WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW
VOLUME 20 NUMBER 3 SUMMER 2020
NEW KID ON THE BLOCKCHAIN: USING BLOCKCHAIN TECHNOLOGY TO REFORM STEP-UP BASIS OF INHERITED ASSETS Andrew Bosserman 229
THE PORTAL TO INTERMEDIARY LIABILITY: MERGING SECONDARY LIABILITY WITH EQUITY AND PRIVATE INTERNATIONAL LAW Patrick Lin 250
BORN IN THE LAB, PROVEN IN THE MARKET: GATORADE'S IMPACT ON U.S. IP POLICY & RESEARCH INNOVATION Kyle Welch 277
ABOUT THE JOURNAL
The WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW is a student organization sponsored by Wake Forest University School of Law dedicated to the examination of intellectual property in the legal context. Originally established as the Wake Forest Intellectual Property Law Journal in 2001, the new focus and form of the Journal, adopted in 2010, provides a forum for the exploration of business law and intellectual property issues generally, as well as the points of intersection between the two, primarily through the publication of legal scholarship. The Journal publishes four print issues annually. Additionally, the Journal sponsors an annual symposium dedicated to the implications of intellectual property law in a specific context. In 2009, the Journal launched an academic blog for the advancement of professional discourse on relevant issues, with content generated by both staff members and practitioners, which is open to comment from the legal community. The Journal’s student staff members are selected for membership based upon academic achievement, performance in an annual writing competition, or extensive experience in the field of intellectual property or business. The Journal invites the submission of legal scholarship in the form of articles, notes, comments, and empirical studies for publication in the Journal’s published print issues. Submissions are reviewed by the Manuscripts Editor, and decisions to extend offers of publication are made by the Board of Editors in conjunction with the Board of Advisors and the Faculty Advisors. The Board of Editors works closely and collaboratively with authors to prepare pieces for publication. Manuscript submissions should be accompanied by a cover letter and curriculum vitae, and may be sent electronically to [email protected] or by mail to:
Manuscripts Editor Wake Forest Journal of Business and Intellectual Property Law Wake Forest University School of Law P.O. Box 7206 Reynolda Station Winston-Salem, North Carolina 27109
COPYRIGHT © 2020 WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW
ISSN 2164-6937 (Print) ISSN 2164-6945 (Online)
BOARD OF ADVISORS
DANNY M. AWDEH JAMES L. LESTER Finnegan Henderson Farabow MacCord Mason PLLC Garrett & Dunner LLP Greensboro, North Carolina Washington, DC JUSTIN R. NIFONG CHARLES W. CALKINS NK Patent Law Kilpatrick Townsend & Stockton LLP Raleigh, North Carolina Winston-Salem, North Carolina MICHAEL S. MIRELES Professor, University of the KENNETH P. CARLSON Pacific, McGeorge School of Law Constangy, Brooks, Smith & Prophete LLP Sacramento, California Winston-Salem, North Carolina ALAN PALMITER Professor, Wake Forest TRIP COYNE University School of Law Ward & Smith, P.A. Winston-Salem, North Carolina Wilmington, North Carolina ABBY PERDUE RODRICK J. ENNS Associate Professor, Wake Forest Enns & Archer LLP University School of Law Winston-Salem, North Carolina Winston-Salem, North Carolina
EDWARD R. ERGENZINGER, JR., COE W. RAMSEY PH.D. Brooks Pierce FisherBroyles, LLP Raleigh, North Carolina Raleigh, North Carolina T. ROBERT REHM, JR. JASON D. GARDNER Smith, Anderson, Blount, Kilpatrick Townsend & Stockton Dorsett, Mitchell, & Jernigan, LLP LLP Atlanta, Georgia Raleigh, North Carolina STEVEN GARDNER SIMONE ROSE Kilpatrick Townsend & Stockton, Professor, Wake Forest LLP University School of Law Winston-Salem, North Carolina Winston-Salem, North Carolina ROB HUNTER The Clearing House Payments Company, LLC Winston-Salem, North Carolina
BARBARA LENTZ -Salem, North Carolina
WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW Editor-in-Chief ANDREW J. BOSSERMAN Managing Editor ELISABETH K. POMEROY Business & Online Editor Manuscripts Editor OLIVIA BANE TIANNA LARSON Symposium Editor Executive Articles MAURICE O’NEAL GOLDSTON Editors MARISSA CASCIO Development Editor RYAN MADDEN DEMI B. BUSBY EMILIA TODD Senior Notes and Comments Editor Articles Editors GENTRY WARD CONNOR CHRISTENSEN Notes and Comments Editors MATTHEW J. JORDAN AUSTIN B. WOOD EVIN PILMAN ELLY K S K MATTHEW WRIGHT LOUIS J. HALLOW, III RACHEL F. ROBERTSON Research Editor SARAH TRAYNOR
Editorial Staff MICHAEL C. CHAPEL BRITTENY JUNIOUS EDGAR SANTIAGO CHRISTOPHER CULBERT KRISTEN R. KOVACH EMILY THOMPSON ETHAN DRAPER BRIAN M. LEWIS JACKSON W. VOGEL EVAN G. FEDERICO CHRISTINE Y. MARTINEZ MATTHEW WALDREP ABBIE HORNBERGER COLE A. MIDDLETON HANNAH WEISS AARON E. JOHNSTON W. PARKS NOYES PHILLIP WERNER CAMERON B. RUSH
Staff Members HUNTER ARTZ TONI-ANN HINES CHELSEY PHELPS KATHERINE BROCK JAMES HUGHES GRAHAM PITMAN AUSTIN S. COATES MONA IBADI HUNTER REVORD CARA COOK THOMAS JOA JENNIFER SCHAAF WILLIAM CROTTY DANIEL JOHNSON HANNAH SHOWS LAUREN CULVER HOLLY KOZAK JOHN M. STEVELINCK, JR. JAMESON DOUB RILEY E. MCMILLAN KYLE A. TATICH TIM DUNN SARAHAN MOSER ALYSSA VALDES WALKER HELMS JESSE OFFCHISS SIERRA WEINGARTNER J. KEENAN OSBORNE
WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW
VOLUME 20 SUMMER 2020 NUMBER 3
NEW KID ON THE BLOCKCHAIN: USING BLOCKCHAIN TECHNOLOGY TO REFORM STEP-UP BASIS OF INHERITED ASSETS
Andrew Bosserman†
I. INTRODUCTION ...... 230 II. BACKGROUND ...... 231 A. AN OVERVIEW OF STEP-UP BASIS ...... 231 B. 1976 DISALLOWANCE OF STEP-UP BASIS AND SUBSEQUENT REPEAL IN 1981 ...... 232 C. 2010 TEMPORARY CARRYOVER BASIS REGIME ...... 234 D. STEP-UP BASIS AND ESTATE TAX LAW SINCE 2010 . 235 E. AN OVERVIEW OF BLOCKCHAIN TECHNOLOGY ...... 235 III. ANALYSIS ...... 238 A. ARGUMENTS SUPPORTING STEP-UP BASIS ARE NO LONGER SOUND ...... 238 B. HOW BLOCKCHAIN COULD FACILITATE A CARRYOVER BASIS REGIME ...... 239 1. Real Estate ...... 240 2. Financial Securities ...... 241 3. Artwork & Gemstones ...... 242 C. BUSINESS IMPACT OF USING BLOCKCHAIN TO REFORM STEP-UP BASIS ...... 243 1. Economic Efficiency ...... 243 2. Efficient Transfer of Assets Upon Death ...... 244 3. Increased Demand for Blockchain Solutions ...... 245 4. Disparate Impact on Low-Income Individuals ...... 246 IV. CONCLUSION ...... 248
† © 2020 Andrew Bosserman is a third-year student at Wake Forest University School of Law and the Editor-in-Chief of the Wake Forest Journal of Business and Intellectual Property Law. Prior to law school, Andrew worked as an IRS agent and as a CPA. He also owned and operated his own Christmas tree farm. Andrew has a B.S. in Business with majors in accountancy and finance from Miami University. After graduation, Andrew plans to work as a tax attorney. 230 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
I. INTRODUCTION Current tax law provides an outdated and inequitable preference to heirs who inherit appreciated assets, as compared to individuals who receive gifted assets during the donor’s lifetime. This tax preference, known as “step-up” basis, is expected to cost the United States government $105 billion in foregone tax revenue over the next ten years, not including all lost revenue from prior years.1 Individuals who receive gifted assets take the donor’s basis in the asset, also known as “carryover” basis.2 Contrastingly, heirs receive a “step-up” in the basis of an inherited asset to its fair market value, effectively exempting the asset’s appreciation during the decedent’s lifetime from income tax.3 Congress tested a carryover basis regime for inherited assets twice, in 19764 and in 2010.5 Due to changes in estate tax law and in technology, arguments against a carryover basis regime are no longer sound. Less than one estate out of every thousand is subject to the estate tax, resulting in minimal concerns about double taxation.6 Moreover, current technology permits easy tracking of the decedent’s basis. One such technology that could facilitate a carryover basis regime is blockchain. Blockchain’s “trustless” technology utilizing decentralized ledgers7 could track the basis of assets, making carryover basis for heirs easy to ascertain. Using blockchain to facilitate carryover basis would result in increased economic efficiency, increased ease of asset transfers upon death, and increased demand for blockchain solutions.8 First, this comment explores current step-up basis law, Congress’ prior attempts to establish a carryover basis regime, current estate tax law, and the basics of blockchain technology. Next, it will analyze why arguments against using carryover basis for inherited assets are no longer sound and how blockchain could facilitate a carryover basis regime. Finally, this comment will explore the business impact of using blockchain to reform step-up basis and the resulting economic benefits.
1 CONG. BUDGET OFFICE, CBO54667, OPTIONS FOR REDUCING THE DEFICIT: 2019 TO 2028 219 (2018). 2 I.R.C. § 1015 (2018). 3 Id. § 1014(a)(1). 4 Tax Reform Act of 1976, Pub. L. No. 94-455, § 2005, 90 Stat. 1520, 1874. 5 Economic Growth and Tax Relief Reconciliation Act of 2001, Pub. L. No. 107- 16, § 901, 115 Stat 38, 41. 6 Policy Basics: The Federal Estate Tax, CTR. ON BUDGET & POL’Y PRIORITIES (Nov. 7, 2018), https:// www.cbpp.org/sites/default/files/atoms/files/policybasics- estatetax.pdf. 7 Trevor I. Kiviat, Beyond Bitcoin: Issues in Regulating Blockchain Transactions, 65 DUKE L.J. 569, 574, 578 (2015). 8 See infra Part III.C, for a discussion of the business implications of using blockchain to reform step-up basis. 2020 NEW KIDS ON THE BLOCKCHAIN 231
II. BACKGROUND
A. An Overview of Step-Up Basis
Generally, an “accession to wealth” is a taxable event according to the Internal Revenue Code.9 One common accession to wealth occurs when a taxpayer sells or exchanges assets or property.10 When an asset is sold or exchanged, the difference between the amount realized and the adjusted basis of the asset is either a realized gain or loss.11 The amount realized is the sum of any money received plus the fair market value of any property received,12 while the adjusted basis of an asset is usually its cost.13 A gain is usually taxable, unless a specific exclusion exists, and a loss may be deductible, if loss limitation rules do not apply.14 Taxpayers frequently purchase assets or property, and the basis of a purchased asset is generally its cost.15 However, individuals may also acquire property through receipt of a gift. If a taxpayer receives a gifted asset while the donor is still living (an inter vivos gift), the donee takes the property with a “carryover” basis, or the basis in the hands of the donor.16 Carryover basis ensures that the asset’s appreciation during the donor’s holding period will not escape taxation through realization of the gain when the donee sells or disposes of the property.17 Inherited assets are a significant exception to the standard basis regime described above. When a taxpayer dies, the heir records their adjusted basis as the fair market value of the property on the date of the decedent’s death, otherwise known as “step-up” basis because the heir’s basis is “stepped-up” to fair market value.18 If the fair market value of the asset is less than the decedent’s basis, it will be “stepped-down.” However, this process of using fair market value rather than the decedent’s carryover basis is generally referred to as step-up basis.19
9 See I.R.C. § 61(a) (2018); Comm’r v. Glenshaw Glass Co., 348 U.S. 426, 431 (1955). 10 See § 61(a). 11 Id. § 1001(a). 12 Id. § 1001(b). 13 Id. § 1012(a). 14 See id. §§ 61(a)(3), 1001(c), 165. 15 Id. § 1012. 16 Id. § 1015(a). 17 The donor’s unrealized appreciation plus any additional appreciation is taxed when the donee sells or disposes of the asset. The amount realized will be calculated according to I.R.C. § 1001(b) and the adjusted basis will be carryover basis per I.R.C. § 1015. 18 Id. § 1014(a)(1). 19 Id. 232 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
The heir also has the option to elect an alternative valuation date, by which the heir may record their basis as the fair market value of the property six months after the decedent’s death.20 However, in no instance is a carryover basis applied to an inherited asset.21 Step-up basis results in the asset’s unrealized appreciation, while in the hands of the decedent, escaping taxation because the heir’s taxable gain or loss on the asset is figured with respect to the new step-up basis set at fair market value.22 Further, inheriting an asset is not a taxable event under current tax law.23 Section 1014 of the Internal Revenue Code has been debated over the years but has become widely accepted as the norm.24 Proponents of Section 1014 and step-up basis typically have two main arguments supporting step-up basis: (1) step-up basis prevents double-taxation resulting from estate taxes, and (2) step-up basis prevents difficulty in determining the decedent’s basis in the asset.25 These arguments were strongly debated when the Tax Reform Act of 1976 modified the laws surrounding step-up basis and Section 1014.26
B. 1976 Disallowance of Step-Up Basis and Subsequent Repeal in 1981
The first time Congress implemented a carryover basis regime was in Section 2005 of the Tax Reform Act of 1976.27 Section 2005 provided that “the basis of carryover property acquired from a decedent dying after December 31, 1976, in the hands of the person so acquiring shall be the adjusted basis of the property immediately before the death of the decedent.”28 The new carryover basis regime received harsh criticism from tax professionals and the general public due to hasty drafting by Congress and lack of technical debate before approval.29
20 Id. §§ 1014(a)(2), 2032. 21 See id. § 1014. 22 See id. §§ 1014, 1001. 23 Id. § 102. 24 Robert Gordon et al., Revenue and Incentive Effects of Basis Step-Up at Death: Lessons from the 2010 “Voluntary” Estate Tax Regime, 106 AM. ECON. REV. 662, 662 (2016). 25 See, e.g., Lawrence Zelenak, Taxing Gains at Death, 46 VAND. L. REV. 361, 364, 368 (1993). 26 Howard J. Hoffman, The Role of the Bar in the Tax Legislative Process, 37 TAX L. REV. 411, 439–40, 443 (1982). 27 Tax Reform Act of 1976, Pub. L. No. 94-455, § 2005, 90 Stat. 1520, 1874. 28 Id. 29 Hoffman, supra note 26, at 441. 2020 NEW KIDS ON THE BLOCKCHAIN 233
Within a year after the law was passed, lawmakers began advocating for carryover basis’ repeal.30 While Congress was considering repeal of carryover basis and a return to step-up basis, many professional groups, including the American Bar Association and the American Institute of Certified Public Accountants, lobbied heavily for its repeal.31 Both the House of Representatives and the Senate held hearings about carryover basis repeal, in which many arguments for repeal were heard.32 One main argument was that the recordkeeping required for carryover basis was too onerous and difficult to make a carryover basis regime feasible.33 Another main argument against carryover basis was that it was inequitable because it treated small and large estates differently.34 However, supporters proffered a number of arguments in favor of carryover basis. One main argument supporting carryover basis was that step-up basis creates economic inefficiencies due to the “lock-in” effect.35 Step-up basis incentivizes taxpayers to retain appreciated assets, rather than sell them, because the unrealized gain will be extinguished at death due to step-up basis.36 Step-up basis results in economic inefficiency because taxpayers will retain underperforming or less profitable assets instead of selling and replacing the underperforming assets with more profitable assets.37 Further, step-up basis and the lock-in effect primarily benefit wealthier taxpayers because they are more likely to pass on property at death, while less wealthy taxpayers often must sell their assets and spend down their resources during retirement.38 Ultimately, Congress decided a carryover basis regime was not feasible at the time and eventually repealed carryover basis in 1981.39 Congress would wait almost twenty years to revisit the carryover basis issue.40
30 See id. at 444. 31 Id. at 445. 32 Id. at 444–45. 33 Id. at 448–49. 34 Id. at 469–71. 35 Id. at 475. 36 Id. at 440. 37 Id. 38 Scott Eastman, The Trade-offs of Repealing Step-Up in Basis, TAX FOUND. (Mar. 13, 2019), https://files. tax foundation.org/20190312171146/The-Trade-offs-of- Repealing-Step-Up-in-Basis-FF-641.pdf. 39 Crude Oil Windfall Profit Tax Act of 1980, Pub. L. No. 96-223, § 401(a), 94 Stat. 229, 299. 40 Richard Schmalbeck et al., Advocating a Carryover Tax Basis Regime, 93 NOTRE DAME L. REV. 109, 122–23 (2017). 234 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
C. 2010 Temporary Carryover Basis Regime
Congress wished to completely repeal the estate tax shortly after President George W. Bush was elected, but instead settled for a reduced and temporary version of its desired law.41 The new law provided for an increasing estate tax exemption every year from 2002 to 2009, culminating in an entire estate tax repeal in 2010.42 However, the estate tax repeal was short-lived and only applied for 2010 because the new tax law had a sunset provision for years after 2010.43 As part of the estate tax repeal, Congress also decided to institute a carryover basis regime for 2010, similar to the regime it enacted in 1976.44 The 2010 carryover basis regime provided that the basis of a person acquiring property from a decedent would be the lesser of: (1) the adjusted basis of the decedent or (2) the fair market value of the property at the date of the decedent’s death.45 Legislation passed at the end of 2010 actually permitted executors of decedents who died during 2010 to choose whether they wanted to use step-up basis and be subject to the estate tax, or carryover basis and no estate tax.46 Unlike the 1976 carryover basis regime, the 2010 temporary carryover basis law received minimal criticism.47 One of the main objections to carryover basis argued during the Congressional hearings to repeal the 1976 law was that the decedent’s basis was extremely difficult or impossible to determine.48 The minimal criticism that the 2010 temporary carryover basis regime received seemed to imply taxpayers in 2010 did not have difficulty ascertaining the decedent’s basis, likely due to technological advances.49 However, the lack of criticism could also be due to the fact that very few taxpayers were affected by the 2010 carryover basis regime.50
41 Id. 42 Economic Growth and Tax Relief Reconciliation Act of 2001, Pub. L. No. 107- 16, §§ 501, 521, 115 Stat. 69, 71–72. 43 Id. § 901. 44 See id. §§ 541–42. 45 Id. 46 Tax Relief, Unemployment Insurance Reauthorization, and Job Creation Act of 2010, Pub. L. No. 111-312, § 301, 124 Stat. 3296, 3300–01. 47 Schmalbeck et al., supra note 40, at 127. 48 Hoffman, supra note 26, at 440–41. 49 Schmalbeck et al., supra note 40, at 127, 131. 50 Id. at 127–28. 2020 NEW KIDS ON THE BLOCKCHAIN 235
D. Step-Up Basis and Estate Tax Law Since 2010
Since 2010, step-up basis has been the only permissible method for determining the basis of inherited property.51 While there have been no changes to step-up basis in recent years, the estate tax exemption has been steadily increasing since estate tax reform began in 2001.52 The per-person estate tax exemption was $675,000 in 2001,53 and it increased to $3.5 million by 2009.54 By 2019, the per-person estate tax exemption increased to $11.4 million.55 For example, a married couple’s estate would not be subject to any estate tax unless their estate is worth more than $22.8 million at death (using 2019 exemption amounts).56 Due to the increased exemption, less than one estate out of every thousand was subject to estate tax in 2017.57 In conjunction with the increase in the estate tax exemption, the top marginal tax rate for estates has fallen considerably, from 55% in 2001 to 40% in 2019.58 The result of the falling rates and other exemptions is that taxable estates pay an average effective tax rate of 16.5%.59 The large gap between the marginal and effective estate tax rate is primarily due to the ability of wealthy estates to use complex tax planning strategies to pass on portions of their estate tax-free.60 Extremely large estates are not the only estates able to take advantage of tax planning strategies; even smaller taxable estates pay close to no estate tax.61 This evolution of the estate tax has coincided with the evolution of technology, particularly the recent development and implementation of blockchain technology.
