Cong. Power/NBA, again

From: Dan L. Burk <BURKDANL[_at_]LANMAIL.SHU.EDU>
Date: Fri, 14 Feb 1997 22:33:04 -0500

On 2/13/97, Paul Heald <heald[_at_]jd.lawsch.uga.edu> wrote:
>
> If you read Railway Executors Ass'n v. Gibbons, 455 U.S. 457
> (1982), I think you will change your mind about Congress' ability to
> protect facts.

I think we may ultimately end up agreeing on this, in part because I think we are talking about different and-ultimately-not-irreconcilable issues, and in part because I don't think Congress can protect facts either (although perhaps for different reasons than you).

I expect that the journey may be more interesting than the arrival, though.

> -Why would the framers include a limitation in a grant of power if
> they thought Congress could easily avoid it by reference to another
> broader grant?

We need to take things in order here, so first things first: what do you believe are, respectively, the grant(s) of power and the limitation(s) in Art. I. sec. 8. cl. 8?

Note that there are (at least) two ways to read the clause --

1. The Power: to promote the progress of science & the useful arts. The Limitation: by securing rights to authors & inventors for a limited time.
2. The Power: to secure rights to authors & inventors The Limitation(s): In promotion of science & the useful arts (and for a limited time).

Reading number one is, I think, the one that you are adopting -- it is certainly the most straightforward reading, and perhaps inherent in Feist (i.e., that authorship is part of the limitations on Congress' power to promote science and the useful arts).

However, reading number two is the reading the Court adopts in the John Deere case -- that Congress is given the power to grant exclusive rights, but only if the grant promotes the progress of science and the useful arts. (This leads to nonobviousness as a constitutional requirement for patents).

I suppose that you could harmonize the two case by saying that you read the IP clause forward for copyrights and backwards for patents, but that seems nonsensical to me (if nothing else, it does violence to the parallelism of the clause's syntax).

To further muddy the waters, add the following statutory examples:

1. the Atomic Energy Act -- which promotes progress by a system of prizes, not via exclusive rights, and
2. the Orphan Drug, Waxman/Hatch, and Plant Variety Protection Acts -- which offer patent-like exclusive rights, but without a requirement of nonobviousness.

Assuming that you don't wave these statutes away by summarily declaring them unconstitutional -- they have been on the books and functioning for some time, after all -- then the Atomic Energy Act suggests that Congress can promote progress by methods other than offering exclusive rights, but not, I think, under the IP clause (I think the War Power is the most likely candidate). VARA, the Orphan Drug Act, and the Waxman/Hatch Act suggest in turn that the mechanism of exclusive rights can be used to do things other than promoting science in the sense of the IP clause (probably via the Commerce Power).

How do you explain these data? The most coherent way seems to me to be to say that the power granted in the IP clause is to secure rights to authors and inventors, and when Congress does so, it is subject to the limitations of, respectively, originality and non-obviousness.

But it can also secure exclusive rights to others -- non-authors and non-inventors -- under other powers, in which case the limitations of originality and non-obviousness don't apply.

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Dan L. Burk
Seton Hall University
burkdanl[_at_]lanmail.shu.edu

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Received on Sat Feb 15 1997 - 03:38:08 GMT