2) Privacy. Property rights may be necessary to provide persons "refuge[s] from the general society of mankind"—places where they can either be alone or enjoy intimacy with others.[69]

    (3) Self-Reliance. An exclusive right to control certain resources may be thought necessary to enable persons to become independent, self-directing.[70]

    (4) Self-Realization as a Social Being. The freedom to own and thus trade things may be necessary to enable persons to help shape their social environments and establish their places in communities.[71]

    (5) Self-Realization as an Individual. Ownership of property may be necessary to enable a person to assert his or her will and to be recognized as a free agent by others.[72]

    (6) Security and Leisure. Control over a certain amount of resources may be necessary to free persons from obsession with obtaining the means of survival, the "impulsion of desire," and thus to enable them to attend to higher pursuits.[73]

    (7) Responsibility. Virtues like "prudence," self-direction, and foresight may be cultivated by the opportunity and obligation to manage one's own resources.[74]

    (8) Identity. Selfhood may be thought to depend upon the ability to project a continuing life plan into the future, which is turn is fostered by connection to and responsibility for property.[75]

    (9) Citizenship. Ownership of a certain amount of resources might be thought necessary to put a person in an economic and psychological position to participate effectively in the polity.[76]

    (10) Benevolence. Property rights may be thought essential to enable a person to express ideas of what is beautiful or to enact benevolent wishes.[77]

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    Six of these ten arguments—1, 3, 4, 6, 7, 9 – provide support for some system of intellectual-property rights but give us little guidance in deciding which entitlements to recognize. To the extent that intellectual-property rights have economic value and may be bought and sold, gained and lost, they may contribute to their owners' abilities to avoid guilt, become autonomous, engage in independent political action, etc. But those values could be promoted equally well by providing persons rights to land or shares in private corporations. Consequently, a lawmaker persuaded by one of these claims would be inspired to construct some system of private ownership of resources, but would have little help in determining which resources to privatize and which to leave to the public.

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    Personhood-based guidelines for crafting intellectual-property rights thus must be found, if anywhere, in some combination of themes 2, 5, 8, and 10: the interests of privacy, individual self-realization, identity, and benevolence. But the writers who have sought to extract from those sources answers to specific questions have come to widely divergent conclusions. Here are some examples:

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    When an author has revealed her work to the world, does it nevertheless continue to fall within the zone of her "personhood"—so that she may legitimately claim a right to restrict its further communication? Neil Netanel, relying on an exploration of the ideal of "autonomy," thinks yes.  Lloyd Weinreb, reasoning that, "once the individual has communicated her expression publicly, it takes on a 'life of its own' and . . . its further communication does not involve her autonomous self," thinks no.[78]

    Assume the answer to the previous question is yes. May the author alienate his right to control the copying of his work? Kant, reasoning that "an author's interest in deciding how and when to speak [is] an inalienable part of his personality," thought no. Hegel, reasoning that expressions of mental aptitudes (as opposed to the aptitudes themselves) were "external to the author and therefore freely alienable," thought yes.[79]

    Should an artist's investment of his self in a work of visual art – say, a painting or sculpture – prevent others from imitating his creation? Hegel thought not—on the ground that the copy would be "essentially a product of the copyist's own mental and technical ability." Justin Hughes seems to take the opposite position.[80]

    Is the protection of trade secrets necessary to protect privacy interests?  Edwin Hettinger thinks no—on the ground that most trade secrets are owned by corporations, which do not have the "personal features privacy is intended to protect.” Lynn Sharp Paine disagrees. She argues that the right to privacy includes the freedom to reveal information to a limited circle of friends or associates without fear that it will be exposed to the world—a freedom that trade-secret law shields.[81]

    Is a celebrity's persona a sufficiently important repository of selfhood that other persons ought not be permitted to exploit that persona commercially without permission? Justin Hughes suggests yes, reasoning that "[a]s long as an individual identifies with his personal image, he will have a personality stake in that image." Michael Madow, insisting that the "creative (and autonomous) role of the media and the audience in the

    meaning-making process" are at least as important as the "personality" of the celebrity, sharply disagrees.[82]

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    Two related problems underlie these and many other disagreements. First, the conceptions of the self—the images of "personhood" that, through adjustments of intellectual-property doctrine, we are trying to nurture or protect – that underlie most avatars of personality theory are too abstract and thin to provide answers to many specific questions. Either a more fully articulated vision of human nature (that would forthrightly address such grand questions as the importance of creativity to the soul) or a conception of personhood tied more tightly to a particular culture and time seems necessary if we are to provide lawmakers guidance on the kinds of issue that beset them.

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    Second, no personality theorist has yet dealt adequately with what Margaret Radin once called the problem of fetishism.[83] Which of the many tastes exhibited by current members of American culture should be indulged, and which should not? The quest for individuality? Nationalism? Nostalgia for a real or imagined ethnic or racial identity?  The hope that audiences will treat one's creations with respect? The hunger for fifteen minutes (or more) of fame? Yearnings or orientations of all of these sorts are implicated by intellectual-property disputes. Deciding which merit our deference is essential to determining how those disputes should be resolved.

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    D.
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    The limitations of the guidance provided by general theories of intellectual property is perhaps easiest to see with respect to the last of the four approaches.  Lawmakers who try to harness social-planning theory must make difficult choices at two levels. The first and most obvious involves formulating a vision of a just and attractive culture. What sort of society should we try, through adjustments of copyright, patent, and trademark law, to promote? The possibilities are endless.

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    The range of options is illustrated by my own effort in a recent essay to bring social-planning theory to bear on the question of the proper shape of intellectual-property law on the Internet. I offered, as the foundation for that analysis, a sketch of an attractive intellectual culture. A condensed version of that sketch follows:

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    Consumer Welfare. Other things being equal, a society whose members are happy is better than one whose members are, by their own lights, less happy. Applied to the field of intellectual property, this guideline urges us to select a combination of rules that will maximize consumer welfare by optimally balancing incentives for creativity with incentives for dissemination and use. That goal must, however, be tempered by other aspirations.