E. An Overview of Blockchain Technology
Put simply, blockchain is a “trustless” technology.62 Blockchain is a decentralized authentication and verification technology that allows individuals to transact without a trusted third party or central institution.63 Blockchain technology accomplishes trustless
51 I.R.C. §§ 1014(a)(1), (b)(1) (2018). 52 Policy Basics: The Federal Estate Tax, supra note 6. 53 Id. 54 Id. 55 Rev. Proc. 2018-57, 2018-49 I.R.B. 827, 835. 56 Id. 57 Policy Basics: The Federal Estate Tax, supra note 6. 58 Id.; see also I.R.C. § 2001(c). 59 Policy Basics: The Federal Estate Tax, supra note 6. 60 Id. 61 See id. 62 Kiviat, supra note 7, at 574. 63 Id. 236 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. transactions through a distributed, decentralized public ledger that maintains records of all transactions on a particular network.64 The “blockchain” is this transaction ledger.65 Further, the ledger is subject to cryptographic verification, called “proof-of-work” validation, whenever a transaction is initiated.66 Proof-of-work validation ensures that transactions cannot be changed once they have been entered on the blockchain unless there is a second, offsetting transaction.67 A simplified description of how a transaction works over blockchain is as follows: (1) Party A notifies the entire network of the transaction; (2) Party B responds to the entire network declaring its acceptance of the transaction; and (3) the network members verify the transaction’s authenticity using “proof-of-work” validation.68 The one popular use of blockchain technology is creating digital currencies, or “cryptocurrencies.”69 The most popular cryptocurrency is Bitcoin, a cryptocurrency created in 2010 by an unknown person using the pseudonym Satoshi Nakamoto.70 In reality, Bitcoins do not actually “exist” because Bitcoins are simply records of Bitcoin transactions on a blockchain.71 Bitcoin or other cryptocurrency is essentially a bearer asset; to own cryptocurrency means to possess the encryption key allowing the right to access and transfer.72 A Bitcoin transaction includes three types of information: (1) an input with a record of the previous address that sent the Bitcoins; (2) an amount of Bitcoins to be transferred; and (3) an output address of the intended recipient of the Bitcoins.73 Despite Bitcoin’s popularity comprising approximately 65% of the cryptocurrency market, currently more than 2,700 different cryptocurrencies are available with a combined value of over $230 billion.74 Beyond cryptocurrencies, many other uses for blockchain exist. One such use is “smart contracts,” which use blockchain technology to “facilitate, verify, execute and enforce the terms of a commercial
64 Id. at 578. 65 Id. 66 Id. at 578–80. 67 Id. at 578–79. 68 Id. at 603. 69 See USMAN W. CHOHAN, UNIV. OF N.S.W. SCH. OF BUS. & ECON., CRYPTOCURRENCIES: A BRIEF THEMATIC REVIEW 1–2 (2017). 70 Frequently Asked Questions, BITCOIN, http://bitcoin.org/en/faq#general (last visited Oct. 10, 2019). 71 TIM SWANSON, GREAT CHAIN OF NUMBERS: A GUIDE TO SMART CONTRACTS, SMART PROPERTY, AND TRUSTLESS ASSET MANAGEMENT 17 (2014). 72 Id. at 17–19. 73 Id. 74 Cryptocurrency List, COINLORE, http://coinlore.com/all_coins (last visited Oct. 9, 2019). 2020 NEW KIDS ON THE BLOCKCHAIN 237
agreement.”75 The conditions and subsequent consequences in a contract are programmed into blockchain; once conditions occur or do not occur, the blockchain automatically verifies the condition and executes the consequence.76 The Netherlands is currently experimenting with using smart contracts for certain lease agreements.77 Another emerging practical use of blockchain technology is recording real estate documents, such as deeds, mortgages, easements, and restrictive covenants.78 In 2016, the Cook County Recorder’s office in Illinois began experimenting with blockchain technology to track and record real property titles.79 This eight-month experiment was successful and resulted in Cook County contracting with Conduent, a technology company, to incorporate blockchain technology into an entirely new recording system for the county.80 One benefit of using blockchain for real property titles is that fraudulent transactions cannot be added to the blockchain because blockchain transactions require identity verification and consent of all parties involved.81 However, the initial import of information into blockchain is extremely important, as blockchain is still susceptible to the mantra “garbage in, garbage out.”82 Users can still add bad or incorrect data to the blockchain, even if proper protocols are followed.83 Another unique use of blockchain technology is to certify and verify artwork.84 Verisart, a start-up, is attempting to digitize and verify every existing art object.85 Once Verisart’s database is finished, art buyers will be able to confirm the provenance and authenticity of the artwork they are purchasing.86 In November 2018, Christie’s New York, an auction house, partnered with Artory, a blockchain art registry, to record
75 SWANSON, supra note 71, at 11. 76 Id. at 16. 77 S.H. Spencer Compton & Diane Schottenstein, Blockchain Technology and Its Applicability to the Practice of Real Estate Law, 2017 LEXISNEXIS EMERGING ISSUES 7512, 5, 8 (2017). 78 Id. at 3. 79 Id. 80 The Real Estate Deal, Decluttered: Blockchain and Deed Recording, DEEDS.COM (Jan. 28, 2019), https://www.deeds.com/articles/the-real-estate-deal- decluttered-blockchain-and-deed-recording/. 81 Compton & Schottenstein, supra note 77, at 3–4. 82 Id. 83 Id. 84 See VERISART, http://www.verisart.com (last visited Oct. 20, 2019). 85 James Tarmey, A Tech Startup is Trying to Catalogue Every Piece of Art on the Market, BLOOMBERG (July 21, 2015), https://www.bloomberg.com/news/articles/ 2015-07-21/a-tech-startup-is-trying-to-catalogue-every-piece-of-art-on-the-market. 86 Id. 238 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. auction sales of artwork on blockchain.87 The art world is increasingly using Blockchain to track information and certify transfers, though many art experts believe widespread use of blockchain is still many years away.88 Other valuables, such as gemstones and jewelry, are also tracked using blockchain technology. In May 2018, DeBeers, the world’s largest diamond producer, announced that it began tracking diamonds from mine to retailer using blockchain.89 DeBeers’ blockchain solution, Tracr, assures diamond buyers of the gem’s provenance, authenticity, and history.90 III. ANALYSIS
A. Arguments Supporting Step-Up Basis Are No Longer Sound
The debate surrounding the Tax Reform Act of 1976 and subsequent repeal of carryover basis focused on two main arguments supporting step-up basis that are no longer sound in 2020. The first argument was that using carryover basis results in double taxation if the estate is also subject to the estate tax. However, changes in estate tax law over the past few decades have rendered double taxation an unnecessary worry for all but the largest estates.91 As previously discussed, less than one out of every thousand estates are currently subject to the estate tax because the estate tax exemption was at $11.40 million per person for 2019.92 Therefore, double taxation concerns only exist for those estates subject to the estate tax, which is a very small percentage of the existing population. If Congress wishes to eliminate double taxation, it could change the law so that inherited assets not part of taxable estates would use carryover basis and inherited assets part of taxable estates would use step-up basis, similar to the 2010 temporary basis law. However, it may be difficult for an heir to know if the decedent’s estate was taxed, so it may be easier to simply use carryover basis for all inherited assets in the interest of administrative convenience. Further, keeping step-up in basis will result in many appreciated
87 Zohar Elhanani, How Blockchain Changed the Art World in 2018, FORBES (Dec. 17, 2018), https://www.forbes.com/sites/zoharelhanani/2018/12/17/how- blockchain-changed-the-art-world-in-2018/#17b4aa263074. 88 Id. 89 Zandi Shabalala, De Beers Tracks Diamonds Through Supply Chain Using Blockchain, REUTERS (May 10, 2018, 6:44 AM), https://www.reuters.com/article/us- anglo-debeers-blockchain/de-beers-tracks-diamonds-through-supply-chain-using- blockchain-idUSKBN1IB1CY. 90 See TRACR, https://www.tracr.com (last visited Oct. 20, 2019). 91 Hoffman, supra note 26, at 439. 92 Rev. Proc. 2018-57, 2018-49 I.R.B. 827, 835. 2020 NEW KIDS ON THE BLOCKCHAIN 239
assets going untaxed. Unrealized capital gains are a significant portion of large estates, ranging from 32% for estates worth $5-10 million, up to 55% for estates worth more than $100 million.93 The government is estimated to forgo approximately $105 billion in tax revenue over the next 10 years due to step-up basis rules.94 The second argument lobbied against the 1976 carryover basis law was that determining the decedent’s basis in the inherited asset is extremely difficult.95 However, current technology permits much easier basis tracking. Blockchain is one technology that could make basis tracking much simpler and more trustworthy. The following section will discuss examples of how blockchain could track the basis of certain assets. Another argument against carryover basis arises in determining the outcome if the taxpayer cannot determine or prove what the decedent’s basis was at death. One option is simply to give the taxpayer a basis of $0 in the inherited asset; however, this would likely result in harsh tax consequences because a taxpayer could have a much larger taxable gain than expected. One way to mitigate the issue of being unable to ascertain carryover basis is to institute a similar policy that the 1976 Tax Reform Act titled the “Fresh Start Adjustment.”96 The Fresh Start Adjustment permitted heirs to adjust the basis of an asset with unrealized appreciation to its fair market value on December 31, 1976.97 After the basis was stepped-up on December 31, 1976, the taxpayer would be responsible for tracking the basis and the individual who eventually inherited the asset would take the asset at carryover basis.98 Congress could introduce a similar system to the Fresh Start Adjustment if it reforms step-up basis in the future. All existing assets could have their basis stepped-up on a certain date. From that date forward, heirs would use carryover basis for inherited assets. This solution would be an easy way for heirs to determine carryover basis in the absence of other records; they could simply use the fair market value on the date of the step-up adjustment.
B. How Blockchain Could Facilitate a Carryover Basis Regime
Congress should implement a carryover basis law for inherited assets because the arguments supporting step-up basis are no longer sound. Blockchain’s authentication and verification technology could
93 Policy Basics: The Federal Estate Tax, supra note 6. 94 CONG. BUDGET OFFICE, supra note 1. 95 Hoffman, supra note 26, at 448–49. 96 Tax Reform Act of 1976, Pub. L. No. 94-455, § 1023(h), 90 Stat. 1520, 1874. 97 Id. 98 Id. 240 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. facilitate a carryover basis regime by making it easier for heirs to determine carryover basis of inherited assets. However, the viability of blockchain as a solution will depend upon incentivizing parties to record their transactions on a blockchain and the availability of blockchain solutions.
1. Real Estate
Real estate is a prime example of how blockchain could facilitate a carryover basis regime, primarily due to recording statutes. Although buyers and sellers may not have many incentives to record transactions on blockchain, recording statutes require recordation of real property transactions.99 If counties begin recording real property transactions on the blockchain as some counties already have,100 buyers and sellers will be forced to have their transactions recorded on blockchain. Further, if Congress decides to adopt a carryover basis regime, it would incentivize individuals to record their deeds on blockchain or would encourage county recorders to implement blockchain recording. Blockchain recording would make it easier for heirs to ascertain their carryover basis in inherited property. A deed recorded on blockchain would be a digital version of the deed indicating the parties, parcel, price, and any other important information.101 The deed is often simply a traditional paper copy of the deed with a QR code linking it to a blockchain.102 An heir of real property could simply look to the price recorded on blockchain in the prior transfer to ascertain the carryover basis in the property. While this method may not reveal the decedent’s exact basis, since the purchase price would likely not reflect any improvements or changes to the property, it is a starting point and better than receiving no basis in the property. Further, the heir can trust the price previously recorded on blockchain because blockchain users authenticated and verified the price when the transaction was originally recorded. One major concern surrounding the implementation of real estate recording on blockchain is the initial input of data into blockchain.103 The county recorder’s office will likely perform or manage the initial input of data. The initial importation of blockchain data must be error-free because errors can be difficult to reverse once
99 66 AM. JUR. 2d Records and Recording Laws § 40 (2019). 100 Compton & Schottenstein, supra note 77, at 3. 101 See Here’s What a Blockchain Property Deed Looks Like, GOV’T TECH. (Apr. 16, 2018), https://www.govtech.com/biz/Heres-What-a-Blockchain-Property-Deed- Looks-Like.html. 102 Id. 103 See Compton & Schottenstein, supra note 77, at 3–4. 2020 NEW KIDS ON THE BLOCKCHAIN 241
added to blockchain.104 However, clerical errors can be solved by allowing certain blockchain users, such as the recorder, the ability to rewrite transactions using a “secret key.”105 The ability to rewrite transactions on blockchain is extremely powerful, and there must be sufficient oversight to prevent fraud or corruption.106 Once the county recorder performs an accurate, initial import of every parcel in a county to blockchain, users should trust the current and future information because fraud or corruption of the property records would be impossible without a “secret key.”
2. Financial Securities
Financial securities, such as stocks and bonds, could also be recorded on blockchain to maintain record of ownership and the purchase or sale amount. Similar to a bitcoin transaction, a blockchain transaction for a stock or bond could consist of (1) an input of the previous owner of the stock, (2) the number and stock certificates being traded, (3) the dollar amount of the transaction, and (4) an output showing the new owner of the stock.107 In August 2017, Delaware began allowing corporations to maintain shareholder lists using blockchain technology, replacing the old and inefficient system that relied on the Depository Trust Company.108 Using blockchain technology to maintain shareholder records allows corporations to easily determine who all of the current shareholders are, as well as any historical shareholders.109 A blockchain, similar to the ones used for Delaware corporate stock ledgers, could be used to easily determine carryover basis when an individual inherits common stock or other publicly traded securities. Unlike real estate transactions, financial security transfers are not
104 Id. 105 Gideon Greenspan, The Blockchain Immutability Myth, MULTICHAIN (May 4, 2017), https://www.multichain.com/blog/2017/05/blockchain-immutability-myth/. 106 See generally id. (explaining the power that comes with rewriting transactions on blockchain and how the power can be abused). 107 See Reade Ryan & Mayme Donohue, Securities on Blockchain, 73 BUS. LAW. 85, 98–100 (2017). 108 David Dinkins, Delaware Approves Tracking of Stock Ownership on Blockchain, Major Effects, COINTELEGRAPH (Sept. 20, 2017), https://cointelegraph. com/news/delaware-approves-tracking-of-stock-ownership-on-blockchain-major- effects. 109 Id. 242 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. required to be recorded by statute.110 However, there are many incentives for shareholders to record their ownership on a blockchain. First, shareholders should record their stock ownership on blockchain to make it easy for their heirs to determine their carryover basis. Stock or other securities held for long periods of time or by different custodians frequently show unknown basis on brokerage statements because the IRS only began requiring custodians to report cost basis in 2011.111 Second, blockchain recordation ensures that corporations are aware of correct ownership for dividends and other shareholder events. Corporations often have a difficult time determining all of the current shareholders.112 For example, Dole Food Company was taken private in 2013 at a price of $2.74 per share.113 Shareholders submitted claims for payment for over 49 million shares; however, Dole only issued 36.7 million shares.114 Blockchain recording could have prevented the issue of determining the correct shareholders, and it could have also streamlined payment for current shareholders.
3. Artwork & Gemstones
Artwork and gemstones are also excellent candidates for blockchain recording because they are unique.115 Similar to a bitcoin, stock, or bond transaction, a blockchain transaction for artwork or gemstones could consist of (1) an input of the artwork or gemstone’s previous owner, (2) the date the transaction occurs, (3) the dollar amount of the transaction, and (4) an output showing the artwork or gemstone’s new owner.116 Major companies in the art and gemstone industries are beginning to use blockchain.117 Last year, the auction house, Christie’s, became the first major auctioneer to begin using blockchain to record art
110 See Pete Chandler, Tax Time Topics: Cost Basis, What You Need to Know, FINRA (Mar. 22, 2018), https://www.finra.org/investors/insights/tax-time-topics- cost-basis-what-you-need-know. 111 Id. 112 Dinkins, supra note 108. 113 Id. 114 Id. 115 Aaron Ricadela, Blockchain Records Are Forever In Opaque Diamond Market, FORBES (July 12, 2019, 5:00 AM), https://www.forbes.com/sites/oracle/2019/ 07/12/blockchain-records-are-forever-in-opaque-diamond-market/#15dee20e270b. 116 See id. 117 Henri Neuendorf, Christie’s Will Become the First Major Auction House to Use Blockchain in a Sale, ARTNET NEWS (Oct. 12, 2018), https://news.artnet.com/ market/christies-artory-blockchain-pilot-1370788. 2020 NEW KIDS ON THE BLOCKCHAIN 243
sales.118 On Christie’s blockchain, Artory, potential buyers can view the entire transaction history of the art set for auction.119 Sellers can register their art on the Artory blockchain, which gives them a greater chance of selling their art because buyers want to be confident in the provenance of the art they are buying.120 In the gemstone industry, DeBeers’ blockchain solution, Tracr, assures diamond buyers of the gem’s provenance, authenticity, and history.121 Christie’s and DeBeers’ blockchain solutions are a good start to tracking unique valuables and could also facilitate a carryover basis regime. As described above, a possible entry on an artwork or gemstone blockchain could include the previous owner, the new owner, the date of the transaction, and the amount. The blockchain could also include the intended heir of the valuable. This data stored in blockchain would contain the necessary information an heir would need to ascertain their carryover basis in the valuable.
