11-20-1982 Preliminary Memorandum

SUMMARY: A voluntary deferred compensation plan allowed retiring employees to choose between three forms of payments, including an annuity bought by petrs from independent insurance companies who use sex-based actuarial tables. The question is whether the employer has violated Title VII by offering this optio

Games Economists Play

When Professor Reichman called me about this symposium, I was intrigued. With the successive introduction of the photocopy machine, the videotape, computerization, digitization, the Internet, as well as a host of biotechnological discoveries, the problems facing the creative industries have changed dramatically. This accumulation of developments has altered the economic foundations on which intellectual property law is based and has pushed those of us in the field into a period of reconceptualization in which economic analysis is particularly fruitful. Thus, I was quite taken with the idea of bringing intellectual property and economics scholars together to promulgate a research agenda and I was, of course, delighted to be asked to contribute my thoughts. Before I set these out, I would like to begin with a question that may seem far afield, but which will, I believe, shed light on the agenda I propose. The question is this: why are there no continental lawyers here? Given Professor Reichman\u27s prominence in international-particularly European-circles, it should seem quite puzzling. Or rather, it would be quite puzzling to me, but for my experience at the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law in Munich, Germany. The Institute does wonderful, insightful work, including excellent empirical studies. But while there, I was struck by the paucity of interest in economic theory among its scholars. As one of my colleagues there explained, continental legal theorists certainly ex- amine economic facts, but they are not of the view that economic theory has a large role to play in lawmaking. This thinking is, of course, very much at odds with the core premises of those assembled here, and I would like to take a moment to explore its basis. One reason for the difference in views on economic analysis may be specific to intellectual property. The argument here would be that although Europeans can be as theory-oriented as Americans, continental thinking about intellectual property has traditionally focused on moral arguments-claims about the personality of the author and his intimate connection to his work.\u27 In contrast, intellectual property regimes in the United States are constitution- ally defined as resting on instrumental-economic-precepts. As a result, economic analysis arguably has more to contribute here than it does abroad. But this cannot be the whole answer. It does not, for example, explain apparent continental indifference to the use of economic theory with respect to other legal issues, such as tort questions. Moreover, the rationales underlying intellectual property regimes are coalescing: as Professor Thomas Dreier has pointed out, there is more economics in continental rationales for protection than is usually acknowledged, and the TRIPS Agreement has brought these systems into even closer alignment. Thus, a mode of analysis that is utilized in the U.S. should now be relevant to Europe, even if it lacks intuitive appeal there

Percolation, Uniformity, and Coherent Adjudication: The Federal Circuit Experience

Two important lessons had been taught by the reactions to the Freund and Hruska Reports. One was that it was politically unacceptable to shut off any case in the lower federal courts from access to the Supreme Court by way of certiorari, however unavailing that might be in reality. . . . In addition, a widespread sentiment was evident among the bench and bar against having specialized courts. \u2

Draft Convention on Jurisdiction and Recognition of Judgments in Intellectual Property Matters

This proposal is meant to spur the intellectual property bar to consider whether it would be desirable to create a regime for international enforcement of intellectual property law judgments. Such a convention could be adopted under the auspices of the World Intellectual Property Organization ( WIPO ) or through the World Trade Organization ( WTO ). There are several reasons to believe that an instrument drafted specifically for intellectual property disputes would be particularly advantageous. First, for intellectual property disputes, efficiency should be a principal target. Modern distribution methods, particularly satellite and Internet transmissions, make it increasing likely that intellectual property rights will be exploited simultaneously in more than one territory. The ability to consolidate claims arising from these usages in one court, with the expectation that the judgment of that court will be recognized in all convention States, could reduce costs for all sides, conserve judicial resources on an international basis, and promote consistent outcomes. Second, a convention drafted for intellectual property disputes can take account of issues uniquely raised by the intangibility of the rights in issue. For example, an intellectual property agreement can consider the ability of a potential defendant to gain litigation advantages through the choice of the location of the activities that give rise to infringement. In certain situations, the propriety of expanding jurisdiction depends on the possibility of inconsistent outcomes; a convention tailored to intellectual property can specify what that term means in the context of public goods. An instrument for intellectual property litigation can also deal specifically with matters of unique concern to the creative community. The strong link between culture on the one hand, and intellectual production and utilization on the other, means that the territoriality of these rights is of crucial importance: individual nations must be able to retain some control over the local conditions under which these products are created, exploited, and accessed. At the same time, an approach that creates new avenues for cross-cultural enrichment needs to be considered. For example, the circumstances where trans-border injunctions are permissible can be specified to include consideration of cultural, health, and safety issues. Other issues of prime interest to the information industries can also be considered: provisions on contract disputes can be tailored to deal with mass-market contracts, which are becoming prevalent in certain intellectual property transactions; provisions on infringement can be made sensitive to the interests of the new media, such as Internet Service Providers. Most important, the convention can be confined to rights covered by the intellectual property part of the General Agreement on Tariffs and Trade ( TRIPs Agreement ) and open to signature only to countries that have joined the WTO and fully implemented the TRIPs Agreement. Since these are countries that have agreed to enforce intellectual property law and are subject to dispute resolution proceedings if they fail to do so, these limitations would reduce concerns that forum shopping will undermine the delicate balance that each nation has struck between the rights of intellectual property users and owners. And although dispute resolution under the WTO cannot provide litigants with a substitute for a centralized and authoritative appellate body (such as the US Supreme Court or the European Court of Justice), it can provide assurance of transparent and efficient judicial process, along with institutional mechanisms (such as dispute resolution panels, the Dispute Settlement Board, and the Council for TRIPs) for examining intellectual property law as it develops through consolidated adjudication of multinational disputes