    A Cornucopia of Information and Ideas. An attractive culture would be one in which citizens had access to a wide array of information, ideas, and forms of entertainment. Variety in this sense helps make life stimulating and enlivening. Access to a broad range of intellectual products is also crucial to widespread attainment of two related conditions central to most conceptions of the good life—namely, self-determination and self-expression—both by providing persons the materials crucial to self-construction, and by fostering a general condition of cultural diversity, which enables and compels individuals to shape themselves.

    A Rich Artistic Tradition. The more complex and resonant the shared language of a culture, the more opportunities it affords its members for creativity and subtlety in communication and thought. For reasons best explored by Ronald Dworkin, recognition of that fact points toward governmental polices designed to make available to the public "a rich stock of illustrative and comparative collections of art" and, more generally, to foster "a tradition of [artistic] innovation."

    Distributive Justice. To the greatest extent practicable, all persons should have access to the informational and artistic resources described above.

    Semiotic Democracy. In an attractive society, all persons would be able to participate in the process of making cultural meaning. Instead of being merely passive consumers of images and artifacts produced by others, they would help shape the world of ideas and symbols in which they live.

    Sociability. An attractive society is one rich in "communities of memory."  Persons' capacity to construct rewarding lives will be enhanced if they have access to a variety of "constitutive" groups – in “real” space and in “virtual” space.

    Respect. Appreciation of the extent to which self-expression is often a form of self-creation should make people respectful of others' work.[84]

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    The controversial character of a vision of this sort is immediately apparent. Many of its components—for example, the criterion of distributive justice—have for centuries been the subjects of furious debate among political philosophers.[85] It is plainly implausible that theorists of intellectual-property could resolve controversies of this scale in the course of analyses of copyright or patent doctrine.

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    Unfortunately, the choice of a particular social vision by no means exhausts the difficulties associated with this fourth approach. Equally serious problems commonly arise when one tries to apply such a vision to a specific doctrinal problem. Take the problem of parody, for example. Intellectual products that make fun of other intellectual products are becoming increasingly common: "Don't leave home without it" on a condom container crafted to resemble an American Express card. Comic books depicting Mickey Mouse and Donald Duck participating in a drug-infested, promiscuous culture. Altered photographs of John Wayne suggesting that he was homosexual, embellished with the caption, "It's a bitch to be butch." Trademarks that allude humorously to other trademarks ("Dom Popignon" popcorn; "Lardache" bluejeans). Should these be permitted? The particular social vision sketched above points in inconsistent directions.  On one hand, permitting, even encouraging, parody of this sort would seem to facilitate semiotic democracy. Parody erodes the control over the meanings of cultural artifacts exerted by powerful institutions and expands opportunities for creativity by others. On the other hand, parodies (especially if effective) may cut seriously into the legitimate personhood interests of the artists who originally fashioned the parodied artifacts. Which of these two concerns should predominate must be determined by reflection on the cultural context and significance of individual cases. The social vision on its own does not provide us much guidance.

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    IV. The Value of Theory
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    The indeterminacy of the personality and social-planning perspectives has long been recognized. That recognition is reflected, for example, in the common accusation that those perspectives are "illiberal" insofar as they seek to regulate persons' behavior on the basis of necessarily controversial "theories of the good"—the sort of thing that governments ought not do.[86] A closely related, equally common charge is that the social-planning and personhood perspectives are "paternalistic" insofar as they curtail persons' freedom on the basis of conceptions of what is "good for them" with which they themselves may not agree.[87] By contrast, the utilitarian and labor-desert approaches, especially the former, have enjoyed an aura of neutrality, objectivity, and above all determinacy. That aura helps to explain why courts, when presented with difficult problems of statutory interpretation, have sought guidance most often from economic arguments and least often from social-planning arguments. One of the burdens of this essay has been to disrupt that pattern—to show that the prescriptive powers of all four arguments are sharply limited.

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    That conclusion, however, does not imply that the theories have no practical use.[88] In two respects, I suggest, they retain considerable value. First, while they have failed to make good on their promises to provide comprehensive prescriptions concerning the ideal shape of intellectual-property law, they can help identify nonobvious attractive resolutions of particular problems. Second, they can foster valuable conversations among the various participants in the lawmaking process.

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    A good example of the first of these uses of theory involves the recent history of the "right of publicity"—the entitlement of celebrities to prevent (or demand compensation for) commercial depictions or imitations of their faces, voices, distinctive turns of phrase, characteristic poses, etc.. Until quite recently, this right was widely thought by American courts and commentators to be "commonsensical." For example, the author of the principal treatise on the subject describes the right of publicity as "a self-evident legal right, needing little intellectual rationalization to justify its existence."[89] Sentiments of this sort prompted one state after another to recognize the entitlement -­either through legislation or through common-law decisionmaking—and then give it generous scope.

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    In the mid-1990s, a small group of commentators began drawing explicitly on theories of intellectual property to criticize the right of publicity. None of the four major perspectives, they argued, provided support for such an entitlement. (a) From a utilitarian standpoint, the right seems senseless. It is not necessary to induce people to cultivate distinctive identities. It encourages people, once they have become celebrities, to coast on their endorsement incomes rather than continue to provide the public the services that made them famous. And it wastes social resources by inducing excessive numbers of adolescents to seek fame. (b) Nor is the right justified as a reward for labor. Often, fame results from luck, fickle public tastes, or the efforts of third parties more than it does from the efforts of the celebrity. In any event, celebrities are adequately remunerated in other ways for their labor. (c) If protecting personhood were one's goal, the right of celebrity would be a poor way to achieve it. The right protects the ability of celebrities to make money from their personae – an ability not particularly close to the heart of personality development—and does nothing to prevent disclosure of intimate details concerning celebrities’ lives. (d) Last but not least, the right of celebrity exacerbates the centralization of semiotic power in the United States and undermines popular control over "popular culture."[90]

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    A few influential courts have begun to take notice. For example, in a recent decision, the Court of Appeals for the Tenth Circuit relied explicitly on this emerging body of critical commentary to turn aside a challenge by the Major League Baseball Players to the sale of a set of baseball cards that parodied the league's stars. The power of theory is especially evident in the following passage:

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    Parodies of celebrities are an especially valuable means of expression because of the role celebrities play in modern society. As one commentator explained, celebrities are "common points of reference for millions of individuals who may never interact with one another, but who share, by virtue of their participation in a mediated culture, a common experience and a collective memory." Through their pervasive presence in the media, sports and entertainment celebrities come to symbolize certain ideas and values. … Celebrities, then, are an important element of the shared communicative resources of our cultural domain.