C. Business Impact of Using Blockchain to Reform Step-Up Basis
1. Economic Efficiency
As mentioned previously, step-up basis can lead to a lock-in effect where property owners choose to retain underperforming assets rather than selling and paying taxes on the appreciation.122 Step-up basis also discourages taxpayers from reinvesting capital gains earnings into more profitable areas of the economy.123 Carryover basis would minimize the lock-in effect because there would not be a significant tax difference between the decedent selling the asset before their death or the heir selling the asset. Upon death of the decedent, the heir would take the asset at carryover basis, similar to if the decedent had made an inter vivos gift of the asset during their lifetime. A tax difference could arise if the heir is in a lower tax bracket than the decedent; however, the tax difference would likely not be too significant. Although the heir may be in a lower tax bracket and pay less taxes than the decedent on the asset, the government would prefer some tax revenue over the current step-up basis regime where the asset completely escapes taxation.124
118 Id. 119 Id. 120 Id. 121 TRACR, supra note 90. 122 Hoffman, supra note 26, at 440. 123 Eastman, supra note 38. 124 Taylor LaJoie & Huaqun Li, Analysis of the Economic, Revenue, and Distributional Effects of Repealing Step-up in Basis, TAX FOUND. (Feb. 24, 2020), 244 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
If Congress adopts a carryover basis regime, economic efficiency would increase because taxpayers would no longer have an incentive to retain underperforming assets, as there would be no tax benefit to owning appreciated assets at death. Under a carryover basis regime, taxpayers should be more willing to sell underperforming assets during their lifetime and reinvest the capital from the sale in more productive assets or areas of the economy. This willingness to sell underperforming assets will benefit businesses in general because there should be more investment capital available to them that would otherwise be tied up in underperforming assets. Further, intermediaries such as banks and brokers will benefit from a likely increase in transactions because taxpayers would no longer feel “locked-in” to their investments. Blockchain will further increase economic efficiency because of the technology’s ability to track basis and facilitate transfers to heirs efficiently upon death of the decedent.
2. Efficient Transfer of Assets Upon Death
Implementing a carryover basis regime using blockchain would also create efficiencies in transferring the decedent’s assets upon death. Blockchain would create less work for fiduciaries, fewer valuation issues, and fewer IRS audits. Blockchain would create less work for fiduciaries and executors of estates because the executor could transfer the asset’s ownership to the heir or intended beneficiary recorded on the blockchain. Blockchain could also shorten probate by quickly validating the decedent’s assets, the intended beneficiaries, and the decedent’s basis in the assets. A carryover basis regime would create fewer valuation issues for inherited assets because the heir would use the decedent’s carryover basis. Blockchain would contain the decedent’s basis in the asset, or at the minimum, the purchase price of the asset. The heir could then easily determine their carryover basis in the asset, which is the same as the decedent’s basis. Currently, many valuation issues arise when a taxpayer dies because the heir receives a step-up basis equal to fair market value.125 Determining fair market value is often difficult and time-consuming, especially for hard-to-value assets such as business interests and artwork.126 The current step-up basis regime results in regular work for
https://taxfoundation.org/analysis-economic-revenue-distributional-effects- repealing-step-basis/. 125 I.R.C. § 1014(a)(1) (2018). 126 Alan Breus, Valuing Art for Tax Purposes, J. OF ACCT. (July 1, 2010), https://www.journalof accountancy.com/issues/2010/jul/20092096.html. 2020 NEW KIDS ON THE BLOCKCHAIN 245
attorneys, appraisers, and CPAs to appropriately value the inherited assets.127 A carryover basis regime using blockchain would eliminate much of the valuation work because it would no longer be necessary to determine the fair market value of an asset. However, if any basis adjustments occurred during the decedent’s lifetime that blockchain did not capture, attorneys, appraisers, and CPAs would still need to do some valuation work to determine the correct basis. Finally, a carryover basis regime could also result in fewer IRS audits for heirs. Third parties are unable to corrupt or fraudulently change basis tracked in blockchain.128 Assuming the decedent’s basis was correctly entered into blockchain, the IRS should trust the basis without needing to audit the heir to verify basis. While there is a risk the recorder could have entered the decedent’s basis incorrectly, the heir could still rebut or verify the recorder’s records with additional documentation. Further, the heir could have the recorder fix a clerical error if discovered.129 Additionally, a carryover basis regime would eliminate many of the IRS audits that heirs are subject to because determining fair market value would no longer be necessary. Calculating fair market value can be subjective and subject to IRS scrutiny, while carryover basis is more straightforward and easier to prove.130
3. Increased Demand for Blockchain Solutions
Increased demand for blockchain solutions would likely result if Congress implements a carryover basis regime for inherited assets. As previously discussed, blockchain would be an excellent solution to track the basis of assets and facilitate the transfer of assets to an heir upon the death of the decedent. Many companies are already creating blockchain solutions related to cryptocurrencies,131 real estate,132 artwork,133 and gemstones.134 The growing popularity of blockchain is already spurring significant investment in blockchain technology.135 In 2020, experts expect
127 Id. 128 Ross Mauri, Blockchain for fraud prevention: Industry use cases, IBM (July 12, 2017), https://www.ibm.com/blogs/blockchain/2017/07/blockchain-for-fraud- prevention-industry-use-cases/. 129 Greenspan, supra note 105. 130 See I.R.S. Publication 561 (Feb. 2020). 131 See Cryptocurrency List, supra note 74. 132 See PROPY, https://propy.com/browse/ (last visited Nov. 22, 2019). 133 VERISART, supra note 84. 134 TRACR, supra note 90. 135 See Christo Petrov, Blockchain Statistics: Understand Blockchain in 2020, 246 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. spending on blockchain solutions in the United States to reach $4.2 billion.136 Additionally, 90% of government agencies and organizations have plans to invest in blockchain technology, while 90% of banks are planning to implement blockchain solutions.137 A government mandate that heirs must use carryover basis would provide further incentive for businesses to invest in blockchain technology as nearly every United States citizen would benefit from such a solution. Many businesses are already investing in blockchain because they see the potential to save money or improve their operations.138 These businesses, including banks or other financial service companies, could create blockchain solutions to track the basis of assets for individuals. A government mandate to use carryover basis would incentivize banks to offer blockchain recording as a service to their current clients, while other businesses may be able to entice individuals to pay for recording on the blockchain. In 2018, Vermont was the first state to mandate blockchain recording for public records.139 Vermont chose Propy, a real estate blockchain solution company, to create the state’s blockchain recording system.140 Vermont’s public-private partnership with Propy is an example of how governments can partner with private companies to spur innovative blockchain solutions.
4. Disparate Impact on Low-Income Individuals
Although adopting a carryover basis regime would likely result in increased tax revenues and spur business investment in blockchain solutions, a carryover basis regime would likely have a disparate impact on low-income individuals. Many wealthy taxpayers can lessen or even eliminate their estate tax bills because they can hire sophisticated tax planning advisors.141 Under a carryover basis regime, low-income or even middle-class individuals might incur a significant tax bill when they inherit and sell appreciated assets, a situation wealthy taxpayers may be able to avoid through tax planning. Further, wealthy taxpayers are more likely to use new technology, such as blockchain, to record
TECHJURY, https://techjury .net/blog/blockchain-statistics#gref (last updated Mar. 9, 2019). 136 Id. 137 Id. 138 Id. 139 New Blockchain Law Passed in Vermont Following Propy’s Successful Title Registry Project, BUS. WIRE (Aug. 28, 2018, 6:55 AM), https://www. businesswire.com/news/home/20180828005249/en/New-Blockchain-Law-Passed- Vermont-Propy’s-Successful. 140 Id. 141 Policy Basics: The Federal Estate Tax, supra note 6. 2020 NEW KIDS ON THE BLOCKCHAIN 247
their assets while lower-income individuals will likely be slower to adopt, due to the high cost of new technology. Despite the potential disparate impact on low-income individuals, there are a number of ways the government could mitigate this issue. First, Congress could permit step-up basis for heirs under a certain income threshold. For instance, Congress could draft a law permitting individuals to use step-up basis for an inherited asset if their adjusted gross income is less than $40,000. This type of law would benefit low- income taxpayers who inherit assets. However, as with any tax law that sets a threshold, such a law could create disincentives to earn more income if an individual has already inherited appreciated property or is expecting to inherit appreciated property during the tax year. Another option is for the federal government to create a blockchain registry and provide free blockchain recording to all individuals or only low-income individuals. This solution would alleviate the cost of blockchain recording and make useful technology accessible to all income levels. However, a government-created blockchain registry would likely entail significant government spending and be developed slower than a private-industry blockchain solution. Further, a government or corporate-managed blockchain would likely require an agency to verify the initial recording on the blockchain is correct.142 The agency would verify that the individual has proper title and would also be responsible for reversing any fraud.143 Although this process requires government agencies to continue verifying titles like they currently do, experts believe a blockchain system would be less expensive than the current title transfer systems in place.144 The government could also pay private-sector companies to create a blockchain solution. Vermont has already entered a public-private partnership with Propy to record the state’s public records.145 Vermont’s partnership with Propy is an example of how the federal government could partner with private-sector blockchain businesses, although it would be on much larger scale. The U.S. government already has a platform, Challenge.gov, in which it incentivizes the public to assist government agencies in solving problems.146 The U.S. government could utilize Challenge.gov to help develop blockchain solutions that would be available to all U.S. citizens. Further, this method would also stimulate private industry to develop a blockchain
142 SWANSON, supra note 71, at 51. 143 Id. 144 Id. 145 New Blockchain Law Passed in Vermont Following Propy’s Successful Title Registry Project, supra note 139. 146 See CHALLENGE.GOV, https://www.challenge.gov (last visited Oct. 20, 2019). 248 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. solution because the government would award prize money or potentially license the technology from the winning business.
IV. CONCLUSION
The arguments supporting step-up basis for inherited assets are no longer sound. Since fewer than one estate out of every thousand is subject to the estate tax,147 concerns about double taxation are minimal. Further, current technology permits easy tracking of the decedent’s basis. One technology that could facilitate a carryover basis regime is blockchain. Blockchain is an ideal technology to facilitate a carryover basis regime because it is a “trustless” technology utilizing decentralized ledgers.148 Information recorded on blockchain is extremely reliable because it is very difficult to corrupt or overwrite.149 Currently, blockchain tracks certain real estate transfers, financial securities, artwork, and gemstones.150 These existing blockchains or new blockchains could also track the basis of other assets that will eventually be inherited. Using blockchain to facilitate a carryover basis regime would result in increased economic efficiency, more efficient transfers of assets upon death, and increased demand for blockchain solutions. A carryover basis regime would reduce the lock-in effect, leading to economic growth and investment in the most productive areas of the economy. Blockchain would also facilitate efficient transfers of assets upon death under a carryover basis regime because it reduces the amount of valuation work that CPAs, attorneys, and the IRS must perform. However, the viability of blockchain as a solution depends upon incentivizing parties to record their transactions on blockchain and the availability of blockchain solutions. If Congress enacts a carryover basis regime, the new law would incentivize many individuals to record their assets on blockchain to make carryover basis easy to ascertain for their heirs. Further, a carryover basis regime would provide incentives for businesses to invest in blockchain technology since nearly every United States citizen would benefit from such a solution. Inequality regarding the basis of inherited and gifted assets has existed in the tax code for years, costing the government billions of dollars.151 Congress should enact a carryover basis regime and use the tools of the 21st century to facilitate the use of carryover basis.
147 Policy Basics: The Federal Estate Tax, supra note 6. 148 Kiviat, supra note 7, at 574. 149 Id. at 577-80. 150 See supra notes 76-89 and accompanying text. 151 CONG. BUDGET OFFICE, supra note 1. 2020 NEW KIDS ON THE BLOCKCHAIN 249
Blockchain is the ideal technology to facilitate a carryover basis regime because it is trustworthy and efficient. A carryover basis regime utilizing blockchain would be fair and efficient, and it would spur economic growth. WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW
VOLUME 20 SUMMER 2020 NUMBER 3
THE PORTAL TO INTERMEDIARY LIABILITY: MERGING SECONDARY LIABILITY WITH EQUITY AND PRIVATE INTERNATIONAL LAW
Patrick Lin†
ABSTRACT ...... 252 I. INTRODUCTION ...... 252 II. THE NEED FOR A NEW DOCTRINE ON INTERMEDIARY LIABILITY ...... 254 III. THE NEW DOCTRINE ...... 257 A. AN EQUITABLE PEDIGREE ...... 257 B. THE PORTAL QUESTION ...... 257 C. DISCRETIONARY FACTOR: IS THERE PARTICULARIZATION? ...... 258 IV. EXPLAINING THE EQUITABLE BASIS OF THE PORTAL QUESTION ...... 258 A. GROKSTER ...... 259 B. AEREO ...... 261 V. PARTICULARIZATION: BORROWING FROM PRIVATE INTERNATIONAL LAW ...... 262 A. A PRIVATE INTERNATIONAL LAW PEDIGREE ...... 262 B. WHY “PARTICULARIZATION” IS APPROPRIATE ... 263
† © 2020 Patrick Lin, B.A., Williams College (2013); J.D., Sydney University (2017), LL.M., Columbia University (2020). From 2017 to 2019, the author practiced in civil litigation, specializing in contested wills and estates, at an Australian law firm. In late 2019, he began studying for the LL.M. at Columbia University and graduated in 2020 as a Harlan Fiske Stone Scholar. The author thanks Hillel Parness, Lecturer in Law, Kernochan Center for Law, Media and the Arts at Columbia Law School, from whose seminar this paper arose. The author is grateful to the editorial team of the Wake Forest Journal of Business and Intellectual Property for preparing this article for publication. Thanks also to Hideaki Kuwahara and Yueyi Chen for comments on previous drafts of this paper. Any mistakes are the author’s. 2020 THE PORTAL TO INTERMEDIARY 251 LIABILITY
VI. TESTING THE DOCTRINE AND EXPOSING COUNTERARGUMENTS ...... 265 A. M.A. V. VILLAGE VOICE MEDIA ...... 265 B. GOOGLE V. EQUUSTEK ...... 268 VII. COUNTERARGUMENTS ...... 270 A. EQUITY’S AMBIGUITY ...... 270 B. PARTICULARIZATION’S LIMITS ...... 271 VIII. REJOINDER AND CONCLUSION: EQUITY’S CONTINUING ROLE IN THE FUTURE ...... 273
252 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
ABSTRACT
The idea that mere conduits of information should generally not be held responsible for the information they carry appears sensible. Accordingly, Safe Harbors immunize intermediaries from liability arising out of content posted by its users. Yet practice suggests that governments often hold intermediaries responsible, if not liable, for such content.
This article begins from the premise that, for law to keep its vitality and relevance, it should harmonize with global practice and public policy in a manner that gives deference to legal precedent. I propose a new doctrine which acts as a threshold question—a “portal”—to the applicability of the Safe Harbors. The portal question first asks whether granting Safe Harbor protection would be “unconscionable” under all circumstances. This question is buttressed by a second, discretionary question, which asks whether the content was “particularized” to an individual. I suggest that particularized content carries more of a private character and weighs in favor of applying the Safe Harbors, while non- particularized content generally carries more of a public character and weighs against applying the Safe Harbors.
This new doctrine gives courts an additional device to tackle the challenging and ever-evolving issues of the internet, such as where intermediaries deliberately turn a blind eye to content that corrupts community expectations of justice or where intermediaries adopt a technological architecture that inappropriately circumvents the law.
