Journal of Intellectual Property Law
DEFINING THE PATENT AND COPYRIGHT TERM: TERM LIMITS AND THE
|(Cite as: 7 J. Intell. Prop. L. 315, *315)
INTELLECTUAL PROPERTY CLAUSE
Edward C. Walterscheid [FNa1]
Copyright © 2000 Journal of Intellectual Property Law Association;
The Congress shall have Power . . . 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. . . . [FN1]
In 1966 the Supreme Court declared that the patent provision of the Intellectual
Property Clause "is both a grant of power and a limitation." [FN2]
The Court was speaking in the context of its view that the patent provision
contains an inherent constitutional standard of invention, but the quoted
language is of interest because the Intellectual Property Clause contains
several grants of power and several limitations. Elsewhere, I have sought
to explore the differing perspectives that have existed over time with
regard to ascertaining just exactly what the grants of power are and what
the limitations are. [FN3]
Here, I wish to explore the limitation set on the power of Congress
to authorize issuance of patents and copyrights by the phrase "for limited
times" as it appears in the Intellectual Property Clause. [FN4]
Inherent in this *316
phrase is the presumption that at some point in time the subject matter
of both patents and copyrights are intended to go into the public domain,
i.e., patents and copyrights do not-and cannot-create a perpetual property
right in inventors and authors. What did the Framers intend by this phrase,
and how has the Congress interpreted it over the more than two hundred
years since the Constitution was ratified? To what extent, if any, is the
phrase controlled and limited by the purpose of the Intellectual Property
Clause, i.e., "to promote the Progress of Science and useful Arts"? Why
has Congress authorized a copyright term that can in principle extend five
times longer than the patent term? Perhaps more importantly, with its latest
copyright term extension legislation, has Congress
reached beyond the constitutional limit on the copyright term? [FN5]
|(Cite as: 7 J. Intell. Prop. L. 315, *316)
An exploration of term limits in the Intellectual Property Clause must
begin with a closer look at the rationale for this most unusual clause.
II. A Most Unusual Clause
In the eighteenth century, those who thought about such matters-and the
delegates to the constitutional convention in general were certainly in
that vein-took for granted that it was the duty of enlightened government
"to promote the Progress of Science and [the] useful Arts." [FN6]
But there is a tendency to forget that the constitutional power granted
to Congress "to promote the Progress of Science and useful Arts" is unique
among the congressional powers in that it alone specifies a mode for exercising
the particular power, i.e., "by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries." [FN7]
No other constitutional grant of authority to Congress sets forth a specific
means for exercising that authority.
It appears that this was deliberate and that other attempts to grant
specific as opposed to general powers to Congress were rejected by the
Jefferson, who was not a particular friend of the Intellectual Property
Clause although he is often argued to have highly favored it, [FN8]
provided interesting, albeit indirect, evidence in this regard, when he
recorded the following as the result of a dinner conversation on March
|(Cite as: 7 J. Intell. Prop. L. 315, *317)
Baldwin mentions at table the following fact. When the bank bill was
under discussion in the House of Representatives, Judge Wilson came in,
and was standing by Baldwin. Baldwin reminded him of the following fact
which passed at the grand convention. Among the enumerated powers given
to Congress was one to erect corporations. It was, on debate, struck out.
Several particular powers were then proposed. Among others, Robert Morris
proposed to give Congress a power to establish a national bank. . . . [This]
was rejected, as was every other special power, except that of giving copyrights
to authors, and patents to inventors; the general power of incorporating
being whittled down to this shred. Wilson agreed to the fact. [FN9]
Indeed, the Committee of Detail, which was responsible for preparing
a working draft from which the delegates ultimately crafted the Constitution,
deliberately avoided placing such details in the clauses being proposed.
As Edmund Randolph explained it:
In the draught of a fundamental constitution, two things deserve attention:
1. To insert essential principles only, lest the operations of government
should be clogged by rendering those provisions permanent and unalterable,
which ought to be accommodated by time and events, and
2. To use simple and precise language and general propositions, according
to the example of the constitutions of the (several) states. [FN10]
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It is precisely because the delegates hewed to these first principles
that the Constitution has been such an enduring framework of governance
for the United States.
Thus, the unusual fact that this particular detail exists in the Intellectual
Property Clause suggests a key to why such a clause was included. Not only
was it intended to provide a broad authority to promote the progress of
science and the useful arts, but also as a means of ensuring authority
to do so in a particular way, namely, by securing exclusive rights for
limited times to authors and inventors in their respective writings and
discoveries. [FN11] Again,
I emphasize that it is the only instance wherein the delegates prescribed
a specific mode of accomplishing the particular authority granted.
That they should do so is interesting because there are a variety of
ways of promoting the progress of science and useful arts which have nothing
to do with the granting of exclusive rights for limited times in writings,
inventions, and discoveries. Indeed, a strong movement would arise in Europe
in the nineteenth century which would argue that granting exclusive rights
was precisely the wrong way to encourage industrial innovation. [FN12]
Why then should the Constitution make specific reference to promoting the
useful arts by securing exclusive rights in their
inventions to inventors for limited times? The answer seems to have been
predicated on the fact that they desired to follow the English practice
of granting exclusive rights through the issuance of patents or something
similar and were not at all certain that Congress would have the power
to do so without an explicit grant of authority. This was also true with
regard to copyrights.
The problem was that patents and copyrights were clearly perceived
as monopolies, albeit desirable ones. In their discussion of the limited-term *319
exclusive rights authorized by the Intellectual Property Clause, both Jefferson
and Madison referred to them as monopolies. [FN13]
Indeed, the fact that they were looked on as monopolies was exactly the
reason that Jefferson initially opposed the Intellectual Property Clause
and was never particularly enthralled with it. [FN14]
He thought it better to grant no monopolies at all. Nonetheless, the delegates
did not believe that Congress would have the power to grant any monopolies,
even desirable ones, absent an express authority of this type. [FN15]
But in granting express authority to create patent and copyright monopolies,
they sought to assure that the monopolies would not be open-ended but rather
limited in time. Just what the temporal limitation should be has remained
an open question.
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But why would the Framers desire to perpetuate English institutions
of this type? One straightforward reason was their familiarity with them.
The issuance of patents and copyrights had long
been known in England, and these limited- term monopolies were generally
perceived to produce social good, both as an encouragement to the development
of manufacturing and *320
as an aid to learning. But more than anything else, the rationale was pragmatic
and economic. This approach to promoting the progress of science and useful
arts would cost the new federal government the least to implement while
at the same time providing a desired pecuniary incentive to both inventors
and authors. This was a critical consideration for the new government that
was contemplated to take over the state debts inherited from the Revolutionary
War. From the perspective of delegates seeking to devise a form of governance
for a fledgling, impecunious national government, granting limited-term
exclusive rights in their works to authors and inventors seemed the perfect
solution to encouraging the progress of science and useful arts with the
least expense. [FN16] Although
no contemporaneous American exposition of this pragmatic economic reality
has been found, it had recently been set forth in England. [FN17]
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Purely and simply, the Framers desired to give Congress authority to
engage in the patent and copyright practice that had long been followed
in England, but with discretion to modify it to meet American circumstances.
A fundamental aspect of that practice was that the exclusive right granted
by either patent or copyright be limited in time. To understand what the
Framers contemplated, it is thus necessary to
review not only the extant English practice with respect to the patent
and copyright terms authorized when the Constitution was drafted, but also
how those terms came to be developed.
III. English Antecedents
At the time the Framers met in convention in Philadelphia, the patenting
of inventions and copyrighting of literary works had been practiced in
England for several centuries. Indeed, the legal forms of letters patent
in the *321
English context were not only time-honored but timeworn. [FN18]
Copyright law, and in particular the copyright term under common law, had
been hotly debated in England in the decades preceding the drafting of
the Constitution, and there seems to have been confusion on the part of
the Framers as to exactly what the term of common law copyright was-or
indeed whether such actually existed. [FN19]
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a. patent custom and practice
It is not certain when the first English patents of monopoly were granted,
but the English patent custom took root and flourished during the reign
of Elizabeth I. Commencing in 1561 and continuing through 1600, she granted
at least 55 patents of monopoly for industries and inventions. [FN20]
Unfortunately, she also granted "odious monopolies," i.e., those in restraint of
a known trade or industry. Moreover, at least certain of her grants of
monopoly came to be used to control settled trades and thereby came to
be perceived as "odious monopolies." [FN21]
Early in Elizabeth's reign a concept developed that stated the crown
had the duty and obligation to regulate trade and commerce in such a way
as to favor the creation of new industries and trades. The crown was sufficiently
pragmatic to realize that the costs and risks associated with the introduction
of a new trade or industry required a substantial economic return to those
taking such risks and incurring such expenses without at the same time
resulting in a substantial cost to the state. In the impecunious and parsimonious*322
nature of the times, the grant of a patent monopoly for a limited period
held itself out as the most appropriate incentive to be offered by the
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It was perhaps inevitable that the granting of monopoly patents would
produce significant problems. But it was not until November 1601 that Parliament
began debating a bill entitled "An Act for the Explanation of the Common
Law in Certain Cases of Letters Patent" and in so doing created a grave
constitutional crisis. At issue was the power of the royal prerogative
under which the patents, including those for the so-called "odious monopolies,"
had issued. The last thing the crown wanted was parliamentary enactment
in this regard. Accordingly, in a brilliant political move, Elizabeth agreed
that if the bill
was withdrawn, she would agree to submit her patent
grants to "a Tryal according to law for the good of the people." [FN23]
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Parliament quickly agreed, and, as a result, the common law would be
called upon to settle a sensitive constitutional issue vital to the commerce
of the country. The denouement came in 1602 in the celebrated case of Darcy
v. Allin, also known as The Case on Monopolies. This case involved the
monopoly patent on the importation, manufacture, or sale, in gross or retail,
of playing cards in England which had existed in one form or another since
In the context of the patent law, Darcy v. Allin is remembered not
for the literal ruling therein, but rather for the opinions expressed on
the monopoly right and the argument relating to invention and monopoly
right. Monopoly was stated to be prima facie against the common law, the
statute law, and the liberty of the subject because it damages not only
those working in the trade but all other subjects of the realm as well
by raising prices, reducing merchantability, and reducing employment. [FN24]
These were strong words, but a critical exception was admitted by counsel
for Allin, namely,
. . . the [j]udges have heretofore allowed of monopoly patents, which
is, that where any man by his own charge and industry, or by his own wit
or invention doth bring any new trade into the realm, or any engine tending
to the *323
furtherance of a trade that never was used before: and that for the good
of the realm: that in such cases the King may grant to him a monopoly
patent for some reasonable time, until the subjects may learn the same,
in consideration of the good that he doth by bringing his invention to
the commonwealth (emphasis supplied): otherwise not. [FN25]
|(Cite as: 7 J. Intell. Prop. L. 315, *323)
In The Clothworkers of Ipswich, [FN26]
decided in 1615, the court would speak favorably of this exception.
Darcy v. Allin is of considerable interest in the context of the present
work because it indicated that a monopoly patent for invention was proper,
provided that the term of the patent was "for some reasonable time." [FN27]
The opinion also seemed rather to indicate rather clearly that this "reasonable
time" was dependent upon the time it took until other "subjects may learn
the same." [FN28] The Clothworkers
of Ipswich added an additional premise, however, saying the following:
But if a man hath brought in a new invention and a new trade within
the kingdom, in peril of his life, and consumption of his estate or stock,
&c. or if a man hath made a new discovery of any thing, in such cases
the King of his grace and favour, in recompence of his costs and travail,
may grant a charter unto him, that he only shall use such a trade or trafique
for a certain time, because at first the people of the kingdom are ignorant,
and have not the knowledge or skill to use it: but when that patent is
expired, the King cannot make a new grant thereof: for when the trade is
become common, and others have been bound apprentices in the same trade,
there is no reason that such should be forbidden
to use it. [FN29]
This suggested that the term of the patent involved two different considerations,
one being the opportunity of the patentee to recover costs (and presumably
some reasonable profit) and the other being the public benefit accrued
by precluding an extension or renewal of the term after "the trade is become
common, and others have been bound apprentices in the same trade. . . ." [FN30]
As will be seen, the tension between these two premises would continue
when the United States patent law came into being.
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Thus by the early seventeenth century, it had been established at common
law that under the royal prerogative the crown had discretion to issue
monopoly patents for invention for limited periods. Two reasons were typically
given for the monopoly grant: (a) to introduce new trade and industry into
the realm, and (b) to serve as a means of recompensing the patentee for
the costs and risks associated with the enterprise. Although an early British
textbook on patent law states that prior to the Statute of Monopolies the
term of the patent grant was twenty-one years, in reality it varied widely
from as short as four years to as long as thirty-one years. [FN31]
In issuing monopoly patents, James I followed much the same practice
as Elizabeth I with very much the same result-a hue and cry against the
odious monopoly. He sought to defuse the situation in much the same way
that she did, i.e., by promising to let the common law courts determine
the validity of the monopoly grants. A critical
distinction was that she was a popular queen whom he could never hope to
emulate, and whereas her Parliaments expressed concern about the improper
granting of monopoly patents, his became downright mutinous on the subject.
What she effectively prevented, he ultimately caused-the legislation enacted
in 1623 that became famous as the Statute of Monopolies. [FN32]
Although the Statute declared as contrary to the law of the realm and
utterly void all monopolies, grants, licenses, and letters patent of or
for the sole buying, selling, making, working, or using of anything within
the realm, it also contained a number of specified exceptions to this general
mandate. One of these was contained in section 6 which stated that
[A]ny declaration before mentioned shall not extend to any letters patent
and grants of privilege for the term of fourteen years or under, hereafter
to be made, of the sole working or making of any manner of new manufactures
within this realm, to the true and first inventor and inventors of such
manufactures, which others at the time of making such letters patent and
grants shall not use, so as also they be not contrary to the law, nor mischievous
to the State . . . [t]he said fourteen years to be accounted from the date
of the first letters patents, or grant of such privilege hereafter to be
made, but that the same shall be of such force as they should be, if this
Act had never been made, and of none other. [FN33]
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This section would provide the only statutory
basis for the English patent law for more than two hundred years.
The Statute gave the crown discretion to issue monopoly patents for
invention for any term of fourteen years or less. As a practical matter,
patents were thereafter issued with a term of fourteen years. There are
several interesting aspects to this term limitation. Clearly, Parliament
accepted the argument that monopoly patents for invention were in the public
good, but it also determined that they should be for a finite term that
was substantially less than the predominant term of twenty-one years for
the patents of James I. [FN34]
In addition, the crown was given no authority to renew or extend the term
of a patent. Implicit in the language authorizing monopoly patents for
invention was the assumption that fourteen years would be sufficient to
accomplish the purpose of the monopoly, regardless of whether it was to
introduce and encourage the working of the invention within the realm or
whether it was to recompense the inventor for expenses incurred and risks
The extant historical record does not indicate exactly what the basis
for the fourteen-year term was, but a contemporaneous exposition of the
meaning to be attributed to section 6 was given by Lord Coke in his Institutes
of the Laws of England, published in 1644. According to Coke, a valid patent
for invention had to have seven specific properties, the first of *326
which was that the term not exceed fourteen years. [FN35]
If these seven properties were present,
|(Cite as: 7 J. Intell. Prop. L. 315, *326)
the reason wherefore such a privilege [i.e., that of the patent grant]
is good in law is, because the inventor bringeth to & for the Commonwealth
a new manufacture by his invention, cost and charges, and therefore it
is reason [able], that he should have a privilege for his reward (and the
encouragement of others in the like) for a convenient time . . . . [FN36]
Thus, Coke's first requisite property derives from the fact that a
convenient time was determined to be not more than fourteen years.
The reason for this term is not found in the contemporaneous record,
although it has been suggested that it was chosen because it was double
the term of apprenticeship then set by statute in England. [FN37]
It is more likely that the term of not more than fourteen years was chosen
as a compromise between those who wanted a shorter term and those who argued
for something on the order of twenty-one years which was a frequent term
of the royal patents issued by James I. In this regard, it should be noted
that the bill which in much amended form became the Statute of Monopolies
was originally drafted by Lord Coke. In its original form, it contained
no exception for patents of invention to the general ban on monopolies. [FN38]
When a proviso was added excepting out patents for new inventions from
the ban, it seems to have contained a condition that such patents could
only be "for the term of eleven years or under." [FN39]
How this became fourteen years or less in the final bill is unclear, but
it undoubtedly was a product of a process of negotiation between those
favoring a longer term and those favoring a shorter one.
A prominent English commentator on the patent law states that "[t]he statutory
limitation of the term of the grant to fourteen years . . . was avowedly
based upon the consideration that the patent should not operate in restraint
of trade." [FN40] At the
time, however, that was exactly what Lord Coke thought it would do, because
in his view it would preclude one apprenticed in the new manufacture from
the free practice of his trade once the apprenticeship was completed. As
a consequence, he favored a term limitation of seven years. [FN41]
Regardless of the rationale for choosing the term of fourteen years, it
is apparent that the intent was to permit the invention to go into use
by the public once the term expired.
|(Cite as: 7 J. Intell. Prop. L. 315, *327)
While it was clear that the Statute of Monopolies limited the authority
of the sovereign to the grant of a term of no more than fourteen years,
no such constraint was placed on Parliament. In the second half of the
eighteenth century, it became increasingly common for patentees and their
assignees to seek extensions of the patent term and to have Parliament
enact special legislation to extend the term of particular patents. Indeed,
assignees and licensees not infrequently sought to make term extension
a condition of the assignment or license. To accomplish this, political
connections and lobbying skill were required, as well as a fair sum of
Parliamentary term extensions varied in length
but typically were on the order of four to seven years. [FN42]
The most famous British patent of the eighteenth century, issued to James
Watt in 1769, received a twenty-five year parliamentary extension in 1775
so that its total term was thirty one years. This was an exceedingly long
term by English standards, and it is useful to briefly explore how it came
about and what justification was given for it.
Watt's invention of the separate condenser for a steam engine in 1765
seems to have been little influenced by the existence of the British patent
custom. Watt invented in order to solve a perplexing and interesting technical
problem and not for the purpose of enriching himself through *328
patent rights arising from his invention. [FN43]
But the commercial development of Watt's steam engine took more than a
decade and many thousands of pounds to accomplish. That expenditure and
the resultant successful economic development of the engine came about
in no small measure because of the twenty-five year extension.
|(Cite as: 7 J. Intell. Prop. L. 315, *328)
Watt had little personal funds and was required to borrow to finance
his steam engine experiments. By the spring of 1768, he had accumulated
a debt of over one thousand pounds. At that time, Watt entered into a partnership
with Dr. John Roebuck whereby Roebuck agreed to pay off his debts and fund
the cost of a patent in return for a two-thirds share in the patented invention. [FN44]
Roebuck appeared to have made the application for a patent a condition
of his partnership with Watt. [FN45]
But Roebuck himself was soon in financial difficulty and contributed little
more to the development of the engine than the sums he agreed upon in 1768.
Watt was once again reduced to borrowing, and from 1770 to early 1774 spent
little or no time on developing the engine. [FN46]
By early 1774, Roebuck was bankrupt and Matthew Boulton came to Watt's
rescue. [FN47] Of Roebuck's
creditors, only Boulton placed any value on Watt's patent, [FN48]
and he was nothing if not entrepreneurial. He took over Roebuck's two-thirds
share in the patent, entered into a partnership agreement with Watt to
form the firm of Boulton & Watt, agreed to pay Watt a salary of 330
pounds a year plus expenses, and agreed to finance commercial development
of the engine, estimated in 1775 to cost an additional 10,000 pounds. [FN49]
Boulton saw not only the value of Watt's patent but also the necessity
of obtaining a long-term extension of it in order to make the partnership
profitable. Indeed, the partnership agreement seemed heavily contingent
on the grant of a term extension and was to last only as long as the extended
term of the patent, [FN50]
which turned out to be until 1800.
Early in 1775, Watt surrendered his patent, and a bill was introduced in
Parliament to extend the term of the patent for twenty five years. After
hot debate in the Commons, Parliament passed the Fire Engine Act [FN51]
extending the term as requested. The Act stated the justification for the
extension as follows:
|(Cite as: 7 J. Intell. Prop. L. 315, *329)
AND WHEREAS, in order to manufacture these engines with the necessary
accuracy, and so that they may be sold at moderate prices, a considerable
sum of money must be previously expended in erecting mills, and other apparatus;
and as several years, and repeated proofs, will be required before any
considerable part of the publick can be fully convinced of the utility
of the invention, and of their interest to adopt the same, the whole term
granted by the said Letters Patent may probably elapse before the said
JAMES WATT can receive an advantage adequate to his labour and invention:
AND WHEREAS, by furnishing mechanical powers at much less expense,
and in more convenient forms, than has hitherto been done, his engines
may be of great utility in facilitating the operations in many great works
and manufactures of this kingdom; yet it will not be in the power of the
said JAMES WATT to carry his invention into that complete execution which
he wishes, and so as to render the same of the highest utility to the publick
of which it is capable, unless the term granted by the said Letters Patent
be prolonged. . . . [FN52]
Note that the rationale set forth is twofold; first, that he can be
adequately recompensed for "his labour and invention," and second, that
he may render his invention "of the highest utility to the publick." In
other words, there is both a private and a public justification.
Nothing in the Act indicates why the extension was for twenty five years
which was unusually long. But Boulton was a most effective parliamentary
lobbyist [FN53] who managed
to direct the examining committee's attention to the fact that Parliament
had extended the term of the Marquis of Worcester's steam engine patent
for ninety-nine years and that of Captain Savory's steam engine patent
for thirty-five years so that his request for a mere additional twenty-five
years seemed quite reasonable. [FN54]
He carefully refrained from giving the committee any information on whether
these earlier patents had been held valid and successfully enforced against
|(Cite as: 7 J. Intell. Prop. L. 315, *330)
The desirability of giving Watt a thirty-one year patent term has been
much debated from the eighteenth century to the present. Assuming that
the estimate of 13,000 pounds required to bring the Watt engine to commercial
fruition is accurate, then some extension of the term could be justified. [FN56]
Some extension was very likely necessary to encourage the substantial investment
and effort necessary for commercial success. But even if "Watt's invention
. . . has been generally recognized as the key-invention of the Industrial
Revolution," [FN57] that
is not in and of itself any justification for extending the patent term
to thirty-one years. Certainly it permitted both Watt and Boulton to leave
handsome estates when they died. [FN58]
But was it to the advantage of the public? The evidence suggests that it
was not, but rather that it serves as a "justification for the more modest
patent terms now normally provided." [FN59]
There were several major disadvantages of the long patent term. First,
Boulton and Watt not suprisingly took advantage of it. [FN60]
They made a conscious decision not to license the separate use of the condenser.