    Because celebrities are an important part of our public vocabulary, a parody of a celebrity does not merely lampoon the celebrity, but exposes the weakness of the idea or value that the celebrity symbolizes in society. … In order to effectively criticize society, parodists need access to images that mean something to people, and thus celebrity parodies are a valuable communicative resource. Restricting the use of celebrity identities restricts the communication of ideas.[91]

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    A federal District Court recently employed a similar approach in rejecting a claim by Mayor Rudolf Giuliani that an advertisement describing New York Magazine as “possibly the only good thing in New York Rudy hasn’t taken credit for” violated Giuliani’s right of publicity.[92] If this style of analysis becomes more popular, the doctrinal tide may well turn.

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    Another example of the deployment of theory to suggest solutions to specific problems comes from my own work. Should the producer of an intellectual product be permitted to engage in price discrimination – i.e., to charge prices that vary with consumers’ ability and willingness to pay for access to the product? When it is feasible, producers frequently try to market their wares in this fashion.[93] Various doctrines in current intellectual property law limit (though certainly do not eliminate) their ability to do so. For instance, some kinds of patent license terms (e.g., agreements to purchase only from the patentee staple items of commerce for use in conjunction with the patented technology), though highly effective price-discrimination tools, are currently treated as “patent misuse.” The first-sale doctrine in copyright law prevents a seller from prohibiting low-margin consumers from reselling the copies they purchase to high-margin potential consumers, thereby limiting the power of the seller to exploit the latter.  And some aspects of current trademark law concerning “parallel imports” discourage trademark owners from charging less for their products in poor countries than in rich countries. Should these rules, or related doctrines in contract law, be modified?

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    One's initial reaction is likely to be: no. Charging whatever the market will bear has an unsavory flavor. It smacks of greed and has no obvious social benefit.  Impressions of that sort contributed to the Robinson-Patman Act[94] and have colored some courts’ responses to price discrimination in the distribution of intellectual products.

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    Immersion in intellectual-property theory, however, suggests a different answer.  At least two of the four approaches reviewed in this essay—utilitarianism and social-planning theory—converge to suggest that price discrimination in the sale of intellectual products may in some contexts be a good thing. Recall that one of the objectives of economic theorists is simultaneously to increase incentives for creative activity and to reduce the associated welfare losses. Price discrimination—by enabling producers to charge eager consumers more than less eager consumers—makes such an unlikely combination possible. By discriminating among subgroups of consumers, a producer is able both to increase his or her own monopoly profits and to reduce the number of consumers who are priced out of the market. In combination, these two effects sharply increase the ratio between incentives for creativity and welfare losses. Finally, price discrimination makes possible greater approximation of the ideal of distributive justice discussed briefly in Part III.D. Usually (though not always), the consumers able and willing to spend substantial sums for an intellectual product are more wealthy that the consumers able and willing to spend only a little. Because of that circumstance, price discrimination often enables a larger group of poor consumers to gain access to a product—and to pay less than their wealthy counterparts. Widespread adoption of this marketing strategy would thus enable us to approach the goal of providing all persons equal access to works of the intellect.[95]

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    To be sure, price discrimination in some contexts may have substantial disadvantages. The resources expended in establishing and administering price discrimination schemes represent social losses that at least partially offset the efficiency gains described above. Price discrimination sometimes requires the producer to obtain information about the tastes or habits of potential consumers, and the gathering of that information may invade their privacy. In the patent context, the gathering of analogous information concerning the business practices of licensees may facilitate the formation of cartels. Finally, price discrimination might sometimes result in pricing out of the market consumers interested in making transformative uses of intellectual products.[96] Only through careful analysis of the markets for specific sorts of intellectual products can it be ascertained whether these drawbacks exceed the economic and social benefits reviewed above. But a combination of utilitarian and social-planning theory creates a nonobvious prima facie case for the expansion of opportunities for price discrimination.

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    The other reason why intellectual-property theory retains value is that it can catalyze useful conversations among the various people and institutions responsible for the shaping of the law. More specifically, continued explicit discussion of the kinds of themes addressed in this essay would be valuable in three contexts. First, interaction among Congress, the courts, and administrative agencies (in particular, the Patent and Trademark Office) would be improved. Congress, when it adopts or amends intellectual-property laws, frequently fails to anticipate difficult interpretive questions. If the courts, when compelled in the context of individual disputes to resolve those questions, articulate a general theory they are using to guide their decisionmaking, they increase the likelihood that Congress, during the next general revision of the relevant statute, will be able thoughtfully either to endorse or to reject the courts’ judgments. Much the same can be said of decision-making by administrative agencies that are then appealed to the courts.