I. INTRODUCTION Some principles lie dormant and operate silently but influentially.1 Judging by the court’s silence on terms such as “equity” and “unconscionability” in MGM Studios, Inc. v. Grokster, Ltd. (“Grokster”),2 one might never consider how greatly those concepts had influenced the court. Similarly, considering the majority’s silence on “volitional conduct” in ABC., Inc. v Aereo, Inc. (“Aereo”),3 one might initially think that the majority did not contemplate its existence. Yet Aereo arguably ousts the operation of volitional conduct in direct copyright infringement,4 thus partially overruling Cartoon Network,
1 See generally MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936–37 (2005). 2 See id. 3 See generally ABC, Inc. v. Aereo, Inc., 573 U.S. 431, 451 (2014). 4 Kyle A. Brown, Comment, Up in the Aereo: Did the Supreme Court Just Eliminate the Volitional Conduct Requirement for Direct Copyright Infringement, 46 SETON HALL L. REV. 243, 245 (2015). 2020 THE PORTAL TO INTERMEDIARY 253 LIABILITY
LP, LLLP v. CSC Holdings, Inc (“Cartoon Network”).5 Drawing on equity’s influential, but often silent, operation in the application and creation of copyright doctrine, I propose a new doctrine for internet intermediary liability. Part II establishes the meaning of “internet intermediary” and explains why a new doctrine is necessary. Part III sets forth the new doctrine. Parts IV and V together explain how the new doctrine was established. In particular, Parts IV and V draw upon the underlying presence of equity in secondary liability for copyright infringement (Part IV) and the “targeting” concept from private international law (Part V). Part VI applies the new doctrine to two recent cases in order to demonstrate how it ameliorates not only the challenging relationship between private international law and emerging technology but also the otherwise obstructive effect of US safe harbor provisions.6 However, no new design is perfect, and testing begets refinement. Accordingly, Part VII canvasses the possible counterarguments to the new doctrine. Finally, Part VIII offers a rejoinder and concludes that, despite its imperfections, this new doctrine both emphasizes equity’s underlying presence in intellectual property doctrine and demonstrates how equity can be used to conscientiously immunize internet intermediaries. Except for the brief remarks presented in Part II, I assume, as starting point for this article, the need to make contingent, or limit, the operation of section 230 of the Communications Decency Act and section 512 of the Digital Millennium Copyright Act (“CDA” and “DMCA” respectively, and together, the “Safe Harbors”). Although such topic might warrant more than the paragraphs proffered in Part II, it is neither within the scope of this article to analyze the textual nuances of, or exceptions within, the Safe Harbors nor is it appropriate to exhaustively debate whether the Safe Harbors should be limited. To the extent that equity might appear to be discussed as a distinct body of law, this article recognizes that US law merges equity and law and does not debate the merits of this unification.7 Accordingly, the arguments
5 Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 129 (2d Cir. 2008); see also Carrie Bodner, Note, Master Copies, Unique Copies and Volitional Conduct: Cartoon Network’s Implications for the Liability of Cyber Lockers, 36 COLUM. J.L. & ARTS 491, 507 (2013); Brown, supra note 4. 6 T. Randolph Beard, George S. Ford & Michael Stern, Fixing Safe Harbor: An Economic Analysis (Phoenix Center Policy Paper No. 52, 1 2017) (“[D]e minimis liability for platforms that engage in piracy promotes infringing platforms to the detriment of responsible ones”). 7 See T. LEIGH ANENSON, JUDGING EQUITY: THE FUSION OF UNCLEAN HANDS IN US LAW 30 (2018) (addressing the decline of equity as a distinct discipline in the US). The “fusion fallacy” position argues against the substantive fusion of equity and law. Id. Whereas in some jurisdictions, such as New South Wales, Australia, equity remains distinct, in the US, it does not. Id. Equity in the US is most often discussed in 254 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. advanced here may be appreciated independent of any “fusion debate” and should be palatable to any reader, whether her predilection favors the distinctiveness or fusion of equity and law.8
II. THE NEED FOR A NEW DOCTRINE ON INTERMEDIARY LIABILITY
Internet intermediaries are companies that facilitate the use of, and activity over, the internet.9 Examples include internet service providers, network operators, e-commerce websites, social media platforms, and search engines.10 The Safe Harbors effectively immunize US-based intermediaries from liability for user-generated content.11 Section 230 of the CDA delivers a bright-line rule that immunizes intermediaries, such as internet service providers, from liability for the content of its third-party users: “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”12 While section 230 of the CDA had defamation law in mind,13 section 512 of the DMCA operates in the copyright context.14 In summary, section 512 allows an internet-service provider to avoid secondary liability—vicarious or contributory infringement—for conduct falling within the categories of transitory digital network communications, system caching, information residing on systems or networks at direction of users, and information location tools.15 Section
the context of remedies. Id. After the merger of equity and law, “law schools transitioned from teaching a course in equity to a course in remedies comprising both law and equity. Id. As a result, a considerable amount of equitable principles were lost in the transition” Id. 8 See Simon Chesterman, Beyond Fusion Fallacy: The Transformation of Equity and Derrida’s ‘The Force of Law’, 24 J.L. AND SOC’Y 350, 351–55 (1997); see also Julie Maxton, Some Effects of the Intermingling of Common Law and Equity, 5 CANTERBURY L. REV. 299, 310 (1993); see also Leonard I Rotman, The “Fusion” of Law and Equity?: A Canadian Perspective on the Substantive, Jurisdictional, or Non- Fusion of Legal and Equitable Matters, 2 CJCCL 497–536 (2016); 9 OECD, The Economic and Social Role of Internet Intermediaries 9 (Apr. 2010), https://www.oecd.org/internet/ieconomy/44949023.pdf. 10 Rebecca MacKinnon et al., Fostering Freedom Online: The Role of Internet Intermediaries 7 (2014), http://repository.upenn.edu/cgcs_publications/21. 11 See, e.g. Zeran v. America Online, Inc., 129 F.3d 327, 330 (4th Cir. 1997). 12 47 U.S.C. § 230(c)(1). 13 Note, Section 230 as First Amendment Rule, 131 HARV. L. REV. 2027, 2030 (2018). 14 17 U.S.C. § 512 (2020). 15 Id. 2020 THE PORTAL TO INTERMEDIARY 255 LIABILITY
512 will only apply if the internet service provider satisfies certain conditions, including a takedown procedure.16 Notwithstanding the existence of the Safe Harbors, immunity does not necessarily reflect contemporary global practice.17 In 2005, Chinese journalist Shi Tao used a Yahoo email account to send records of a Communist Party meeting during which Chinese authorities discussed ways of dealing with the anniversary of Tiananmen Square.18 Yahoo disclosed Shi Tao’s identity to the Chinese Communist Party, which led to his ten-year prison sentence, of which he ultimately served eight and a half.19 Jerry Yang, the then CEO of Yahoo stated, “we have to comply with local law.”20 Yet only five years earlier, Jerry Yang vehemently sought to defy a French court’s imposition of intermediary liability for the sale of Nazi memorabilia by internet auction on Yahoo.21 In the US, lawsuits have successfully challenged the applicability of the Safe Harbors. For example, in BMG Rights Management (US) LLC v. Cox Communications Inc.,22 a 2018 Fourth Circuit case, BMG Rights, a music publishing company, sued Cox Communications, an internet service provider, for copyright infringement of over one-thousand musical compositions.23 Cox Communications (“Cox”) provided high- speed internet to some 4.5 million subscribers, some of whom used that service to download copyrighted material.24 Cox sought to rely on the Safe Harbors (specifically, the DMCA), but was still found liable for contributory infringement.25 In affirming the lower court’s denial of
16 17 U.S.C. § 512(a), (b)(1), (c)(1), (d). 17 See generally Niva Elkin-Koren & Eldar Haber, Governance by Proxy: Cyber Challenges to Civil Liberties, 82 BROOK. L. REV. 105, 122 (2016) (arguing that governments use online intermediaries as a sort of proxy for enacting policies regarding the use of information). 18 JACK GOLDSMITH & TIM WU, WHO CONTROLS THE INTERNET: ILLUSIONS OF A BORDERLESS WORLD 10 (2006); see also Shi Tao, China frees journalist jailed over Yahoo emails, THE GUARDIAN (Sept. 8, 2013), https://www.theguardian.com/world/ 2013/sep/08/shi-tao-china-frees-yahoo. 19 Id.; see also Joseph Kahn, Yahoo Helps Chinese to Prosecute Journalist, N.Y. TIMES (Sept. 8, 2005), https://www.nytimes.com/2005/09/08/business/worldbusiness/ yahoo-helped-chinese-to-prosecute-journalist.html. 20 Id.; see also Bill Savadove, We must obey law, Yahoo! chief says after man jailed, SOUTH CHINA MORNING POST, (Sept. 11, 2005). 21 Id. at 5; see generally Yahoo! Inc. v. La Ligue Contre Le Racisme Et L’Antisemitisme, 433 F.3d 1199, 1202 (9th Cir. 2006). 22 BMG Rights Mgmt. (US) L.L.C. v. Cox Comm., Inc., 881 F.3d 293, 298 (4th Cir. 2018). 23 Id. 24 Id. 25 CHRISTIAN M. DIPPON, ECONOMIC VALUE OF INTERNET INTERMEDIARIES AND THE ROLE OF LIABILITY PROTECTIONS 5 (2017), https://internetassociation.org/wp- content/uploads/2017/06/Economic-Value-of-Internet-Intermediaries-the-Role-of- Liability-Protections.pdf 256 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
CDA protection, the Fourth Circuit questioned whether Cox seriously implemented its repeat infringer policy at all.26 Similar trends persist in the EU.27 In May 2014, the Court of Justice of the European Union (“CJEU”) found that individuals have the right, under certain conditions, to ask search engines to remove links with personal information about them.28 This is known as the “Right to be Forgotten” decision.29 More recently, in October 2019, the CJEU in Eva Glawischning Piesczek v. Facebook Ireland Ltd. interpreted Article 15 of the EU’s e- commerce directive30 as not precluding the option of an EU member state to order a “host provider” to remove content declared to be unlawful by that member state (Austria), even if such order would have the effect of a worldwide injunction.31 Enforcement not only occurs through the extraterritorial application of foreign laws but also through self-regulation between intermediaries.32 Content removal usually occurs when the impugned third-party content is obviously repugnant to public policy.33 For example, in 2017, Cloudflare34 withdrew its distributed denial-of-service35 protection mechanisms previously provided to The Daily Stormer,36 a US neo-Nazi commentary and message board website. Similarly, in 2018, Apple withdrew Tumblr37
26 BMG Rights Mgmt. (US) LLC, 881 F.3d at 300 (finding that Cox did not implement its liberal 13-strike policy and noting that Cox Communications must have adopted and reasonably implemented … a policy that provides for the termination in appropriate circumstances of subscribers … who are repeat infringers). 27 The Right to Be Forgotten (Google v. Spain), ELECTRONIC PRIVACY INFORMATION CENTER (June 15, 2020), https://epic.org/privacy/right-to-be- forgotten/. 28 Id. 29 Id. 30 Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000, art. 15(1). 31 Case C-18/18, Eva Glawischnig-Piesczek v. Facebook Ireland Ltd., 2019 E.C.L.I. 458. 32 Adi Robertson, Why Banning Hate Sites is so Hard, THE VERGE (Aug. 6, 2019), https://www.theverge.com/2019/8/6/20757267/8chan-offline-hate-sites-internet- problems-el-paso-texas-dayton-ohio-cloudflare. 33 Id. 34 So what is Cloudflare, CLOUDFLARE, https://www.cloudflare.com/learning/ what-is-cloudflare/ (last visited June 28, 2020). 35 Michelle Castillo, Cloudfare CEO admits that removing neo-Nazi site because he’s in a ‘bad mood’ is a slippery slope, CNBC (Aug. 17, 2017), https://www.cnbc. com/2017/08/17/cloudflare-ceo-says-removing-the-daily-stormer-is-slippery- slope.html. 36 Steven Johnson, Why Cloudflare Let an Extremist Stronghold Burn, WIRED (Jan. 16, 2018), https://wired.com/story/free-speech-issue-cloudflare/. 37 About, Tumblr, https://www.tumblr.com/about (last visited June 28, 2020). 2020 THE PORTAL TO INTERMEDIARY 257 LIABILITY from its “App Store” because of the existence of child pornography on Tumblr.38 The above examples highlight how, Safe Harbors notwithstanding, intermediaries are increasingly assuming the role of nation-state law enforcers, whether by operation of law, extraterritorial court order, or self-regulation.39 The need for legal innovation, therefore, is premised on the belief that, for law to keep its vitality and relevance, it should harmonize with global practice and public policy in a manner that gives deference to legal precedent.40
III. THE NEW DOCTRINE
A. An Equitable Pedigree
The new doctrine evokes fundamental fairness and flexibility from equity. By equity, I refer to the once distinct laws stemming from the Chancery Court which tempered the harshness of black-letter law.41 Unconscionability is the fundamental and unifying principle by which equity acts.42 Here, unconscionability means conduct so obviously unjust, repugnant, or overwhelmingly one-sided so as to render an unfair result that offends our basic notions of justice and morality.43 The proposed doctrine contains one threshold question (the “portal”) that determines whether the Safe Harbors should apply.
B. The Portal Question
Prior to granting an internet intermediary immunity under the Safe Harbors for user-generated content, courts should first consider whether applying the Safe Harbors would, in all circumstances, be unconscionable. The court should ask: would the intermediary be
38 Alex Feerst, Your Speech, Their Rules: Meet the People Who Guard the Internet, ONEZERO (Feb. 27, 2019), https://onezero.medium.com/your-speech-their- rules-meet-the-people-who-guard-the-internet-ab58fe6b9231; see also Jon Porter, Tumblr was removed from Apple’s App Store over child pornography issues THEVERGE (Nov. 20, 2018) https://www.theverge.com/2018/11/20/18104366/tumblr- ios-app-child-pornography-removed-from-app-store. 39 Robertson, supra note 32. 40 See Randy J. Kozel, Precedent and Reliance, 62 EMORY L.J. 1459, 1461 (2013). 41 See generally P.W. Young, Clyde E Croft, Meg Smith, On Equity, (2009); J.D. Heydon, M.J. Leeming, P.G. Turner, Meagher Gummow & Lehane’s Equity: Doctrines and Remedies, (2014). 42 Waltons Stores (Interstate) Ltd v Maher (1988) 164 CLR 387, 419 (Austl.); see also Legione v Hateley (1983) 152 CLR 406, 444 (Austl.); see also Baumgartner v Baumgartner (1987) 164 CLR 137, 148 (Austl.); Mark Pawlowski, Unconscionability as a Unifying Concept in Equity, 16 DENNING L. J. 79, 79 (2001). 43 Pawlowski, supra note 41, at 80. 258 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. acting unconscionably by failing to take down the impugned content (or a similar question, adapted to the circumstances)?44 A negative answer favors the application of the Safe Harbors while an affirmative answer does not support application of the Safe Harbors. To help the court determine this “portal” question, a further discretionary factor may be considered.
C. Discretionary Factor: Is There Particularization?
Particularization means that the impugned third-party content targets, or has its most substantial effects on, a particular person or entity.45 In answering the portal question, courts should ask whether the content is “particularized” or whether it targets the world-at-large. Examples of particularized content include defamation, cyberbullying, and the unauthorized distribution of sexual images (“revenge porn”). Examples of content with an effect on the general public include the incitement of violence or content from terrorist or otherwise criminal organizations inducing broad response. Particularized content favors the application of the Safe Harbors while non-particularized content disfavors the application of Safe Harbors. The rationale behind this “public/private” distinction of the discretionary factor is the subject of Part V.
IV. EXPLAINING THE EQUITABLE BASIS OF THE PORTAL QUESTION
Equity runs silently but influentially in the development of copyright doctrine.46 Secondary liability in copyright law often involves internet intermediaries47 and therefore offers an appropriate reservoir from which to draw dormant equitable principles. In two innovative Supreme Court cases involving intermediary liability, the Court has, without expressly stating so, appeared to draw on equitable principles to preclude the otherwise unfair and repugnant results that would stem from a textual, black-letter application of the law.48
44 Id. 45 See generally Sarah E. Pugh, Cloudy with a Chance of Abused Privacy Rights: Modifying Third-Party Fourth Amendment Standing Doctrine Post-Spokeo, 66 AM. U. L. REV. 971, 986 (2017). 46 Shyamkrishna Balganesh & Gideon Parchomovsky, Equity’s Unstated Domain: The Role of Equity in Shaping Copyright Law, 163 U. PA. L. R. 1859, 1862 (2015). 47 DIPPON, supra note 25. 48 See MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005); see ABC Inc. v. Aereo, Inc., 573 U.S. 431 (2014). 2020 THE PORTAL TO INTERMEDIARY 259 LIABILITY
A. Grokster
Grokster concerned the liability of a peer-to-peer file sharing software (“P2P”) which adopted an innovative technological structure.49 Unlike its predecessors, such as Napster50 and Aimster,51 Grokster did not have a central database server.52 Instead, Grokster allocated “supernodes”, which were randomly chosen computers that were connected to the P2P network at a certain time.53 Once allocated as a supernode, a user’s computer acted as an index server that collected information about shared files on other users’ computers.54 This system allowed one user to directly access files on another Grokster user’s hard drive without Grokster acting as an intermediary database.55 A user could simply type in a file name on her computer to initiate a search across all computers connected to the Grokster network and then download a copy of that file to her computer.56 By adopting a decentralized service and eschewing any relationship with its users once the software was downloaded, Grokster aimed to elude secondary liability for the P2P sharing of copyrighted materials.57 A straightforward, black-letter application of secondary liability principles would likely have granted Grokster success.58 In order to establish vicarious copyright infringement, a plaintiff would have to show: (i) that Grokster had a right and ability to control the distribution of files and (ii) derived a financial benefit from any copyright infringement that was occurring.59 By design, Grokster was not vicariously liable for want of any direct financial benefit and right and ability to control.60
49 See Grokster, Ltd., 545 U.S. at 919. 50 See A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1011 (9th Cir. 2001). 51 See in re Aimster Litig., 334 F.3d 643, 643 (7th Cir. 2003). 52 See Grokster, Ltd., 545 U.S. at 919–20. 53 Id. at 921. 54 Chris Sprigman, Why Grokster and Morpheus Won, Why Napster Lost, and What the Future of Peer-to-Peer File Sharing Looks Like Now, FINDLAW (May 8, 2003), https://supreme.findlaw.com/legal-commentary/why-grokster-and-morpheus- won-why-napster-lost-and-what-the-future-of-peer-to-peer-file-sharing-looks-like- now.html#bio. 55 Paul Ganley, Surviving Grokster: Innovation and the Future of Peer-to-Peer, 28 EUR. INTELL. PROP. REV. 1, 1 (2006). 56 Id. 57 See Grokster Ltd., 545 U.S. at 914. 58 JAMES BOYLE & JENNIFER JENKINS, INTELLECTUAL PROPERTY LAW & THE INFORMATION SOCIETY CASES AND MATERIALS 519–20 (1st ed. 2014). 59 See, e.g., Fonovisa v. Cherry Auction, Inc., 76 F.3d 259, 261–2 (9th Cir. 1996); Gershwin Pub. Corp. v. Columbia Artists Mgmt. Inc., 443 F.2d 1159, 1162–3 (2d Cir. 1971); Hard Rock Cafe v. Concession Serv., Inc., 955 F.2d 1143, 1150 (7th Cir. 1992). 60 Grokster, Ltd., 545 U.S. at 926. 260 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
By contrast, Napster61 and Aimster,62 similar P2Ps that were found to be infringing, had ongoing relationships with their users, which gave them the right and ability to disable their users’ accounts.63 Grokster also appeared to have sidestepped contributory liability, which requires that Grokster (i) materially contributed to and (ii) had knowledge of the copyright infringement.64 However, it did not have actual knowledge of specific acts of infringement.65 Grokster made no material contribution to users’ conduct.66 All it did was distribute software.67 When users transferred files across the Grokster client, no information was mediated through any computers controlled by Grokster.68 By all indications, Grokster had apparently escaped secondary liability.69 But the Supreme Court looked beyond technological design and focused on the fact that Grokster was invented for the overall purpose of enabling mass copying of music files and circumventing the law.70 Borrowing from patent law,71 the Supreme Court enlivened a dormant theory of third-party liability to create a new doctrine of inducement: “[o]ne infringes contributorily by intentionally inducing or encouraging direct infringement . . . and infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it.”72 The Supreme Court found Grokster’s exploiting a loophole to facilitate mass infringement to be so unconscionable, occasioning such an inequitable and unjust result on creators and copyright holders, that a new doctrine was justified.73 In attempting to wipe its hands clean after its users downloaded the Grokster software, Grokster ironically barred itself from coming to equity with clean hands. Ignorance is not bliss; the Supreme Court refused to allow software that deliberately distanced itself from possible infringing activity to benefit from a potential lacuna in the law.