The net result was that those who sought licenses for complete engines
paid a very *331
high premium, or waited a very long time to obtain a Watt engine which
was again quite expensive. If one obtained a proper license, all too often
a competitor did not, so those who sought to comply with the patent were
frequently at a distinct business disadvantage.
|(Cite as: 7 J. Intell. Prop. L. 315, *331)
Secondly, while the long term gave Watt himself the opportunity to
make and patent various improvements, at the same time it discouraged improvements
in general. [FN61] In particular,
Watt was strongly opposed to high-pressure steam engines for safety reasons,
and yet as would ultimately be demonstrated they were the wave of the future.
His refusal to build a high-pressure engine incorporating his separate
condenser and other patented improvements appears to have materially retarded
the development of even more effective steam engines. [FN62]
Over time, it seems Parliament became aware of these concerns. When
Watt and Boulton petitioned Parliament in 1799 for a further extension
of the term as well as for extension of the terms of the additional patents
Watt had received in 1781, 1782, and 1784 (all of which had expired), they
sought to justify the extensions on two grounds.
First, the development of the steam engine had taken many years of costly
experiments. Secondly, because of numerous infringements and legal actions,
they had not been able to reap their just financial rewards. Parliament
did not buy the argument and declined to act on the petition. [FN63]
b. copyright custom and practice
The rise of copyright is inextricably intertwined with the development
of printing. In England copyright began in the same way as patents of monopoly
for invention did, as an adjunct of the royal prerogative. Printing was
introduced in 1476, [FN64]
and as early as 1518 there is a record of royal grant for an exclusive
privilege with respect to a printed book which protected the printer against
reprinting within the kingdom or importation for a period of *332
two years. [FN65] This
practice continued throughout the sixteenth century [FN66]
with Elizabeth I in particular using it as a means of rewarding her favorites
at no expense to the crown. These patent grants of printing monopolies
with respect to a particular work or class of works were given to printers
as well as courtiers or other royal favorites who were obviously not printers
in their own right, and who farmed out the privilege to printers, for an
appropriate fee of course. Nowhere in these monopoly grants was there any
recognition that the author might have property rights with respect
to the work being printed.
|(Cite as: 7 J. Intell. Prop. L. 315, *332)
In the same manner as other patents of monopoly, these printing monopolies
came to be looked on with suspicion. They gradually came to be restricted
to the printing of books over which the crown claimed control by virtue
of its authority as head of both state and church. [FN67]
In particular, the rise of printed matter threatened the predominance of
the sovereign in both the political and religious arenas. For the first
time, a ready avenue was available for the wide dissemination of dissenting
views with respect to the existing order. Therefore, it is not surprising
that developing a mechanism for the control of printed matter became a
matter of some urgency for the crown.
Early in the fifteenth century, a craft guild was formed of those who
wrote text letters, and those who served as limners or illustrators, and
those who bound and sold books. [FN68]
Thereafter, those who made or dealt in books and were associated with this
guild came to be known as stationers. In the latter part of the century,
the stationers naturally came to be those who bought from the printers
the books which they bound and sold. Perhaps not *333
surprisingly, the printing craft quickly came to be allied with that of
the stationers. [FN69]
|(Cite as: 7 J. Intell. Prop. L. 315, *333)
In 1556, the crown chartered the company of stationers and granted
to it general supervision of the trades of printing, binding, publishing,
and dealing in books. [FN70]
In return for this right of supervision, the stationers agreed to royal
censorship, supervision, regulation, and licensing of books to be printed.
The stationers' company quickly established a register which recorded the
works for which copying rights or privileges had been obtained. Unless
a printer or publisher had obtained a printing patent from the crown, the
work to be printed had to be registered with the stationers' company. [FN71]
This system of registry would ultimately result in the unintended and
certainly unanticipated (at least by the crown) legal consequence of the
judicial determination of the common law right of copyright. By registration
the printer or publisher got an essentially exclusive copying right which
for all intents and purposes gave an incontestable title to the work being
copied, i.e., printed. It gave substance to the idea of literary property
which came to be known as copyright. The copying right was protected by
imposition of penalties for infringement. It could be assigned, sold, settled,
given in trust, and had all the various attributes of property. Moreover,
since unlike the privilege granted by printing patents the registration
almost never carried a time limitation, it came to be regarded as a perpetual
form of property. [FN72]
During the seventeenth century, a variety of ordinances and parliamentary
acts were passed for the purposes of regulating printed material. While
in force these assured control of the stationers'
company over the printing, publishing, and booksellers' trades and permitted
the registered copying rights to be maintained as monopolies. They tacitly,
if not specifically, acknowledged a common law right of property in copyright. [FN73]
But the last licensing act expired in 1694, and from then on until 1710
those holding *334
exclusive copying rights from the stationers' company found themselves
essentially in limbo. Furthermore, they were faced with a rising tide of
opposition to the monopolies conferred by their exclusive copying rights.
Thus, influential members of the book trade and the stationers' company
pushed for new legislation. It was not until 1710 that they got it, but
when they did so it was not what they had anticipated and hoped for.
|(Cite as: 7 J. Intell. Prop. L. 315, *334)
The bill that would become the first English copyright statute, the
Statute of Anne, [FN74]
was first introduced on January 11, 1710. It was entitled "A Bill for the
Encouragement of Learning and for securing the property of Copies of Books
to the rightful Owners thereof." As introduced, it contained no reference
to any limitation on the term of protection for literary property. [FN75]
This lack of a term, coupled with the use of the word "securing" in the
title, suggested an intent to create a permanent and perpetual property
right, which of course was precisely what the booksellers so desperately
During debate in the House of Commons, there was considerable concern expressed
that a perpetual or unlimited term would result in monopoly of the worst
sort and an inevitable restraint of trade. As a result, the bill as passed
by Commons set the term of protection at fourteen years for new books and
twenty one years for books already in print. Rose is persuasive in suggesting
that these terms were identical to those provided for patents for invention
in the Statute of Monopolies and were likely copied therefrom. He notes
that when printing patents and patents for invention first appeared, they
were not different inkind and were treated similarly. If the bill truly
intended to treat copyright by analogy with patents, then there was a clear
implication that the right to copy was not property at all, but rather
a privilege emanating from the royal prerogative. The issue would then
become one of why a literary invention was different from a mechanical
invention, i.e., why should authors be treated differently than inventors? [FN76]
This, of course, is an issue that continues to be debated to this day.
Given the decision to limit the term of copyright, it is perhaps not
surprising that the title of the bill was changed in an effort to avoid
impression that an extant right was being confirmed, but rather to emphasize
that a new right was being created. It then became "A Bill for the Encouragement
of Learning by Vesting the Copies of Printed Books in the Authors, or Purchasers,
of such Copies, during the Times therein Mentioned" and that, with minor
grammatical changes, became the title of the Statute of Anne. Unfortunately,
the term "securing" continued to appear in the preamble to the second section
so that proponents of perpetual copyright would seize on the inconsistency
in arguing their cause. [FN77]
|(Cite as: 7 J. Intell. Prop. L. 315, *335)
Limiting the term of copyright was not a happy thought for the booksellers,
and they immediately filed a petition with Parliament, wherein they stated:
But it is said, That it is sufficient for us to enjoy a Term of Years
in our Sole Right of Printing. To this we answer, That if we have a Right
for Ten Years, we have a Right for Ever. A Man's having possess'd a Property
for Ten or Twenty years, is in no other Instance allow'd, a Reason for
another to take it from him; [FN78]
and we hope it will not in Ours. [FN79]
Perhaps as a sop to the booksellers, or perhaps because they felt the
proposed copyright term of fourteen years was too short, the House of Lords
amended the bill to provide for a single fourteen-year term of renewal
if the author was still living at the end of the first term. This language
became a part of the Statute of Anne. [FN80]
One of the more remarkable aspects of the Statute of Anne was that
it was styled "An act for the encouragement of learning. . . ." Never before
had copyright been declared to be for this purpose, either by the crown
or by the stationers. Where, then, did this purpose originate? The preamble
to the bill which became the Statute justified it by stating that piracy
of printed works "is . . . a real discouragement to learning in generll
[sic] which in all Civilized Nations ought to
receive ye greatest Countenance and *336
Encouragement. . . ." [FN81]
The preamble to the Statute itself says merely that it is for the purpose
of preventing piracy "and for the encouragement of learned men to compose
and write useful books." [FN82]
Nothing in the parliamentary debate indicates why the emphasis on the encouragement
of learning came about. Moreover, the petitions presented to Parliament
during the debates make "no reference to, or even tacit support of, the
encouragement of learning." [FN83]
Rose, however, states that the "priority given to the encouragement of
learning" was a direct result of a series of articles published in 1709
by Daniel Defoe and Joseph Addison arguing that the rights of authors had
to be protected. [FN84]
But irrespective of who was responsible for it, this justification for
copyright quickly found favor with Parliament and would ultimately find
its way into the Intellectual Property Clause.
|(Cite as: 7 J. Intell. Prop. L. 315, *336)
Regardless of its title, more than anything else, the Statute of Anne
was a trade-regulation statute, aimed at controlling and limiting the rampant
monopolies then extant in the booksellers trade. Its purpose was to act
"in the interest of society by preventing monopoly, and in the interest
of the publisher by protecting public works from piracy." [FN85]
Although there is nothing to indicate that Parliament literally intended
it as such, it would ultimately come to be judicially interpreted as providing
for an author's right. It was in the context
of this interpretation that it would serve as an antecedent, along with
the Statute of Monopolies, for the Intellectual Property Clause.
One immediate consequence of the Statute was that "the traditional
character of the stationers' copyright was radically altered by the introduction
of a limited term." Not surprisingly, the stationers and the booksellers
strongly argued against the concept of a limited term, [FN86]
When the issue of limiting the term of protection arose, the booksellers
objected that, if they had a property in their copies, they had it forever.
This assertion rested on the claim that theirs was a common law right based
on ancient trade practice. Thus the question of whether a limited term
was compatible with a common law right was introduced. [FN87]
|(Cite as: 7 J. Intell. Prop. L. 315, *337)
But almost six decades would pass before a common law court would specifically
be called upon to answer the twin questions of whether authors or their
assigns retained a perpetual property right at common law in their writings
after their publication and what effect the Statute of Anne had on any
such property right. [FN88]
The case was Millar v. Taylor, [FN89]
decided in 1769. But before reviewing that case, it is useful to briefly
review why these issues were before the court.
Simply put, the stationers' company had acted so effectively to protect
copyright over the long years that its registration system was in effect,
that protection afforded by registration had
come to be perceived as a form of property. [FN90]
Indeed, the power of the stationers to protect the rights afforded by registration
had been recognized repeatedly by both crown ordinance and parliamentary
act through almost all of the seventeenth century, such that there was
arguably a good ground for holding that a right of copyright existed at
common law. [FN91]
The right to copy also arose from royal patents granting an exclusive
right to print. These patents were dependent on the royal prerogative which *338
conferred a privilege and not a common law property right as such. The
issue was further complicated by the fact that, as a practical matter,
both the rights gained by registration and by patent were routinely sought
to be protected in the early part of the seventeenth century by the courts
of High Commission and Star Chamber, [FN92]
and in the latter part of the century by the remedies provided under the
licensing acts. This recourse to other than common law remedies [FN93]
gave rise to the view that copyright was not so much a property right recognized
at common law, as it was a right dependent upon royal grant exercised directly
in favour of a patentee, or indirectly through the powers conferred by
the crown upon the company.
|(Cite as: 7 J. Intell. Prop. L. 315, *338)
During the seventeenth century, almost all the copyright cases reported
turned on the rights of royal patentees. As a result, the right was treated
rather straightforwardly by the courts as dependent on the royal grant.
But the fact that there were no reported cases
of common law actions for infringement of copyright prior to the Statute
of Anne [FN94] is not conclusive
that such a remedy was not perceived to exist, but merely of the fact that
more convenient remedies were available.
Be that as it may, by 1760 when Tonson v. Collins was argued but not
decided, [FN95] the debate
on the meaning of copyright had become inextricably intertwined with more
fundamental arguments concerning property itself. As has been nicely summarized:
The gradual exploration of the meaning of the concept of copyright
was therefore caught up in a wider debate about *339
the nature of property itself. On the one hand, there was the prevalent
view that property was a natural right, partially ceded to the state, which
could be created and, having been created, existed in perpetuity. On the
other, there was the view that all property derived from the Crown, and
was therefore subject to the authority of the Crown and its agents, including
laws made by the Crown-in- Parliament. [FN96]
|(Cite as: 7 J. Intell. Prop. L. 315, *339)
However, the question remained: which concept of property would be
controlling with respect to defining copyright?
The facts of Millar v. Taylor were straightforward. Millar had been
assigned the copyright to a particular book, printed two thousandcopies,
and placed them on sale. Taylor, at the expiration of the statutory copyright
term, proceeded to print and sell the same book.
Millar argued at trial that
[t]here is a real property remaining in authors, after publication
of their works; and . . . they only, or those who claim under them, have
a right to multiply the copies of such their literary property, at their
pleasure for sale . . . this right is a common law right, which always
has existed, and does still exist, independent of and not taken away by
the statute. [FN97]
A majority of the four judge panel, including Lord Mansfield, held
that a perpetual property right based on common law existed. Mansfield
dismissed the Statute of Anne with the remark that "[w]e are considering
the common law, upon principles before and independent of that Act." [FN98]
For the first time, he used the phrase "incorporeal substance" to describe
the property right found in copyright. He went on to state that "it is
just that an author should reap the pecuniary profits of his own ingenuity
and labour; it is just that another should not use his name without his
Just or not, five years later in Donaldson v. Becket, [FN100]
the House of Lords decided that whatever may have been the case originally
at common law, the Statute of Anne effectively limited the term for which
copyright could be enforced at common law to a maximum of twenty-eight
years. During the debate in Donaldson Lord Chief Justice De Grey could
not accept the argument made by Mansfield in Millar v. Taylor that a perpetual
property right should exist because it was just that it exist. According
to De Grey, "[t]his idea of moral fitness is
indeed an amiable principle and one cannot help wishing all claims derived
from so pure a source might receive all possible encouragement." But "[b]eautiful
as it may be in theory, to reduce it into the practice and execution of
the common law would create intolerable confusion; it would make laws vain,
and judges arbitrary." [FN101]
|(Cite as: 7 J. Intell. Prop. L. 315, *340)
To this day, what was actually decided in Donaldson remains a subject
of considerable dispute among scholars and commentators. On a very pragmatic
level, the House of Lords did "no more than to declare that copyright henceforth
would be limited in term." [FN102]
But there were other questions of significant interest raised by the case,
But on what basis did the peers make their determination? What understanding
of the nature of copyright did they adopt? Were they persuaded that there
never was a common-law right? Or did they believe that there was but that
it ended with publication? Or that it was taken away by the statute? [FN103]
One commentator suggests that although the law lords did indeed discuss
the principles involved, they couched their holdings in terms of precedent
not whether an inherent or natural law right ought to prevail. [FN104]
A second commentator in turn, argues that the lords "grounded their decision
on the position that copyright had never existed as a right at common law." [FN105]
A third commentator says merely that: "In general,
all agreed that the 1710 Act superseded whatever common law might have
existed before that time." [FN106]
|(Cite as: 7 J. Intell. Prop. L. 315, *341)
Of more immediate interest for the purpose of the present work is the
manner in which Donaldson was perceived in the following decades when the
Constitution was drafted and American copyright law came into being. To
understand this perception, it is useful to look at the facts of the case
as well as how it was reported. Although not technically so, Donaldson
was in effect an appeal of the determination in Millar v. Taylor. Millar
had sold his copyright at issue in Millar v. Taylor to Becket who had had
it pirated by Donaldson. Becket immediately obtained an injunction against
Donaldson, and the latter appealed to the House of Lords. [FN107]
The manner in which the House of Lords functioned at this time as a
court of last resort has been set forth as follows:
In 1774 the House of Lords decided cases by a general vote of the peers,
lawyers and laymen alike. Great weight was usually given to the opinions
of the lawyers, but the practice of lay peers not being recognized when
the House of Lords set as a court had not yet been instituted. In important
cases such as Donaldson v. Becket, however, the twelve common-law judges
of the realm-the judges of King's Bench, Common Pleas, and the Exchequer-would
be summoned to the House to hear the arguments of counsel and to give their
advice on matters of law, after which the peers would debate the issue
and vote. [FN108]
This was exactly what occurred in Donaldson. The common law judges
were asked to answer five specific questions posed by the peers, to wit:
1. Whether at common law, the Author of any Literary composition had the
sole first Right of printing and publishing the same for Sale, and could
bring an Action against any Person for publishing the same, without his
|(Cite as: 7 J. Intell. Prop. L. 315, *342)
2. If the Author had such right originally, did the Law take it away
upon his printing and publishing the said literary composition, or might
any Person reprint and publish the said literary composition, for his own
Benefit, against the Will of the Author?
3. If such Action would have laid at Common Law, is the same taken
away by the Statute of Anne? Or is an Author precluded by such Statute
from any Remedy, except on the foundation of such Statute?
4. Whether the Author of any literary Composition, or his assigns,
had the sole Right of printing and publishing the same in perpetuity by
the Common Law?
5. Whether this Right is in any way impeached, restrained or taken
away by the 8th of Anne? [FN109]
Eleven of the judges answered these questions. Mansfield, who was both
a common law judge and a peer, declined to do so. However, because of the position
he had taken in Millar v. Taylor, it was generally assumed that he would
have answered them in a manner favoring a common law right in perpetuity. [FN110]
Perhaps it was to be expected that the judges would split in their
views. On the first question of whether a common law right existed, eight
voted affirmatively. On the second question as to whether publication adversely
affected the right, seven answered affirmatively. On the third question,
there is some confusion in the record. Both the Journal of the House of
Lords and the standard historical references indicate that by a slim majority
of six to five the judges were of the opinion that the Statute took away
the author's right at common law. However, contemporary newspaper reports
and other *343
accounts indicate the vote was six to five the other way, and that the
clerk of the House made an error in tallying the votes. [FN111]
|(Cite as: 7 J. Intell. Prop. L. 315, *343)
Modern commentators give conflicting views on what these answers and
the accompanying advisory opinions by the judges meant, although they would
undoubtedly all agree with the statement that "[d]etermining the grounds
for decision in Donaldson v. Becket is no simple task." [FN112]
Thus, Patterson & Lindbergh indicate that based on these opinions,
"American courts and commentators assumed that (and have since acted as
if) the House of Lords had held that the author had a common law copyright." [FN113]
Abrams phrases it somewhat differently, saying that, based on the opinions,
"Donaldson has been consistently interpreted
as holding that copyright was recognized by the common law, but was 'impeached'
or preempted by the Statute of Anne." [FN114]
But, according to Feather: "the judges were rather more decisive than some
of the more ambiguous responses might suggest. In general, all agreed that
the 1710 Act superseded whatever common law might have existed before that
time." [FN115] Rose,
however, has quite a different perspective, suggesting that "[h]ad Mansfield
voted, the tally would have been a substantial seven to five in favor of
the common law right surviving the statute." [FN116]
All agree, however, that views expressed by the common law judges were
advisory only and not binding in any way on the lords. The decision was
by vote of the entire House, and "the floor debate appears to have been
very important." [FN117]
But the content of that debate was not officially reported, because the
reporters were constrained by law from reporting it. [FN118]
Thus, the most commonly cited report on the case, i.e., the fourth edition
of Burrow's Reports, makes no mention of the debate, but instead reports
only the arguments of counsel, the advisory opinions of the common law
judges, and the decision against the continuance of the injunction against
Donaldson. The issue was further confused by the fact that Burrow appended
his report *344
on Donaldson v. Becket at the end of his much longer and much more detailed
report on Millar v. Taylor. [FN119]
|(Cite as: 7 J. Intell. Prop. L. 315, *344)
There are three accounts extant, however, which do include statements made
during the debate by the peers. [FN120]
They indicate that five of them actually spoke, with four of them arguing
against any common law copyright and one speaking in favor of such a right.
For reasons known only to him, Mansfield declined to voice his opinions.
When the issue came to a vote, the peers decisively supported a reversal
of the Chancery decree upholding the injunction. [FN121]
The literal effect was simply to reverse the ruling in Millar v. Taylor,
but, as has been rather artfully stated, "when we ask what doctrine, precisely,
the Lords preferred to that which had been cast aside, Clio (that coy muse)
simply shrugs." [FN122]
What was developed in the years after 1774 was the belief that Donaldson
had established that there was indeed a common law property right in copyright,
but one which had been merged into and could only be enforced in accordance
with the Statute of Anne. [FN123]
Be that as it may, based on *345
perspectives of common law property right in copyright, arguments would
be made that there is no logical distinction between literary works and
invention, in that both involve the use of the mental facility and the
ideas derived from such should result in similar property rights. But the
life of the law is not always logic. [FN124]
Thus, in Donaldson it was the lack of a common law property right in invention
which provided a fixed point in the debate about common law property in
copyright. [FN125] Those
who argued for such property in perpetuity deemed themselves obligated
to distinguish between literary work and invention,
whereas those who denied it found themselves arguing that the two were
analogous. While two of the law lords were prepared to admit the possibility
that "previous to the monopoly statute, there existed a common law right,
equally to an inventor and the author of a book," they argued that the
only property right that existed after the Statute of Monopolies and once
an invention was disclosed to the public was that granted by the crown
for a limited time in the form of a patent. [FN126]
|(Cite as: 7 J. Intell. Prop. L. 315, *345)
With this in mind, Baron James Eyre opined that the "Exactitude . .