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    Second, explicit reliance upon intellectual-property theories will improve conversations between lawmakers and their constituents. Why should the term of a copyright be extended from the life of the author plus 50 years to the life of the author plus 70 years? Because the additional time is necessary to encourage additional creativity? Because authors deserve greater rewards for their labors? Because the culture would be worse off if works like “Steamboat Willie” were released to the public domain? Why should it be possible to register as a federal trademark the sound made by motorcycles bearing a particular brand – thereby preventing other manufacturers from making motorcycles that sound the same? Because otherwise consumers will be confused concerning the manufacturers of the motorcycles they are buying? Because a culture in which motorcycles can be recognized from a distance by the noise they make is better than a culture in which they cannot? Because employees of the first company deserve a reward for the effort they invested in constructing a muffler that emits a distinctive guttural sound? By articulating and defending a theoretical rationale for each innovation, Congress (in the first example) or the courts (in the second example) would increase the ability of the public at large or, more plausibly, affected interest groups critically to appraise the change. Lawmakers, in short, would become more accountable.[97]

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    Finally, through continued conversations among scholars, legislators, judges, litigants, lobbyists, and the public at large, there may lie some hope of addressing the inadequacies of the existing theories. For the reasons sketched above, the analytical difficulties associated with the effort to apply the Lockean version of labor theory to intellectual property may well prove insurmountable, but there may be some non-Lockean way of capturing the popular intuition that the law should reward people for hard work. Only by continuing to discuss the possibility – and trying to bring some alternative variant of labor theory to bear on real cases – can we hope to make progress.  Much the same can be said of the gaps in personality theory. The conception of selfhood employed by current theorists may be too thin and acontextual to provide lawmakers much purchase on doctrinal problems. But perhaps, through continued reflection and conversation, we can do better.

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    Conversational uses of intellectual-property theories of the sort sketched above would be different from the way in which such theories most often have been deployed in the past. Instead of trying to compel readers, through a combination of noncontroversial premises and inexorable logic, to accept a particular interpretation or reform of legal doctrine, the scholar or lawmaker would attempt, by deploying a combination of theory and application, to strike a chord of sympathy in his or her audience. The sought-after response would not be, “I can’t see any holes in the argument,” but rather, “That rings true to me.”

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    [*] This essay has benefited substantially from the comments of Charles Fried, Paul Goldstein, Jim Harris, Ned Hettinger, Edmund Kitch, Ed McCaffery, Stephen Munzer, Samuel Oddi, J.E. Penner, F.M. Scherer, Seanna Shiffrin, John T. Sanders, Stewart Sterk, and a generous group of anonymous outside readers.

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    [1] The history of these doctrines in the United States—and possible reasons for their growing importance -­are considered in William Fisher, “Geistiges Eigentum – ein ausufernder Rechtsbereich: Die Geschichte des Ideenschutzes in den Vereinigten Staaten,” in Eigentum im internationalen Vergleich (Göttingen: Vandenhoeck & Ruprecht, 1999) (available in English at http://www.law.harvard.edu/Academic_Affairs/coursepages/tfisher/iphistory.html).

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    [2] William Landes and Richard Posner, "An Economic Analysis of Copyright Law," Journal of Legal Studies 18 (1989): 325. This argument is derived in substantial part from Jeremy Bentham, A Manual of Political Economy (New York: Putnam, 1839); John Stuart Mill, Principles of Political Economy, 5th ed. (New York: Appleton, 1862); and A.C. Pigou, The Economics of Welfare, 2d ed. (London: Macmillan & Co., 1924).

    98

    [3] William Landes and Richard Posner, "Trademark Law: An Economic Perspective," Journal of Law and Economics 30 (1987): 265. Other works that address trademark law in similar terms include Nicholas Economides, “The Economics of Trademarks,” Trademark Reporter 78 (1988): 523-39 and Daniel McClure, “Trademarks and Competition: The Recent History,” Law and Contemporary Problems 59 (1996): 13-43.

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    [4] See, for example, Justin Hughes, "The Philosophy of Intellectual Property," Georgetown Law Journal 77 (1988): 287, at 299-330. These initial impressions are examined in more detail in part III, below.

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    [5] Robert Nozick, Anarchy, State, and Utopia (New York: Basic Books, 1974), pp. 178-82.

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    [6] John Locke, Two Treatises of Government (P. Laslett, ed., Cambridge: Cambridge University Press, 1970), Second Treatise, sec. 27.

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    [7] See Margaret Jane Radin, Reinterpreting Property (Chicago: University of Chicago Press, 1993); Jeremy Waldron, The Right to Private Property (Oxford: Clarendon, 1988).

    103

    [8] See Hughes, “Philosophy of Intellectual Property,” at 330-350.

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    [9] See, for example, James Harrington, Oceana (Westport, Conn.: Hyperion Press, 1979); Thomas Jefferson, Notes on the State of Virginia (New York: Norton, 1972); Karl Marx, Economic and Philosophic Manuscripts of 1844 (New York: International Publishers, 1964); Morris Cohen, "Property & Sovereignty," Cornell Law Quarterly 13 (1927): 8; Frank Michelman, “Law’s Republic,” Yale Law Journal 97 (1988): 1493; William Fisher, Morton Horwitz, and Thomas Reed, eds., American Legal Realism (New York: Oxford University Press, 1993).

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    [10] “Copyright and a Democratic Civil Society,” Yale Law Journal 106 (1996): 283. See also idem., “Asserting Copyright’s Democratic Principles in the Global Arena,” Vanderbilt Law Review 51 (1998): 217-329.

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    [11] See, for example, Rosemary J. Coombe, "Objects of Property and Subjects of Politics: Intellectual Property Laws and Democratic Dialogue," Texas Law Review 69 (1991): 1853; Niva Elkin-Koren, "Copyright Law and Social Dialogue on the Information Superhighway: The Case Against Copyright Liability of Bulletin Board Operators," Cardozo Arts & Entertainment Law Journal 13 (1995): 345; Michael Madow, "Private Ownership of Public Image: Popular Culture and Publicity Rights," California Law Review 81 (1993): 125; William Fisher, "Reconstructing the Fair Use Doctrine," Harvard Law Review 101 (1988): 1659-1795, at 1744-94.

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    [12] Gregory S. Alexander, Commodity and Propriety (Chicago: University of Chicago Press, 1997), p. 1.

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    [13] Article I, section 8, clause 8 of the United States Constitution empowers Congress "to 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."

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    [14] See, for example, Fox Film Corp. v. Doyal, 286 U.S. 123, 127-28 (1932); Kendall v. Winsor, 62 U.S. (21 How.) 322, 327-28 (1858).