61 A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1004 (9th Cir. 2001). 62 In re Aimster Copyright Litig., 334 F.3d 643, 643 (7th Cir. 2003). 63 See id. at 646–47; Napster, Inc., 239 F.3d at 1012. 64 Napster, Inc., 239 F.3d at 1019 (quoting Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971)). 65 Grokster, Ltd., 545 U.S. at 937. 66 Id. at 923–24. 67 Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264 (9th Cir. 1996) (stating that material contribution “stems from the notion that one who directly contributes to another's infringement should be held accountable”). 68 Grokster, Ltd., 545 U.S. at 919–20. 69 MGM Studios, Inc. v. Grokster, Ltd., 259 F. Supp. 2d 1029, 1046 (C.D. Cal. 2003), aff’d, 380 F.3d 1154 (2004), vacated, 545 U.S. 913 (2005). 70 Grokster, Ltd., 545 U.S. at 935. 71 Id. at 935–36. 72 Id. at 930. 73 See id. at 941. 2020 THE PORTAL TO INTERMEDIARY 261 LIABILITY
B. Aereo
In Aereo, a majority of the Supreme Court ignored an existing, well- accepted doctrine to bypass the harsh effects of the law.74 Since Religious Technology Center v. Netcom On-Line Communication Services, Inc.,75 courts have held that volitional conduct is required to maintain a claim of direct copyright infringement.76 For example, in Cartoon Network,77 the Second Circuit found that the defendant cable company, which stored television shows on its hard drives at the request of its customers, did not exercise any volitional conduct.78 Rather, it was the users who exercised volition when they pressed “record” on their home units and initiated an automatic copying process.79 Notwithstanding these precedents, the result in Aereo seemed to sidestep this position altogether.80 Aereo was a start-up that provided access to cable television by capturing and streaming over-the-air broadcasts on the internet.81 Aereo ensured its operations would fit the copyright loopholes determined by Cartoon Network.82 In short, Aereo used thousands of miniature TV antennas to pick up signals from local stations in order to deliver content to users’ smart phones, tablets, and computers.83 Aereo argued that this facilitated “one-to-one” transmissions—one antenna transmitted readily available data to one customer—and therefore was not a “public” performance.84 Its evasion efforts were so obvious that, when Aereo was eventually brought before the Second Circuit, even Circuit Judge Chin in dissent referred to Aereo as an “over-engineered” “sham” seeking to “take advantage of a perceived loophole in the law.”85
74 See ABC, Inc. v. Aereo, Inc., 573 U.S. 431, 443–44 (2014). 75 Religious Tech. Ctr. v. Netcom On-Line Commc’n Servs., Inc., 907 F. Supp. 1361, 1361 (N.D. Cal. 1995). 76 Id. at 1370. 77 Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 130 (2d Cir. 2008). 78 Id. at 130–31. 79 See id. at 131. 80 ABC, Inc. v. Aereo, Inc., 573 U.S. 431, 438, 451 (2014). 81 Id. at 435. 82 ABC, Inc. v. Aereo, Inc., 874 F. Supp. 2d 373, 395 (S.D.N.Y. 2012) (stating that “Aereo has made substantial investments of money and human capital in its system, all in reliance on the assumption that the Second Circuit meant what it said in Cablevision rather than what it did not say”), aff’d sub nom. WNET Thirteen v. Aereo, Inc., 712 F.3d 676 (2d Cir. 2013), rev’d sub nom. ABC, Inc. v. Aereo, Inc., 573 U.S. 431 (2014). 83 Aereo, Inc., 573 U.S. at 436–37. 84 Id. at 446. 85 Aereo, Inc., 712 F.3d at 697 (Chin, J., dissenting). 262 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
Perhaps the Supreme Court took notice of this dissent, because applying the volitional conduct rule would have compelled a result in favor of Aereo.86 Volitional conduct would have dictated that it was the users, not Aereo, who exercised volition when those users selected what content to watch.87 A user’s request would initiate an automated process by which the broadcast was transmitted via a dedicated antenna specific to that user.88 Ultimately, the majority did not address volitional conduct and found Aereo liable on the basis that it violated the public performance right by transmitting copyright television programs to its subscribers.89 The Court appeared to have been disinclined to endorse a technology that was designed for the specific purpose of circumventing the law and facilitating infringing activity. The Supreme Court found Aereo’s exploitation of a loophole to facilitate the dissemination of copyright programs to be so unconscionable, occasioning such prejudice on creators, the entertainment industry, paying subscribers and copyright holders, that overruling an established doctrine was justified.90
V. PARTICULARIZATION: BORROWING FROM PRIVATE INTERNATIONAL LAW
The discretionary limb of the doctrine asks whether the third-party content is targeted at, or has its substantial effect on, a specific person or entity (“particularization”). If the answer is “yes,” then a presumption arises favoring the application of the Safe Harbors. If not, then the next question is whether the content is targeted, or whether it has its substantial effect on the public-at-large. This discretionary factor finds its origin in the “targeting” test adopted in private international law for the purpose of determining personal jurisdiction.91
A. A Private International Law Pedigree
Given the borderless, aterritorial nature of the internet and the worldwide reach of intermediaries, private international law is a necessary companion to internet intermediary liability.92 Private
86 See id. at 703. 87 Id. 88 Id. 89 ABC, Inc. v. Aereo, Inc., 573 U.S. 431, 451 (2014). 90 Id. 91 Calder v. Jones, 465 U.S. 783, 788–89 (1984). 92 David R. Johnson & David Post, Law and Borders—The Rise of Law in Cyberspace, 48 STAN. L. REV. 1367, 1367 (1996). 2020 THE PORTAL TO INTERMEDIARY 263 LIABILITY international law underlies this whole inquiry; it is the mortar (procedure) to the bricks (the substantive law, including secondary liability for intermediaries).93 Particularization is based on the seminal personal jurisdiction case Calder v. Jones (“Calder”),94 which introduced the “effects” (also known as the “targeting”) test.95 Calder involved an allegedly libelous article, authored in Florida, about Jones, who resided in California.96 The article was published in a magazine that had its largest circulation in California.97 The California court asserted personal jurisdiction on the basis that California was where harm was suffered—where the “effects” were felt.98 Calder is often cited for the proposition that a forum court is capable of asserting personal jurisdiction over a non-resident defendant who commits an intentional act that expressly targets the forum state while knowing that harm is likely to be suffered in the forum state.99 The “targeting” test also appears in EU private international jurisprudence.100 In Football Dataco Ltd v. Sportradar GmbH,101 the CJEU held that a U.K. court had personal jurisdiction over a non- resident defendant (a German sports broadcasting company) because the defendant knew that its data was likely to be accessed by people in the UK.102
B. Why “Particularization” is Appropriate
Particularized content affects only one person or entity and therefore carries more of a private character, enlivening remedies specific to the wrong occasioned.103 For example, revenge porn is particularized
93 DAN JERKER B. SVANTESSON, PRIVATE INTERNATIONAL LAW AND THE INTERNET (Kluwer Law International B.V. ed., 2016) (stating that “private international law should be viewed as the mortar that surrounds the bricks”) 94 See Calder, 465 U.S. at 789. 95 Id. at 788–89. 96 Id. at 788. 97 Id. at 784. 98 Id. at 789. 99 Id. at 791. 100 E.g. Case C-173/11, Football Dataco Ltd. v. Sportradar GmbH, 2012 E.C.R. 642, https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:62011CJ01 73. 101 Id. 102 Id. at ¶ 42. The CJEU considered that the content (English and Scottish football league matches) was likely to interest U.K. audiences and that the football data was in English. Id. 103 Lujan v. Defenders of Wildlife, 504 U.S. 555, 560–61 (1992). For example, Article III standing requires a party to show, inter alia, a particularized injury—one 264 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
because it is typically disseminated by the perpetrator to harm another person.104 Allowing the Safe Harbors to operate in these circumstances is less objectionable because of the availability of alternative remedies.105 Forty-six states, the District of Columbia (“D.C.”) and one territory have laws addressing revenge porn.106 In July 2019, New York criminalized107 the unlawful dissemination or publication of an intimate image and created a private right of action,108 which provides remedies like injunctive relief, punitive damages, compensatory damages and costs and attorneys’ fees.109 Other states have looked to common law doctrines such as defamation, invasion of privacy, intentional infliction of emotional distress, defamation, libel, harassment/stalking, and misappropriation to prosecute revenge porn.110 By contrast, information that may affect the public at large attracts higher stakes111 and therefore disfavors Safe Harbor protection and favors of intervention. To the extent that intermediaries control the critical infrastructure of the internet and instantaneous everyday communications, they may be regarded as administering a public function in tandem with, or traditionally operated by, the state.112 For example, in 2018, violence among two religious sects in Sri Lanka was fueled by social media posts.113 The Sri Lankan government ordered its
which is individualized to the defendant—that is likely to be redressed by a favorable decision. Id. 104 See, e.g., People v. Mowring, 105 N.Y.S.3d 290, 295 (N.Y. Crim. Ct. 2019) (denying a motion to dismiss and upholding N.Y.C. Admin. Code § 10-180(b)(1) which prohibits the unauthorized disclosure of intimate images with intent to harm the depicted individual). 105 See infra notes 105–13 and accompanying text. 106 46 States + DC + One Territory Now Have Revenge Porn Laws, CYBER CIVIL RIGHTS INITIATIVE, https://www.cybercivilrights.org/revenge-porn-laws/ (last visited June 23, 2020). 107 S.B. 1719C, 203d Leg., Reg. Sess. (N.Y. 2019) (codified at N.Y. PENAL LAW § 245.15 (LexisNexis 2019)). 108 N.Y. PENAL LAW § 245.15. 109 Id. 110 Katherine Gabriel, Feminist Revenge: Seeking Justice For Victims of Nonconsensual Pornography Through “Revenge Porn” Reform, 44 VT. L. REV. 849, 853, 861–62, 865 (2020). 111 See infra Part VI. 112 See Manhattan Cmty. Access Corp. v. Halleck, 139 S. Ct. 1934 (2019) (holding that, under the state-action doctrine, the operation of public access television channels on a cable system does not alone transform a private entity into a state actor). In Justice Kavanaugh’s 5-4 majority opinion, he stated, “merely hosting speech by others is not a traditional, exclusive public function [reserved to the State] and does not alone transform private entities into state actors subject to First Amendment constraints.” Id. at 1930. 113 Amanda Taub & Max Fisher, Where Countries are Tinderboxes and Facebook Is a Match, N.Y. TIMES (Apr. 21, 2018), https://www.nytimes.com/2018/ 04/21/world/asia/facebook-sri-lanka-riots.html. 2020 THE PORTAL TO INTERMEDIARY 265 LIABILITY telecommunications companies (intermediaries) to temporarily block access to Facebook and other social media platforms.114 While I stop short of suggesting that intermediaries are analogous to states or even that they wholly perform a state-like function, it is undeniable that intermediaries have great influence in the global information exchange.115 Intermediaries give access to, host, transmit, and index content among users throughout the world.116 They provide infrastructure for the internet to work, such as data centers, content delivery networks, cloud computing technology, social media platforms, advertising, and e-commerce.117 Accordingly, that immense influence arguably imposes upon internet intermediaries a positive responsibility to mitigate public harm where they have the ability to so do.
VI. TESTING THE DOCTRINE AND EXPOSING COUNTERARGUMENTS
The following two cases have been chosen as case studies for testing the doctrine. The first case exemplifies how the new doctrine interacts with a human sex trafficking case, which, while having particularized effects on one person, nonetheless, due to the very subject matter, implicates a greater public concern for the preservation of human rights. The second case grapples with a choice between recognizing a foreign judgment to the detriment of the Safe Harbors or applying the Safe Harbors while appearing to shun international comity.
A. M.A. v. Village Voice Media
In M.A. v. Village Voice Media (“Village Voice”),118 Village Voice owned Backpage, which operated a website at the address Backpage.com.119 Backpage.com was a classified advertising website that had become a marketplace for buying and selling sex.120 The
114 Michael Safi & Amantha Perera, Sri Lanka blocks social media as deadly violence continues, THE GUARDIAN (Mar. 7, 2018), https://www.theguardian.com/ world/2018/mar/07/sri-lanka-blocks-social-media-as-deadly-violence-continues- buddhist-temple-anti-muslim-riots-kandy. 115 The Economic and Social Role of Internet Intermediaries, OECD 1, 6 (Apr. 2010), https://www.oecd.org/internet/ieconomy/44949023.pdf. 116 Id. 117 Id. 118 M.A. v. Vill. Voice Media Holdings, 809 F. Supp. 2d 1041 (E.D. Mo. 2011). 119 Id. at 1043. 120 Dan Whitcomb, Exclusive: Report gives glimpse into murky world of U.S. prostitution in post-Backpage era, REUTERS (Apr. 11, 2019), https://www.reuters. com/article/us-usa-prostitution-internet-exclusive/exclusive-report-gives-glimpse- into-murky-world-of-us-prostitution-in-post-backpage-era-idUSKCN1RN13E. 266 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. plaintiff, M.A., a minor, was trafficked by Latasha Jewell McFarland, who took nude photographs of M.A. and paid Backpage to incorporate these photographs into sex advertisements.121 She utilized Backpage.com in order to solicit adult male customers to whom she transported M.A. for the purposes of paid sexual encounters.122 M.A. sought to hold Backpage and Village Voice liable for aiding and abetting her trafficking and prostitution.123 M.A.’s attempts to circumvent the CDA were rejected.124 The court found that Backpage was just like any other website that posted content that led to an innocent person’s injury.125 Aiding and abetting required that Backpage would have shared the abuser’s specific intent to commit the sexual offenses, which it did not.126 M.A. argued that Backpage was in the business of shrouding illegal sex services advertisements under the veil of legality.127 Mere profit, however, was not enough to circumvent the CDA.128 According to the court, to except Backpage from CDA based on how Backpage structured its website to increase profits would be to create a for-profit exception.129 The court found that Backpage is a website operator130—it did not do more than operate a website,.131 It did not matter to the court that Backpage had different prostitution categories on its website.132 Just because an “adult” category is created does not impose liability upon Backpage for ads posted in that category.133 Backpage created the categories, but it was its users that created the content of the ads and selected the categories under which those ads would appear.134 Backpage was merely a neutral conduit for that content.135 Yet asserting liability on Backpage would not have been so groundbreaking—the Supreme Court had done so on other occasions,
121 Vill. Voice Media Holdings, 809 F. Supp. 2d at 1043. 122 Id. at 1044. 123 Id. at 1053. 124 Id. at 1048–50. 125 Id. at 1058. 126 Id. at 1054. 127 Id. at 1044. 128 Id. at 1050. 129 Id. 130 Id. at 1052. 131 Id. at 1049. 132 See id. 133 Id. 134 Id. at 1049–1050. 135 SESTA is flawed, but the debate over it is welcome, THE ECONOMIST (Sept. 23, 2017), https://www.economist.com/leaders/2017/09/23/sesta-is-flawed-but-the- debate-over-it-is-welcome. 2020 THE PORTAL TO INTERMEDIARY 267 LIABILITY such as in Grokster and Aereo—where “mere conduits” were held liable.136 Applying the new doctrine to this case, the court would ask whether it was unconscionable for Backpage to have displayed the advertisements containing photographs of the plaintiff. Backpage had been widely accused of knowingly enabling users to post advertisements relating to prostitution and human trafficking involving minors.137 It was popularly known as the largest hub for sex on the internet.138 By many indications, Backpage.com was probably set up to be a sort of internet red light district designed to make illegal activity appear legal.139 The adult section of Backpage’s website accounted for 15% of Backpage’s listings but over 90% of its profit.140 Allowing the operators of Backpage to take refuge under the CDA would have effectively allowed those who catered to sexual predators to carry on their businesses.141 It would have been easy to find that it was unconscionable for Backpage to profit off advertisements relating to the trafficking of minors. A company that derived most of its profits from such advertisements would likely have knowledge or constructive knowledge of the nature of the activities it was advertising. In the circumstances, it was arguably unconscionable for a website to exist for the predominant purpose of advertising such morally repugnant activity that also constitutes serious contravention against the human rights of girls.142 Yet a literal application of the discretionary factor would weigh in favor of applying the CDA. This case only concerns the interests of one person, M.A.143 Based on the theory outlined in Part V above, private remedies should be available to M.A. Indeed, Latasha Jewell McFarland, the woman who procured M.A. for
136 See MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005); ABC., Inc. v. Aereo, Inc., 573 U.S. 431 (2014). 137 Charlie Savage & Timothy Williams, U.S. Seizes Backpage.com, a Site Accused of Enabling Prostitution, NEW YORK TIMES (Apr. 7, 2018), https://www.nytimes.com/2018/04/07/us/politics/backpage-prostitution- classified.html. 138 Christine Biederman, Inside Backpage.com’s Vicious Battle with the Feds, WIRED (June 18, 2019), https://www.wired.com/story/inside-backpage-vicious- battle-feds/. 139 Id. 140 Id. 141 Id. 142 Convention on the Elimination of All Forms of Discrimination Against Women, Art. 6, Dec. 18, 1979, 1249 U.N.T.S. 13. 143 Michelle Goldberg, Village Voice Media: Sex Slaves in the Classified, DAILY BEAST (Apr. 24, 2017), https://www.thedailybeast.com/village-voice-media-sex- slaves-in-the-classified. 268 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. prostitution, was indicted for sex trafficking.144 Her sentence, which included five years’ penal servitude,145 involved some $16,000 in damages, including the future costs of counseling.146 Perhaps it was for this reason that M.A. sought damages against a wealthier defendant—Backpage. To hold Backpage accountable under the new doctrine would require overcoming the particularized nature of this case. Although this case, on its face, concerns the private interests of one plaintiff, M.A., it carries more of a public concern. The community has an interest in both terminating the exploitation of people through trafficking and ending the sexual exploitation of girls. The case instituted by M.A. is only one of many cases levied against Backpage regarding the exploitation of girls.147 Although this advertisement concerning M.A. was particularized, there were many more like it— so many more that law enforcement officers were eventually compelled to seize and finally shut down Backpage’s operations in 2018, some seven years after this case.148 Under my unconscionability approach, it would have been open to the court to decline the application of the CDA on the basis that doing so would have effectively been complicit in allowing the subsistence of a platform for predators to pay for sex with minors.