. of the Resemblance between a Book and any other mechanical Invention"
There is the same Identity of intellectual Substance; the same spiritual
Unity. In a mechanic Invention the Corporation of Parts, the Junction of
Powers, tend to produce some one End. A literary Composition is an Assemblage
of Ideas so judiciously arranged, as to enforce some one Truth, lay open
some one Discovery, or exhibit some one Species of mental Improvement.
A mechanic Invention, and a literary Composition, exactly agree in Point
of Similarity; the one therefore is no more entitled to be the Object of
Common Law Property than the other. [FN127]
In his view it was plain that the Statute of Anne treated copyrights similarly
to patents. Likewise, Lord Camden gave as his opinion that copyrights should
not be distinguished from patents in that there was no real difference
between authors and inventors, and both were beneficial to society. Because
no common law claim could be made for inventors, none should be made for
|(Cite as: 7 J. Intell. Prop. L. 315, *346)
Beginning with Tonson v. Collins and continuing through Donaldson v.
Becket, the arguments have been summarized as follows:
First, the proponents of perpetual copyright asserted, the author's
natural right to own his creation. Second, their opponents replied that
ideas could not be treated as property and that copyright could only be
regarded as a limited privilege of the same sort as a patent. Third, the
proponents responded that the property claimed was neither the physical
book nor the ideas communicated by it but something else, an entity consisting
of the style and sentiment combined. [FN129]
As a practical matter, those who argued that a copyright was similar
to a patent ultimately prevailed, but this was not immediately apparent
in the young United States.
Unlike the situation with the patent term where Parliament not infrequently
acted to extend the term, there seems to have been no instance in the eighteenth
century after the Statute of Anne was enacted wherein Parliament ever sought
to extend the term of a copyright beyond the maximum of twenty- eight years
set by the Statute. In England in the eighteenth century there is nothing
to indicate that the terms of patents or copyrights were in any way based
on the life expectancy of the inventor or author. While the Statute of Anne
granted an automatic right of renewal for an additional term, such could
only occur if the author was still living at the end of the initial fourteen-
IV. The Constitutional Convention and Its Immediate Backdrop
At the time the Framers drafted the Constitution in 1787 they were aware
of more than merely the British patent and copyright practice which they
desired to give Congress the power to emulate. Thus, they were fully cognizant
that under the Articles of Confederation, Congress had no power with respect
to either patents or copyrights. The problem resided in Article II thereof,
which read: "Each State retains its sovereignty, freedom and independence,
and every power, jurisdiction and right, which is not by this confederation
expressly delegated to the United States, in Congress assembled." [FN130]
|(Cite as: 7 J. Intell. Prop. L. 315, *347)
The use of the term "expressly" in Article II was what made it so supremely
restrictive of the authority of the national government, i.e., "the United
States, in Congress assembled." For by the literal language of Article
II, if a power, jurisdiction, or right was not expressly delegated to Congress,
that authority could not be exercised by it. It was for this reason that
the Continental Congress never attempted to legislate with respect to patents
or copyrights or to grant any form of exclusive rights to inventors in
their inventions or authors in their writings. The power to do so was simply
not delegated to Congress by the Articles.
If the Continental Congress had no power to legislate with respect
to or grant patents and copyrights, it could recommend that the individual
states take action in such regard. While it never presented any recommendations
concerning patents, it did resolve on May 2, 1783:
That it be recommended to the several states, to secure to the authors
or publishers of any new books not hitherto printed, being citizens of
the United States, and to their . . . executors, administrators and assigns,
the copyright of such books for a certain time, not less than fourteen
years from the first publication; and to secure to the said authors, if
they shall survive the term first mentioned, and to their . . . executors,
adminstrators and assigns, the copyright of such books for another term
of time not less than *348
fourteen years, such copy or exclusive right of printing, publishing and
vending the same, to be secured to the original authors, or publishers,
or . . . their executors, administrators and assigns, by such laws and
under restrictions as to the several states may seem proper. [FN131]
|(Cite as: 7 J. Intell. Prop. L. 315, *348)
Perhaps the most striking feature of this congressional resolution
is that it recommends a floor of at least fourteen years for the term of
the copyright but suggests no ceiling whatever. Apparently, insofar as
the Continental Congress was concerned, there was no objection if a state
wanted to issue a copyright in perpetuity; the
concern was that the copyright term not be too short, rather than that
it might be too long. This is a significant distinction from what would
be incorporated into the Constitution four years later, namely, the power
to enact laws securing to writers the exclusive right to their works "for
The resolution says not a word about any justification for copyright.
But a March 10, 1783 resolution creating the committee that proposed it
stated the purpose of the committee to be "to consider the most proper
means of cherishing genius and useful arts through the United States by
securing to the authors or publishers of new books their property in such
works." [FN132] The committee
presented its recommendation resulting in the resolution to the states
after "being persuaded that nothing is more properly a man's own than the
fruit of his study, and that the protection and security of literary property
would greatly tend to encourage genius, to promote useful discoveries and
to the general extension of arts and commerce." [FN133]
The committee language is of interest both for what it says and for
what it does not say. It clearly seems to adopt the natural law view that
writers have an inherent property right in their works. It also seems to
confuse the role of copyrights and patents in assuming that copyright will
in and of itself "promote useful discoveries." But it says nothing about
the promotion of learning, which was stated to be a primary purpose of
copyright in the *349
Statute of Anne. Nor does it make any reference to copyright being a common
law property right.
|(Cite as: 7 J. Intell. Prop. L. 315, *349)
The May 2, 1783 resolution is limited to copyright and says nothing
about letters patent for invention. Yet the remarkable thing about the
committee language quoted above is that if the phrase "literary property"
were replaced with "property in invention," it would have provided an equally
admirable justification for a congressional recommendation that the states
protect the rights of inventors "by such laws and under such restrictions
as the several states may deem proper." Obviously, this did not occur,
possibly because of a mistaken belief that copyright would encourage discovery
and protect property rights in invention. More likely, however, inventors
had at this point in time made no concerted effort to seek protection of
supposed property rights in their inventions, whereas "sundry papers and
memorials from different persons on the subject of literary property" had
been submitted to the Continental Congress by early 1783. [FN134]
Between the beginning of 1783 and the close of 1786 twelve states enacted
general copyright statutes, [FN135]
although the suggestion has been made that these statutes apparently never
became operative. [FN136]
As a practical matter, all the states adopting copyright statutes limited
the term to either that set forth in the Statute of Anne or set a fixed
term of twenty or twenty-one years. No state was disposed to view copyright
as creating a perpetual property right.
The Massachusetts statute had an eloquent preamble which, by today's
standards, could fully as well have served as a justification for a patent
statute. [FN137] It read:
Whereas the Improvement of Knowledge, the Progress of Civilization,
the public Weal of the Community, and the Advancement of Human Happiness,
greatly depend on the Efforts of learned and ingenious Persons in the various
and Sciences: As the principal Encouragement such Persons can have to make
great and beneficial Exertions of this Nature must exist in the legal Security
of the Fruits of their Study and Industry to themselves; and as such Security
is one of the natural Rights of all Men, there being no Property more peculiarly
a Man's own than that which is produced by the Labour of his mind. [FN138]
|(Cite as: 7 J. Intell. Prop. L. 315, *350)
This same preamble was copied into the acts of Rhode Island and New
Hampshire. [FN139] The
preamble to North Carolina's act expressed similar sentiments although
more succinctly. [FN140]
But neither Massachusetts nor any other state enacted a general patent
statute assuring the right of inventors to obtain exclusive rights in their
inventions for some limited period of time.
One state, however, did address the issue, but did so in the context
of its copyright statute. In 1784, South Carolina enacted a copyright law
which contained the following clause: "The Inventors
of useful machines shall have a like exclusive privilege of making or vending
their machines for the like term of fourteen years, under the same privileges
and restrictions hereby granted to, and imposed on, the authors of books." [FN141]
It is unclear whether the fourteen-year term was taken from the Statute
of Monopolies or from the Statute of Anne. [FN142]
Whereas the general legislative enactments, with the exception of that
of South Carolina, were limited to copyright, after the end of the Revolutionary
War various states began to grant patents to inventors for their *351
inventions through private laws and acts. [FN143]
It is difficult to know exactly how many state patents were actually granted,
but the number is unlikely to have exceeded forty. [FN144]
The terms of these state patents varied from five years to twenty-one years,
with the term increasingly being fourteen years, apparently patterned after
the British practice. [FN145]
Clearly, the states had determined to limit the term of any patent grant
in much the same fashion as had occurred in Great Britain and for many
of the same reasons.
|(Cite as: 7 J. Intell. Prop. L. 315, *351)
In 1787 the Framers were undoubtedly aware of both the state enactments
concerning copyright and the state practices regarding the issuance of
patents. These practices and enactments, along with the British practice,
were part of the immediate backdrop to the constitutional convention. As
evidenced by the ultimate content of the Intellectual
Property Clause, they were quite prepared to give Congress power to act
with respect to patents and copyrights, but at least initially this deference
was not high on their list of priorities. [FN146]
It was not until August 18, 1787 that the proposals which would ultimately
be transformed into the Intellectual Property Clause were presented to
On that date, the Journal of the Convention lists twenty additional powers
"proposed to be vested in the Legislature of the United States," which
include the following:
|(Cite as: 7 J. Intell. Prop. L. 315, *352)
To secure to literary authors their copy rights for a limited time;
To encourage, by proper premiums and provisions, the advancement of useful
knowledge and discoveries; To grant patents for useful inventions; To secure
to authors exclusive rights for a certain time; [and] To establish public
institutions, rewards, and immunities for the promotion of agriculture,
commerce, trades, and manufactures. [FN147]
Madison's Notes indicate that he and Charles Pinckney presented these
Several aspects of the proposals relating to patents and copyrights
are of interest. First of all, the reference to "patents" clearly indicates
an intent to give Congress power to emulate and follow the British practice
of granting limited-term exclusive rights to inventors in their inventions. [FN149]Secondly,
unlike in the context of copyright, there is no specific reference to either
"a limited time" or " a certain time" as the term of a patent. The reason
for this is that, unlike the case with copyright, there was no uncertainty
as to whether the patent term was limited. The Statute of Monopolies clearly
indicated that it was limited, [FN150]
and there was thus no need to specifically require a limited time as long
as there was a specific reference to "patent." *353
But it was unclear to the Framers whether there was in fact a perpetual
common law property right in copyright or whether the Statute of Anne had
limited the copyright term as set forth therein. What is clear is that
both Pinckney and Madison did not want a perpetual copyright term but rather
wanted something along the lines set forth in the Statute of Anne, that
is to say, a limited term. [FN151]
|(Cite as: 7 J. Intell. Prop. L. 315, *353)
There is nothing to indicate how the August 18th proposals by Madison
and Pinckney were transmogrified into the Intellectual Property Clause.
Madison obviously knew, but never said, although it is quite likely that
he authored it. [FN152]
To aid in understanding the clause, it is useful to turn to its grammatical
form because the aesthetics of the form may have, in no small measure,
influenced the actual language used. The clause is generally taken as an
example of the balanced style of composition much favored in the eighteenth
century, [FN153] and
generally viewed as "a consolidation of two proposals which got packaged
together." [FN154] The
manner in which the term "respective" is used
in the clause lends credence to this interpretation. [FN155]
What is common to a balanced composition of the clause are the terms "promote,"
"progress," "securing," and "limited times." The usual interpretation is
that Congress is given two separate powers involving the common use of
these terms. In this view, it is given power (1) "to promote the progress
of science . . . by securing for limited times to authors . . . the exclusive
right to their . . . *354
writings," and (2) "to promote the progress of . . . useful arts by securing
for limited times to . . . inventors the exclusive right to their . . .
The balanced composition of the clause explains why the terms "patents"
and "copyrights" do not appear therein. [FN157]
|(Cite as: 7 J. Intell. Prop. L. 315, *354)
A careful comparison of the actual language of the clause with the
proposals submitted August 18th by Madison and Pinckney suggests that the
conventional wisdom is wrong, and that the clause is actually a consolidation
and incorporation of three separate and distinct proposals presented by
Madison and Pinckney. The reference to securing to authors for limited
times an exclusive right to their writings incorporates the essentially
identical proposals first from Madison to secure to literary authors their
copyrights for a limited time and second from Pinckney to secure to authors
exclusive rights for limited times. The reference to securing to inventors
for limited times an exclusive right to their discoveries incorporates
Pinckney's proposal to grant patents for useful
inventions. This much is generally accepted. What is not generally recognized
is that the clause incorporates a third proposal, namely, Madison's proposal
to encourage by premiums and provisions the advancement of useful knowledge
and discoveries. This is closely similar to the actual language used, i.e.,
to promote the progress of science and useful arts. Clearly, this proposal
by Madison is much broader in scope than the proposals to provide for patents
and copyrights, and the incorporation of language closely analogous to
it [FN158] in the clause
suggests that *355
the Framers viewed the clause as providing more than merely power to grant
patents and copyrights. [FN159]
|(Cite as: 7 J. Intell. Prop. L. 315, *355)
The final draft of the Constitution appears on its face to have a last
minute correction indicating a change of heart by the Framers concerning
the meaning of "for limited times" in the Intellectual Property Clause.
As originally written in the September 17th draft the clause contained
the phrase "for a limited time." This was corrected by drawing a line through
the "a" and adding an "s" to "time" by a caret with the "s" above it. The
impression is left from the document itself that this change was intended
to give Congress authority to extend the term of the grant beyond that
originally set. [FN160]
A look at the language of the clause as initially proposed on September
5th and incorporated into the Constitution on September 12th indicates,
however, that the change was made to correct a typographical error in the
final draft and to render the language consistent with that which had been
earlier approved. Thus, no attempt was made to broaden the meaning of "limited
time" at the close of the proceedings, even though the final draft may
give such an impression. [FN161]
Although nothing in the contemporaneous record indicates why the Framers
adopted the phrase "for limited times," it can only be assumed that their
intent was to give Congress some flexibility in setting both the patent
and copyright term, while at the same time assuring that neither the patent
grant nor the copyright grant could be in perpetuity. They likely took
it for granted that Congress would set the term of the exclusive right
along the lines followed in the British practice with respect to both patents
and copyrights. [FN162]
In any case, they determined that ultimately the subject matter of both
the patent grant and the copyright grant must become a part of the public
The Framers must be presumed to have been aware of the British practice
of granting patent term extensions and of the term renewal for copyright *356
authorized in the Statute of Anne. It can safely be assumed that by using
the phrase "for limited times" they contemplated that Congress should have
similar authority. Thomas Jefferson certainly assumed this to be the case
and did not like it at all. Thus, in August 1789 he informed Madison that
he preferred a provision in the proposed Bill of Rights stating: "Monopolies
may be allowed to persons for their own productions in literature and their
own inventions in the arts for a term not exceeding-years
but for no longer term and no other purpose." [FN163]
Such language would clearly have precluded term extension and term renewal.
Jefferson also assumed that Congress had discretion in setting the term
of patents and copyrights. Thus only a month later in September 1789, for
reasons peculiarly his own, he asked Madison to seek to have the patent
and copyright term in the new United States law be longer than that set
forth in the contemporaneous British practice "by securing the exclusive
right for 19. instead of 14. years." [FN164]
|(Cite as: 7 J. Intell. Prop. L. 315, *356)
V. Powers and Limitations
The phrase "for limited times" is clearly a limitation on the power to
grant exclusive rights to authors and inventors in their writings and discoveries.
There is clearly some term of the grant beyond which Congress cannot constitutionally
proceed. But what is it and how is it to be determined? The Supreme Court
has addressed the meaning to be given to "for limited times" only in an
indirect sense. In 1829 in Pennock v. Dialogue, [FN165]
Justice Story referred to this language, saying: "It contemplates . . .
that this exclusive right shall exist but for a limited period, and that
the period shall be subject to the discretion of [C]ongress." [FN166]
In more recent times, the Court has stated that "Congress may not create
patent monopolies of unlimited duration. . . ." [FN167]
Nonetheless, the discretion afforded to Congress
with respect to the patent and copyright term is not unbounded, and Justice
Story does not *357
provide support for any view that courts may not interpret the meaning
to be given to "for limited times." In Pennock, he made the following point:
|(Cite as: 7 J. Intell. Prop. L. 315, *357)
The words of our statute [FN168]
are not identical with those of the statute of James, [FN169]
but it can scarcely admit of doubt, that they must have been within the
contemplation of those by whom it was framed, as well as the construction
which had been put upon them by Lord Coke. [FN170]
Although these words refer to the language of the patent statute, there
is little doubt but that they are fully applicable to the language of at
least the patent provision of the Intellectual Property Clause. It is thus
useful to recall what Lord Coke had to say about the patent term as set
forth in the Statute of Monopolies. He argued that the patent privilege
was proper as long as it was for "a convenient time" [FN171]
which he perceived as the time required to bring a "new manufacture" into
free practice in the realm. [FN172]
Simply put, in interpreting the patent term Story agreed with Coke that
it should be interpreted as providing a term adequate to encourage the
social progress at the root of the patent system, [FN173]
but no longer.
In his Commentaries, published four years after his Pennock opinion,
Story made the point clear with regard to both the patent and the copyright
term by his statement that short terms are beneficial
in that they "admit the people at large, after a short interval, to the
full possession and enjoyment of all writings and inventions without restraint"
(emphasis added). [FN174]
In the context of the copyright provision, the Supreme Court in 1975
in Twentieth Century Music Corp. v. Aiken emphasized that:
The limited scope of the copyright holder's statutory monopoly, like
the limited copyright duration required by *358
the Constitution, reflects a balance of competing claims upon the public
interest: Creative work is to be encouraged and rewarded, but private motivation
must ultimately serve the cause of promoting broad public availability
of literature, music, and the other arts. [FN175]
|(Cite as: 7 J. Intell. Prop. L. 315, *358)
In so stating, the Court noted that Lord Mansfield's statement of the
problem, now more than 200 years ago, bears repeating:
[W]e must take care to guard against two extremes equally prejudicial;
the one, that men of ability, who have employed their time for the service
of the community, may not be deprived of their just merits, and the reward
of their ingenuity and labour; the other, that the world may not be deprived
of improvements, nor the progress of the arts be retarded. [FN176]
The views expressed by the Court in Aiken are remarkable in several
respects. First of all, they accept the ideas that were becoming prevalent
in England at the time the Constitution was drafted, namely, that there
are two separate and competing rationales for
both the patent and the copyright systems and that the patent and copyright
terms are derived from a balancing of the tensions between these two competing
justifications. The first justification, which emphasizes the public interest,
may broadly be called the "social benefits" rationale, and the second,
which emphasizes the interest of the inventor or author, can be divided
into two categories, the "inherent property right" rationale and the "reward
for genius" rationale. Secondly, the Court assumed without any citation
of authority that these competing rationales were also the justifications
for-and indeed the purposes of-the Intellectual Property Clause.
In so doing, the Court made no reference whatever to the language of
the clause taken as a whole. Even a cursory look indicates that its purpose
is "to promote the progress of science and useful arts." Nothing in it
states that creating a property right or rewarding genius is its purpose.
Yet from the *359
earliest days of the republic this has been assumed to be a purpose, if
not the primary purpose, of the clause. Such an assumption, however, appears
to confuse the means with the end and appears at odds with the literal
language of the clause. Thus, the purpose is clearly stated to provide
benefits for society by promoting the progress of science and useful arts.
No other purpose is set forth. A means for achieving the stated purpose
is expressly stated to be creation of limited-term exclusive rights in
authors and inventors. While this means may also
be viewed as an incentive or reward for the creations of genius, i.e.,
inventions or writings, the clause does not in any way state that providing
such incentive or reward is the purpose of the grant of authority to Congress. [FN177]
|(Cite as: 7 J. Intell. Prop. L. 315, *359)
Be that as it may, in the context of defining a constitutional boundary
for the term of patents and copyrights, which justification for the limited-term
exclusive right is accepted as paramount in no small measure determines
what length of term will be considered to be constitutionally acceptable.
Thus, e.g., if the "social benefits" rationale is considered more important,
then "limited times" should be interpreted to be that length of term which
provides an appropriate incentive to authors and inventors "to promote
the progress of science and useful arts" but is not so long that this purpose
ceases to be met or is actually deterred. In this view, ultimate removal
of the writing or invention into the public domain is the more critical
factor, and long copyright and patent terms will be considered constitutionally
suspect. Alternatively, if "reward for genius" is considered the more important
rationale, then there is a pronounced tendency to lengthen the term of
patents and copyrights to better assure that the "reward" will actually
occur. Long terms will not be constitutionally suspect, and the property
interest of authors and inventors becomes more important than the public
interest in promoting the progress of science and useful arts.
A basic issue in determining the upper bounds
of constitutionally permissible patent and copyright terms is the extent,
if any, to which the stated purposes of the Intellectual Property Clause
act as a limitation on the *360
discretion of Congress to set patent and copyright terms. While not specifically
addressing this issue, certain commentators have argued that the statement
of purpose in the clause does not create any limitation on the power of
Congress to act with respect to patents and copyrights. Thus, e.g., Nimmer
and Nimmer in the copyright context state "the phrase 'To promote the progress
of science and useful arts . . .' must be read as largely in the nature
of a preamble, indicating the purpose of the power but not in limitation
of its exercise." [FN178]
The only authority cited for this view is Jacobson v. Massachusetts, wherein
the Supreme Court stated only that the Preamble to the Constitution itself
"has never been regarded as the source of any substantive power conferred
on the Government of the United States or on any of its Departments." [FN179]
But the Intellectual Property Clause is in fact a substantive grant of
power to Congress, and the introductory portion thereof may not be read
out of it and rendered meaningless.
|(Cite as: 7 J. Intell. Prop. L. 315, *360)
In the patent context, Burchfiel has presented a similar argument,
contending that in interpreting several other enumerated congressional
powers the Supreme Court has rejected the view that a statement of purpose
should be construed to express an implied limit on congressional exercise
of the power. [FN180]But
in each example he cites, the Court has not held that the statement of
purpose places no restriction on the exercise of the particular congressional
power. Rather in each instance, the Court adopted an expansive definition
of purpose, rather than holding that the purpose places no limitation on
the exercise of the particular power.