The Jurisprudence of Genetics

In recent years, genetic research has ascended the list of national research priorities. From among the many weighty claims on the fisc, Congress has chosen to provide significant federal support for the Human Genome Initiative, a project aimed at mapping the complete set of genetic instructions that form the structure of inherited attributes. Geneticists anticipate that the project will disclose important new in- formation on human development and disease. Some go further. One influential scientist remarked that this work is the ultimate answer to the commandment \u27Know thyself.\u27 The decision to fund this Initiative, the largest biology project in the history of science, at a time of significant budgetary constraints suggests its political currency. Scientists have recently developed genetic tests, familiar from the diagnostic technologies used to identify genetic abnormalities in fetuses and newborn infants, to find the markers indicating predisposition to certain single-gene disorders such as Huntington\u27s disease. This success has bred the hope that more complex conditions, such as cancer, drug dependency, and mental illness, will ultimately be predictable and has enhanced the appeal of theories that explain human behavior in biological terms. Expectant parents now demand chromosomal testing of their babies before they are born and infertile couples often put considerable resources into the creation of genetically-related offspring. Institutions, including employers, insurers, and educators, look to biological tests to guide placement and avoid risk.\u2

Draft Convention on Jurisdiction and Recognition of Judgments in Intellectual Property Matters

This proposal is meant to spur the intellectual property bar to consider whether it would be desirable to create a regime for international enforcement of intellectual property law judgments. Such a convention could be adopted under the auspices of the World Intellectual Property Organization ( WIPO ) or through the World Trade Organization ( WTO ). There are several reasons to believe that an instrument drafted specifically for intellectual property disputes would be particularly advantageous. First, for intellectual property disputes, efficiency should be a principal target. Modern distribution methods, particularly satellite and Internet transmissions, make it increasing likely that intellectual property rights will be exploited simultaneously in more than one territory. The ability to consolidate claims arising from these usages in one court, with the expectation that the judgment of that court will be recognized in all convention States, could reduce costs for all sides, conserve judicial resources on an international basis, and promote consistent outcomes. Second, a convention drafted for intellectual property disputes can take account of issues uniquely raised by the intangibility of the rights in issue. For example, an intellectual property agreement can consider the ability of a potential defendant to gain litigation advantages through the choice of the location of the activities that give rise to infringement. In certain situations, the propriety of expanding jurisdiction depends on the possibility of inconsistent outcomes; a convention tailored to intellectual property can specify what that term means in the context of public goods. An instrument for intellectual property litigation can also deal specifically with matters of unique concern to the creative community. The strong link between culture on the one hand, and intellectual production and utilization on the other, means that the territoriality of these rights is of crucial importance: individual nations must be able to retain some control over the local conditions under which these products are created, exploited, and accessed. At the same time, an approach that creates new avenues for cross-cultural enrichment needs to be considered. For example, the circumstances where trans-border injunctions are permissible can be specified to include consideration of cultural, health, and safety issues. Other issues of prime interest to the information industries can also be considered: provisions on contract disputes can be tailored to deal with mass-market contracts, which are becoming prevalent in certain intellectual property transactions; provisions on infringement can be made sensitive to the interests of the new media , such as Internet Service Providers. Most important, the convention can be confined to rights covered by the intellectual property part of the General Agreement on Tariffs and Trade ( TRIPs Agreement ) and open to signature only to countries that have joined the WTO and fully implemented the TRIPs Agreement. Since these are countries that have agreed to enforce intellectual property law and are subject to dispute resolution proceedings if they fail to do so, these limitations would reduce concerns that forum shopping will undermine the delicate balance that each nation has struck between the rights of intellectual property users and owners. And although dispute resolution under the WTO cannot provide litigants with a substitute for