B. Google v. Equustek
In Google v. Equustek, Equustek, a Canadian company that manufactured complex networking devices,149 alleged that Datalink, one of its former distributors, had used Equustek’s trade secrets to make and sell a counterfeit product.150 In September 2012, Google refused Equustek’s request to de-index Datalink websites from Google’s search results.151 After a Canadian court granted Equustek’s request for injunctive relief against Datalink, Google blocked Datalink websites from appearing in its Canada-specific search results.152 However,
144 See id. 145 Id. 146 Vill. Voice Media Holdings, 809 F. Supp. 2d at 1043. 147 Goldberg, supra note 142. 148 Emily Witt, After the Closure of Backpage, Increasingly Vulnerable Sex Workers Are Demanding Their Rights, THE NEW YORKER (June 8, 2018), https://www.newyorker.com/news/dispatch/after-the-closure-of-backpage- increasingly-vulnerable-sex-workers-are-demanding-their-rights. 149 Google Inc. v Equustek Sol. Inc., 2017 SCC 34 (Can.). 150 Id. 151 Id. 152 Google Inc. v. Equustek Sol. Inc., 2014 BCSC 1063 (Can.). 2020 THE PORTAL TO INTERMEDIARY 269 LIABILITY
Google did not remove Datalink websites from its search results globally.153 Equustek sought an order in Canada requiring Google to de-index Datalink websites from its global search results.154 The Supreme Court of British Columbia so ordered, and the Supreme Court of Canada affirmed in 2017.155 Google filed in the Northern District of California to argue that the Canadian Supreme Court order conflicts with the First Amendment and section 230 of the CDA.156 The Northern District of California granted Google a preliminary injunction to prevent enforcement of the Canadian order in the United States.157 In applying the portal test to this case, we might first consider the strongest argument in favor of Equustek. Google’s failure to remove Datalink websites is unconscionable to the extent that Google is complicit in propagating the alleged exploitation of Equustek’s trade secrets. Cutting against Equustek, however, is the application of the particularization factor. The content sought to be de-indexed (website marketing products arising from the misappropriation of Equustek’s trade secrets) would only harm only Equustek.158 Herein lies the new doctrine’s shortcoming. The particularization factor is premised on the theory that individual harm should have specific avenues for redress. However, there is no trade secret specific legislation in Canada.159 Trade secret violations are usually prosecuted through breach of confidence, breach of fiduciary duty, breach of contract, or copyright infringement.160 There is not necessarily a clear path to an alternative remedy for particularized content. This shortcoming aside, the application of the proposed doctrine would likely find in favor of applying the Safe Harbors, which comports with the California court’s decision.161 This is not a case where Google’s non-action in failing to de-index Datalink websites would occasion such a great injustice on the public so as to offend basic notions of justice and morality.162
153 See id. 154 Google Inc. v. Equustek Sol. Inc., 2017 SCC 34 (Can.). 155 Id. 156 Google LLC v. Equustek Sol. Inc., No. 5:17-cv-04207-EJD, 2017 WL 5000834, at *2 (N.D. Ca. Nov. 2, 2017). 157Id. at *4. 158 Id. at *3. 159 Michael Crichton & Will Boyer, Trade Secret Enforcement in Canada: How Rights Holders Can Secure Justice, GROWLING WLG (Jan. 22, 2019), https://gowlingwlg.com/en/insights-resources/articles/2019/trade-secret- enforcement-in-canada/. 160 Id. 161 See Equustek Sol. Inc., 2017 WL 5000834, at *4. 162 Id. 270 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
VII. COUNTERARGUMENTS
Although many counterarguments are conceivable, two strands of objections have started to take shape: (a) equity’s ambiguity and (b) particularization’s limits.
A. Equity’s Ambiguity
The application of the doctrine to Village Voice163 demonstrates how unconscionability could be applied both ways with no clear mechanism for a bright line resolution164—advertising the trafficking of minors is unconscionable but it is equally unconscionable for Backpage, who did not make the content, to be liable for third-party activity.165 Equity is so flexible and amorphous that it could allow results-oriented courts to over-regulate intermediaries and threaten the global public forum of ideas.166 Critics of my deriving equity from secondary copyright liability might also suggest that equity is an inappropriate basis for the expansion of secondary liability doctrine. Tort law offers a more intuitive repository from which to draw inspiration. After all, secondary liability came from tort liability.167 Contributory liability is based on the tort principle of enterprise liability and imputed intent168 while vicarious liability is based on the doctrine of respondeat superior.169 Alternatively, the same critic might argue that economic principles, not equity, were more influential in cases such as Aereo170 and Grokster.171 The economist would argue that, in both cases, the Supreme Court— whether consciously or not—adopted a Coasean agenda,172 believing that, in order to reach an economically efficient outcome, bargaining power should first vest in copyright holders.173 Any product or new technology that seeks to whisk that initial bargaining power away from
163 See discussion supra Part VI(a). 164 Id. 165 Id. at 1050. 166 See supra notes 7–8 and accompanying text. 167 Michael J. McCue, Secondary Liability for Trademark and Copyright Infringement, LEWIS AND ROCA LLP, https://www.lrrc.com/files/Uploads/ Documents/M.%20McCue%20Utah%20Cyber%20Symposium%20SECONDARY %20LIABILITY%20Sept%2023.pdf (last visited June 22, 2020). 168 Id. 169 Id. 170 ABC, Inc. v. Aereo, Inc., 573 U.S. 431 (2014). 171 MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). 172 See R.H. Coase, The Problem of Social Cost, 3 J.L. & ECON. 1, 1 (1960). 173 See generally, Lois F. Wasoff, The Aereo Decision—Exploring the Implications, WORLD INTELL. PROP. ORG. (Sept. 2014), https://www.wipo.int/ wipo_magazine/en/2014/05/article_0003.html. 2020 THE PORTAL TO INTERMEDIARY 271 LIABILITY copyright holders threatens the bargaining process necessary to achieve the most effective economic allocation of resources.174
B. Particularization’s Limits
The particularization test is grounded on two faulty premises. First, the analysis of Google v. Equustek175 exposed the error in believing that avenues for redress are always available for individual harm, as demonstrated by the trade secret violations example in Canada.176 In the United States, consider the example of cyberbullying. While many states, such as New York, offer specific anti-bullying laws and policies,177 many do not.178 For example, in 2013, two minor girls were charged with felonies for cyberbullying a 12-year-old girl, Rebecca Sedwick, who committed suicide.179 The perpetrators were charged with a class-three felony under Florida law,180 which is approximately as serious as stealing a car or driving under the influence.181 Similarly, in 2009, Lori Drew, a 50-year-old mother of a teenager, decided to make a fake Myspace profile in order to cyberbully her daughter’s friend, Megan Meier.182 Lori used that hoax profile to first gain Megan’s affection before psychologically manipulating her.183 The last message sent was that the world “would be a better place without you.”184 Megan, aged 13, hanged herself.185 Without specific laws governing cyberbullying, Lori was prosecuted under the Computer Fraud and Abuse Act (the “CFAA”).186 For Lori to have violated the CFAA, the court had to be persuaded that she accessed a computer
174 See generally, Jim Chappelow, Pareto Principle, INVESTOPEDIA (Aug. 29, 2014), https://www.investopedia.com/terms/p/paretoprinciple.asp. 175 Google Inc. v Equustek Sol. Inc., 2017 SCC 34 (Can.). 176 Id. 177 N.Y. EDUC. LAW § 2801(a). 178 Sameer Hinduja, Ph.D. & Justin W. Patchin, Ph.D., State Bullying Laws, CYBERBULLYING RESEARCH CTR., 1 https://cyberbullying.org/bullying-laws (last updated Nov. 2018). 179 Steve Almasy et al., Sheriff: Taunting post leads to arrests in Rebecca Sedwick bullying death, CNN (Oct. 16, 2013, 8:53 AM), https://www.cnn.com/2013/10/15/ justice/rebecca-sedwick-bullying-death-arrests/index.html. 180 Id; see also FLA. STAT. § 784.048(3) (2019). 181 Compare FLA. STAT. § 784.048(3) with FLA. STAT. § 775.083 (2019). 182 Kim Zetter, Judge Acquits Lori Drew in Cyberbullying Case, Overrules Jury, WIRED (July 2, 2009, 3:04 PM), https://www.wired.com/2009/07/drew-court/. 183 Id. 184 Kim Zetter, Lori Drew’s Daughter ‘Devastated’ by Friend’s Suicide but Doesn’t Feel Responsible, WIRED (Nov. 24, 2008) https://www.wired.com/2008/11/ defendants-daug/. 185 See United States v. Drew, 259 F.R.D. 449, 452 (C.D. Cal. 2009). 186 Id. 272 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. without authorization or exceeded authorized access of a computer.187 The court found that, while Lori’s conduct in creating a hoax Myspace account may have breached Myspace’s terms of use, it did not constitute unauthorized access within the meaning of the CFAA.188 This result was hardly surprising and the Court arrived at the correct conclusion based on application of the law.189 In this case, there was simply no purpose-built redress for the particularized harm in question.190 Second, critics may take issue with the particularization test’s assumption that particularized content produces individualized harm, while publicly directed content brings public harm. Consequently, there should be greater motivation to protect the interests of many as opposed to the interest of one. Those critics would therefore find the particularization premise objectionable from many angles. For one, it is morally distasteful to suggest that the interests of any one person are subordinate to the interests of others, regardless of grouping. This objection was exemplified in the analysis of Village Voice,191 where, although clearly concerning the interests of one person, M.A., that case was representative of a larger humanitarian problem of public interest. The problem was clearly so serious that it compelled federal authorities to later seize and shut down the intermediary.192 The opposite of the particularization presumption is equally, if not more compellingly, arguable: intermediaries should not be liable where the victims are unknown, speculative, or a vague class. How can an intermediary, or anyone, be liable if the alleged victims cannot even be exactly identified? On this view, the idea that the general public might be the victim of third-party content constitutes an irrational basis for ascribing liability to an intermediary whose greatest wrong was simply acting as a mere conduit of information. Accordingly, and contrary to my formulation of particularization, the fact that a victim is an identifiable person might actually give greater, not less, basis for holding intermediaries liable.
187 Id. at 457. 188 See id. at 467. 189 See id. 190 See id. 191 See M.A. v. Vill. Voice Media Holdings, 809 F. Supp. 2d 104 (E.D. Mo. 2011). 192 Michelle Goldberg, Village Voice Media: Sex Slaves in the Classified, DAILY BEAST (Apr. 24, 2017), https://www.thedailybeast.com/village-voice-media-sex- slaves-in-the-classified. 2020 THE PORTAL TO INTERMEDIARY 273 LIABILITY
VIII. REJOINDER AND CONCLUSION: EQUITY’S CONTINUING ROLE IN THE FUTURE
The counterargument presented immediately above regarding particularization’s “public/private” divide is compelling, and it exposes the greatest weakness of the doctrine. My rejoinder is to remind the critic that the basis for the particularization test is not primarily that large scale wrongs are more morally repugnant than wrongs to individuals, rather, it is chiefly based on the idea that internet intermediaries exert so much control on the critical infrastructure of the internet that they almost administer a state-like function.193 Accepting that a state owes its duty first to the public interest would illustrate why the particularization tests helps distinguish those cases in which an internet intermediary—exerting such great control over the internet— would be conscience bound to exercise greater responsibility. On balance, however, I concede that this rejoinder does not furnish a complete rebuttal, and I do not yet have a clear solution. Further research needs to be done to resolve the question of how private versus public harm should be balanced. In response to any suggestion that it was inappropriate to draw equity from Grokster194 and Aereo,195 and even other secondary copyright liability cases, equity has always operated quietly in the creation of copyright doctrine.196 Equity features prominently in fair use,197 and some may even insist that it is an invisible “fifth” fair use factor.198 For example, in Shepard Fairey v. Associated Press, better known as the “Obama Hope Poster” case,199 the artist who made the
193 Michal Lavi, Online Intermediaries: With Power Comes Responsibility, JOLT DIGEST (May 11, 2018), https://jolt.law.harvard.edu/digest. 194 See generally MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). 195 See generally ABC, Inc. v. Aereo, Inc., 573 U.S. 431 (2014). 196 See e.g. NXIVM Corp. v. Ross Inst. 364 F.3d 471, 475 (2d Cir. 2004) (stating in obiter that the “propriety of the defendant’s conduct” is to be given some weight); see also Fisher v. Dees, 794 F. 2d 432, 436–37 (9th Cir. 1986) (stating that the application of fair use is premised on “good faith” and “fair dealing” and involves the “propriety of the defendant’s conduct”); see also Iowa State Univ. Res. Found. v. ABC, 621 F.2d 57, 60–61 (2d Cir. 1980); Shell v. City of Radford, 351 F.Supp. 2d 510 (W.D.Va. 2005); see also Shyamkrishna Balganesh, & Gideon Parchomovsky, Equity’s Unstated Domain: The Role of Equity in Shaping Copyright Law, 163 U. PA. L. REV. 1859 (2015); see also Lloyd L. Weinreb, Comment,, Fair’s Fair: A Comment on the Fair Use Doctrine, 103 HARV. L .REV. 1137 (1990). 197 Rich Stim, Measuring Fair Use: The Four Factors, STAN. U. LIBRARIES, https://fairuse.stanford.edu/overview/fair-use/four- factors/#the_fifth_fair_use_factor_are_you_good_or_bad (last visited June 29, 2020). 198 Id. 199 Randy Kennedy, Shepard Fairey and The A.P. Settle Legal Dispute, N.Y. Times (Jan. 12, 2011). 274 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. poster, Fairey, was accused of appropriating an Associated Press photograph taken by freelance photographer Mannie Garcia.200 Throughout preliminary arguments, Associated Press argued that the defendant did not come to equity with “clean hands” (one who seeks equity must do equity) because he had tampered with evidence.201 Accordingly, fair use was denied, and Shepard Fairey received a $25,000 penalty.202 Equity also subsists in copyright estoppel,203 which is the idea that once a creator holds out his work as factual, whether or not it is actually factual, then that information should be treated as factual.204 Facts themselves do not enjoy copyright protection by virtue of the idea/expression dichotomy.205 In Nash v. CBS (“Nash”),206 the author- plaintiff, Nash, had written books about the death of John Dillinger.207 Nash’s work challenged the popular understanding that John Dillinger had died during a police shootout.208 Although Nash’s “alternative” reconstruction of history had not won support among historians, CBS felt it was worthy of television production.209 Nash claimed that CBS infringed on his copyright by making a television show based on his books.210 The court found that copyright subsisted in Nash’s expression but not his ideas—which had been held out as historical facts.211 Having represented his historical recount as factual, Nash was estopped from asserting otherwise.212 Doing so would cause detriment to those who have relied on the “facts”.213 On a broader public policy level, if information held out as factual were copyrightable, then that reality would stunt the advancement of science because people would not be able to build on those facts.214
200 Complaint at 1, Shepard Fairey v. Associated Press, (S.D.N.Y. Feb. 9, 2009) No. 09-01123; see also id. 201 William W. Fisher III et al., Reflections on the Hope Poster Case, 25 Harv. J.L. & Tech. 244, n.100 (2012). 202 David Ng, Shepard Fairey sentenced to probation, fine in Obama ‘Hope’ case, L.A. TIMES (Sept. 8, 2012), https://www.latimes.com/entertainment/arts/la-xpm- 2012-sep-08-la-et-cm-shepard-fairey-20120908-story.html. 203 See generally HGI Associates, Inc. v. Westmore Printing Co., 427 F.3d 867, 875 (11th Cir. 2005). 204 See Houts v. Universal City Studios, Inc., 603 F. Supp. 26, 28 (C.D. Cal. 1984). 205 See, e.g. id. 206 Nash v CBS, Inc., 899 F. 2d 1537, 1538 (7th Cir. 1990). 207 Id. 208 Id. 209 Id. at 1539. 210 Id. 211 Id. at 1541. 212 Id. 213 Id. 214 See generally, id. at 1542. 2020 THE PORTAL TO INTERMEDIARY 275 LIABILITY
While equity may appear to give rise to ambiguous situations, its flexibility is advantageous, even necessary, for dealing with the dynamic technology of the internet. The proposed doctrine applied to ambiguous situations such as Village Voice215 constitutes only one example of how equity might shape law to suit the circumstances.216 But equity is equally adaptable to potential secondary liability problems occasioned by other emerging technologies to which no legal problems have yet arisen. For example, Kleros, a dispute resolution platform built on top of Ethereum217 that uses blockchain technology to “arbitrate” disputes,218 allows randomly selected “jurors” (who are ordinary people that use Ethereum) to determine blockchain disputes.219 Jurors are financially incentivized to decide the outcome of the dispute based on consensus.220 For example, a bilateral breach of contract dispute for goods sold over Ethereum may be submitted to Kleros, which will randomly appoint, say, five jurors. These jurors had previously paid a deposit to Kleros. If the vote comes out three to two in one party’s favor, then the three jurors who decided with the majority will be rewarded with cryptocurrency. The two dissenting jurors will be penalized by losing their deposits.221 It appears that Kleros provides no room for reason, due process, advocacy or even legal ethics. Rather, ethics is defined by consensus—what is right is what the majority chooses. At this point, no legal issue has been made before the courts.222 However, it is not hard to see how this model may in the future lead to outcries of lack of due process. In an internet epoch where anonymity and decentralization are celebrated,223 and where traditional notions of justice and fairness are progressively eschewed,224 equity will fill the harsh gaps left by rapidly advancing internet technology. I have proposed a new doctrine comprising of two successive limbs: (i) the portal question, which asks whether an internet intermediary, in refraining from removing content, would be acting unconscionably and (ii) whether the third-party content was particularized to a single person
215 M.A. v. Vill. Voice Media Holdings, 809 F. Supp. 2d 1041 (E.D. Mo. 2011). 216 See discussion supra Section V. 217 See What is Ethereum?, ETHEREUM.ORG, https://ethereum.org/what-is- ethereum/ (last updated May 13, 2020). Ethereum is an open source, public, blockchain based computing platform and operating system. Id. 218 CLÉMENT LESAEGE ET AL., KLEROS 1 (Short Paper v.1.0.7 2019), https://kleros.io/whitepaper_en.pdf. 219 Id. at 5. 220 Id. at 7. 221 Id. at 4. 222 See id. 223 Id. 224 Id. 276 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L. or entity. A finding of particularization favors the application of Safe Harbors, while a lack of particularization (publicly directed content) disfavors the application of the Safe Harbors. However, this approach has several shortcomings. First, considering equity’s ambiguity, it is doubtful that unconscionability is a suitable touchstone for a new doctrine. In rejoinder, I have suggested that equity’s advantage for emerging technologies is its ambiguity. Second, borrowing from secondary copyright liability, tortious liability, or economic principles rather than the dormant equitable doctrine of unconscionability may have been more appropriate. In reply, I have canvassed the fundamental presence of equity in the creation copyright doctrine. Third, the particularization test is limited to the extent it espouses the notion that public harm warrants greater intervention than does individual harm. Wrongs committed against individuals over the internet do not always have clear redress (as in the case of cyberbullying and trade secrets);225 the particularization test might preclude victims from seeking assistance from the only entity who might be able to help—the internet intermediary with the near-monopolistic power to manipulate the infrastructure of the internet.226 This counterargument exposes the doctrine’s greatest shortcoming, and it is necessary to conduct further research to resolve public/private harm associated with the particularization test. Shortcomings notwithstanding, I maintain that the new doctrine is a compelling prototype for embracing problems posed by the intersection of internet intermediaries, emerging technology, and private international law in a global economy.