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    [15] See, for example, Hustler Magazine v. Moral Majority, 796 F.2d 1148, 1151 (9th Cir. 1986); Consumers Union of United States v. General Signal Corp., 724 F.2d 1044, 1048 (2d Cir. 1983).

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    [16] Testimony of Elizabeth Janeway, Copyright Law Revision: Hearings on H.R. 4347, 5680, 6831, 6835 Before Subcomm. No. 3 of the House Comm. on the Judiciary, 89th Cong., 1st Sess. (1965), reprinted in George S. Grossman, Omnibus Copyright Revision Legislative History, vol. 5 (1976), p. 100.

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    [17] 347 U.S. 201, 219 (1954). For a similar argument in the patent context, see Motion Picture Patents Co. v. Universal Film Manufacturing Co., 243 U.S. 502 (1917).

    113

    [18] Many examples are set forth in Stewart E. Sterk, “Rhetoric and Reality in Copyright Law,” Michigan Law Review 94 (1996): 1197; Alfred C. Yen, "Restoring the Natural Law: Copyright as Labor and Possession," Ohio State Law Journal 51 (1990): 517; and Lloyd Weinreb, "Copyright for Functional Expression," Harvard Law Review 111 (1998): 1149-1254, at 1211-14.

    114

    [19] See Thomas Cotter, "Pragmatism, Economics, and the Droit Moral," North Carolina Law Review 76 (1997): 1, 6-27; Jeri D. Yonover, "The ‘Dissing’ of Da Vinci: The Imaginary Case of Leonardo v. Duchamp: Moral Rights, Parody, and Fair Use," Valparaiso University Law Review 29 (1995): 935-1004.

    115

    [20] See Niva Elkin-Koren, "Cyberlaw and Social Change: A Democratic Approach to Copyright Law in Cyberspace," Cardozo Arts & Entertainment Law Journal 14 (1996): 215.

    116

    [21] Harper & Row v. Nation Enterprises, 471 U.S. 539, 563 (1985). See also Time v. Bernard Geis Associates, 293 F.Supp. 130, 146 (S.D.N.Y. 1968); Rosemont Enterprises v. Random House, 366 F.2d 303, 307 (2d Cir. 1966); Holdridge v. Knight Publishing Corp., 214 F.Supp. 921, 924 (S.D.Cal. 1963).

    117

    [22] See Fisher et al., American Legal Realism, p. 170.

    118

    [23] But cf. Weinreb, "Copyright for Functional Expression.”

    119

    [24] See Harper & Row v. Nation Enterprises, 471 U.S. 539, 564 (1985); Salinger v. Random House, 811 F.2d 90, 97 (2d Cir. 1987).

    120

    [25] 1783 Conn. Pub. Acts Jan. Sess., reprinted in U.S. Copyright Office, Copyright Enactments of the United States, 1783-1906, at 11 (2d ed., Washington: G.P.O., 1906).

    121

    [26] Harper & Row v. Nation Enterprises, 471 U.S. 539, 545-46 (1985).

    122

    [27] The pertinent literature is enormous. A few entries, suggesting the importance of the divisions drawn in the text, are H.L.A. Hart, "Between Utility and Rights," Columbia Law Review 79 (1979): 828; Michael Sandel, Liberalism and the Limits of Justice (Cambridge: Cambridge University Press, 1982).

    123

    [28] For discussions and illustrations of the canon, see, J. Roland Pennock and John W. Chapman, eds., Property (Nomos XXII) (New York: New York University Press, 1980); Alan Ryan, Property and Political Theory (Oxford: Blackwell, 1984); Waldron, Right to Private Property. To be sure, not all property theorists are inclined to maintain the traditional boundaries between natural law, utilitarianism, and theories of the good. For one prominent pluralist theory, see Stephen R. Munzer, A Theory of Property (Cambridge: Cambridge University Press, 1990).

    124

    [29] For more thorough discussion of this standard, see Richard Posner, Economic Analysis of Law (3d ed., Boston: Little, Brown, 1986), pp. 11-15.

    125

    [30] See Nicholas Kaldor, "Welfare Propositions in Economics and Interpersonal Comparisons of Utility," Economic Journal 69 (1939): 549-52.

    126

    [31] For explorations of these difficulties, see, for example, Baker, “Starting Points in Economic Analysis of Law,” Hofstra Law Review 8 (1980): 939, 966-72; Duncan Kennedy, “Cost-Benefit Analysis of Entitlement Problems: A Critique,” Stanford Law Review 33 (1981): 387; Ronald Dworkin, “Is Wealth a Value?,” Journal of Legal Studies 9 (1980): 191; Louis Kaplow and Steven Shavell, “Principles of Fairness versus Human Welfare: On the Evaluation of Legal Policy,” John M. Olin Foundation, Discussion Paper No. 277 (2000).

    127

    [32] A thorough review of the many varieties of economic analysis may be found in Peter Menell, “Intellectual Property: General Theories,” Encyclopedia of Law & Economics (forthcoming 2000).

    128

    [33] William D. Nordhaus, Invention, Growth, and Welfare: A Theoretical Treatment of Technological Change (Cambridge: M.I.T. Press, 1969).

    129

    [34] Among the lessons that Nordhaus derived from his analysis are that “commodities that have lower elasticity of demand have higher optimal [patent] lives” and that “patents for industries having more progressive (or easier) invention should have shorter lives.” Ibid., p. 79.