Moreover, from early in the republic the Court has accepted the view
that a statement of purpose is highly relevant in construing the nature
and extent of powers granted to Congress. Thus, e.g., in 1824 in Gibbons
v. Ogden Chief Justice Marshall stated:
As men, whose intentions require no concealment, generally employ the
words which most directly and aptly express the ideas they intend to convey,
the enlightened patriots who framed our constitution, and the people who
adopted it, must be understood to have employed words in their natural
sense, and to have intended what they have said. If, from the imperfection
of human language, there should be serious doubts respecting the extent
of any given power, it is a well *361
settled rule, that the objects for which it was given, especially when
the objects are expressed in the instrument itself, should have great influence
in the construction. . . . We know of no rule for construing the extent
of such powers, other than is given by the language of the instrument which
confers them, taken in connection with the purposes for which they were
|(Cite as: 7 J. Intell. Prop. L. 315, *361)
In the context of the Intellectual Property Clause
these views have particular significance, for they clearly indicate that
a statement of purpose or objects set forth in the clause itself "should
have great influence" on the interpretation of the clause. Phrased somewhat
differently, the statement of purposes, i.e., "to promote the progress
of science and useful arts," constitutes a limitation on the power of Congress
granted by the clause which must be taken into account in interpreting
Indeed, the Supreme Court has expressly recognized this in the patent
context and implicitly in the copyright context. Thus, in 1966 in Graham
v. John Deere Co. the Court relied heavily on the introductory language
of the clause to support its view that there is a constitutional standard
of invention that must be met for there to be patentability. It began by
noting that the qualified authority given to Congress with regard to the
issuance of patents "is limited to the promotion of advances in the 'useful
arts,' " and went on to state that "Congress in the exercise of the patent
power may not overreach the restraints imposed by the stated constitutional
purpose." According to the Court, " 'promot[ing] the Progress of . . .
useful Arts' . . . is the standard expressed in the Constitution and it
may not be ignored." [FN182]
The import of this is that, with regard to patents, the Court has most
emphatically stated that the introductory language is a limitation which
sets forth a constitutional standard that Congress may not ignore. This
is as true with respect to the patent term as
it is with respect to the nature and type of invention that may be protected.
Simply put, there is a term beyond which the progress of useful arts is
no longer promoted and beyond which such progress may actually be said
to be hindered. At that point the discretion of Congress to set the patent
term becomes constitutionally limited. The Court made this point implicitly
in Aiken by noting the competition or tension *362
that exists between the public interest and the interest of authors when
it comes to issuance of copyrights. At some copyright term, the public
interest must predominate over that of the author, and Congress does not
have constitutional authority to grant a longer term.
|(Cite as: 7 J. Intell. Prop. L. 315, *362)
Despite the views expressed by the Supreme Court in Gibbons, Graham,
and Aiken, several circuit courts have declined to treat the introductory
language of the clause as a limitation on congressional power regarding
copyrights. [FN183] Although
they were not addressing the specific issue of whether the introductory
language containing the statement of purposes acts as a limitation on the
power of Congress in setting the copyright term, the language they used
is sufficiently broad as to indicate they would hold that it is not a restriction
or limitation on the length of the copyright term. [FN184]
VI. Delineating the Term of the Grant
I have suggested that the extent to which the phrase "for limited times"
is viewed as setting constitutional limits on the length of the copyright
and patent term depends in no small degree on whether the "social benefits"
or "rewards for genius" rationale is considered more important as a justification
for the Intellectual Property Clause. [FN185]
The only justification for the clause given by any Framer was that set
forth by Madison in The Federalist No. 43. Therein he stated:
The utility of this power will scarcely be questioned. The copyright
of authors has been solemnly adjudged, in Great Britain, to be a right
of common law. The right to useful inventions seems with equal reason to
belong to inventors. The public good fully coincides in both cases with
the claims of individuals. The States cannot separately make effective *363
provision in either of the cases, and most of them have anticipated the
decision on this point by laws passed at the instance of Congress. [FN186]
|(Cite as: 7 J. Intell. Prop. L. 315, *363)
Unfortunately, this language sheds little light or no light on what
the Framers contemplated by "for limited times." [FN187]
The ordering of the language used by Madison rather strongly suggests
that a major-if not the primary-justification for the clause was to assure
that Congress would in fact have authority to legislatively protect property
rights of authors in their writings and inventors in their discoveries. [FN188]
But Abrams argues that "[t]he stress on the 'utility' of the power and
the 'public good' reinforces the notion of public interest as a justification
for the copyright system" and presumably the
patent system as well. [FN189]
Perhaps the most intriguing comment by Madison from the perspective of
this work is his statement that: "The public interest fully coincides in
both cases with the claims of individuals." This, however, would seem to
be true only if the term of the grant is such as to comply with both the
public interest in having the subject matter of the grant go into the public
domain at some defined time not detrimental to the public, and the interest
of the grantee in having a property interest created for some length of
time which would insure a good rate of return on his time and investment.
As a matter of their own pragmatic interests, the grantees would always
want the term of the grant to be as long as possible, without reference
to the public interest. If there was to be a true "coincidence" of interest,
it would have to be predicated on some form of balancing the divergent
interests of the public and those of the grantees. Madison, however, made
no attempt to address this issue.
The initial statutory terms of the copyright and patent grants were
simply copied from the existing British law, both because this was the
easiest thing to do, and because Congress had no basis on which to make
any determination *364
that American conditions were sufficiently different from British conditions
as to justify the setting of different lengths of the terms. But the constitutional
language did not preclude term extension or renewal and in the case of
copyright the statute early on expressly provided for term
|(Cite as: 7 J. Intell. Prop. L. 315, *364 )
renewal. I turn now to the factors which have influenced
the length of the patent and copyright term from 1790 to the present.
|(Cite as: 7 J. Intell. Prop. L. 315, *364)
a. the patent term
Before specifically addressing how the patent term has been delineated,
it is useful to review perceptions on the nature of the patent grant during
the nineteenth century, because those perceptions influenced how the term
should be treated both legislatively and judicially. More often than not
the issue was perceived as one of whether patents were to be treated as
monopolies. The Framers clearly viewed these limited-term exclusive rights
as monopolies, albeit of a desirable and acceptable type. Indeed, this
was precisely why they deemed it necessary to ensure that the exclusive
right was granted only "for limited times." [FN190]
Nonetheless, there would soon be fierce arguments-which have continued
to this day-as to whether the "exclusive right[s]" authorized by the Intellectual
Property Clause are in fact monopolies. Those who argued that they were
monopolies tended to favor more restrictive interpretations of the patent
law, while those who contended that they were not monopolies generally
did so for the purpose of advocating a more liberal interpretation of this
law. Those who argued that they were monopolies more often than not contended
that this law was intended to favor the public interest whereas those who
avoided the use of the term "monopoly" generally
argued that an important purpose of this law was to reward inventors for
As William Robinson would point out in his massive patent treatise
published in 1890, "[t]he question whether a patent privilege is a monopoly
is not merely a question of words." [FN191]
He noted that:
In legislative bodies, which recognize the patent-right as a monopoly,
the interests of the public will naturally be preferred to those of the
inventor; legislation on the subject will be cautious and conservative;
and the powers conferred upon the patentee will be subordinated to the
free enjoyment by all other citizens of every privilege that is not inconsistent
with the protection to which his inventive skill and genius are entitled.
In courts where the same theory prevails such rules will be followed as
tend to limit the monopoly of the inventor to the exact letter of his grant,
and hold him to a strict compliance with all its conditions as an essential
requisite of validity. [FN192]
|(Cite as: 7 J. Intell. Prop. L. 315, *365)
In the context of the present work, this view suggests that attempts
to extend the term of the grant beyond that expressly set by statute or
to create a greater statutory term will be looked on with suspicion at
best and refused in most instances.
But Robinson went on to point out that if a patent is not treated as
a monopoly, it is considered favorably by the
law, with the following consequences:
Being intended principally, if not entirely, for the benefit of the
grantee, and conflicting with no public interest either actual or possible,
the law construes it liberally in order to secure to the grantee all the
advantage which the grantor might have proposed to bestow upon him. And
hence, where legislators and the courts adopt this theory of the exclusive
privilege created by a patent, and lose sight of its true character as
a monopoly, legislative acts in favor of the inventor will be sweeping
and extravagant, and the decisions of the courts will sustain him in claims
which seriously abridge the rights of others, and will afford him a protection
and redress far beyond that which justice and the public interest demand. [FN193]
Although using extravagant language, Robinson made clear that whether a
patent was actually treated as a monopoly, as opposed to simply being called
one, depended in no small measure on whether the intent of the grant was
perceived to be primarily for the benefit of the public or primarily for
the benefit of the patentee. [FN194]
|(Cite as: 7 J. Intell. Prop. L. 315, *366)
Robinson's basic premise was that in the absence of some defined property
right set by society an idea once communicated to the public is freely
available for use by the public, and an inventor has no right or power
to restrain its use by the public. [FN195]
By granting a right or power to restrain the use of an invention by the
public, a patent, Robinson contended,
. . . is a true restriction of pre-existing public rights. It may not,
and ordinarily it does not, take away from the people the actual enjoyment
of any benefit which they already had in their possession, but it does
prohibit their immediate exercise of that perpetual and natural right by
virtue of which every new discovery, when openly practised or proclaimed,
becomes at once the possession and property of all. [FN196]
While patents may be granted to stimulate inventive activity and to
reward inventors, "[t]he duty which the state owes to the people to obtain
for them, at the earliest moment, the practical use of every valuable invention
in the industrial arts is, however, a higher and more imperative duty than
any which it owes to the inventor." [FN197]
In other words, the term of a patent is limited to that required to actually
"promote the progress of . . . useful arts," and there is no proper basis
for making it any longer. [FN198]
Her view that the *367
purpose of the patent system is to encourage invention is one that was
prevalent in the first half of the nineteenth century, but one which has
been largely discredited today. Nonetheless, her point that the patent
system ought to give "the inventor the minimum actual reward consistent
with continued credibility" [FN199]
is a valid one. The length of the patent term is certainly a critical factor
in making this determination.
|(Cite as: 7 J. Intell. Prop. L. 315, *367)
With this introduction, it is appropriate to turn
now to what Congress has actually done concerning the patent term. The
first patent statute, the Patent Act of 1790, authorized the issuance of
a patent "for any term not exceeding fourteen years." [FN200]
This was exactly equivalent although not identical to the language of the
Statute of Monopolies. [FN201]
The patent board authorized under the Act of 1790 to issue patents [FN202]
determined a standard term of fourteen years. [FN203]
It quickly became apparent that having high government officials responsible
for issuing patents was an inefficient and ineffective way to proceed,
particularly in view of the fact that these officials had to determine
whether the invention was deemed "sufficiently useful and important" to
warrant a patent, and less than three years later Congress opted for a
registration system under which a patent would automatically issue if the
fees were paid and the ministerial requirements met. This Patent Act of
1793 also provided "for a term not exceeding fourteen years," [FN204]
but the Secretary of State, who was responsible for seeing that the ministerial *368
requirements were met, quickly established a standard term of fourteen
years which would be the term during the forty-three years that the Act
of 1793 remained in effect.
|(Cite as: 7 J. Intell. Prop. L. 315, *368)
The language of the Acts of 1790 and 1793 seemed literally to indicate
that no patent could have a term in excess of fourteen years. Congress,
however, would interpret the statutory language as placing a limitation
on the executive branch from issuing a patent
with a term of more than fourteen years, but not on the ability of Congress
to extend or renew the term of an issued patent beyond fourteen years as
it saw fit. The issue of congressional authority in this regard was for
all intents and purposes moot until 1804 when the first patents issued
under the Act of 1790 expired.
The issue was brought to the attention of Congress by Oliver Evans,
who in 1791 obtained the third United States patent for his invention concerning
improvements in the milling of flour. His improvements constituted a major
advance in the art of milling. Not only did they materially increase the
efficiency of the milling process and thereby lower costs, they also produced
a more uniform and cleaner product. Although his improvements were slow
to catch on, by 1804 many millers were licensing his invention and many
others were infringing on his patent.
Evans, like most inventors of his time, thought that the fourteen-year
term of a federal patent was too short, and that, at the very minimum,
each patent holder should have an automatic right of renewal for some period
of time. [FN205] On December
21, 1804 he became the first patentee to formally petition Congress for
an extension of his patent right when he sought a seven- year extension
"without injuring those who have already purchased the right of using it." [FN206]
Much to his surprise and dismay, Congress failed to act on this petition.
On January 22, 1805, the House Committee on *369
Commerce and Manufactures recommended the term
extension but also recognized that this was the first of what were likely
to become frequent requests. Accordingly, it recommended that the patent
law be amended to allow for term extensions. [FN207]
A bill was prepared which would have accomplished both of these purposes,
but on February 6th the House rejected it. [FN208]
It would not be until 1832 that Congress would pass any general legislation
pertaining to term extension. [FN209]
|(Cite as: 7 J. Intell. Prop. L. 315, *369)
Evans tried again in the next session of Congress, even though his
patent had now expired, but was again unsuccessful. [FN210]
He now changed his strategy and on December 13, 1806, presented a more
general petition seeking modification of the patent law to extend the statutory
term of patents. [FN211]
Therein he had the temerity to propose a much more extreme position, namely,
that inventors, their heirs, and assigns be granted the patent right forever. [FN212]
A week later, he wrote to President Jefferson stating that: "To represent
the patentees petition to Congress for redress, I am making my last effort
to draw the attention to the oppressed and aggrieved state of the inventive
genius of this country. . . ." He hoped that Jefferson would look favorably
upon this letter, because "one word from you would promote it more than
all my feeble exertions." [FN213]
That word was not forthcoming, however, and Congress did nothing.
But Jefferson did belatedly respond to this letter. On May 2, 1807,
he set forth his perspective as follows:
Certainly an inventor ought to be allowed a right to the benefit of his
invention for some certain time. It is equally certain it ought not be
perpetual; for to embarrass society with monopolies for every utensil existing,
& in all the details of life, would be more injurious to them than
had the supposed inventors never existed: because the natural understanding
of its members would have suggested the same things or others as good.
How long the term should be is the difficult question. Our legislators
have copied the English estimate of the term; perhaps without sufficiently
considering how much longer, in a country so much more sparsely settled,
it takes for an invention to become known & used to an extent profitable
to the inventor. [FN214]
|(Cite as: 7 J. Intell. Prop. L. 315, *370)
Here Jefferson comes out solidly against any perpetual right in an
inventor, although he does leave open the possibility of changing the original
patent term to make it longer. [FN215]
He clearly recognizes both a societal interest and the interest of the
inventor in a "profitable" return. He also accepts that the delineation
of the patent term of necessity must seek to reconcile the conflict inherent
in these two interests.
Perhaps in response to this letter, Evans now expressed himself most
forcibly on the shortness of the patent term. His purpose, he said, was
to draw the attention of his "fellow-citizens, to the most ruinous error
that the supreme legislature of my country has
committed, vis: The laws do not protect the inventors of useful improvements
in the arts, in the exclusive enjoyment of the fruits of their labour,
for a sufficient length of time, nor afford them any adequate compensation,
but makes them common to all at the end of 14 years; a time barely sufficient
to mature (in this country) any useful improvement." In his view, "the
inventor is deluded by the name of *371
a patent" because after making great efforts to mature and introduce his
invention into use and "just as he begins to receive compensation his patent
expires, his sanguine hopes are all blasted, he finds himself ruined, and
conceives that he has been robbed by law." He concluded that "a patent
in this country is not yet worth the expense of obtaining it." [FN216]
|(Cite as: 7 J. Intell. Prop. L. 315, *371)
While Evans was seeking to have his patent term extended, he was also
litigating an infringement action that had been commenced prior to the
expiration of the term. The action did not come to trial until October
1807, when Justice Bushrod Washington, in his capacity as circuit judge,
invalidated the patent on the ground that it failed to fully recite the
suggestions and allegation of that portion of the invention known as the
hopperboy in Evans' original petition for patent. [FN217]
Evans was stunned, because the content of the patent had been defined by
the patent board, and he had had no control over the description set forth
therein. [FN218] Nonetheless,
Evans immediately took advantage of this turn of events and petitioned
Congress, protesting the inequity of having the
patent invalidated through no fault or action of his. Congress agreed, [FN219]
and it passed a special act authorizing renewal of the patent for a term
of fourteen years. Jefferson signed it into law on January 21, 1808, late
in his administration. [FN220]
By authorizing a new renewal patent three years after the original
patent had expired, the special act created a major contretemps. A fundamental
premise of the patent law, and one inherent in the "for limited times"
portion of the Intellectual Property Clause, is that once a patent expires,
the public has a right to freely use the invention. Clearly during the
intervening three years anyone, including those who had earlier licensed
the patent rights, now had the right to use the invention free of charge.
Could Congress constitutionally remove from the public domain that which
had been in it for three years and renew the exclusive right for an additional
term of fourteen years?
Evans would have been well advised to voluntarily limit the scope of his
patent rights to those who installed his patented improvements after the
date of the renewal patent. He chose instead to take a hard line and sought
license fees or damages from anyone using the patented improvements, regardless
of when they were installed. The result was extensive litigation.
|(Cite as: 7 J. Intell. Prop. L. 315, *372)
In 1813 Jefferson, now in retirement, took the opportunity to set forth
his views on what he termed the "retrospection" given to the Act for the
Relief of Oliver Evans that authorized the renewal
patent. He strongly disagreed with the judicial interpretations by the
circuit courts for Pennsylvania and Maryland that this Act was not an ex
post facto law repugnant to the Constitution, and that Evans was legally
authorized to claim royalties under the renewed patent for machinery installed
during the three-year period when his improvements were in the public domain,
but only from the date that infringing millers had received notice of the
issuance of the new patent. [FN221]
While recognizing that the constitutional prohibition on ex post facto
laws applied literally only to criminal cases, Jefferson nonetheless contended
that "they are equally unjust in civil as in criminal cases, and the omission
of a caution which would have been right, does not justify the doing of
what is wrong." In his view, the retrospective construction was "abiding
the natural right," and any such laws "should be restrained by vigorous
constructions within their narrowest limits." [FN222]
Two years later, the Supreme Court would disagree and uphold the views
expressed by the circuit courts. [FN223]
Interestingly, no one, including Jefferson, seems to have argued that
Congress did not have constitutional authority to remove the subject matter
of an invention from the public domain once it had clearly entered the
public domain. As Justice Story in his capacity as circuit judge would
put it in 1839:
The power is general, to grant to inventors; and it rests in the sound
discretion of congress to say, when and for what length of time and under what
circumstances the patent for *373
an invention shall be granted. There is no restriction, which limits the
power of congress to enact, [only to] where the invention has not been
known or used by the public. [FN224]
|(Cite as: 7 J. Intell. Prop. L. 315, *373)
Justice Story thus seemed to emphatically deny that the Intellectual
Property Clause placed any limitation on the power of Congress to remove
an invention from the public domain. This is to be contrasted with the
view expressed by the Supreme Court in 1966 and again in 1989 that the
clause precludes Congress from authorizing "the issuance of patents whose
effects are to remove existent knowledge from the public domain, or to
restrict free access to materials already [publicly] available." [FN225]
The saga of Evans' renewal patent is instructive in several respects.
First of all, it indicates an early reluctance by Congress to statutorily
authorize any general form of term extension or renewal for patents, despite
the fact that it had done this for copyrights. [FN226]
Secondly, it demonstrates an ambivalence concerning term extension or renewal.
Finally, it suggests that Congress would predicate any term extension or
renewal on whether the inventor was perceived to have received a fair profit
or reward for his inventive effort. [FN227]
Sometime after he left the presidency in 1817, Madison expressed the
view that while there could be no objection to a temporary patent monopoly,
it was important that it be temporary. Although he did not expressly so
state, it is apparent that he opposed term extensions,
because, as he put it, inventions "grow so much out of preceding ones that
there is the less merit in the authors: and because for the same reason,
the discovery might be expected in a short time from other hands." [FN228]
In 1833 Justice Story wrote that the Intellectual Property Clause was beneficial
"to the public, as it *374
would promote the progress of science and the useful arts, and admit the
people at large, after a short interval, to the full possession and enjoyment
of all writings and inventions without restraint." [FN229]
But his judicial holdings appeared to belie this language, because he was
perfectly prepared to find that Congress had authority not only to extend
the "short interval," but to take from the public domain and give back
to the inventor an exclusive right in an invention that had entered into
the public domain. [FN230]
|(Cite as: 7 J. Intell. Prop. L. 315, *374)
During this period, Congress exhibited no interest whatever in either
statutorily extending the term of the patent grant or providing for a statutory
right of renewal. [FN231]
Quite possibly because of the furor that the renewal of the Evans patent
had caused, Congress thereafter exhibited considerable caution in granting
term extensions, and between 1808 and 1836 only six additional term extensions
were granted. [FN232]
Gradually inventors came to accept this, although they never came to like
it. Finally, in response to numerous petitions for extension or renewal,
Congress in 1832 statutorily established the conditions under which it
would consider such petitions. [FN233]
This statute clearly indicated that the basis for any extension or
renewal would be whether the inventor was considered to have received an
adequate monetary compensation for his inventive effort. Thus, the petition
for renewal or extension was required to "be accompanied by a statement
of the ascertained value of the discovery, invention, or improvement, and
of the receipts and expenditures of the patentee, so as to exhibit the
profit or loss arising therefrom." [FN234]
It did not give any assurance that the petition for extension or renewal
would be granted. In any case, extension or renewal still necessitated
a special act of Congress.
In 1836 Congress completely revised the patent law, changing the system
from one of registration to one of examination and creating both the modern
patent office and the beginnings of the modern examination process. The
statutory term of the Act of 1793 was retained, i.e., "a term not exceeding *375
fourteen years," [FN235]
but an administrative mechanism for term extension for seven years was
added which did not require a private act of Congress. Instead, the statutory
|(Cite as: 7 J. Intell. Prop. L. 315, *375)
. . . the Secretary of State, the Commissioner of the Patent Office,
and the Solicitor of the Treasury shall constitute a board to hear and
decide upon the evidence produced before them both for and against extension.