225 See supra notes 169–183 and accompanying text. 226 See discussion supra Part VIII. WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW
VOLUME 20 SUMMER 2020 NUMBER 3
BORN IN THE LAB, PROVEN IN THE MARKET: GATORADE’S IMPACT ON U.S. IP POLICY & RESEARCH INNOVATION
KYLE WELCH†
I. INTRODUCTION ...... 278 II. BORN IN THE LAB: FAINTING IN FLORIDA & THE DEVELOPMENT OF GATORADE ...... 283 III. PROVEN ON THE FIELD: A GROWING REPUTATION & EARLY COMMERCIALIZATION EFFORTS ...... 288 IV. WON IN COURT: THE LEGAL BATTLE OVER GATORADE ...... 296 V. NOTICED IN CONGRESS: IP POLICY REFORM IN THE AFTERMATH OF GATORADE’S LEGAL BATTLES .. 301 VI. PROVEN IN THE MARKET: GATORADE’S ASCENDANCE IN THE GLOBAL BEVERAGE BUSINESS .. 313 VII. EMULATED IN PRACTICE: LESSONS FROM THE GATORADE SAGA FOR THE COMMERCIALIZATION OF RESEARCH ...... 319 VIII. GROUNDED IN REALITY: THE BENEFITS OF RESEARCH INNOVATION & THE CHALLENGES OF REPLICATING GATORADE’S SUCCESS ...... 331 IX. CONCLUSION ...... 344
† © 2020 Kyle Welch, Licensing Manager, Technology Transfer Office, San Diego State University. Member, State Bar of California. J.D. 2014, California Western School of Law; B.S. Mechanical Engineering 2011, The Ohio State University.
278 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
I. INTRODUCTION “Is it in you?”1 advertisements for sports beverage Gatorade2 once asked consumers.3 Taken in its most literal sense, it refers to the product, a thirst-quenching carbohydrate-electrolyte solution4 that comes in flavors such as “Lemon-Lime,” “Frost Glacier Freeze,” and “Frost Tropical Mango.”5 But the slogan is also rhetorical. It is the drive, passion, tenacity, and competitive spirit6 present in the world’s greatest athletes, who invariably drink Gatorade.7 If consumers want to compete like these athletes do, if they want to “be like Mike,”8 then they would benefit from drinking Gatorade as well. Some can appropriate the slogan in other ways to suggest that listeners are missing some of the Gatorade “magic”9: “Is it in you?,” the
1 IS IT IN YOU?, Registration No. 2,300,671. 2 Gatorade “is considered the quintessential” “traditional sports beverage . . . designed primarily for rehydration.” Michael B. Williams et al., Effects of Recovery Beverages on Glycogen Restoration and Endurance Exercise Performance, 17.1 J. OF STRENGTH & CONDITIONING RESEARCH 12, 13–14 (2003). Chemically, it is a “carbohydrate-electrolyte solution” with other ingredients. Ben Desbrow et al., Carbohydrate-electrolyte Feedings and 1h Time Trial Cycling Performance, 14 INT’L J. SPORT NUTRITION & EXERCISE METABOLISM 541, 544 (2004). 3 See DARREN ROVELL, FIRST IN THIRST: HOW GATORADE TURNED THE SCIENCE OF SWEAT INTO A CULTURAL PHENOMENON 160 (2006) (describing the “Is it in you” slogan and advertising campaign); see also Gatorade Commercial – Is It In You, YOUTUBE, at 0:59 (Nov. 19, 2007), https://www.youtube.com/watch?v= P77OZBCcsyc (on-screen text). Gatorade began using “Is it in you?” in 1999, see ROVELL, supra note 3, at 160, but it appears that the brand no longer actively uses the phrase as a slogan, see GATORADE, http://gatorade.com (last visited Apr. 19, 2020). But see supra note 1 (active trademark registration for IS IT IN YOU? indicated as LIVE by USPTO). 4 See Desbrow, supra note 2, at 544. 5 Your Flavor, GATORADE, https://www.gatorade.com/hydration/thirst-quencher (last visited June 30, 2020). 6 Id.; see also ROVELL, supra note 3, at 160 (“[‘Is It In You?’] was a double entendre that was asking consumers if they had the will in them to battle on the playing field and then if they had the product in them. The double meaning was driven home further by the athletes in the commercial sweating the color of Gatorade’s flavors.”). 7 See, e.g., infra note 143 (former NBA player Jerry West); see ROVELL, supra note 3, at 4 (U.S. Olympic swimmer Michael Phelps); see infra note 289 (former NBA basketball player Michael Jordan). 8 “Mike” refers to Michael Jordan, a renowned NBA basketball player and subject of a famous Gatorade ad campaign in the 1990s. See infra Part VI; see also ROVELL, supra note 3, at 107 (jingle lyrics); Be Like Mike Gatorade Commercial (ORIGINAL), YOUTUBE (Oct. 23, 2006), https://www.youtube.com/watch?v=b0AGiq9j_Ak. See generally ROVELL, supra note 3, at 105–15. 9 See ESPN FILMS, The Sweat Solution, SEC, at 1:00 (Feb. 25, 2015), https://www.secsports.com/article/12212716/sweat-solution [hereinafter Sweat Solution] (“We felt like we had a magic elixir”); id. at 13:50 (“We thought it was magic.”) (quoting former UF football player George Dean, referring to an early iteration of Gatorade). 2020 BORN IN THE LAB, PROVEN IN THE 279 MARKET
University of Florida may ask universities across the United States, referring to the millions of dollars in royalties generated for the University by Gatorade.10 “Is it in you?,” the inventors of Gatorade may ask other research scientists, referring to the ingenuity required to solve the problem of fainting football players11 and translate it into a beverage empire.12 “Is it in you?,” the United States of America may ask itself and other countries, referring to the nation’s willingness to fund basic research13 and reform intellectual property14 policy to foster scientific, industrial, and economic competitiveness.15
10 As of 2015, Gatorade had generated more than $250 million for the University of Florida. Joseph Kays, Innovation Turns 50: Gatorade Changed UF Forever, EXPLORE: RES. AT U. FLA. (June 29, 2015), http://explore.research.ufl.edu/innovation- turns-50.html (EXPLORE is a publication of the UF Office of Research). See also infra Part VII. 11 See infra Part II. 12 See infra Part VI. 13 “Basic research” (also called “fundamental research”) is “experimental or theoretical work undertaken primarily to acquire new knowledge of the underlying foundations of phenomena and observable facts, without any particular application or use in view.” Higher Education Research And Development Survey: FY 2019, NAT’L SCI. F. (2019), https://www.nsf.gov/statistics/srvyherd/surveys/srvyherd-2019.pdf [hereinafter HERD Survey]; see also Rebecca S. Eisenberg, Public Research and Private Development: Patents and Technology Transfer in Government-Sponsored Research, 82 VA. L. REV. 1663, 1721 (1996) (“The university, by its very nature, is oriented to basic and fundamental research as integral part of its education process.”) (quoting 1 Government Patent Policies: Institutional Patent Agreements: Hearings Before the Subcomm. on Monopoly & Anticompetitive Activities of the S. Select Comm. on Small Bus., 95th Cong. 306-07 (1978) (statement of Thomas F. Jones, V.P., MIT)). In comparison, “applied research” is “original investigation undertaken in order to acquire new knowledge. It is directed primarily towards a specific, practical aim or objective.” HERD Survey, supra note 13. Unless specifically stated otherwise, allusions to “research” mean “R&D” in the technical sense. See infra note 29. 14 Intellectual property (or IP) is a legal scheme that provides its owners rights “over the creations of their minds,” usually in the form of an “exclusive right over the use of [their] creation.” What Are Intellectual Property Rights?, WTO, https://www.wto.org/english/tratop_e/trips_e/intel1_e.htm (last visited Apr. 28, 2020). The four main forms of IP in the U.S. are patents, copyrights, trademarks, and trade secrets. See James A. Dobkin, Patent Policy in Government Research & Development Contracts, 53 VA. L. REV. 564, 568 n.26 (1967). A patent is the exclusive right to practice an invention. See 35 U.S.C. § 101 (2018) (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . .”); id. § 271 (“[W]hoever without authority makes, uses, offers to sell, or sells any patented invention . . . infringes the patent.”). Although this article discusses research innovations broadly and technology transfer concerns much more than patents, see infra note 27 (defining “research innovations”), the Bayh-Dole Act focuses on potentially patentable inventions, see infra note 248 (defining “subject invention”). 15 See infra Parts V, VII; see also infra note 449. 280 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
Water, salts, and glucose may have been the original recipe for the Gatorade solution,16 but the recipe for Gatorade’s success was much more complex. The dramatic, compelling, and convoluted tale of how this “lime-green liquid with . . . strange attributes and an unfamiliar taste”17 began as a humble university experiment18 and became a licensed market powerhouse19 is both partly responsible for and the most instructive example of successful “technology transfer,”20 “the process of getting ideas from lab to markets”21—or, more pithily,
16 See ROVELL, supra note 3, at 18 (“The doctors had to concoct a solution—water enhanced with sodium and potassium—that would move through the body quickly to maintain fluid and salt balance during workouts. The Doctors then added a mildly sweet simple [glucose] to immediately raise the players’ blood sugar and provide them with that extra energy boost.”); see also Composition of Matter for Limiting Dehydration and Fatigue During Periods of Physical Exertion, G.B. Patent No. 1,252,781, at 4 1. 3 (filed Jan. 16, 1969) (describing a solution of sodium chloride, monosodium phosphate, sodium bicarbonate, potassium chloride, monopotassium phosphate, citric acid, calcium cyclamate, glucose, sucrose, and orange flavoring); Sweat Solution, supra note 9, at 7:30 (co-inventor of Gatorade, Dr. Robert Cade, discussing the inclusion of glucose). 17 Gilbert Rogin, The Bottle and the Babe, SPORTS ILLUSTRATED (July 1, 1968), http://www.si.com/vaul t/1968/07/01/612190/the-bottle-and-the-babe. 18 See infra Part II. 19 See infra Parts III, VI. 20 For a definition of “technology transfer,” see infra note 21. Technology transfer is commonly shortened to “tech transfer.” See, e.g., What is the Technology Transfer Process?, ASS’N OF U. TECH. MANAGERS (AUTM), https://autm.net/about-tech- transfer/what-is-tech-transfer (last visited Apr. 19, 2020). Of note, “technology transfer” is in some ways a misnomer, as it is about the transfer of much more than technology—but rather knowledge more broadly, particularly creative works and innovations. See, e.g., STANFORD UNIV. OFFICE OF TECH. LICENSING, CREATOR’S GUIDE TO COMMERCIALIZING COPYRIGHTED WORK 6 (2015) [hereinafter STANFORD CREATOR’S GUIDE], https://otl.stanford.edu/sites/g/files/sbiybj10286/f/otl copyright guide. pdf (“Stanford owns copyright to creative works subject to sponsored research agreements and other contracts.”); see infra note 21 (“knowledge transfers”). Accordingly, many universities have rebranded their tech transfer offices to convey this diversity of purpose. See, e.g., About Us, U.C. SAN DIEGO OFF. OF INNOVATION & COMMERCIALIZATION, https://innovation.ucsd.edu/about-us/ (last visited Apr. 29, 2020); About Us, GA. TECH OFF. OF INDUSTRY ENGAGEMENT, https://industry. gatech.edu/about-us (last visited Apr. 29, 2020); About, INNOVATION & NEW VENTURES: NW., https://www.invo. northwestern.edu/about/index.html (last visited Apr. 29, 2020). 21 Linda Williams, Academia Wises up on Patents, L.A. TIMES (Mar. 16, 1990), https://www.latimes.com/archives/la-xpm-1990-03-16-mn-282-story.html. This definition handily encompasses most definitions of tech transfer, although there is a near-infinite number of definitions and descriptions of varying detail in literature and public discourse. E.g., Donald S. Siegel et al., Toward a Model of the Effective Transfer of Scientific Knowledge from Academicians to Practitioners, 21 J. OF ENGINEERING & TECH. MGMT. 115, 116 (2004) (“The role of the [tech transfer office] is to facilitate commercial knowledge transfers through the licensing to industry of inventions or other forms of intellectual property resulting from university research.”). 2020 BORN IN THE LAB, PROVEN IN THE 281 MARKET
“turning ideas into impact.”22 Gatorade not only launched the sports beverage industry,23 but sparked one of the most inspired pieces of legislation in the past fifty years,24 helping the United States retain its industrial and technological eminence through the end of the twentieth century.25 This article is a study of Gatorade’s success, lessons, and impacts on U.S. intellectual property and research26 innovation27 policy. The
Though it precedes the widespread use of the term, the regulations adjacent to the Bayh-Dole Act present one suitable definition of “technology transfer”: the “utilization of inventions arising from . . . research or development.” Bayh-Dole Act, 37 CFR § 404.2 (2019) (“[The Bayh-Dole Act] established today’s tech-transfer framework,” Zach Kyle, Technology Transfer: A Special Report, IDAHO STATESMAN (June 25, 2015), http: //legacy.idahostatesman.com/techtransfer/index.html). But see Barry Bozeman, Technology Transfer and Public Policy: A Review of Research and Theory, 29 RES. POL’Y 627, 630 (2000) (“[T]echnology transfer is defined in many different ways . . . the search for a canonical definition [of technology transfer] is futile.”). For more on the mechanics of this process, see infra note 215. 22 About: What is Technology Transfer?, RES.: SAN DIEGO ST. U. TECH. TRANSFER OFF., https://research.sdsu.edu/tto/about (last visited Apr. 24, 2020). Ideally, tech transfer in the university context benefits the public interest. See NAT’L RESEARCH COUNCIL OF THE NAT’L ACADS., MANAGING UNIVERSITY INTELLECTUAL PROPERTY IN THE PUBLIC INTEREST 60 (Stephen A. Merrill & Anne-Marie Mazza eds., 2011) (“The first goal of university technology transfer involving IP is the expeditious and wide dissemination of university-generated technology for the public good.”); STANFORD UNIV. ET AL., IN THE PUBLIC INTEREST: NINE POINTS TO CONSIDER IN LICENSING UNIVERSITY TECHNOLOGY 1 (Mar. 6, 2007) [hereinafter STANFORD, NINE POINTS], https://otl.stanford.edu/documents/whitepaper-10.pdf (“In the end, we hope to foster thoughtful approaches and encourage creative solutions to complex problems that may arise when universities license technologies in the public interest and for society’s benefit.”). 23 See infra note 356 and accompanying text. 24 See infra Part V. 25 See infra Part VII. 26 For an expansive definition of research in the context of this article, see supra note 13. 27 (n.) “Something newly introduced” or “the act of introducing something new.” Innovation, AM. HERITAGE DICTIONARY, https://ahdictionary.com/word/search.html ?q=Innovation (last visited Apr. 29, 2020). The term “innovation” has become much more prevalent over the last few decades, perhaps to reflect that “creating” new things is more than “inventing.” C.f. Rights to Inventions Made by Nonprofit Organizations and Small Business Firms Under Government Grants, Contracts, and Cooperative Agreements (commonly cited as the “Bayh-Dole Act”), 37 C.F.R. § 401.2(c) (2019) (“any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code . . .”). This trend has been reflected by usage of the terms “innovation” and “invention” in tech transfer names, see supra note 20, books, see GOOGLE NGRAM VIEWER, https://books.google.com/ngrams (search “innovation, invention”) (last visited Apr. 29, 2020) (showing “innovation” becoming more prevalent than “invention” in about 1972), and on the internet. See GOOGLE TRENDS, https://trends.google.com/trends/explore?date=all&geo=US&q=innovation, invention (last visited Apr. 29, 2020) (showing “innovation becoming more prevalent 282 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
history of Gatorade is more than a tale of a commercially successful research invention,28 but a dramatic story about inventor ingenuity, colorful characters, institutional imagination, market appetite, motivation to reform, obscure legal mechanisms, and envious imitators. In sum, the Gatorade saga is a parable about the interplay between the United States’ massive R&D29 apparatus, thoughtful IP policy, and economic competitiveness in the developed world. Parts II and III of this article will explain how Gatorade was “born in the lab”30 thanks to a handful of faculty scientists at the University of Florida,31 was “proven on the field,”32 and quickly became a soft drink sensation.33 Part IV will delve into the heated litigation that followed Gatorade’s creation, as the inventors, industrial partners, government, and university clashed for the revenue created by the beverage.34 Then Part V will explain how the controversy surrounding the Gatorade
than “invention” in roughly 2012). Although usage of “innovation” has become so mundane as to dilute its meaning to almost nothing, see Baregheh et al., Towards A Multidisciplinary Definition of Innovation, 47 MGMT. DECISION 1323, 1323 (2009), this article will endeavor to use the two definitions above. See supra note 27. 28 “The term invention means any invention or discovery which is or may be patentable or otherwise protectable under Title 35 of the United States Code . . . .” 37 C.F.R. § 401.2(c). This article will use the term “research invention” to denote an invention conceived or first reduced to practice in the performance of R&D activity— analogous to a “subject invention” as defined in the Bayh-Dole Act, but broader, as a research invention need not result from a funding agreement. See infra note 253 (defining “subject invention”). “Research innovation” is anything newly created in the performance of R&D activity, or the act of creating something new through R&D activities. See supra note 27 (defining “innovation”). 29 “Research and Development (R&D) . . . is creative and systematic work undertaken in order to increase the stock of knowledge—including knowledge of humankind, culture, and society—and to devise new applications of available knowledge. R&D covers three activities . . . basic research, applied research, and experimental development.” HERD Survey, supra note 13. Unless stated otherwise, allusions to “research” mean “R&D” in the technical sense. 30 Born in the Lab, GATORADE STORE, https://gatoradeshop.co.nz/pages/born-in- the-lab (last visited Apr. 19, 2020); Heritage, GATORADE, http://www.gatorade. com.mx/company/heritage (last visited Apr. 19, 2020); see also Karen Dooley, Celebrating the Gatorade Legacy at the University of Florida, FLA. PHYSICIAN: UF C. OF MED. (May 19, 2016), https://floridaphysician.med.ufl.edu/2016/05/19/ celebrating-the-gatorade-legacy-at-the-university-of-florida/. Although Gatorade no longer appears to actively use “born in the lab” as a slogan, see infra note 32, the brand still actively touts its laboratory heritage. See, e.g., Thirst Quencher, supra note 2 (“Over 50 years in the making, it’s the most scientifically researched and game-tested way to replace the electrolytes you lost in sweat.”). 31 Heritage, supra note 30. 32 See TESTED IN THE LAB PROVEN ON THE FIELD, Registration No. 3,202,040; Heritage, supra note 30. 33 See infra Parts II-III. 34 See infra Part IV. 2020 BORN IN THE LAB, PROVEN IN THE 283 MARKET
