Re: Cong. Power/NBA, again

Dan L. Burk <burkdanl[_at_]lanmail.shu.edu> wrote:
>
> 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.

    Dan asked my to clarify my thinking on the I.P. clause and Congress' ability to "get around" it by enacting legislation under other sections of U.S. Const., Art. I, sec. 8. I reprint most of his thoughtful post below.

    The I.P. clause grants Congress the power "To promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"

    I would parse the clause as follows:     

    Power: securing for Authors and Inventors exclusive rights     

    Limitations: legislation must plausibly promote the "progress of Science, etc."; writings must be original (Feist); discoveries must be non-obvious (Graham); grants of rights can only be for limited times

    In other words, whenever Congress secures to authors or inventors exclusive rights to their creations, it must abide by the limitations listed above. Under Gibbons v. Railways Executor's Ass'n, it may not appeal to another grant of power, e.g. the commerce clause, to secure these rights to authors.

    To the extent that the statutes Dan lists do that, then they are unconstitutional. Congress passes unconstitutional statutes with some frequency. Congress cannot change our understanding of the I.P. clause by passing unconstitutional legislation.

    Paul Heald
    <heald[_at_]jd.lawsch.uga.edu> Received on Tue Feb 18 1997 - 19:03:59 GMT