. . . The patentee shall furnish to said board a statement, in writing,
under oath, of the ascertained value of the invention,
and of his receipts and expenditures, sufficiently in detail to exhibit
a true and faithful account of loss and profit in any manner accruing to
him from and by reason of said invention. And if, upon a hearing of the
matter, it shall appear to the full and entire satisfaction of said board,
having due regard to the public interest therein, that it is just and proper
that the term of the patent should be extended, by reason of the patentee,
without neglect or fault on his part, having failed to obtain, from the
use and sale of his invention, a reasonable remuneration for the time,
ingenuity, and expense bestowed upon the same, and the introduction thereof
into use, it shall be the duty of the Commissioner to renew and extend
the patent, by making a certificate thereon of such extension, for the
term of seven years from and after the expiration of the first term; which
certificate, with a certificate of said board of their judgment and opinion
as aforesaid, shall be entered on record in the Patent Office; and thereupon
the said patent shall have the same effect in law as though it had been
originally granted for the term of twenty-one years. [FN236]
Although lip service was paid to the public interest, the clear import
of this statutory language was that whether the patentee was perceived
to have received "reasonable remuneration" during the original term would
determinative as to whether an extension would be granted. How or on what
basis the board was to determine what was reasonable was not stated. Nonetheless,
during the following decade, some ten term extensions were granted under
this language. [FN237]
|(Cite as: 7 J. Intell. Prop. L. 315, *376)
The meaning to be given to this term-extension language was addressed
by the Supreme Court in 1846 in Wilson v. Rousseau. [FN238]
At issue was a patent issued to William Woodworth in 1828. Shortly after
the patent issued Woodworth had assigned all rights to it to several other
parties. In 1839 Woodworth died, and in 1842 the administrator of his estate
sought and obtained a seven-year extension of the patent. At issue in Wilson
was whether the term of a patent could be extended after the patentee died,
and, if so, whether the term extension would adhere to the benefit of the
assignees. A divided Court answered both questions affirmatively.
Justice Nelson, speaking for the majority, stated:
The statute is not founded upon the idea of conferring a mere personal
reward and gratuity upon the individual, as a mark of distinction for a
great public service, which would terminate with his death; but of awarding
to him an enlarged interest and right of property in the invention itself,
with a view to secure to him, with greater certainty, a fair and reasonable
remuneration. And to the extent of this further right of property, thus
secured, whatever that may be, it is of the same description and character
as that held and enjoyed under the patent for the first term. In its nature, therefore,
it continues, and is to be dealt with, after the decease of the patentee,
the same as an interest under the first, and passes, with other rights
of property belonging to him, to the personal representatives, as part
of the effects of the estate. [FN239]
The several dissents had no difficulty with a term extension occurring
after the death of the patentee, but rather strongly opposed the holding
that the term extension accrued to the benefit of assignees under the original
term of the patent. [FN240]
|(Cite as: 7 J. Intell. Prop. L. 315, *377)
Having provided an administrative mechanism for term extension, it
might reasonably be supposed that Congress would now cease to consider
petitions for this purpose. For the next decade, with limited exception
this seems to have been exactly what occurred. In 1844, e.g., the House
Committee on Patents received a petition from Stephen McCormick seeking
extension of his patent "on the grounds that lawsuits and the failure of
the public to accept his patented reaper had prevented his receipt of adequate
The petition was adversely reported because the Patent Appeals Board had
denied the request [FN242]
committee would not feel at liberty to report a bill for his relief,
believing that it would be unwise to establish a precedent, that numerous
persons, who now have and may hereafter obtain patents, if their expectations
of profit are not fully realized, might, by applying to Congress, have
their exclusive right prolonged from time to
time, until their invention should fully remunerate them for their time
and trouble. [FN243]
These words were prophetic for what was soon to occur. Beginning in
1848, in the 30th and 31st Congresses some twenty bills of this nature
were given do-pass recommendations, but only a few actually resulted in
term extensions or renewals. [FN244]
But private legislation of this type did result in *378
two full term renewals to Thomas Blanchard, giving him a patent with an
ultimate term of forty-two years, [FN245]
which appears to be the longest term ever accorded to any United States
patent. [FN246] Blanchard
seems to have succeeded in this effort by a combination of astute lobbying
and arguments that he had not been adequately compensated for his invention,
a dubious proposition at best.
|(Cite as: 7 J. Intell. Prop. L. 315, *378)
In 1879, however, the House Committee on Patents became much more hostile
to arguments for term extension based on the assertion that patentees had
failed to receive adequate remuneration for their inventive efforts. In
that year it took the position that term extension should be determined
"solely in its effect on the public interests." [FN247]
Thereafter, the number of petitions for term extension predicated on personal
or financial considerations dropped rapidly. The last favorable report
to extend the term of a patent based on inadequate compensation to the
patentee was issued in 1916. [FN248]
As Benagh reports, "[t]here was a period in the mid-19th century when the
Congress attempted to assure adequate compensation
to every inventor with the device of private legislation, but the concept
of guaranteed income proved to be too time-consuming and open to frivolous
claims." [FN249] It also
paid short shrift to the public interest inherent in the Intellectual Property
In 1870 the patent statutes were substantially revised. The Patent
Act of 1870 extended the term of patents to seventeen years. [FN250]
It retained the term-extension provisions of the Act of 1836, but with
an important proviso, namely, that a seven-year term extension could only
be sought for patents issued prior to March 2, 1861. [FN251]
Four years later, the Act of 1870 was repealed and its provisions incorporated
into the Revised Statutes. [FN252]
the term-extension section stated that no renewal could be issued after
the expiration of the original term, this provision had an effective sunset
provision of March 2, 1875 built into it. It is likely that Congress perceived
the creation of a seventeen-year term as being sufficient to remove the
need for any administrative extension process. [FN253]
It is also apparent that Congress was now questioning its earlier assumption
that a primary role of the patent system was to reward inventors as opposed
to promoting the public interest. [FN254]
|(Cite as: 7 J. Intell. Prop. L. 315, *379)
Another major revision of the patent law occurred with the Patent Act
of 1952. [FN255] This
Act retained the seventeen-year term, but made no provision for term extension. [FN256]
Within several decades there would be a significant
lobbying effort for term-extension legislation, not in the context of rewarding
patentees but rather in the context of extending the term of a patent wherein
regulatory review and approval of the patented product or process delayed
its commercial availability after the patent term had commenced. [FN257]
The purpose of the proposed term extension was to in essence make up for
the period while the product or process was patented but could not be sold
or used because of lack of regulatory approval. In 1984 Congress enacted
two forms of such extension. [FN258]
Subsequently, any such term extension has been limited to a period not
exceeding five years. [FN259]
Patent harmonization came upon the scene in the 1990s, and a part of
this process was conforming the termof United States patents to that set
by international treaty. Certain changes in United States law were required
when the United States became a signatory to the General Agreement on Tariffs
and Trades (GATT), specifically by the agreement known as the Trade Related
Aspects of Intellectual Property Rights. These changes were *380
made in 1994 through the Uruguay Rounds Agreement Act (URAA). [FN260]
The patent term is now defined as:
|(Cite as: 7 J. Intell. Prop. L. 315, *380)
beginning on the date on which the patent issues and ending 20 years
from the date on which the application for the patent was filed in the
United States or, if the application contains a specific reference to an
earlier filed application or applications under
section 120, 121 or 365(c) of this title [Title 35], from the date on which
the earliest such application was filed. [FN261]
The URAA also set forth certain circumstances for extending the term
because of delays in the issuance of the patent. Thus, under United States
law as it now exists, term extension of up to five years may be obtained
for delays in the issuing of the patent, and term extension of up to five
years for regulatory delay is also possible. [FN262]
Conceptually, this means that a term extension of up to ten years is possible
if both rationales are accepted, but in most instances a term extension
because of delay in the issuance of the patent will offset the consequences
of regulatory delay. As a consequence, it would be a most unusual circumstance
to have a patent term extending more than twenty-five years from the date
the application was filed.
Although patent extensions for drugs are rare, the extraordinary profits
derived from certain patented drugs have caused their manufacturers to
spend literally millions of dollars and engage in strenuous lobbying efforts
to obtain patent extensions through private congressional acts. They have
also on occasion sought to attach patent extensions to totally unrelated
bills and to have the patent statutes modified to better protect their
business interests by making patent extensions easier to obtain. [FN263]
Such activities make very good pragmatic business sense, but they are constitutionally *381
suspect in that they do absolutely nothing to
promote the progress of science and useful arts.
|(Cite as: 7 J. Intell. Prop. L. 315, *381)
b. the copyright term
Just as with the patent term, Congress initially opted to use the British
term for copyright. Thus, the Copyright Act of 1790 was patterned after
the Statute of Anne and provided an initial term of fourteen years with
a right of renewal for another fourteen years, provided that an author
was living at the expiration of the first term. [FN264]
But in the next two centuries the copyright term would be extended much
more than the patent term. For much of that period the copyright term would
also provide express mechanisms for term extension. [FN265]
During the nineteenth century almost two hundred copyright bills were
introduced, [FN266] and
some twenty of these were enacted into law in some form or another. [FN267]
The only one to actually change the statutory term of copyright became
law in 1831. It extended the initial term to twenty-eight years "from the
time of recording of the title thereof" and authorized a living widow or
children of a deceased author to seek a renewal for fourteen years. [FN268]
The rationale for doubling the initial term has received almost no discussion
in the literature, [FN269]
and it is not entirely clear why the extension occurred.
In the 1834 case of Wheaton v. Peters, [FN270]
the Supreme Court issued a copyright opinion that had a great deal of relevance
to the interpretation to be given to "for limited times" in the Intellectual
Property Clause. Simply *382
put, one of the questions raised and decided was whether in the United
States an author has a common law copyright in perpetuity after publication
occurs. It is immediately apparent that if such a copyright were held to
exist then the phrase "for limited times" in the clause is meaningless,
at least in the copyright context. The justices split four to two on the
|(Cite as: 7 J. Intell. Prop. L. 315, *382)
Patterson summarizes the relevant issues and opinions as follows:
Subsidiary to this point were the questions of whether a federal common
law existed; whether the common-law copyright existed in England; and whether,
assuming its existence, Pennsylvania incorporated the common-law copyright
in its common law. The majority held that no federal common law existed;
the dissenters took the position that this was irrelevant to the case,
as the law of Pennsylvania applied. As to the existence of the common-law
copyright in England, the majority thought this was much in doubt, and
the dissenters argued that it existed without question. The majority did
not think that Pennsylvania, assuming the existence of a common-law copy
right in England, had incorporated that right into its common law; and
the dissenters took the opposite view. [FN271]
What Patterson failed to note is that the case also involved an interpretation
of the meaning of "securing" as it appears in the clause.
As a part of the argument in favor of a perpetual common law right,
it was contended that "securing" in the clause "clearly indicates an intention,
not to originate a right, but to protect one already in existence." [FN272]
Not so, said the majority, because the meaning of the term must be determined
in the context of "the words and sentences with which it stands connected." [FN273]
In this light, "securing" could not mean the protection of an acknowledged
legal right because "[i]t refers to inventors, as well as authors, and
it has never been pretended by any one, either in this country or in England,
that an inventor has a perpetual right, at common law, to sell the thing
In other words, any right to copyright under the Intellectual Property
Clause was a created rather than an inherent right. [FN275]
According to the dissent, however, any such analysis is in the nature of
a non sequitur, because the "article [i.e., the clause] is to be construed
distributively, and must have been so understood." [FN276]
|(Cite as: 7 J. Intell. Prop. L. 315, *383)
Ever since Wheaton v. Peters, copyright in published works has been
understood to be a creature of statute. The statute in turn must conform
to the mandate of the Intellectual Property Clause that the exclusive right
be secured for limited times. A point that has been largely ignored by
both Congress and the judiciary is that the majority opinion in Wheaton
v. Peters suggested that the rights of inventors and the rights of authors
were similar and ought to be treated similarly. [FN277]
This does not mean that the terms of copyright and patent should be identical,
but it does support the view that disproportionate differences in the terms
of these two property rights are constitutionally suspect.
The Copyright Act of 1909 maintained the initial term of twenty-eight
years but provided that the term should run "from the date of first publication,"
and extended the renewal term to twenty-eight years. [FN278]
This was at a time when the patent term had been set at seventeen years;
there was no statutory basis for extension of the patent term, and Congress
was exhibiting extreme reluctance to extend patent terms by private act. [FN279]
As a consequence, it was now routinely possible to obtain a copyright term
that was typically more than three times the length of the patent term.
The House report accompanying the 1909 Act is of considerable interest
because of its discussion of the constitutional aspects of copyright law. [FN280]
It points out that the Intellectual Property Clause limits the power of
by several conditions, one of which is that "[t]he object of all legislation
must be . . . to promote science and the useful arts." Accordingly, "the
spirit of any act which Congress is authorized to pass must be one which
will promote the progress of science and the useful arts, and unless it
is designed to accomplish this result and is believed, in fact, to accomplish
this result, it would be beyond the power of Congress." [FN281]This
is to be contrasted with the view of some modern commentators and several
circuit courts that the introductory language of the Intellectual Property
Clause is not limiting in any way on the authority of Congress. [FN282]
|(Cite as: 7 J. Intell. Prop. L. 315, *384)
The report went on to emphasize that copyright is "[n]ot primarily
for the benefit of the author, but primarily for the benefit of the public
. . . ." Thus, "[i]n enacting a copyright law Congress must consider .
. . two questions: First, how much will the legislation stimulate the producer
and so benefit the public; and, second, how much will the monopoly granted
be detrimental to the public." Any such legislation must confer "a benefit
upon the public that outweighs the evils of the temporary monopoly." [FN283]
Although it was argued that there should be a single term of life plus
fifty years, [FN284]
the report rejected this proposal on the ground that it was distinctly
advantageous to the author to have a right of renewal. According to the
report the doubling of the renewal term to twenty-eight years, taken together
with the original term of twenty-eight years, "ought to be long enough
to give the author the exclusive right to his work for such a period that
there would be no probability of its being taken away from him in his old
age, when, perhaps, he needs it the most." [FN285]
The relevance of such an argument to the constitutional purpose of copyright
was not stated, nor was there any indication as to why authors were thought
deserving of an original term plus a renewal term that was more than three
times longer than that statutorily authorized
for patents. One is left with the question of why authors needed to be
statutorily protected in their old age but inventors did not.
During the 1960's there was a renewed effort for a major revision of
the copyright law, including modifying and lengthening the term. Pending
revision, Congress passed a number of laws effectively extending the renewal
terms of copyrights subsisting after September 19, 1962 or prior to December
31, 1971 until December 31, 1976. [FN286]
In 1976 the long- anticipated revision occurred, and with it another broadening
of the copyright term. Effective as of January 1, 1978, a unitary term
for copyright beginning at the date of the work's creation and continuing
for the life of the author plus fifty years after his or her death was
But for anonymous or pseudonymous works or works made for hire, a unitary
term of seventy-five years from the date of first publication or one-hundred
years from the date of creation, whichever expires first, was created. [FN288]
The 1976 Act also extended the renewal term for works statutorily copyrighted
prior to January 1, 1978 to forty-seven years, [FN289]
thus providing a total term of seventy-five years for such copyrights.
The result of this was that the copyright term was now almost always at
least three times that of the patent term, and could on occasion be four
times or more that of the patent term.
|(Cite as: 7 J. Intell. Prop. L. 315, *385)
What were the rationales for these changes in the copyright term? The
legislative history is set forth in essentially identical language in the
House and Senate reports. [FN290]
A remarkable aspect of these reports is that, unlike the 1909 House report,
they make absolutely no mention of the limitations imposed on the power
of Congress by the Intellectual Property Clause. Specifically, the issue
of whether there is a constitutional problem with a copyright term of life-plus-fifty
years is never raised, much less addressed.
The legislative history emphasizes that "authors and their representatives
stressed that the adoption of a life-plus-50 term was by far their most
important legislative goal in copyright law revision" and that the Register
of Copyrights regards such a term as the foundation of the revisions. [FN291]
Seven rationales are set forth which have been summarized as follows:
1. The 56-year term under the 1909 Act was not long enough to assure an
author and his dependents a fair economic return, given the substantial
increase in life expectancy.
|(Cite as: 7 J. Intell. Prop. L. 315, *386)
2. The growth in communication media has substantially lengthened the
commercial life of a great many works, particularly serious works which
may not initially be recognized by the public.
3. The public does not benefit from a shorter term, but rather the
user groups derive a windfall, as the prices the public pays for a work
often remain the same after the work enters the public domain.
4. A system based upon the life of the author avoids confusion and uncertainty,
because the date of death is clearer and more definite than the date of
publication, and it means that all of a given author's works will enter
the public domain at the same time instead of seriatim as under a term
based on publication.
5. The renewal system is avoided with its highly technical requirements
which often cause inadvertent loss of copyright.
6. A statutory term of life-plus-50 years is no more than a fair recompense
for those who under the 1909 Act owned common law copyrights which continued
in perpetuity as long as a work remained unpublished.
7. A majority of the world's countries have a term of life plus fifty.
To adopt the same term expedites international commerce in literary properties,
and opens the way for membership in the Berne Convention. [FN292]
Even a cursory look at these rationales reveals a congressional view
that, rather than being for the public benefit as stated in the Intellectual
Property Clause, copyright is intended (a) almost entirely for the benefit
of an author, and (b) for the purpose of expediting international trade.
Twelve years later, the House took a very different approach in its report
on the Berne Convention Implementation Act of 1988. [FN293]
Now the constitutional purpose was very much in evidence:
|(Cite as: 7 J. Intell. Prop. L. 315, *387)
Sound copyright legislation is necessarily subject to other considerations
in addition to the fact that a writing be created and that the exclusive
right be protected only for a limited term. Congress must weigh the public
costs and benefits derived from protecting a particular interest. "The
constitutional purpose of copyright is to facilitate the flow of ideas
in the interest of learning." . . .
[T]he primary objective of our copyright laws is not to reward the
author, but rather to secure for the public the benefits from the creations
of authors. [FN294]
Moreover, the view expressed in the 1909 House report that copyright
is "[n] ot primarily for the benefit of the author, but primarily for the
benefit of the public" was now quoted with approval. [FN295]
It was perhaps inevitable that the strong commercial interest in certain
copyrights would result in extensive efforts in recent years to extend
the term of these copyrights. The result has been the Sonny Bono Copyright
Term Extension Act of 1998 which provides that "[a]ny copyright still in
its renewal term at the time the Sonny Bono . . . Act becomes effective
shall have a copyright term of 95 years from the date copyright was originally
secured." [FN296] Recall
that the 1976 Act authorized renewal of copyrights existing prior to January
1, 1978 to provide for a total term of seventy-five years. [FN297]
The net effect of this was that in the next decade some highly profitable
copyrights would expire and the works would go into the public domain in
the absence of further term extension. [FN298]
Not now. Instead, the *388
industries controlling these copyrights will continue to obtain major royalties
for the use of the works covered by them for twenty years longer than they
had any reasonable basis to expect, other than their lobbying skills.
|(Cite as: 7 J. Intell. Prop. L. 315, *388)
The Sonny Bono Act has not gone unchallenged, however. It is the subject
of ongoing litigation in a case styled Eldred v. Reno. [FN299]
Among other things, the Act is argued to be unconstitutional as a violation
of the Intellectual Property Clause. On October 27, 1999, the district
court for the District of Columbia held that the Sonny Bono Act is not
unconstitutional and granted judgment to the government on the pleadings.
This decision is now on appeal. It is quite possible that the ultimate
appellate determination will be made by the Supreme Court. If so, for the
first time the Court will have to address directly what is meant by the
phrase "for limited times" in the Intellectual Property Clause.
VII. Term Limits and the Intellectual Property Clause
In the last few decades there has been increasing discussion by various
commentators concerning the patent and, in particular, the copyright term. [FN300]
Much of this discussion has been engendered by the substantial increases
in the copyright term that have occurred in the last twenty-five years.
While the length of the statutory patent and copyright terms have both increased
in the two centuries since the first patent and copyright statutes were
enacted in 1790, the increase in the copyright term has been quite disproportionate
to the increase in the patent term. A simple comparison shows the extraordinary
disparity in treatment between the two terms. Thus, in 1790 both the patent
and the copyright statutory term were set at fourteen years. At the beginning
of the new millenium, the statutory patent term is twenty years and the
statutory copyright term is life in being plus seventy years (or for certain
works, if the life of the author cannot be *389
ascertained, for ninety-five years after publication or one-hundred-and-twenty
years after creation, whichever is shorter). Thus, in two centuries the
statutory patent term has increased by 43% but the statutory copyright
term has increased by almost 580%. [FN301]
Where they were once the same, the copyright term now is typically between
four and five times longer than the patent term.
|(Cite as: 7 J. Intell. Prop. L. 315, *389)
This extraordinary disparity in terms raises the question of the extent
to which the language of the Intellectual Property Clause sets a constitutional
limit on the terms of patents and copyrights and whether that limit has
been reached or exceeded in the case of copyright. This, of course, is
one of the issues that hopefully will be decided in the appeal of Eldred
v. Reno. [FN302] In granting
judgment to the government on the pleadings, the district court in that
case gave short shrift to arguments that the copyright terms provided by
the Sonny Bono Act violate the Intellectual Property Clause. In
its view, "the '[l]imited [t]imes' period is 'subject to the discretion
of Congress,' " [FN303]
and that discretion is not limited by the introductory language of the
clause. [FN304] As will
now be shown, the district court erred significantly in its treatment of
the constitutional standard under the Intellectual Property Clause.
Any judicial determination as to the meaning to be given to the phrase
"for limited times" in the Intellectual Property Clause cannot look at
the phrase in isolation. Rather, it must be interpreted in the context
of the language of the clause taken as a whole. As the Supreme Court made
clear in 1834 in Wheaton v. Peters with regard to copyright, the meaning
of a word *390
or phrase in the clause must be determined in the context of the "words
and sentences with which it stands connected." [FN305]
Moreover, the Court observed as early as 1824 in Gibbons v. Ogden that
the objects for which a congressional power is given "especially when those
objects are expressed in the instrument itself, should have great influence
in the construction." [FN306]
As the Court put it, the extent of congressional powers is to be construed
by the language of the instrument which confers them taken together with
the purposes for which they are conferred. [FN307]
|(Cite as: 7 J. Intell. Prop. L. 315, *390)
The purposes or objects of the Intellectual Property Clause are not
"to secure for limited times to Authors and Inventors the exclusive Right
to their respective Writings and Discoveries." The grant of exclusive rights
for limited times is simply a means authorized
in the clause to accomplish the stated objects, i.e., "To promote the Progress
of Science and useful Arts." All too frequently both Congress and the judiciary
have confused the two. If the objects of the clause were merely to secure
exclusive rights for limited times, Congress would indeed have very broad
and almost unbounded discretion to set the term of both patents and copyrights.