a centralized and authoritative appellate body (such as the US Supreme Court or the European Court of Justice), it can provide assurance of transparent and efficient judicial process, along with institutional mechanisms (such as dispute resolution panels, the Dispute Settlement Board, and the Council for TRIPs) for examining intellectual property law as it develops through consolidated adjudication of multinational disputes. This is a mixed convention. It describes bases of jurisdiction that are predicates to enforcement in all member States and it describes bases of jurisdiction that are prohibited in cases involving foreign habitual residents of member States. It leaves member States free to decide for themselves the conditions under which judgments predicated on other bases of jurisdiction are enforceable. Its principal innovations include: 1. Scope. The Convention would be open only to TRIPs implementers and, with the additions of performance rights in sound recordings, and domain names, it would cover the same rights covered by the TRIPs Agreement. 2. Jurisdiction. This Convention identifies a set of fora with adjudicatory authority over the parties. In part, this is a consequence of the commitment to consolidation and cooperation. The parties\u27 choices need not be narrowed if all courts seized with parallel litigation will, ultimately, consult with one another and with the parties to find the best place to adjudicate the entire dispute. Conversely, the courts and parties can select a better forum (in terms of convenience for the parties and witnesses, expertise of the decision maker, and relationship to the dispute) if there are several courts that enjoy adjudicatory authority. In part, this decision also emanates from the view that forum shopping in intellectual property disputes cannot, in any event, be controlled through personal jurisdiction rules: intangible rights and infringements can be reified in too many locations to make personal jurisdiction an effective limit on potential fora. 3. Contract disputes. Mass-market contracts (sometimes called shrinkwrap or click through agreements) are becoming increasingly common in intellectual property transactions. The enforceability of these agreements has been quite controversial and the Convention takes the position that the inability to negotiate does raise special concerns. Accordingly, the enforceability of any contract provision affecting the place of dispute resolution is subject to a requirement of negotiation or, in nonnegotiated contracts, reasonableness in the choice of forum. Factors taken into account in assessing the reasonableness of the chosen forum include whether, in the absence of a forum-selection clause, the chosen forum would have had jurisdiction over the nondrafting party. 4. Infringement actions. This instrument adapts jurisdictional doctrines regarding tort actions to tailor them to the context of intellectual property infringement and to the issues raised by the distribution of works in a digital environment. In addition, this proposal deals with new media defendants, such as Internet Service Providers. US law does not require special procedural protection for media defendants because substantive law has many explicit safeguards on the use of litigation to chill expression. In the absence of such safeguards in the domestic laws of every member State, it was thought necessary to create procedural protections in the form of immunity from suit in locations where contacts are purely passive. 5. Consolidation. A central insight animating this proposal is that efficient adjudication of intellectual property disputes is a benefit-to the parties, to the nations whose judicial resources would otherwise be redundantly utilized, and to the development of sound intellectual property law. Both US and European laws have mechanisms to promote consolidation, and the techniques of both systems are invoked here

Diversifying without Discriminating: Complying with the Mandates of the TRIPS Agreement

Since the Patent Act was revised in 1952, patent law has expanded to cover an array of novel endeavors--new fields of technology (notably computer science and business methods) as well as the activities of researchers engaged in fundamental scientific discovery. These changes have been accompanied by shifts in the organizational structure of the technological community, with smaller firms and universities emerging as important players in the patent system, and by new marketplace expectations arising from consumer demand for interoperable technology and converging functionality. As a result of these developments, structural flaws in the legal order have become evident. Although the technological community was once fairly united in its needs, the recent debate over patent reform has made it clear that this is no longer the case. The broad patents available for basic science present different problems from those associated with the thickets of narrow rights awarded in fields where advances are incremental.[...] In the last few years, it has become increasingly difficult to believe that a one-size-fits-all approach to patent law can survive