    130

    A wide array of essays in both the patent and copyright fields attempt to refine or apply the general approach developed by Nordhaus. See, for example, Pankaj Tandon, “Optimal Patents with Compulsory Licensing,” Journal of Political Economy 90 (1982): 470-86; Richard Gilbert and Carl Shapiro, “Optimal Patent Protection and Breadth,” Rand Journal of Economics 21 (1990): 106-12; Paul Klemperer, “How Broad Should the Scope of Patent Protection Be?,” Rand Journal of Economics 21 (1990): 113-30; Landes and Posner, “Economic Analysis of Copyright Law”; William Fisher, "Reconstructing the Fair Use Doctrine," at 1698-1744; S.J. Liebowitz, "Copying and Indirect Appropriability: Photocopying of Journals," Journal of Political Economy 93 (1985), 945; A. Samuel Oddi, “Beyond Obviousness: Invention Protection in the Twenty-First Century,” American University Law Review 38 (1989): 1097, at 1101-02, 1114-16; and Frederic M. Scherer, Industrial Market Structure and Economic Performance (2d ed., Chicago: Rand McNally, 1980), pp. 439-58. The history of this perspective is traced in Gillian K. Hadfield, "The Economics of Copyright: An Historical Perspective," Copyright Law Symposium (ASCAP) 38 (1992): 1-46.

    131

    [35] See Harold Demsetz, "Information and Efficiency: Another Viewpoint," Journal of Law and Economics 12 (1969): 1.

    132

    [36] See Paul Goldstein, Copyright's Highway (New York: Hill & Wang, 1994), pp. 178-79.

    133

    [37] See Wendy J. Gordon, “An Inquiry into the Merits of Copyright: The Challenges of Consistency, Consent, and Encouragement Theory,” Stanford Law Review 41 (1989): 1343, at 1439-49; Robert P. Merges, “Are You Making Fun of Me?: Notes on Market Failure and the Parody Defense in Copyright,” AIPLA Q.J. 21 (1993): 305, at 306-07; Netanel, “Copyright and Democratic Civil Society,” at 308-310. In this vein, Robert Merges has argued that lawmakers should not be quick to institute compulsory licensing systems. Private institutions such as collective rights management organizations are likely to be superior to any governmentally mandated regime—and will often spring up spontaneously if lawmakers refuse to intervene.

    134

    [38] The work of this group of economists is well summarized in Menell, “General Theories,” at 7-8. Among the leading works are: Yoram Barzel, “Optimal Timing of Innovations,” Rev. Econ. & Stat. 50 (1968): 348-55; Partha Dasgupta, “Patents, Priority and Imitation or, The Economics of Races and Waiting Games,” Economics Journal 98 (1988): 66, 74-78; Partha Dasgupta and Joseph Stiglitz, “Uncertainty, Industrial Structure and the Speed of R&D,” Bell Journal of Economics 11 (1980); 1, at 12-13; Drew Fundenberg, Richard Gilbert, Joseph Stiglitz, and Jean Tirole, “Preemption, Leapfrogging, and Competition in Patent Races,” European Economic Review 77 (1983): 176-83; Michael L. Katz & Carl Shapiro, “R & D Rivalry with Licensing or Imitation,” American Economic Review 77 (1987): 402; StevenA. Lippman & Kevin F. McCardle, “Dropout Behavior in R&D Races with Learning,” Rand Journal of Economics 18 (1987): 287; Glenn C. Loury, “Market Structure and Innovation,” Quarterly Journal of Economics 93 (1979): 395; Frederic M. Scherer, “Research and Development Resource Allocation Under Rivalry,” Quarterly Journal of Economics 81 (1967): 359, at 364-66; Pankaj Tandon, “Rivalry and the Excessive Allocation of Resources to Research,” Bell Journal of Economics 14 (1983): 152; Brian D. Wright, “The Resource Allocation Problem in R & D,” in The Economics of R & D Policy 41, 50 (GeorgeS. Tolley, James H. Hodge & James F. Oehmke eds., 1985).

    135

    [39] See Louis Kaplow, “The Patent-Antitrust Intersection: A Reappraisal,” Harvard Law Review 97 (1984): 1813-92; Edmund Kitch, “The Nature and Function of the Patent System,” Journal of Law and Economics 20 (1977): 265; idem, “Patents, Prospects, and Economic Surplus: A Reply,” Journal of Law and Economics 23 (1980): 205; Mark F. Grady & J.I. Alexander, "Patent Law and Rent Dissipation," Virginia Law Review 78 (1992): 305; Robert Merges & Richard Nelson, "On the Complex Economics of Patent Scope," Columbia Law Review 90 (1990): 839-916; Mark Lemley, “The Economics of Improvement in Intellectual Property Law,” Texas Law Review 75 (1997): 993-1084.

    136

    [40] See, for example, Joan Robinson, The Economics of Imperfect Competition (London: Macmillan, 1933); Arnold Plant, "The Economic Aspects of Copyright in Books," in Economica (n.s.) (1934): 30-51; Jack Hirshleifer, “The Private and Social Value of Information and the Reward to Inventive Activity,” American Economic Review 63 (1973): 31-51; Stephen Breyer, “The Uneasy Case for Copyright,” Harvard Law Review 87 (1970): 281-351.

    137

    [41] See, for example, Tyerman, "The Economic Rationale for Copyright Protection for Published Books: A Reply to Professor Breyer," UCLA Law Review 18 (1971): 1100.

    138

    [42] The relevant literature includes John Kay, “The Economics of Intellectual Property Rights,” International Review of Law & Economics 13 (1993): 337, 344-46; R.C. Levin, A.K. Klevorick, R.R. Nelson, and S.G. Winter, “Appropriating the Returns from Industrial Research and Development,” Brookings Papers Economic Activity (1987): 783-831; Edwin Mansfield, “Patents and Innovation: An Empirical Study,” Management Science 32 (1986): 173-81; George L. Priest, “What Economists Can Tell Lawyers About Intellectual Property,” Research in Law and Economics, Vol. 8 (aJohn Palmer, ed., 1986), 19, 21; Antoon A. Quaedvlieg, “The Economic Analysis of Intellectual Property Law,” in Willem F. Korthals Altes et al., eds., Information Law Towards the 21st Century (Deventer ; Boston : Kluwer Law and Taxation Publishers, 1992), pp. 379, 393; D. Schwartzmann, Innovation in the Pharmaceutical Industry (Baltimore: Johns Hopkins Univ. Press, 1976); C. Taylor and Z. Silberston, The Economic Impact of the Patent System (London: Cambridge Univ. Press, 1973).