But Justice Story's statement in Pennock v. Dialogue in 1829 that the term
of the exclusive patent right "shall be subject to the discretion of Congress" [FN308]
cannot be read as giving Congress unbounded discretion, for he was fully
cognizant that congressional discretion is bounded by the stated objects
of the Intellectual Property Clause. [FN309]
As Bard & Krulantzick have phrased it:
Without doubt Congress has considerable latitude in deciding how to
comply with the Constitution's injunction that protection be for 'limited
times.' At some point, though, an ever-lengthening term crosses a line
beyond which the constitutional provision's prescription about *391
'limited times' and its underlying purposes are mocked as the term becomes
limited in form and name only. [FN310]
|(Cite as: 7 J. Intell. Prop. L. 315, *391)
There are thus some terms beyond which the stated objects of promoting
science and the useful arts not only are no longer met but may actually
Moreover, the district court in Eldred v. Reno
ignored highly relevant modern language of the Supreme Court in 1966 in
Graham v. John Deere Co. [FN311]
on the subject of congressional discretion in interpreting the limitations
set forth in the Intellectual Property Clause. The Court began its discussion
by noting that the clause does not set forth any absolute authority for
Congress but instead only a "qualified authority." [FN312]
It went on to state that "Congress in the exercise of the patent power
may not overreach the restraints imposed by the stated constitutional purpose." [FN313]
It then emphasized that " 'promot[ing] the Progress of . . . useful Arts'
. . . is the standard expressed in the Constitution and it may not be ignored." [FN314]
Finally, it concluded that "[w]ithin the limits of the constitutional grant,
the Congress may, of course, implement the stated purpose of the Framers
by selecting the policy which in its judgment best effectuates the constitutional
aim." [FN315] In other
words, congressional discretion is bounded by "the limits of the constitutional
grant." Precisely the same limitations apply to the copyright power.
Why then did the district court rule that the introductory language
of the Intellectual Property Clause, i.e., "to promote the Progress of
Science and useful Arts," does not limit the discretionary power of Congress
with regard to setting the term of copyright? In so ruling, it viewed the
phrase "for limited times" in complete isolation and ignored the contrary
language of the Supreme Court in Wheaton v. Peters, [FN316]
Gibbons v. Ogden, [FN317]
and Graham. *392
Instead it relied on a D.C. Circuit opinion, Schnapper v. Foley, having
nothing whatever to do with interpreting the phrase "for limited times." [FN318]
|(Cite as: 7 J. Intell. Prop. L. 315, *392)
Schnapper v. Foley involved the question of whether a federally commissioned
work could be copyrighted. The argument was presented "that the purposive
language of the Copyright Clause constitutes a substantive limit on Congress's
legislative power, and that it only refers to the need to provide economic
incentives in the form of royalties." [FN319]
In rejecting this argument, the D.C. Circuit noted that the appellant had
failed to cite any relevant authority for the view that the purposive language
is a limitation on congressional power. It went on to adopt the views expressed
by the Fifth Circuit, [FN320]
Congress has authority to make any law that is 'necessary and proper'
for the execution of its enumerated Article I powers, . . . including its
copyright power, and the courts [sic] role in judging whether Congress
has exceeded its Article I powers is limited. The courts will not find
that Congress has exceeded its power so long as the means adopted by Congress
for achieving a constitutional end are 'appropriate' and 'plainly adapted'
to achieving that end. McCulloch v. Maryland . . . . It is by the lenient
standard of McCulloch that we must judge whether Congress has exceeded
its constitutional powers in enacting an all-inclusive
copyright statute. [FN321]
It concluded that "we cannot accept . . . that the introductory language
of the Copyright Clause constitutes a limit on congressional power." [FN322]
The difficulty with such a view is that not only is it inconsistent
with the views expressed by the Supreme Court in Gibbons, Wheaton, and
Graham, but it literally reads the introductory language out of the Intellectual
Property Clause and instead treats it as: "To secure for limited times
to Authors and Inventors the exclusive Right to their respective Writings
Discoveries." But that is not the language of the clause. The "limited
standard of McCulloch" does not contemplate that the express language of
the Intellectual Property Clause can be ignored in the cavalier fashion
of the Fifth and D.C. Circuits. The Supreme Court has made the point abundantly
clear in recent times by emphasizing that: "The primary objective of copyright
is not to reward the labor of authors, but '[t]o promote the Progress of
Science and useful Arts.' " [FN323]
|(Cite as: 7 J. Intell. Prop. L. 315, *393)
While acknowledging this to be the case, [FN324]
Congress has not seen fit, at least in the copyright context, to address
the introductory language as any form of restriction or limitation on its
discretion to set the term of the grant. Yet implicit in the introductory
language is the presumption that beyond some term not only is the progress
of science, i.e., education and learning, not
met, but rather it may actually be inhibited. But the rationales presently
set forth for the statutory copyright term simply do not address this point.
Perhaps nowhere is this more evident than when those rationales are applied
to the statutory patent term. Indeed, with but one exception Congress has
never applied those rationales to the patent term. [FN325]
But if as pointed out in Wheaton v. Peters, the rights of authors and inventors
are similar and ought to be treated similarly, [FN326]
then the patent and copyright terms ought to be comparable rather than
exhibiting their present remarkable disparity.
Neither Congress nor the courts now suggest that the patent system
has as a purpose, much less a primary purpose, to rewardinventors for their
creative efforts. Rather, the modern view is that "[t]he patent law is
directed to the public purposes of fostering technological progress, investment
in research and development, capital formation, entrepreneurship, innovation,
national strength, and international competitiveness." [FN327]
Contrast this with the congressional view that a primary rationale for
extending the copyright *394
term is to assure authors and their dependents "a fair economic return." [FN328]
In continuing to expand the term of copyright, Congress has totally ignored
the public benefit purposes set forth in the introduction to the Intellectual
Property Clause, and instead viewed copyright as primarily for the benefit
of authors. Yet as recently as 1991 the Supreme Court has emphasized that
"the primary objective of copyright is not to reward the labor of
authors" but to benefit the public through "promot[ing] the Progress of
Science and useful Arts." [FN329]
|(Cite as: 7 J. Intell. Prop. L. 315, *394)
If the present statutory patent term of twenty years is presumed "to
promote the Progress of Science and useful Arts," what then is the constitutional
justification for a copyright term that is typically four to five times
longer? What is so different about the works of authors that requires a
term so much longer than is deemed necessary to meet the constitutional
objects with regard to the discoveries of inventors? Congress has chosen
to address neither of these issues. Rather, in setting the copyright term,
it has chosen to simply ignore the constitutional issues raised by the
objects of the Intellectual Property Clause. Those objects are for the
purpose of promoting the public interest by enhancing the intellectual
public domain rather than restricting it. If under the Intellectual Property
Clause there is indeed a balance between the public interest and the interest
of individual authors and inventors, as both the Supreme Court and Congress
state there is, then the time has come for the courts to delineate the
constitutional factors which affect such a balance and to determine whether
the present copyright term is in accord with those factors.
[FNa1]. Mr. Waltersheid is
a legal historian specializing in the history of intellectual property
law in the United States. He has published a number of articles
and a book on this subject. This article is taken in part from his forthcoming
book, The Nature of the Intellectual Property Clause: Historical Perspective.
Const. art. I, § 8, cl. 8.
v. John Deere Co., 383 U.S. 1, 5, 148 U.S.P.Q. (BNA) 459, 462 (1966).
[FN3]. Edward C. Walterscheid,
The Nature of the Intellectual Property Clause: A Study in Historical Perspective
(September 1999) (unpublished manuscript, on file with author).
[FN4]. This is an example of
what Merges and Reynolds call "internal limits on Congress's power to create
and extend intellectual property interests." In their view, "[s]uch limits
are 'internal' in the sense that they are the result of the very same constitutional
provision giving rise to Congress's power in the first place, rather than
the result of 'external' provisions such as the Bill of Rights." Robert
Patrick Merges and Glenn Harlan Reynolds, The Proper
Scope of the Patent and Copyright Power, 37 Harv. J. on Legis. 45, 46 (2000).
For other commentary on the meaning of "limited times" in the Intellectual
Property Clause, see Merges & Reynolds, supra note 4; Joseph A. Lavinge,
Comment, For Limited
Times? Making Rich Kids Richer Via the Copyright Term Extension Act of
1996, 73 U. Det. Mercy L. Rev. 311 (1996); and Malla Pollack, Unconstitutional
Inconstestability? The Intersection of the Intellectual Property and Commerce
Clauses of the Constitution: Beyond a Critique of Shakespeare Co. v. Silstar
Corp., 18 Seattle U. L. Rev. 259, 274- 87 (1995).
Const. art. I, § 8, cl. 8.
[FN8]. See, e.g., Edward C.
Walterscheid, The Use and Abuse
of History: The Supreme Court's Interpretation of Thomas Jefferson's Influence
on the Patent Law, 39 IDEA 195 (1999) (stating that the views attributed
to Jefferson were endorsed during his life); and Edward C. Walterscheid,
Patents and the Jeffersonian Mythology, 29 John Marshall L. Rev. 269 (1995).
[FN9]. III The Records of the
Federal Convention of 1787 (Max Farrand ed., 1911) 375-76.
[FN10]. II The Records of
the Federal Convention of 1787 (Max Farrand ed., 1911) 137.
[FN11]. Edward C. Walterscheid,
the General Welfare Clause and the Intellectual Property Clause, 13 Harv.
J.L. & Tech. 87 (1999).
[FN12]. See, e.g., M. Coulter,
Property in Ideas: The Patent Question in Mid-Victorian Britain (Inventions)
(1986) (unpublished Ph.D. Thesis, Indiana University) (on file with author);
Fritz Machlup and Edith Penrose, The Patent Controversy in the Nineteenth
Century, 10 J. Econ. Hist. 1 (1950); and V. M. Batzel, Legal Monopoly in
Liberal England: The Patent Controversy in the Mid-Nineteenth Century,
22 Business History 189 (1980).
[FN13]. See Letter from Thomas
Jefferson to James Madison (July 31 1788), in 1 The Republic of Letters,
543, 545 (James Morton Smith ed., 1995) and Letter from Madison to Jefferson
(October 17, 1788) 562, at 566.
[FN14]. See Smith, supra
note 13, at 545. As Jefferson put it in his July 31, 1788 letter to Madison,
"it is better . . . to abolish . . . Monopolies, in all cases, than not
to do it in any." He acknowledged that precluding patent and
copyright monopolies "lessens the incitements to ingenuity, which is spurred
on by the hope of a monopoly for a limited time" but argued that "the benefit
even of limited monopolies is too doubtful to be opposed to that of their
[FN15]. Concerns about potential
congressional power to create monopolies ran deep. See 2 American Museum
534-36 (Philadelphia, 1787). One of the reasons why Virginia delegate James
Mason refused to sign the Constitution was that "[u]nder their own construction
of the general clause at the end of the enumerated powers, the congress
may grant monopolies in trade and commerce." This was also a concern of
a number of the ratifying conventions. See Result of the Proceedings of
the Convention of North Carolina, 4 American Museum 265, 268 (Philadelphia,
1788) (containing the convention's concerns that Congress should not be
allowed to grant monopolies); Amendments to the New Constitution, recommended
by New York, 2 American Museum at 155-156. See also Remarks on the amendments
to the federal constitution proposed by the conventions of Massachusetts,
New Hampshire, New York, Virginia, South and North Carolina, with the minorities
of Pennsylvania and Maryland by the Rev. Nicholas Cottin, D.D., 6 American
Museum at 303 (Philadelphia, 1788) (commenting that "monopolies are in
general pernicious and therefore not adopted but in extraordinary cases").
At least two state constitutions had provisions strongly objecting
to the creation of monopolies. According to the Maryland Constitution of
1776, § XXXIX, "monopolies are odious, contrary to the spirit of free
government, and the principles of commerce; and ought not to be suffered."
See III The Federal and State Constitutions 160 (F. Thorpe ed., 1909).
Similarly, the North Carolina Constitution of 1776, § XXIII, stated
"[t]hat perpetuities and monopolies are contrary to the genius of a free
State, and ought not to be allowed." See V The Federal and State Constitutions
at 2788. If they wanted to assure that Congress had authority to grant
limited- term exclusive rights to authors and inventors, the delegates
had good reason to believe that they had to say so expressly and explicitly.
[FN16]. As noted about the
British patent system in 1967, but fully applicable to the circumstances
existing in 1787 in the newly independent United States, such an approach
"makes no attempt to reward the inventor directly: the reward is of [the
inventor's] own making." See K. Boehm et al., I The British Patent System
1 (Cambridge 1967).
[FN17]. In 1785, Jeremy Bentham,
comparing rewards by bonus payments with rewards by "exclusive privileges,"
argued that the latter approach was "best proportioned, the most natural,
and the least burdensome" in that "it produces an infinite effect, and
it costs nothing." Jeremy Bentham, A Manual of Political
Economy, 3 The Works of Jeremy Bentham 71 (Bowring ed., 1932), as cited
in Fritz Machlup and Edith Penrose, The Patent Controversy in the Nineteenth
Century, 10 J. Econ. Hist. 1, 20 (1950).
[FN18]. Frank D. Prager,
Historic Background and Foundation of American Patent Law, 5 Am. J. Legal
Hist. 309 (1961).
[FN19]. Madison certainly
thought that there was a common law right to copyright. As he stated in
The Federalist No. 43: "The copyright of authors has been solemnly adjudged
in Great Britain to be a right of common law." See The Federalist No. 43,
at 302-303 (James Madison) (Carl van Doren ed., 1963).
[FN20]. E. Wyndham Hulme,
The History of the Patent System Under the Prerogative and at Common Law,
A Sequel, 16 Law Q. Rev. 44, 52 (1900).
[FN21]. Among the subject
matter covered by Elizabethan patents were: white soap, saltpeter, dredging
machines, alum, water drainage machines, ovens and furnaces, mining of
various metals and ores, sulfur, rape seed oil, Spanish leather making,
salt, grinding machines, corn mill, iron tempering, dyes and dressing cloth,
mine drainage, Frisadoes (clothes), knife handles, earthen fire pots, Venetian
glass making, a water supply system, musical instruments, milling
machinery, sail cloth, vinegar, starch, playing cards, zinc carbonate,
window glass, and ale. See Ramon A. Klitzke, Historical Background of the
English Patent Law, 41 J. Pat. Off. Soc'y 615, 639 (1959) (describing Elizabethan
patent law). The patents pertaining to monopolies on playing cards and
ale would thereafter become prime examples of odious monopolies.
[FN22]. Also referred to
as "Allen" or "Allein." 74 Eng. Rep. 1131 (K.B. 1602).
[FN23]. Sir Simonds D'Ewes,
Journals of All the Parliaments during the Reign of Queen Elizabeth 644-48
(London, 1682); see also William Cobbett, 1 Cobbett's Parliamentary History
of England 925-30 (London 1806) (describing the Queen's negotiations over
[FN24]. 77 Eng. Rep. at 1263.
[FN25]. 74 Eng. Rep. at 1139.
[FN26]. 78 Eng. Rep. 147
[FN27]. 74 Eng. Rep. at 1139.
[FN29]. The Clothworkers
of Ipswich, 78 Eng. Rep. at 148.
[FN31]. William Carpmael,
The Law of Patents for Inventions 12 (London 1852). Cf. Bruce W. Bugbee,
Genesis of American Patent and Copyright Law 38, 175-76, n.120 (1967) (explaining
that toward the end of the reign of James I, twenty-one years was but the
predominant term with others varying from eleven to thirty-one years).
[FN32]. Statute of Monopolies,
1623, 21 Jam., ch. 3 (Eng.).
[FN33]. Id. at § 6.
[FN34]. See sources cited
supra note 31.
[FN35]. Sir Edward Coke,
The Third Part of the Institutes of the Laws of England 184 (photo. reprint,
Garland Publishing, Inc. 1979) (1628).
[FN37]. See, e.g., Christine
MacLeod, Inventing the Industrial Revolution: The English Patent System,
1660-1800 18 (1988); P.J. Federico, Origin and Early History of Patents,
11 J. Pat. Off. Soc'y 292, 304 (1929) (stating that the exact reason why
the term of the patent grant was fixed at fourteen years is unknown, but
speculating that this term may have been chosen to allow for the teaching
of several generations of apprentices).
[FN38]. Stephen D. White,
Sir Edward Coke and "The Grievances of the Commonwealth," 1621-28, 128-29
[FN39]. Id. at 131 n.200.
[FN40]. E. Wyndham Hulme,
The History of the Patent System Under the Prerogative and at Common Law,
12 Law Q. Rev. 141, 153-54 (1896).
[FN41]. Coke, supra note
[FN42]. For example, the
patentee in Liardet v. Johnson, a case renowned for being
one of the earliest to require the specification to have an enabling disclosure
teaching those skilled in the art how to make and use the invention, obtained
a four-year parliamentary extension of his patent term in 1776. See John
N. Adams & Gwen Averley, The Patent Specification: The Role of Liardet
v. Johnson, 7 J. Legal Hist. 156, 162 (1986).
[FN43]. F. M. Scherer, Invention
and Innovation in the Watt-Boulton Steam- Engine Venture, 6 Tech. &
Culture 165, 182 (1965).
[FN44]. Id. at 169.
[FN45]. Id. at 183.
[FN46]. Id. at 169.
[FN48]. Boulton's interest
in the patent commenced even before it was issued. He and Dr. William Small
had commented in detail on Watt's proposed specification in February 1769.
See Eric Robinson & A. E. Musson, James Watt and the Steam Revolution:
A Documentary History 54-56 (1969).
[FN50]. Scherer, supra note
43, at 169, 184.
[FN51]. Fire Engine Act,
1775, 15 Geo. 3, ch. 61 (Eng.). For the text of the Act, see Robinson &
Musson, supra note 48, at 76-80.
[FN52]. Scherer, supra note
43, at 184; Robinson & Musson, supra note 48, at 78.
[FN53]. Robinson & Musson,
supra note 48, at 14-15.
[FN54]. Id. at 74-75.
[FN55]. As of 1775, only
a few common law infringement actions had actually occurred, and patentees
had not been favored in the outcomes. See H. I. Dutton, The Patent System
and Inventive Activity During the Industrial Revolution, 1750-1852, 71-79
(1984); 1 James Oldham, The Mansfield Manuscripts and the Growth of English
Law in the Eighteenth Century 723-71 (1992).
Scherer, supra note 43, at 183 n.46 ("Most authors indicate that the investment
would not have been recouped if the patent expired on schedule in 1783
and if no further revenues were obtained from then on").
[FN57]. Robinson & Musson,
supra note 48, at 19.
[FN58]. Watt left an estate
of about 60,000 pounds in 1819, and Boulton's estate approximated 150,000
pounds in 1809. Scherer, supra note 43, at 186 n.54.
[FN59]. George E. Frost,
Watt's 31 Year Patent, 73 J. Pat. & Trademark Off. Soc'y 136 (1991).
[FN60]. Id. at 145.
[FN62]. Id. at 145-47; cf.
Robinson & Musson, supra note 48, at 19-21 (commenting that his refusal
did not impeded steam engine progress).
[FN63]. Robinson & Musson,
supra note 48, at 209.
[FN64]. See, e.g., L. Ray
Patterson, Copyright in Historical Perspective 20 (1968); Bugbee, supra
note 31, at 49; cf. Richard C. De Wolf, An Outline of Copyright Law 2 (1925)
(stating this occurred in 1474).
[FN65]. There is nothing
special about the term of two years. Indeed, in light of subsequent events,
it was a remarkably short term for the privilege. Terms of seven and ten
years for individual works came to be common; and lifetime grants for classes
of works were frequently given. See Patterson, supra note 64, at 79.
[FN66]. See, e.g., John Feather,
Publishing, Piracy and Politics: An Historical Study of Copyright in Britain
11-14 (1994); Bugbee, supra note 31, at 50; and De Wolf, supra note 64,
[FN67]. Nonetheless the Statute
of Monopolies when it was enacted in 1623 expressly exempted printing patents
from its ban on monopolies. Thus 21 Jam., ch. 3, § 10 (Eng.) states
that the Statute does not extend to "any Letters Patents or Grants of Privilege
heretofore made, or hereafter to be made, of, for, or concerning Printing."
Patterson states that in 1403 the Mayor and Aldermen of London granted
a petition by such individuals to form a guild. Patterson, supra note 64,
[FN69]. William Holdsworth,
6 A History of English Law 362-63 (Methven & Co. Ltd. Sweet & Maxwell
Ltd. 2d ed. 1937) (1924); and Patterson, supra note 64, at 35-36.
[FN70]. See generally Feather,
supra note 66, at 14-36 (discussing the stationer's company and how it
operated); and Patterson, supra note 64, at 28- 41. The content of this
and the following paragraph is taken generally from Bugbee, supra note
31, at 50-51, and Holdsworth, supra note 69, at 363-65.
[FN71]. Bugbee, supra note
31, at 50-51; Holdsworth, supra note 69, at 363- 65.
[FN72]. Bugbee, supra note
31, at 50-51; Holdsworth, supra note 69, at 363- 65.
[FN73]. See, e.g., Bugbee,
supra note 31, at 53, and Holdsworth, supra note 69, at 367-77. Cf. Howard
B. Abrams, The Historic Foundation of American Copyright
Law: Exploding the Myth of Common Law Copyright, 29 Wayne L. Rev. 1119
[FN74]. 8 Anne, ch. 19 (1710)
[FN75]. Mark Rose, Authors
and Owners: The Invention of Copyright 42-43 (1993). Cf. Feather's statement
that the bill provided: "From a date to be determined, all existing copies
shall be confirmed to their present owners for 21 years; new books will
be protected for 14 years, with the possibility of a second 14-year term."
Feather, supra note 66, at 58-59. Feather appears to have confused the
bill as amended with the bill as introduced.
[FN76]. Rose, supra note
75, at 45.
[FN77]. Id. at 45-46.
[FN78]. In so stating, the
booksellers conveniently ignored the fact that this was precisely what
happened at the end of the term of a patent for invention when the invention
went into the public domain.
[FN79]. Rose, supra note
75, at 44.
[FN80]. 8 Anne, ch. 19,
§ XI (Eng.).
[FN81]. See Feather, supra
note 66, at 59 (quoting the Preamble to the Bill which became the Statute,
8 Anne, ch. 19 § VI (Eng.)). Whether printing piracy encouraged or
discouraged learning was a matter of perspective, depending on whether
one was a reader seeking access to low-cost books or an author and/or publisher
seeking a return on investment in the writing.
[FN82]. Melville B. Nimmer
and David Nimmer, 8 Nimmer on Copyright App. 7-5 (1999) (citing statute
of Anne, 1710, 8 Anne, Ch. 19 (Eng.)).
[FN83]. Feather, supra note
66, at 60.
[FN84]. Rose, supra note
75, at 42.
[FN85]. Patterson, supra
note 64, at 14. In this context, Patterson used the phrase "public works"
to mean only works that were published and not works that had entered the
[FN86]. See supra text accompanying
[FN87]. Rose, supra note
75, at 45.
[FN88]. The issue was first
clearly raised and argued in Tonson v. Collins, 96 Eng. Rep. 169 (K.B.
1759). There were actually two hearings before the King's Bench in this
case, in 1759 and 1760, but the case was apparently dismissed as collusive
(as indeed it was) without a final determination being made. Rose, supra
note 75, at 76-78; and Feather, supra note 66, at 83-86.
[FN89]. 98 Eng. Rep. 201
(K.B. 1769). As the official reporter put it, at issue was an "old and
often-litigated question . . . [of which the case was] . . . the first
determination which the question ever received, in this Court of King's
[FN90]. The content of this
and the next two paragraphs is taken largely from Holdsworth, supra note
69, at 378-79.
[FN91]. Indeed, a fundamental
aspect of the definition of common law is that it is law predicated on
custom and usage as well as court decision. However, in analyzing the Statute
of Anne, Patterson argues that neither the custom and usage of the stationers'
company with respect to the registration right nor the express
language of the Statute provide support for the view that a common law
right to copyright came to exist in authors. Patterson, supra note 64,
at 143- 50. Abrams emphatically takes the same position. Abrams, supra
[FN92]. Both of which were
crown [conciliar] courts and not common law courts.
[FN93]. It should be recalled
that until a common law court actually held that a common law property
right existed, no common law remedy could be applied. It would not be until
the second half of the eighteenth century that a common law court would
so hold. See Millar v. Taylor, 98 Eng. Rep. 201 (K.B. 1769) (holding that
a common law property right existed). More pragmatically, as was pointed
out in the petitions seeking parliamentary protection of copyright in the
first decade of the eighteenth century, an action for damages was a wholly
for by the common law, a book-seller can recover no more costs than
he can prove damage; but it is impossible for him to prove the tenth, nay
perhaps the hundredth part of the damages he suffers; because a thousand
counterfeit copies may be dispersed into as many different lands, and he
is not able to prove the sale of ten.
Holdsworth, supra note 69, at n.377.
[FN94]. Holdsworth notes
a common law opinion in the middle of the nineteenth century which states
that "no record of an action on the case for infringement of copyright
prior to the Statute of Anne has been found" but suggests that one or two
cases are known to have been commenced without reported result. Holdsworth,
supra note 69, at n.379.
[FN95]. See supra note 88
(discussing Tonson v. Collins).
[FN96]. Feather, supra note
66, at 86.
[FN97]. 4 Burrows, Reports
2302, 2398, 98 Eng. Rep. 201, 252 (K.B. 1769), quoted in E. G. Inlow, The
Patent Grant 64 (Baltimore 1950).
[FN98]. Millar v. Taylor,
98 Eng. Rep. 201 (K.B. 1769).
[FN99]. MacLeod, supra note
37, at 199 (quoting Millar v. Taylor, 98 Eng. Rep. 201, 252 (K.B. 1769))
(emphasis added). MacLeod argues that with no custom to guide him, Mansfield
had turned to natural law. Id. Feather contended that Mansfield "took a
firm historically based view that all the precedents, both in Chancery
and in King's Bench, supported the existence of property rights
before publication." Feather, supra note 66, at 88. De Wolf, while acknowledging
the point that would later be made by Feather, favored the view later expressed
by MacLeod. He stated that: "Lord Mansfield's opinion . . . while referring
for support to the cases in Chancery in which injunctions had been granted,
was based primarily upon that sense of the justness and fitness of things
which was the stronghold of the believers in natural law." De Wolf, supra
note 64, at 9.
[FN100]. Also frequently
referred to as "Beckett." 4 Burr. 2408 (1774); see also Cobbett, 17 Parl.
Hist. Eng. at cols. 954-1003 (H.L. 1774).
[FN101]. Inlow, supra note
97, at 67 (quoting Cobbett, supra note 100, at 990).
[FN102]. Rose, supra note
75, at 103.
[FN103]. Id. at 102.
[FN104]. MacLeod, supra
note 37, at 199.
[FN105]. Abrams, supra
note 73, at 1157.
[FN106]. Feather, supra
note 66, at 92.
[FN107]. Rose, supra note
75, at 95; Feather, supra note 66, at 89.
[FN108]. Rose, supra note
75, at 97-98.
[FN109]. Feather, supra
note 66, at 90-91.
[FN110]. See Rose, supra
note 75, at 99 (noting that Mansfield's position in Miller v. Taylor supports
[FN111]. Rose, supra note
75, at 98-99.
[FN112]. Abrams, supra
note 73, at 1156.
[FN113]. L. Ray Patterson
& Stanley W. Lindbergh, The Nature of Copyright 37 (1991).
[FN114]. Abrams, supra
note 73, at 1156.
Feather, supra note 66, at 92.
[FN116]. Rose, supra note
75, at 99.
[FN118]. As pointed out
by Abrams, "[a]t the time of the Donaldson decision it was a contempt punishable
by imprisonment to publish any statements made by a member of Parliament
in the course of parliamentary business." Abrams, supra note 73, at 1159.
[FN119]. Abrams, supra
note 73, at 1159-60.
[FN121]. The vote is commonly
stated as twenty-two to eleven in favor of reversing the decree, based
on the report by Cobbett. See Abrams, supra note 73, at 1164 (citing to
17 Parl. Hist. Eng. 953, 1003 (H.L. 1774)). Rose, while noting this report
by Cobbett, states that "neither the Journal of the House nor the contemporary
newspapers indicate a formal division of the House, and the Public Advertiser
explicitly says there was no division (23 Feb. 1774)." He suggests
that the decision was most likely rendered on a voice vote. Rose, supra
note 75, at 102.
[FN122]. John F. Whicher,
The Ghost of Donaldson v. Becket: An Inquiry Into the Constitutional Distribution
of Powers Over the Law of Literary Property in the United States-Part I,
9 Bull. Copyright Soc'y 102, 126 (1962). Cf. Abrams, supra note 73, at
1164 (unequivocally stating that "the holding of Donaldson v. Becket was
clearly that the common law had not and did not recognize the existence
[FN123]. Rose, supra note
75, at 108-10; Feather, supra note 66, at 95. This was certainly the view
set forth by Blackstone in 1775 and thereafter in his Commentaries on the
Common Law, which would have been the primary source of information for
Americans on recent English copyright development. The fourth, fifth, and
sixth editions, published in 1770, 1773, and 1774, all contained the following
footnote: "In the case of Millar v. Taylor . . . , it was determined (upon
solemn argument and great consideration) by the opinion of three judges
to one, that an exclusive copyright in authors subsists by the common law.
. . ." In his seventh edition, published in 1775, and in all later editions,
he added the following sentence: "But afterwards in the case of Donaldson
v. Becket, before the House of Lords . . . it was held that no copyright
subsists in authors, after the expiration of the several terms created
by the statute of Queen Anne." Whicher, supra note 122, at 126 n.72. Because
of the American Revolution, the seventh and subsequent editions were not
widely circulated in the United States before the constitutional convention,
but a reprint of the fourth edition published by Robert Bell in 1770-71,
and reissued in 1774, did achieve wide circulation. It is on this basis
that Whicher argues that the Framers were aware of the holding in Millar
v. Taylor, but not that in Donaldson v. Becket. Id. at 135. Abrams, in
turn, suggests that knowledge of Donaldson v. Becket was in fact available
in the United States before 1787 and was, at least by implication, known
to the Framers. Abrams, supra note 73, at 1177.
[FN124]. Oliver Wendell
Holmes, The Common Law 5 (M. Howe ed., 1963). Holmes actually wrote, "The
life of the law has not been logic: it has been experience."
[FN125]. The same point
was made in Millar v. Taylor wherein Justice Yates, dissenting, argued
that it was well-known that no common law property right existed in mechanical
inventions once they were published. 98 Eng. Rep. at 218.
[FN126]. MacLeod, supra
note 37, at 198 (citing Mutton, History of Birmingham
[FN127]. The Cases of the
Appellants and Respondents in the Cause of Literary Property, Before the
House of Lords, in The Literary Property Debate: Six Tracts 1764-1774 34
(Stephens Parks ed., 1974).
[FN128]. Id. at 53-54.
[FN129]. Rose, supra note
75, at 91.
[FN130]. Articles of Confederation,
[FN131]. Bugbee, supra
note 31, at 113 (quoting XXIV Journals of the Continental Congress 326-27
[FN132]. Id. at 112 (citing
Continental Congress Papers, No. 36, II, fols. 113-114).
[FN133]. Id. at 113 (citing
XXIV Journals of the Continental Congress 326, n.211 (1928)). In light
of his role in creating the Intellectual Property Clause four years later,
it is of interest to note that James Madison was a member
of this committee.
[FN134]. Id. at 112 (quoting
from XXIV Journals of the Continental Congress 326 (1928)).
[FN135]. Id. at 117; see
also Patterson, supra note 64, at 183-84. The state acts are reproduced
in 8 Nimmer & Nimmer, supra note 82, at app. 7-1 - 7- 40. Six of these
enactments occurred in 1783, with three of them, those of Connecticut,
Massachusetts, and Maryland, actually preceding the congressional resolution.
Only Delaware failed to comply with the congressional recommendation.
[FN136]. Patterson, supra
note 64, at 181. I have been unable to find a reference to any copyright
issued under these state statutes.
[FN137]. But a word of
caution is in order in that it is frequently misleading to seek to apply
today's standards and interpretations to language written in the eighteenth
[FN138]. Bugbee, supra
note 31, at 114 (quoting Acts and Laws of the Commonwealth of Massachusetts
236 (1781-83)); 8 Nimmer & Nimmer, supra note 82, at
[FN139]. Patterson, supra
note 64, at 187.
[FN140]. It read:
Whereas Nothing is more Strictly a Man's own than the Fruit of his
Study, and it is proper that Men should be encouraged to pursue useful
Knowledge by the Hope of Reward; and as the Security of literary Property
must greatly tend to encourage Genius, to promote useful Discoveries and
to the general Extension of Arts and Commerce. . . .
Patterson, supra note 64, at 187; see also Bugbee, supra note 31, at
119 (quoting Laws of the State of North Carolina 563-64 (J. Iredell ed.,
1791)). This language closely followed that of the congressional committee
in 1783. See supra text accompanying note 133 (quoting the similar language
of the congressional committee).
[FN141]. Bugbee, supra
note 31, at 93; see also 8 Nimmer & Nimmer, supra note 82, at app.
[FN142]. But as has been
earlier suggested, the initial fourteen-year term of the Statute of Anne
was likely taken from the patent term authorized by the Statute
of Monopolies. See supra text accompanying note 75 (describing a bill on
the patent term).
[FN143]. The term "patents"
is used as a convenient shorthand for what was actually occurring. It must
be understood that the granting of limited-term exclusive rights did not
usually result in the issuance of anything called a "patent." Only after
the enactment of federal patent legislation would private acts or laws
granting such rights begin to be referred to as patents. Thus, early state
patentees always referred to their state grants as their "laws" or "acts"
rather than as their patents.
[FN144]. Bugbee, the best
extant source, lists some twenty-three state patents as having been granted
between 1779 and 1791. He lists no state patents after 1791, but does indicate
that several states continued to issue patents into the early nineteenth
century. Bugbee, supra note 31, at 85-103. Bugbee, however, limits his
coverage to so-called patents of invention and excludes patents of importation,
even though during this period novelty was not precluded merely because
the subject matter of the grant had been previously known and practiced
elsewhere. Inlow suggests that it was only in Connecticut and Massachusetts
that patents of importation continued to be granted. Inlow, supra note
97, at 43. Federico refers to some twenty-two state patents, but they
are not necessarily the same as those discussed by Bugbee. P.J. Federico,
State Patents, 13 J. Pat. Off. Soc'y 166, 166-72 (1931). Westcott, however,
lists nine Pennsylvania patents alone. T. Westcott, Life of John Fitch
n.173 (1878). At least one more Pennsylvania patent should be included
because Westcott fails to mention the patent to Henry Guest referenced
by Bugbee. See Bugbee, supra note 31, at 85-87 (noting the patent granted
to Guest for the sole right to make and sell blubber in New Jersey).
[FN145]. Only one patent,
issued in Pennsylvania, is known to have had a term as long as twenty-one
years. Depending on the state, most terms were for five years, seven years,
ten years, fourteen years, and in a few instances for fifteen years. Bugbee,
supra note 31, at 85-103.
[FN146]. For a detailed
discussion of the background and drafting of the Intellectual Property
Clause, see Edward C. Walterscheid, To Promote
the Progress of Science and Useful Arts: The Background and Origin of the
Intellectual Property Clause of the United States Constitution, 2 J. Intell.
Prop. L. 1 (1994).
[FN147]. 2 The Records
of the Federal Convention of 1787 321-22 (Max Farrand ed., 1911).
[FN148]. James Madison,
Notes on Debates in the Federal Convention of 1787 477-78 (1966). Madison's
notes indicate that on August 18:
Mr. Madison submitted in order to be referred to the Committee of detail
the following powers as proper to be added to those of the General Legislature
. . . To secure to literary authors their copy rights for a limited time
. . . To encourage by premiums & provisions, the advancement of useful
knowledge and discoveries. . . .
These propositions were referred to the Committee of detail which had
prepared the Report and at the same time the following which were moved
by Mr. Pinkney [sic]: in both cases unanimously[;] To grant patents for
useful inventions [;] To secure to Authors exclusive rights for a certain
time [; and] To establish public institutions, rewards and immunities for
the promotion of agriculture, commerce, trades and manufactures. . . .
[FN149]. See supra note
143. Recall that the state practice in this respect did not refer to these
limited-term exclusive rights as "patents."
[FN150]. See supra text
accompanying note 32.
[FN151]. See supra text
accompanying note 131. In Madison's case, this would seem
to have been a departure from views he apparently held as a member of the
committee that proposed the congressional resolution of May 2, 1783 which
contemplated no upper limit on the term of copyright.
[FN152]. See Walterscheid,
supra note 146, at 50-51. Madison was a member of the Committee of Eleven
which proposed the Intellectual Property Clause and Pinckney was not.
[FN153]. For various discussions
of this balanced style of composition in the context of the clause, see,
e.g., Arthur H. Seidel, The Constitution and a Standard of Patentability,
48 J. Pat. Off. Soc'y 5, 9 (1966); Giles S. Rich, The Principles of Patentability,
42 J. Pat. Off. Soc'y 75, 77-78 (1960); Karl B. Lutz, Patents and Science:
A Clarification of the Patent Clause of the U.S. Constitution, 32 J. Pat.
Off. Soc'y 83, 84 (1950); R.I. Coulter, The Field of the Statutory Useful
Arts, 34 J. Pat. Off. Soc'y 487, 491 (1952); and De Wolf, supra note 64,
[FN154]. Rich, supra note
153, at 78.
[FN155]. But it is not
the only one possible. Prager, while acknowledging that "respective" may
indeed serve "to correlate 'writings' with 'science' and 'discoveries'
with 'useful arts,' " also suggests that it may mean instead or in addition
"that each new creation be considered individually and with precision and
that it be distinguished from the work of contemporaries and predecessors."
Frank D. Prager, Historical Background and Foundation of American Patent
Law, 5 Am. J. Legal Hist. 317 (1961).
[FN156]. S.R. No. 1979,
82d Cong. (1952) reprinted in 1952 U.S.C.C.A.N. 2394, 2396; H.R. Rep. 1923,
82d Cong., (1952). See also In
re Bergy, 596 F.2d 952, 958, 201 U.S.P.Q. (BNA) 352, 359 (C.C.P.A. 1979)
("Scholars who have studied this provision, its origins, and its subsequent
history have, from time to time, pointed out that it is really two grants
of power rolled into one; first, to establish a copyright system and, second,
to establish a patent system"). The legislative history of the 1952 Patent
Act describes the clause as
two provisions merged into one. The purpose of the first provision
is to promote the progress of science by securing for limited times to
authors the exclusive right to their writings, the word "science" in this
connection having the meaning of knowledge in general. . . . The other
provision is that Congress has the power to promote the progress of the
useful arts by securing for limited times to inventors the exclusive right
to their discoveries. Id.
[FN157]. To use them would
literally have destroyed the balanced composition. But compare Pollack's
argument that the Framers deliberately refused to use the terms "patents"
and "copyrights" because they did not want to limit or tie the clause to
the technical meaning of these two terms. See Malla Pollack, Unconstitutional
Inconstability?: The Intersection of the Intellectual Property and Commerce
Clauses of the Constitution: Beyond a Critique of Shakespeare Co. v. Silstar
Corp., 18 Seattle U. L. Rev. 259, 290 (1995).
[FN158]. The deletion of
"premiums & provisions" did nothing to change the broad import of this
grant of power.
[FN159]. See Walterscheid,
supra note 11. I have elsewhere suggested that the clause is inartfully
phrased and that it should be read as: "The Congress shall have power .
. . to promote the progress of science and useful arts [including] by securing
for limited times to authors and inventors the exclusive right to their
respective writings and discoveries."
[FN160]. George Ramsey,
The Historical Background of Patents, 18 J. Pat. Off.
Soc'y 6, 14 (1936).
supra note 146, at 53-54.
[FN162]. As Joseph Story
put it: "It was doubtless to [their] knowledge of the common law and statutable
rights of authors and inventors, that we are to attribute this constitutional
provision [i.e., the Intellectual Property Clause]." Joseph Story, III
Commentaries on the Constitution of the United States § 1147 (Fred
B. Rothman & Co. 1991) (1833).
[FN163]. Letter from Thomas
Jefferson to James Madison (Aug. 28, 1789), in 1 The Republic of Letters
630 (James Morton Smith ed., 1995).
[FN164]. Id. at 635.
U.S. (2 Pet.) 1 (1829).
Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146, 9 U.S.P.Q2d
(BNA) 1847, 1849 (1989).
[FN168]. Justice Story
was referring to the Patent Act of 1793.
[FN169]. The statute of
James is The Statute of Monopolies.
U.S. (2 Pet.) at 20-21.
[FN171]. See supra text
accompanying note 36.
[FN172]. See supra text
accompanying notes 40-41.
[FN173]. Coke could not-and
did not-speak to the copyright system because that system had yet to be
created by the Statute of Anne.
[FN174]. See Story, supra
note 162. Compare, however, his statements in Blanchard
v. Sprague, 3 F. Cas. 648, 650 (C.C.D. Mass. 1839) (No. 1,518). See
infra text accompanying note 224.
Century Music Corp. v. Aiken, 422 U.S. 151, 156, 186 U.S.P.Q. (BNA) 65,
at 156 n.6 (citing Sayre v. Moore, quoted in Cary v. Longman, 102 Eng.
Rep. 138, 139 n.(b) (K.B. 1801)).
[FN177]. The Court has
expressly rejected an argument that the purpose of the clause is to secure
and protect an inherent property right of authors in their writings. Wheaton
v. Peters, 33 U.S. (8 Pet.) 591, 654-668 (1834).
[FN178]. Nimmer & Nimmer,
supra note 82, at § 1.02(A) (1997).
v. Massachusetts, 197 U.S. 11, 22 (1905).
[FN180]. Kenneth J. Burchfiel,
Intellectual Property Power: Progress of Useful Arts and the Legal Protection
of Semiconductor Technology, 28 Santa Clara L. Rev. 473, 518-19 (1988).
v. Ogden, 22 U.S. (9 Wheat.) 1, 188-89 (1824).
U.S. 1, 5-6, 148 U.S.P.Q. (BNA) 459 (1966).
[FN183]. See, e.g., Schnapper
v. Foley, 667 F.2d 102, 112, 212 U.S.P.Q. (BNA) 235, 242 (D.C. Cir. 1981),
cert. denied, 455
U.S. 948 (1982) (stating "we cannot accept
appellant's argument that the introductory language constitutes a limitation
on congressional power"); and Hutchinson
Tel. Co. v. Fronteer Director Co., 770 F.2d 128, 130-31, 228 U.S.P.Q. (BNA)
537, 538-39 (8th Cir. 1985) (describing the purposes of the introductory
phrase "do not limit Congress' power to legislate in the field of copyright").
[FN184]. This is to be
contrasted with the express congressional view at the beginning of the
twentieth century that the introductory language of the Intellectual Property
Clause does indeed limit the power of Congress regarding copyright. See
infra text accompanying note 280.
[FN185]. See supra text
accompanying note 177.
[FN186]. The Federalist
No. 43, supra note 19, at 303-04.
[FN187]. I have elsewhere
suggested that as a justification for the Intellectual Property Clause
this language was both misleading and disingenuous. See Walterscheid, supra
note 3; and Walterscheid, Inherent
or Created Rights: Early Views on the Intellectual Property Clause, 19
Hamline L. Rev. 81, 92-98 (1995).
Whether the authority contemplated was for the purpose of creating property
rights in authors and inventors or was instead for the purpose of assuring
protection of existing property rights was a matter of considerable dispute
for the next few decades, and the meaning of Madison's language in The
Federalist No. 43 would be hotly argued. See Walterscheid, supra note 187,
[FN189]. Abrams, supra
note 73, at 1176.