    139

    [43] More specifically, Shavell and Ypersele contend that a regime in which, after an invention had been commercialized, the government used sales data and surveys to assess its social value and then periodically paid the inventor accordingly might be better, despite the familiar difficulties associated with governmental estimates of this sort, than a patent regime – and that a system in which each inventor had the option of either obtaining a traditional patent or collecting the government’s reward would certainly be better than a simple patent system. See “Rewards versus Intellectual Property Rights,” National Bureau of Economic Research, Working Paper 6956 (February 1999).

    140

    [44] See, for example, Robert M. Hurt & Robert M. Schuchman, "The Economic Rationale of Copyright," American Economic Review 56 (1966): 425-26; Jessica Litman, "The Public Domain," Emory Law Journal 34 (1990): 997; Lloyd Weinreb, "Copyright for Functional Expression," at 1232-36; John Shepard Wiley, Jr., "Bonito Boats: Uninformed but Mandatory Innovation Policy," Supreme Court Review (1989), 283.

    141

    [45] See Glynn Lunney, Jr., "Reexamining Copyright's Incentives-Access Paradigm," Vanderbilt Law Review 49 (1996): 483.

    142

    [46] See Kitch, “The Nature and Function of the Patent System.” See also Suzanne Scotchmer, “Protecting Early Innovators: Should Second-Generation Products Be Patentable?,” Rand Journal of Economics 27 (1996): 322-31.

    143

    [47] Grady & Alexander, "Patent Law and Rent Dissipation.”

    144

    [48] First developed by Herbert A. Simon, the concept of “satisficing” has come to be associated with behavior under which a decision-maker ceases activity after meeting a minimum requirement – such as the laziness displayed by lions when prey is abundant. See David Ward et al., “The Role of Satisficing in Foraging Theory,” Oikos 63:2 (1992): 312-17.

    145

    [49] Merges & Nelson, "Complex Economics of Patent Scope.”

    146

    [50] For debate on these issues, see Donald G. McFetridge & Douglas A. Smith, "Patents, Prospects, and Economic Surplus: A Comment," Journal of Law and Economics 23 (1980): 197; A. Samuel Oddi, "Un-Unified Economic Theories of Patents—The Not-Quite-Holy Grail," Notre Dame Law Review 71 (1996): 267, at 283 (disagreeing with Merges and Nelson); Donald L. Martin, "Reducing Anticipated Rewards from Innovation Through Patents: Or Less is More," Virginia Law Review 78 (1992): 351, at 356; Robert P. Merges, "Rent Control in the Patent Districts: Observations on the Grady-Alexander Thesis," Virginia Law Review 78 (1992): 359, at 376-77.

    147

    [51] See Oddi, "Un-Unified Economic Theories of Patents.”

    148

    [52] Two Treatises of Government, sections 25-26.

    149

    [53] Ibid., sections 32, 35.

    150

    [54] Ibid., sections 27, 44.

    151

    [55] Ibid., section 34.

    152

    [56] Ibid., sections 38, 40-43.

    153

    [57] See Ryan, Property and Political Theory, at 22ff.

    154

    [58] See Seana Shiffrin, "Lockean Arguments for Private Intellectual Property," at ___, in this volume.

    155

    [59] See Tom Palmer, “Are Patents and Copyrights Morally Justified?,” Harvard Journal of Law and Public Policy 13 (1990): 817-65, at 832.

    156

    [60] Lawrence Becker, “Deserving to Own Intellectual Property,” Chicago-Kent Law Review 68 (1993): 609.

    157

    [61] The first of these options—though common in the discourse of copyright law—is vulnerable to criticism as naively Platonist. See, for example, Jessica Litman, "The Public Domain," Emory Law Journal 39 (1990): 965, 996; Jane Ginsburg, "Sabotaging and Reconstructing History," Bulletin of the Copyright Society 29 (1982): 647, at 658.

    158

    [62] Plainly these options are not mutually exclusive. For example, one intuitively plausible interpretation of the "the commons" would be a + b + c. Some of the options nest. For example, d is a subset of e, which is a subset of f, which is a subset of g.

    159

    [63] For discussions of alternative understandings of "the commons," see Yen, “Restoring the Natural Law”; Wendy Gordon, " A Property Right in Self-Expression: Equality and Individualism in the Natural Law of Intellectual Property," Yale Law Journal 102 (1993): 1533-1609; Hughes, “Philosophy of Intellectual Property”; Shiffrin, “Lockean Arguments.”

    160

    [64] Closely examined, real-property rights also lack the exclusivity Locke attributed to them, but the difficulty is more apparent in the case of property in ideas. See William Fisher, “Property and Contract on the Internet,” Chicago-Kent Law Review 73 (1998) 1203, at 1207.

    161

    [65] Seana Shiffrin points out, however, that some evidence that Locke understood property rights to be more temporally limited may be found in Two Treatises of Government, First Treatise, sections 88-89.

    162

    [66] For exploration of these issues, see Gordon, “Property Right in Self-Expression”; Edwin C. Hettinger, "Justifying Intellectual Property," Philosophy and Public Affairs 18 (1989), 31-52; Sterk, "Rhetoric and Reality"; Weinreb, "Copyright in Functional Expression," at 1218.

    163

    [67] See Hughes, “Philosophy of Intellectual Property”; Becker, “Deserving Intellectual Property.” Cf. James

    164

    W. Child, “The Moral Foundations of Intangible Property,” The Monist (1990); Wendy Gordon, “Property Right in Self-Expression.”

    165

    [68] See Waldron, Right to Private Property, at 295; cf. Charles Fried, Right and Wrong (Cambridge, Mass.: Harvard Univ. Press 1978), p. 1.

    166

    [69] See Waldron, Right to Private Property, at 296.

    167

    [70] See ibid., at 300-01; cf. Abraham Lincoln, "Address to the Wisconsin State Fair, 1859," in Richard N. Current ed., The Political Thought of Abraham Lincoln (Indianapolis: Bobbs-Merrill, 1967), p. 134.