[FN190]. The exchange of
correspondence between Madison and Jefferson shortly after the drafting
of the Constitution renders abundantly clear that patents and copyrights
were contemporaneously viewed as monopolies. See supra text accompanying
notes 13 and 14.
[FN191]. William C. Robinson,
I The Law of Patents for Useful Inventions 18 (Boston, Little, Brown 1890).
[FN192]. Id. at 19-20.
[FN193]. Id. at 20.
As Robinson put it: "That the purpose of the patent law is to benefit the
inventor is one principle. That the purpose of the law is to secure to
the public the advantages of the invention by compensating the inventor
for its disclosure, is an entirely different principle." Id. at 33.
[FN195]. Id. at 38. Although
Robinson made no reference to it, Jefferson had articulately and persuasively
argued much the same point in 1813. See Letter from Thomas Jefferson to
Isaac McPherson (Aug. 13, 1813), in 13 The Writings of Thomas Jefferson
333-34 (A.A. Lipscomb ed., Washington 1903).
[FN196]. William C. Robinson,
I The Law of Patents for Useful Inventions 42- 43 (Boston, Little, Brown
[FN197]. Id. at 57.
[FN198]. A modern commentator,
Carolyn Cooper, makes the same point, saying:
From the point of view of a society intending to encourage invention
by rewarding inventors, it is important that the reward be sufficient for
such encouragement, but not excessive. It is also important that particular
inventions not disappear, but become part of society's available stock
of technology. Thus, the optimal social system to satisfy these criteria
is one that holds the maximum credible prospect
of reward to a potential inventor, in order to induce that person to make
an invention and to share it with society, but one that then gives the
inventor the minimum actual reward consistent with continued credibility.
Carolyn C. Cooper, Shaping Invention, in Thomas Blanchard's Machinery
and Patent Management in Nineteenth Century America 29-30 (1991).
[FN200]. Act of Apr. 10,
1790, 1 Stat. 109 (repealed 1793).
[FN201]. The Statute of
Monopolies authorized a "term of fourteen years or under." See also supra
text accompanying note 32.
[FN202]. The board consisted
of the Secretaries of State, the Department of War, and the Attorney General,
any two of which could determine whether a patent issued.
[FN203]. Although the board
could clearly have issued patents with a term of less than fourteen years,
all patents issued under the Act of 1790 had a term of fourteen years.
At least one commentator has incorrectly assumed from this that
the Act of 1790 "provided for a uniform duration of exclusive rights."
See Kenneth Burchfiel, Revising the "Original" Patent Clause: Pseudohistory
in Constitutional Construction, 2 Harv. J. L. & Tech. 155, 173 (1989).
[FN204]. Act of Feb. 21,
1793, § 1 Stat. 318, 321 (repealed 1836).
[FN205]. In light of what
had been established in the copyright law, there was certainly some justification
for this view. See infra text accompanying note 264. For contemporaneous
views of other inventors in this regard, see, e.g., Thomas Greene Fessenden,
Essay on the Law of Patents for New Inventions 214 (Boston, D. Mallory
& Co., 1810). See also Joseph Barnes, Treatise on Justice, Policy,
and Utility of Establishing an Effectual System of Promoting the Progress
of Useful Arts, by Assuring Property in the Products of Genius 6 (Philadelphia,
1792); and New England Association of Inventors and Patrons of Useful Arts,
Remarks on the Rights of Inventors 11-12 (Boston, 1807).
[FN206]. It is unclear
why he waited until the eleventh hour to seek this extension, but he seems
to have assumed, quite incorrectly, that Congress would routinely give
him the requested extension. See Greville Bathe et al., Oliver Evans: A
Chronicle of Early American Engineering 101 (1935).
See 8 Annals of Cong. 1002-1003 (Gales and Seaton eds. 1805); see also
American State Papers (Miscellaneous) No. 186 (1805).
[FN208]. See 8 Annals of
Cong. at 1180-81.
[FN209]. See infra text
accompanying note 233.
[FN210]. His second petition
is reproduced in 9 Annals of Cong. 965-968 (Gales and Seaton, eds., 1805);
see also American State Papers (Miscellaneous) No. 196 (1805).
[FN211]. It carried the
resounding title of Address of the Advocate of the Patentees, Inventors
of Useful Improvements in the Arts and Sciences; Petitioners to Congress
for Redress of Grievance . . . In Defense of Mental Property (Washington
[FN212]. Recognizing that
this position was indeed extreme, he was willing to concede that there
might be good reasons for limiting the term to "say for and during the
life of the inventor, and his heirs and assigns, to the third generation;
or for fifty years certain, to him, his heirs, and assigns, and for and
during his own life, if he survived the term of fifty years." He closed with
the rather remarkable statement that "[t]he measure has been strongly recommended
not only by our beloved Washington, but by many other great and enlightened
statesmen." Address, supra note 210, at 10 and 16. I have been unable to
find anything that indicates that Washington ever took any position on
the term of the patent grant.
[FN213]. Bathe et al.,
supra note 206, at 127.
[FN214]. Letter from Thomas
Jefferson to Oliver Evans (May 2, 1807), in The Writings of Thomas Jefferson,
supra note 195, at 200-02.
[FN215]. He did not favor
term extension or patent renewal. See supra text accompanying note 163.
Moreover, there is nothing in this language to indicate that he actually
questioned the fourteen-year patent term as being too short. Rather, it
suggests merely that he was prepared to consider the possibility. He never
made any attempt as President to have the patent term extended. Bedini's
contention that Jefferson "questioned whether the standard period of fourteen
years for which the law protected each invention was sufficient in a nation
that was as large and as sparsely settled as the United States" reads considerably
more into these comments than is justified by their content and context.
See Silvio O. Bedini, Thomas Jefferson, Statesman of Science 207 (1990).
[FN216]. Oliver Evans,
The Young Mill-Wright and Miller's Guide (2d ed. Philadelphia 1807) quoted
in Bathe et al., supra note 206, at 140.
v. Chambers, 8 F. Cas. 837 (C.C.D.Pa. 1807) (No. 4,555).
[FN218]. The description
of the invention set forth in the patent was actually prepared by a clerk
in the State Department and approved by the patent board. Many years later
v. Emerson, 47 U.S. (6 How.) 437 (1848), the Supreme Court would rule
that a patent could not be invalidated because of a failure of government
officials to properly perform their ministerial functions.
[FN219]. See 10 Annals
of Cong. 80, 83, 86, 1384, and 1409 (Joseph Gales ed., 1852). See also
No. 231, American State Papers (Miscellaneous) (10th Cong., 1st Sess.).
[FN220]. Act for the Relief
of Oliver Evans, 6 Stat. 70 (1808).
[FN221]. See Evans
v. Weiss, 8 F. Cas. 888 (C.C.D. Pa. 1809) (No. 4,572);
v. Robinson, 8 F. Cas. 886 (C.C.D. Md. 1813) (No. 4,571).
[FN222]. Letter from Thomas
Jefferson to Isaac McPherson (Aug. 13, 1813) in The Writings of Thomas
Jefferson, supra note 195, at 327.
v. Jordan, 13 U.S. (9 Cranch) 199, 203-204 (1815).
v. Sprague, 3 F. Cas. 648, 650 (C.C.D. Mass. 1839) (No. 1,518).
v. John Deere Co., 383 U.S. 1, 6 (1966); Bonito
Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989).
[FN226]. See infra text
accompanying note 265.
[FN227]. There was nothing
to preclude an argument that term extension or renewal was required in
order to assure adequate investment in commercializing the invention which
presumably was in the public interest under a social benefit rationale.
Indeed, this was the argument chiefly relied upon by Watt in obtaining
his term extension in 1775. See supra text accompanying notes 42-52. As
a practical matter, however, arguments for term extension or renewal in
the United States would usually be predicated
on the contention that the inventor had not been adequately compensated,
rather than that more time was needed to assure investment in developing
and commercializing the invention.
[FN228]. Elizabeth Fleet,
Madison's "Detached Memoranda," 3 Wm. & Mary Q. 534, 551 (1946).
[FN229]. Story, supra note
162, at § 1152.
[FN230]. See supra text
accompanying note 224.
[FN231]. Although on several
occasions bills were introduced providing for a statutory right of renewal
for a specified term, nothing came of them.
[FN232]. Christine P. Benagh,
The History of Private Patent Legislation in the House of Representatives,
Subcomm. on Courts, Civil Liberties, and the Administration of Justice
of the House Committee on the Judiciary, 96th Cong., 1st Sess. (1979) (Comm.
[FN233]. Act of July 3,
1832, § 2, 4 Stat. 559.
[FN235]. Act of July 4,
1836, § 5, 5 Stat. 117.
[FN236]. Id. at §
18. This language was not in the original bill that became the Patent Act
of 1836 but was added by Senate amendment. See Wilson
v. Rousseau, 45 U.S. (4 How.) 646, 701 (1846) (Woodbury, J., dissenting).
45 U.S. at 708.
[FN239]. Id. at 675. Prager
argues that "the government's power to grant reissues and renewals to the
inventor's heir seemed questionable." Frank D. Prager, The Changing Views
of Justice Story on the Construction of Patents, 4 Am. J. Legal Hist. 1,
18 (1960). The difficulty arose from the fact that Section 18 pertaining
to term extension spoke only of the patentee and not of his or her "heirs,
assigns, or administrators" as did several other sections of the statute.
But the Court simply dismissed this as irrelevant. Wilson,
45 U.S. at 676-78.
See, e.g., Wilson,
45 U.S. at 693-709 (Woodbury, J., dissenting) (suggesting the primary
concern was that assignees under the original term of the patent had paid
no consideration for the added benefit obtained by the term extension).
But in the case of Woodworth, although not expressly stated in the record,
it is apparent that Woodworth's son, as administrator of his estate, received
a significant added consideration from the assignees for seeking and obtaining
the term extension. The argument was also made that future assignees of
various patents would pay added consideration in the hopes that a term
extension would be obtained.
[FN241]. Benagh, supra
note 232, at 8 (citing to H.R. Rep. No. 431 (1844)).
[FN242]. The Act of 1836
provided for an administrative appeal from any adverse act or decision
of the Commissioner of Patents affecting patent rights.
[FN243]. Benagh, supra
note 232, at 8.
[FN244]. Id. at 8 and 9.
[FN245]. Blanchard received
his patent for an irregular wood-turning lathe in 1819. It was renewed
by Act of Congress, 6 Stat. 589, in June 1834, five months
after the original patent had expired. Even though the subject matter of
the patent had gone into the public domain, Justice Story upheld the validity
of the renewal patent. See supra text accompanying note 224. In 1848 Blanchard
succeeded in having the patent renewed for a third full term. 9 Stat. 683.
For a discussion of Blanchard's patent management and litigation under
it, see Cooper, supra note 198, at 39-56.
[FN246]. I have been unable
to find any other U.S. patent with a term extending beyond twenty-eight
[FN247]. Benagh, supra
note 232, at 9 (quoting from H.R. 195, 45th Cong. 3rd Sess. (1879)).
[FN248]. Benagh, supra
note 232, at 10.
[FN249]. Id. at 14.
[FN250]. Patent Act, 16
Stat. 198, § 22 (1870) (repealed 1874).
[FN251]. Id. at §
Revised Statutes of 1874, Ch. 1, 18 Stat. 945, §§ 4886-4936 (June
22, 1874). The seventeen-year term was now set by § 4884 of the Revised
Statutes and the seven-year term extension provision now appeared at §
4924 of the Revised Statutes.
[FN253]. To the extent
that a patentee could show genuine hardship, he or she could still resort
to private patent legislation to obtain a term extension. But, as has been
indicated, Congress rather quickly became reluctant to enact such private
[FN254]. See supra text
accompanying note 247.
[FN255]. Patent Act of
1952, Pub. L. No. 82-593, 66 Stat. 792 (codified at 35
U.S.C. §§ 1-293
[FN256]. Id. at §
[FN257]. See, e.g., James
J. Wheaton, Generic
Competition and Pharmaceutical Innovation: The Drug Price Competition and
Patent Term Restoration Act of 1984, 35 Cath. U. L. Rev. 433, 435 (1986)
("For years, the brand-name pharmaceutical industry lobbied Congress to
enact patent extension legislation, claiming
the lengthy drug approval process had eroded the effective patent protection
for new drug products far below the seventeen-year grant contemplated by
the federal patent statute").
[FN258]. See Pub.
L. No. 97-414, § 11(a), 96 Stat. 2065 (1983); Pub.
L. No. 98-127, § 4(a), 97 Stat. 832 (1983).
U.S.C. § 156 (1994).
L. No. 103-465, 108 Stat. 4809 (1994).
U.S.C. § 154(a)(2) (1994).
[FN262]. The mechanics
of both types of extension are now spelled out in 35
U.S.C. § 156 (1994).
[FN263]. See, e.g., Jim
Drinkard, Drug Firm Seeking Rider on Flood Relief; Hoffman-LaRoche Finds
Friends in Senate, Cincinnati Inquirer, May 3, 1997, at B10 (discussing
a drug manufacturer's attempts to extend patent protection on a profitable
drug); Viveca Novak, The Claritin; Case How One Firm Played the Patent
Game, Time, Nov. 22, 1999, at 42 (discussing a drug manufacturer's political
maneuvers to secure additional patent protection).
[FN264]. Copyright Act
of May 31, 1790, §
[FN265]. Express statutory
provision for term renewal should arguably have precluded any term renewal
or extension by private act or indeed the issuance of copyright by private
act. Although rare, private copyright acts have occurred. At the end of
the nineteenth century, only nine such acts had been passed by Congress.
The only other such act in the twentieth century was Priv. L. No. 92-60,
85 Stat. 857 (1971). See United
Christian Scientists v. Christian Science Bard of Directors, First Church
of Christ, Scientist, 829 F.2d 1152, 1169, 4 U.S.P.Q.2d (BNA) 1177, 1189
(D.C. Cir. 1987) (noting the rarity of private copyright legislation).
[FN266]. Patterson, supra
note 64, at 213.
[FN267]. For a listing
of these statutory enactments, see 8 Nimmer & Nimmer, supra note 82,
at app. 7-45 to 7-95.
[FN268]. Copyright Act
of Feb. 3, 1831, §§
1 and 2,
Patterson, for example, simply notes it without providing any explanation
of why it occurred. See Patterson, supra note 64, at 201.
U.S. (8 Pet.) 591 (1834).
[FN271]. Patterson, supra
note 64, at 208.
U.S. at 661.
[FN275]. For a detailed
discussion on this point, see Walterscheid, supra note 187.
U.S. at 684.
[FN277]. Justice McLean,
for the majority, stated:
In what respect does the right of an author differ from that of an
individual who has invented a most useful and valuable machine? In the production
of this, his mind has been as intensely engaged, as long, and, perhaps,
as usefully to the public, as any distinguished author in the composition
of his book. The result of their labours may be equally beneficial to society,
and in their respective spheres, they may be alike distinguished for mental
U.S. at 657-58.
[FN278]. Act of Mar. 4,
1909, ch. 320, §§ 23-24, 35 Stat. 1075.
[FN279]. See supra text
accompanying notes 250-54.
[FN280]. H.R. Rep. No.
60-2222 (1909), reprinted in 8 Nimmer & Nimmer, supra note 82, at app.
13-1 to 13-31.
[FN281]. Id. at app. 13-10.
[FN282]. See supra notes
178 and 180 and accompanying text; supra note 183 and accompanying text.
[FN283]. 8 Nimmer &
Nimmer, supra note 82, at app. 13-11.
The report gives no indication of the basis for this argument, but it likely
was predicated on to other nations had set such a term for copyright.
[FN285]. Id. at app. 13-21
[FN286]. See Pub. L. 87-668,
76 Stat. 555 (1962); Pub. L. No. 89- 142, 79 Stat. 581 (1965); Pub. L.
No. 90-141, 81 Stat. 464 (1967); Pub. L. No. 90-416, 82 Stat. 397 (1968);
Pub. L. No. 91-147, 83 Stat. 360 (1969); Pub. L. No. 91-555, 84 Stat. 1441
(1970); Pub. L. No. 92-170, 85 Stat. 490 (1971); Pub. L. No. 92-566, §
1, 86 Stat. 1181 (1972); Pub.
L. No. 93-573, tit. I, § 104, 88 Stat. 1873 (1974).
U.S.C. § 302(a) (1994).
U.S.C. § 302(c) (1994).
U.S.C. § 304(a) (1994).
[FN290]. H.R. Rep. No.
94-1476 (1976), reprinted in 8 Nimmer & Nimmer, supra note 82, at app.
4-2 to 4-216; S.22 reprinted in 8 Nimmer & Nimmer, supra note 82, at
4A-2 - 4A-255.
[FN291]. Id. at app. 4-132.
[FN292]. 3 Nimmer &
Nimmer, supra note 82, at 9-8, § 9.01[A].
[FN293]. H.R. Rep. No.
100-609 (1988), reprinted in 9 Nimmer & Nimmer, supra note 82, at app.
32-1 to 32-65.
[FN294]. Id. at app. 32-22.
[FN296]. Sonny Bono Copyright
Term Extension Act, Pub.
L. No. 105-298, 112 Stat. 2827, 2828 (1998).
[FN297]. See supra text
accompanying note 289.
[FN298]. Among the works
that would have entered the public domain were the Disney characters Mickey
Mouse, Pluto, Goofy, and Donald Duck; music written by George and Ira Gershwin,
Cole Porter, Irving Berlin, Hoagy Carmichael and a host of others; and
early novels of Ernest Hemingway and William Faulkner. See Teresa
Ou, From Wheaton v. Peters to Eldred v. Reno: An Originalist Interpretation
of the Copyright Clause (visited Apr. 3, 2000) <http:// cyber.law.harvard.edu/eldredvreno/legal.html>
(discussing the effects of the Sonny Bono Act upon prior copyrighted materials).
F. Supp. 2d 1, 53 U.S.P.Q.2d (BNA) 1217 (D.C. Cir. 1999). See Ou, supra
note 298 (discussing the background of the Reno case).
[FN300]. See, e.g., Robert
L. Bard & Lewis Kurlantzick, Copyright Duration: Duration, Term Extension,
The European Union, and the Making of Copyright Policy (1999) (providing
a detailed bibliography of books and articles addressing various issues
relevant to both the patent and the copyright term).
[FN301]. Using as a baseline
ninety-five years for the copyright term.
F. Supp. 2d 1, 3, 53 U.S.P.Q.2d (BNA) 1217, 1219 (D.C. Cir. 1999).
The issue of whether an ultimate copyright term of 140 years violated the
Intellectual Property Clause was raised but not reached in United
Christian Scientists v. First Church of Christ, Scientist, 829 F.2d 1152,
4 U.S.P.Q.2d (BNA) 1177 (D.C. Cir. 1987). But the court did make the
The copyright Congress conferred upon First Church through Private
Law 92- 60 is, however, far from ordinary . . . [and] is exceptional in
scope and duration. Even if not construed as a copyright in perpetuity,
it purports to confer rights of unprecedented duration: the term of protection
for the 1906 edition of Science and Health, which would have expired in
1981 if treated under the general copyright laws, is now until 2046; and
numerous editions of Science and Health which . . . were in the public
domain because their copyrights had expired [or were] . . . never copyrighted,
are now subject to the long-term copyright First Church derived from Private
Law 92-60. Scant authority, if any, exists for such a dramatic departure
from copyright practice.
Id. at 1169-70.
F. Supp. 2d at 3, 53 U.S.P.Q.2d (BNA) at 1219 (citing Pennock
v. Dialogue, 27 U.S. at 16-17.
at 3 n.6 (citing Schnapper
v. Foley, 667 F.2d 102, 112 (D.C. Cir. 1981)).
U.S. (8 Pet.) 591, 661 (1834).
U.S. (9 Wheat.) 1, 189 (1824).
U.S. (2 Pet.), 1, 16-17 (1829).
[FN309]. Nowhere is this
more clearly indicated than in his Commentaries on the United States Constitution
published four years after Pennock wherein he emphasized that short patent
and copyright terms are beneficial in that they "admit the people at large,
after a short interval, to the full possession and enjoyment of all writings
and inventions without restraint." Story, supra note 162, at § 1147
[FN310]. Bard & Kurlantzick,
supra note 300, at 75.
U.S. 1, 148 U.S.P.Q. (BNA) 459 (1966).
at 6 (emphasis in original).
[FN315]. Id. (emphasis
U.S. (8 Pet.) 591 (1834).
U.S. (9 Wheat.) 1 (1824).
74 F. Supp. 2d at 2 n.6 (citing Schnapper,
667 F.2d at 112).
F.2d at 111.
667 F.2d at 112.
at 112 (citing Mitchell
Brothers Film Group v. Cinema Adult Theater, 604 F.2d 852, 860, 203 U.S.P.Q.
(BNA) 1041, 1048 (5th Cir. 1979)).
F.2d at 112.
Publications, Inc. v. Rural Telephone Serv. Co., Inc., 499 U.S. 340, 349
18 U.S.P.Q.2d (BNA) 1275, 1279 (1991); Twentieth
Century Music Corp. v. Aiken, 422 U.S. 151, 156, 186 U.S.P.Q. (BNA) 65,
[FN324]. Nimmer & Nimmer,
supra note 82.
[FN325]. The sole exception
is the argument for harmonization which has been applied with respect to
both the patent and the copyright term.
[FN326]. 322 U.S. 591,
Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1536 35 U.S.P.Q.2d
(BNA) 1641, 1660 (Fed. Cir. 1995), rev'd 520
U.S. 17, 41 U.S.P.Q.2d (BNA) 1865 (1997) (quoting Newman, Cir. J.,
[FN328]. Nimmer & Nimmer,
supra note 82. Ou, supra note 298, at 4 (discussing comments by Senator
Hatch in the Congressional Record). According to Hatch, the issue of copyright
term extension in 1995 was one of "whether the current term of copyright
adequately protects the interests of authors." He further stated that an
extension of the copyright term beyond that provided by the Copyright Act
of 1976 would allow "authors to reap the full benefits to which
they are entitled from the exploitation of their creative works." See 141
Cong. Rec. S3390 (1995) (containing Senate debate of Copyright Extension
Act of 1995).
499 U.S. at 340.