    168

    [71] See Waldron, Right to Private Property, at 296-97; Carol Rose, Property and Persuasion (Boulder, Colo.: Westview Press, 1994), pp. 146-47.

    169

    [72] See Waldron, Right to Private Property, at 302-03; Margaret Jane Radin, Reinterpreting Property.

    170

    [73] See Waldron, Right to Private Property, at 304-06; cf. George Fitzhugh, Cannibals All! (1857) (C. Vann Woodward ed., Cambridge, Mass.: Harvard Univ. Press, 1960) (defending the ownership of slaves on similar grounds).

    171

    [74] See Waldron, Right to Private Property, at 308-10; Thomas Hill Green, Lectures on the Principles of Political Obligation (Ann Arbor: Univ. of Michigan Press, 1967), lecture N.

    172

    [75] See Radin, Reinterpreting Property.

    173

    [76] See Hannah Arendt, On Revolution (New York: Viking Press, 1965); Alexander, Commodity and Propriety, pp. 43-71.

    174

    [77] See Green, Lectures on Political Obligation, at section 220.

    175

    [78] Neil Netanel, "Copyright Alienability Restrictions and the Enhancement of Author Autonomy: A Normative Evaluation," Rutgers Law Review 24 (1993): 347; Weinreb, "Copyright for Functional Expression," at 1221. Good illustrations of both positions may be found in the current debate over the legitimacy of Gary Larson's effort to persuade his fans not to post copies of his cartoons on their websites. For a sample of the debate, see http://stud.unisg.ch/~rportmann/gary.html.

    176

    [79] See Cotter, "Pragmatism and the Droit Moral," at 8-9. For other treatments of the divergence of Kant and Hegel, see Palmer, “Are Patents Morally Justified?,” at 837-41; Sterk, "Rhetoric and Reality in Copyright Law," at 1243.

    177

    [80] Hughes, "Philosophy of Intellectual Property," at 338, 340.

    178

    [81] Hettinger, "Justifying Intellectual Property"; Paine, "Trade Secrets and the Justification of Intellectual Property," Philosophy and Public Affairs 20 (1991): 247, at 251-53.

    179

    [82] Hughes, "Philosophy of Intellectual Property," at 340-41; Madow, "Private Ownership of Public Image,” at 182-197 & n.338.

    180

    [83] See Margaret Jane Radin, “Property and Personhood,” Stanford Law Review 34 (1982): 957, at 970.

    181

    [84] See Fisher, "Property and Contract on the Internet.”

    182

    [85] On distributive justice, see, for example, Aristotle, Nicomachean Ethics, book V, ch. 2; Bruce Ackerman, Social Justice in the Liberal State (New Haven: Yale University Press, 1980); Charles Fried, “Distributive Justice,” Social Philosophy and Policy 1 (1983): 45; John Rawls, A Theory of Justice (Cambridge, Mass.: Harvard Univ. Press, 1971); Michael Sandel, Liberalism and the Limits of Justice (Cambridge: Cambridge Univ. Press, 1982).

    183

    [86] See, for example, Ronald Dworkin, "Liberalism," in A Matter of Principle (Cambridge: Harvard University Press, 1985), pp. 181-204.

    184

    [87] For exploration of this argument, see Fisher, "Fair Use Doctrine," at 1762-66.

    185

    [88] Cf. Weinreb, Copyright for Functional Expression," at 1252-54 (suggesting that courts should cease trying to resolve complex copyright questions through efforts to ascertain and then apply underlying policies and should instead rely upon the traditional common-law interpretive techniques of "analogy and metaphor").

    186

    [89] J. Thomas McCarthy, The Rights of Publicity and Privacy (New York: C. Boardman, 1992), section 1.1[B][2], at 1-5. See also ibid., at section 2.1[B] ("The advocate of a Right of Publicity, when called upon to explain why such a right should exist at all, is not being illogical in simply challenging: 'Why not?'").

    187

    [90] The three scholars most influential in developing these arguments are Jane Gaines, Rosemary Coombe and Michael Madow. See Gaines, Contested Culture: The Image, the Voice, and the Law (Chapel Hill, N.C.: University of North Carolina Press, 1991); Coombe, "Objects of Property and Subjects of Politics"; and Madow, "Private Ownership of Public Image."

    188

    [91] Cardtoons, L.C. v. Major League Baseball Players Association, 95 F.3d 959, 972-73 (10th Cir. 1996).

    189

    [92] New York Magazine v. Metropolitan Transit Authority, 987 F. Supp. 254, 266 (1997).

    190

    [93] See, for example, Patricia M. Danzon, Pharmaceutical Price Regulation : National Policies versus Global Interests (Washington, D.C.: AEI Press, 1997) (geographic price discrimination for drugs); ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996) (discrimination between commercial and noncommercial customers in sales of nationwide telephone directories); Michael Meurer, “Price Discrimination, Personal Use, and Piracy: Copyright Protection of Digital Works,” Buffalo Law Review 45 (1997): 845 (distribution of digital works on the Internet). For a useful taxonomy of types of price discrimination, see Scherer, Industrial Market Structure, pp. 315-34.

    191

    [94] 15 U.S.C. § 13.

    192

    [95] The argument is developed at greater length in Fisher, "Property and Contract on the Internet," at 1234­40.

    193

    [96] These disadvantages of price discrimination are explored in Julie E. Cohen, “Copyright and the Jurisprudence of Self-Help,” Berkeley Technology Law Journal 13 (1998): 1089-1143; Wendy Gordon, “Intellectual Property as Price Discrimination,” Chicago-Kent Law Review 73 (1998): 1367-90; Kaplow, “Patent-Antitrust Intersection.”

    194

    [97] It was largely for this reason that the Legal Realists urged lawmakers (including judges, whom the Realists insisted were as much lawmakers as legislators) to be more explicit concerning the policy bases of their decisions. See, for example, Felix Cohen, “Transcendental Nonsense and the Functional Approach,” Columbia Law Review 35 (1935): 809.

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