litigation initiated policy reform and eventually the Bayh-Dole Act,35 a landmark piece of legislation that overhauled the framework of intellectual property and R&D in the United States.36 Parts VI and VII will detail how Gatorade proved itself in the market over fifty years and provided lessons for other universities in their own tech transfer operations. Finally, Part VIII will describe the benefits universities realize from conducting R&D and commercializing research innovations, despite considerable challenges associated with finding the next Gatorade.37
II. BORN IN THE LAB: FAINTING IN FLORIDA & THE DEVELOPMENT OF GATORADE
The University of Florida38 is a public research university located in Gainesville, Florida.39 The university appropriately nicknamed its athletic teams the Gators40 in light of the fact that Florida is the state of residence for over one million American alligators.41 In the mid-1960s, the University of Florida had a competitive collegiate football team,42 albeit one struggling to distinguish itself in the Southeastern Conference (SEC) then led by the University of Alabama.43
35 Pub. L. No. 96-517, 94 Stat. 3015 (1980) (codified as amended at 37 C.F.R. § 401 (2019)). 36 See infra Part V. 37 See infra Part VII. 38 Frequently referred to throughout this article as “the university,” “Florida,” or “UF.” 39 History, U. FLA., https://www.ufl.edu/about/history/ (last visited Mar. 30, 2020). 40 Hereinafter the article may refer to the UF football team as “the Gators.” 41 See History, supra note 39; The Birth of a Nickname, FLA. TIMES-UNION (Aug. 2, 1948), reprinted in FLA. GATORS, https://floridagators.com/sports/2015/ 12/10/_overview_p_name.aspx; American Crocodile & Alligator, DEFENDERS OF WILDLIFE, https://defenders.org/wildlife/american-crocodile-and-alligator (last visited Mar. 30, 2020) (“Roughly 1.25 million alligators live in the state of Florida.”). 42 In 53 seasons from 1911 through 1965, the UF football team won 8 or more games only 5 times, none of which were in the 5 most recent seasons. Entering 1966, the only bowl game UF had won was the Gator Bowl, and it had never won the SEC championship since the league’s inception in 1933. Florida Gators School History, C. FOOTBALL AT SPORTS-REFERENCE [hereinafter SPORTS-REFERENCE], https://www. sports-reference.com/cfb/schools/florida/ (last visited Apr. 20, 2020); Southeastern Conference, SPORTS-REFERENCE, https://www.sports-reference.com/cfb/conferences/ sec/ (last visited Apr. 20, 2020); see also ROVELL, supra note 3, at 27 (“At the time [of the mid-1960s], Florida was by no means a dominant team in the SEC.”). 43 Entering 1966, the University of Alabama football team had earned at least a share of 8 SEC championships, had won 10 or more games in 3 of the past 5 seasons, and had been recognized as national champions in 1961, 1964, and 1965. Southeastern Conference, SPORTS-REFERENCE, https://www.sports-reference.com/cfb/conferences/ sec/ (last visited Apr. 20, 2020); Alabama Crimson Tide School History, SPORTS- 284 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
Until the advent of Gatorade, the conventional wisdom in college football was that water was not only unnecessary, but a sign of weakness.44 While that mentality may be atavistic and regressive by modern standards,45 water is an imperfect hydrator—the body does not absorb water as quickly as needed,46 which causes bloating,47 cramping,48 and shortages in vital nutrients and bodily fluids.49 The state-of-the-art alternative to drinking water was sucking on salt tablets.50 In August 1965,51 the sweltering Florida climate52 hobbled the Gators: the heat led to the hospitalization of more than 20 players in a matter of days.53 At the time, assistant football coach Dewayne Douglas
REFERENCE, https://www.sports-reference.com/cfb/schools/alabama/ (last visited Apr. 20, 2020); College Football National Champions & Seasons, SPORTS- REFERENCE, https://www.sports-reference.com/cfb/years/ (last visited Apr. 20, 2020). 44 See ROVELL, supra note 3, at 13 (“At most college programs at the time, even water wasn’t readily available. One school of thought was that dehydration would toughen up players.”); Sweat Solution, supra note 9, at 4:00 (“There was a thought by most coaches that water deprivation was the way to go.”) (quoting Chip Hinton, University of Florida linebacker). See generally Sweat Solution, supra note 9, at 4:00– 5:00. 45 See ROVELL, supra note 3, at 13 (“[T]he machismo attitude that had been pervasive in sports was actually hurting the performance of teams”). 46 See Rogin, supra note 17 (“The problem is that water is absorbed at a fairly slow rate.”); see also infra notes 45, 73, 463. 47 See Rogin, supra note 17; Sweat Solution, supra note 9, at 7:00 (“When you guzzled water, you became bloated because it wasn’t absorbed very quickly into your body.”) (quoting UF tight end Jim Yarbrough); see also infra notes 74–83. 48 See Sweat Solution, supra note 9, at 7:15 (“You wouldn’t play as well; you’d slow down, because you would actually have cramping issues.”) (quoting Chip Hinton). 49 See infra notes 62–67. 50 See Rogin, supra note 17 (“It has been accepted practice to give football players salt tablets to compensate for the loss of sodium . . .”). 51 See Rogin, supra note 17 (“1965, . . . was particularly hot and humid, there were twice as many such fatalities [as the annual average]”). Sweat Solution, supra note 9, at 4:45. 52 The mean max normal temperature in the Gainesville area in August is 90.2 ºF. NOWData, Monthly Climate Normals, Gainesville Area, FL, NAT’L WEATHER SERV. FORECAST OFF., https://w2.weather.gov/climate/xmacis.php?wfo=jax; see also Sweat Solution, supra note 9, at 0:45 (“There’s always that threat of dying.”) (quoting UF wide receiver George Peek); id. at 0:30 (“I don’t believe there’s any hotter place in the world than Florida Field on a Saturday afternoon.”) (quoting Gene Peek); id. at 0:40 (“I remember being dead-tired after warmups.”) (quoting UF Heisman winning quarterback Steve Spurrier). 53 Sweat Solution, supra note 9, at 5:00 (“‘We put 20 some odd football players in the infirmary over the weekend for serious dehydration.’”) (quoting Dr. Shires, quoting Dewayne Douglas, UF ass’t football coach and Sec. Officer, Shands Hospital). See generally ROVELL, supra note 3, at 10–41 (regarding the discovery and initial development of Gatorade). 2020 BORN IN THE LAB, PROVEN IN THE 285 MARKET
was also working as a security officer at the University of Florida’s Shands Hospital.54 Douglas approached his occasional coffee buddy, Dr. Robert Cade,55 and his medical colleagues, seeking a solution to the Gators’ severe dehydration problem.56 As an associate professor of medicine working in the University’s renal division,57 Dr. Cade was working under a research grant from the Department of Health, Education, and Welfare (HEW)58 in addition to his teaching and other medical center duties.59 Dr. Cade—an eccentric60 dilettante61 known for his Friday afternoon mixology sessions in the lab62—was unable to resist the temptation to craft a concoction to combat the epidemic of fainting players on Florida’s football team.63
54 Sweat Solution, supra note 9, at 4:50 (Julie Douglas, daughter of Dewayne Douglas). 55 Id. (“It wasn’t uncommon for [Dewayne Douglas] to have coffee with Dr. Cade and his colleagues.”) (quoting Julie Douglas). 56 Id. (“We were having lunch and he said, . . . ‘We got to do something.’”) (referring to the “serious dehydration” of players) (quoting Dr. Shires, quoting Dewayne Douglas). 57 Or, as Dr. Cade called it, “the wee-wee lab.” Rogin, supra note 17 (quoting Dr. Cade describing his role as head of the Renal and Electrolyte Division); see also ROVELL, supra note 3, at 9 (describing Dr. Cade as an “associate professor of medicine who specialized in kidney disease.”). 58 See infra note 163 (discussion on HEW). 59 See infra Part IV. 60 See ROVELL, supra note 3, at 66 (describing Cade as “a typical eccentric”); Rogin, supra note 17 (describing Dr. Cade as “lovably eccentric”) (quoting one of Dr. Cade’s interns); see also Op-Ed, The Gator Fumble Over Royalty from Gatorade, OCALA STAR-BANNER, Aug. 11, 1972, at 4A [hereinafter Gator Fumble] (describing Dr. Cade as “effervescent”); e.g., ROVELL, supra note 3, at 69 (describing Dr. Cade arguing that the government’s alleged ownership over Gatorade was “involuntary servitude” and “a violation of the Constitution”); Rogin, supra note 17 (discussing Dr. Cade allegedly getting arrested for riding his bike while intoxicated and being pulled over for speeding on his bicycle). 61 E.g., Rogin, supra note 17 (Dr. Cade’s alcoholic-beverage mixing lessons, poetry recitations, D-average in high school, and violin playing); see also, e.g., Dave Curtis, Making a Splash, ORLANDO SENTINEL (Apr. 14, 2007), http://articles. orlandosentinel.com/2007-04-14/sports/GATORADE14_1_gatorade-cade-uf (Dr. Cade’s collection of Studebakers); Sweat Solution, supra note 9, at 2:55 (Dr. Cade’s breeding of roses); see infra note 393 (Dr. Cade’s variety of inventions in addition to Gatorade). 62 See Sweat Solution, supra note 9, at 2:00 (“Every Friday afternoon he would mix up an alcoholic beverage using lab alcohol to get students and house officers to come to the laboratory and talk about kidney disease.”) (quoting Dr. Shires). 63 Sweat Solution, supra note 9, at 5:20 (“He had the idea that there was some drink or some solution to this dehydration problem.”) (quoting UF head football coach Ray Graves); id. (“We said, ‘We’d love to study the team and see if there’s any way we might impact positively on them.’”) (quoting Dr. Shires, quoting himself and his colleagues) (5:30); id. (“I give all credit to Bob, Bob said, ‘Let’s see if we can do it.’”) (quoting Dr. Shires, quoting Dr. Cade). 286 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
Cade and his colleagues, including Dr. Dana Shires, Dr. James Free, and Dr. Alejandro de Quesada,64 performed tests on a brave group of guinea-pig Gators to determine what changes their bodies endured during the strain of football practice in the unforgiving Florida heat, particularly the loss of electrolytes.65 The players, some of whom were shedding as many as 20 pounds during practice,66 were losing water, blood volume, sugar, potassium, and sodium through their sweat,67 nearly to the point of passing out.68 The depletion of these bodily elements during practices and games was catastrophic.69 Focusing on the lost electrolytes,70 Dr. Cade and his team devised a solution of water,71 glucose,72 sodium,73 and potassium74 to replenish what the players were losing during practice—and to do it faster than
64 See ROVELL, supra note 3, at 15; Heritage, supra note 30. 65 See generally Sweat Solution, supra note 9, at 5:45-7:30; see also id. at 6:25 (“We designed a study in which we would measure the loss of electrolytes and fluids while they were exercising.”) (quoting Dr. Shires); id. at 6:55 (“We measured as many electrolytes as we could measure before and after.”) (quoting Dr. Free). 66 Compare Sweat Solution, supra note 9, at 6:55 (quoting Dr. Shires), with infra note 136 (Kansas City Chiefs’ Jerry Mays). 67 See ROVELL, supra note 3, at 16 (“Throughout the two-hour practice . . . [the two players tested] had lost about 25 percent of their total body sodium, an amount that could have been lethally dangerous.”); Rogin, supra note 17 (“[T]here is a marked decrease in extracellular fluid and plasma volumes [during football practice].”); id. (“Football players don't [urinate during practice], because they are volume depleted and the kidney is conserving water and salt in a battle to maintain blood volume.”); id. (“[T]he vital substances lost in perspiration [include] water, sodium, [and] potassium.”). 68 See ROVELL, supra note 3, at 17 (“Dehydration can cause headaches, dizziness, and muscle cramps, with heat stroke being the most extreme result.”). 69 See Kays, supra note 10 (“The players’ electrolytes were completely out of balance, their blood sugar was low and their total blood volume was low. The impact on the body of this upheaval in chemistry was profound.”). 70 Sweat Solution, supra note 9, at 7:55 (“His hypothesis was, if he could put electrolytes into the athlete, that the performance because of the increased electrolytes would improve. And that was really revolutionary for the time.”) (quoting Chip Hinton). Electrolytes are salt solutions. See Rogin, supra note 17; e.g., id. (potassium chloride). 71 See Rogin, supra note 17. 72 See id.; Sweat Solution, supra note 9, at 7:27–7:38 (“Glucose is a simple sugar . . . when that comes into the intestine, glucose just goes right on through, and it carries other things with it, like water.”) (quoting Dr. Cade). 73 See Rogin, supra note 17. 74 See ROVELL, supra note 3, at 18; see also Rogin, supra note 17 (describing that Gatorade contained water plus glucose, sodium bicarbonate, sodium orthophosphate, potassium orthophosphate and potassium chloride). 2020 BORN IN THE LAB, PROVEN IN THE 287 MARKET
water75 without bloating.76 But the scientists had to overcome a few design challenges to make an ingestible beverage. For one, the first batch of the concoction tasted “putrid.”77 Put another way, it tasted “like piss.”78 For another problem, the glucose initially “turned into rock” rather than dissolving in water.79 It was not likely the Florida scientists80 were going to learn about the positive effects of their soft cocktail if the football players were unable to stomach it,81 so Dr. Cade’s wife suggested that the doctors add lemon juice.82 The scientists experienced some product challenges implementing this suggestion, ultimately settling on a terpene-free lemon extract.83 While unlikely to be imbibed for purely gustatory
75 See Rogin, supra note 17 (“Gatorade is a beverage which quenches thirst, replaces the vital substances lost in perspiration—water, sodium, potassium—and is absorbed considerably faster than water.”); id. (“However, if sodium and potassium salts are added the absorption rate is enhanced. The addition of glucose further speeds up absorption.”); Williams, supra note 21 (“But Cade first asked his department at the university to develop and patent his idea for a liquid that when consumed entered the blood stream about 10 times faster than water.”). 76 See Rogin, supra note 17 (“It can be consumed ad libitum in large amounts (up to six quarts during a football or basketball game) without causing any sensation of fullness and without electrolyte abnormalities.”) (quoting Dr. Cade). Compare id. (“If I had that much water in me [instead of Gatorade] I couldn't walk, let alone run.”) (quoting Los Angeles Lakers guard Jerry West), with Sweat Solution, supra note 9, at 8:10–8:12 (“You could guzzle it and not get bloated.”). 77 Rogin, supra note 17 (“unflavored Gatorade tastes like salt water”); see also Sweat Solution, supra note 9, at 9:30–9:31 (quoting Gene Peek); id. at 9:34–9:35 (“Guys were spitting it out.”) (quoting Jim Yarbrough); id. at 9:41–9:42 (“It tasted horrible.”) (quoting UF defensive back Allen Trammell); id. at 9:52–9:53 (“It tasted awful”) (quoting Mary Cade, wife of Dr. Robert Cade). 78 ROVELL, supra note 3, at 22 (quoting UF offensive lineman Larry Gagner). 79 See, e.g., Rogin, supra note 17 (“Worse yet were their attempts to dissolve glucose. ‘We poured water on it and it turned into rock,’ he recalls.”) (quoting Dr. Cade). 80 The article will generically refer to Dr. Cade and his team as “the scientists,” “the creators,” or “the inventors.” See Sweat Solution, supra note 9, at 10:12–10:17 (“So a team of scientists developed something my hot and sweaty boys could drink during the game.”) (quoting footage of UF head football coach Ray Graves) (emphasis added); id. at 5:51–5:54 (“Dr. Cade to us was more of a scientist than a doctor.”) (quoting Jim Yarbrough). 81 See Rogin, supra note 17 (“Gatorade won't work unless the athletes are willing to drink it . . .”). 82 See Kays, supra note 10 (“By all accounts, the first batch tasted so bad none of the scientists could stomach it, but when Cade’s wife suggested adding lemon juice, the drink that would soon become known as Gatorade was born.”); Sweat Solution, supra note 9, at 9:58–10:03 (“When he came home [Dr. Cade] asked me, ‘What could you do with it,’ and I said, ‘How about lemon?’”) (quoting Mary Cade). 83 See Rogin, supra note 17. Squeezing lemons caused what Dr. Cade called “lemon-squeezers’ cramp,” so the scientists tried Rea-Lemon, a product that made the 288 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
reasons, the players tolerated the beverage.84 Within weeks, the freshmen players drinking the creation during practices developed an affinity for it.85
III. PROVEN ON THE FIELD: A GROWING REPUTATION & EARLY COMMERCIALIZATION EFFORTS
At the start,86 Gators head football coach Ray Graves was unwilling to let Dr. Cade and his team conduct experiments on his own varsity team.87 The scientists’ breakthrough occurred during the so-called “Toilet Bowl”—a weekly scrimmage between the freshmen and the B team (the second unit behind the starters)88—during which the freshmen drank the scientists’ prototyped beverage while the B team did not.89 Down 13–0 at halftime against a team of more mature and experienced players,90 the freshmen reversed their fortunes in the second half to win
solution tasted like turpentine due to the terpenes in lemons. Id. Dr. Cade ultimately found a terpene-free lemon extract that happened to be sourced in Frostproof, FL. Id. 84 Sweat Solution, supra note 9, at 10:08–10:10 (“Believe it or not, the lemon juice helped.”) (quoting Chip Hinton); see also ROVELL, supra note 3, at 46 (“We knew it would never be Coca-Cola . . .”) (quoting Stokely-Van Camp chemist June Davis). 85 See Sweat Solution, supra note 9, at 8:04–8:10 (“Within six weeks we were giving stuff we would mix up to the freshman, and they were loving it.”) (quoting Gatorade co-inventor Dr. Shires); id. at 8:10–8:12 (“You could guzzle it and not get bloated.”) (8:25 mark) (quoting Jim Yarbrough). 86 See id. at 5:48–5:49 (“They said it was an experiment”) (quoting Jim Yarbrough). 87 See id. at 8:36–8:39 (“Ten freshmen players underwent the initial testing.”); id. at 5:28–5:32 (“Start out maybe with the freshmen and the B team. I’m not going to start out with the varsity.”) (quoting UF head football coach Ray Graves); id. at 5:33– 5:36 (“‘Keep your hands off my varsity,’ that’s a direct quote.”) (quoting Dr. Shires, quoting Coach Graves). 88 See ROVELL, supra note 3, at 19; Sweat Solution, supra note 9, at 8:43–8:47. See generally id. at 8:43-9:26. It is ironic that the Toilet Bowl would be won in part thanks to an early iteration of Gatorade that has been remarked to have tasted like “toilet bowl cleaner.” ROVELL, supra note 3, at 18 (“[T]he first drink tasted much like toilet bowl cleaner.”) (attributed to Dr. Shires). 89 See Sweat Solution, supra note 9, at 8:59–9:01. 90 See ROVELL, supra note 3, at 19 (“Even though the freshmen usually had more raw talent, the B team was always favored thanks to having more experience and size.”); Sweat Solution, supra note 9, at 9:04–9:06 (“We weren’t supposed to have a chance.”) (quoting George Dean). 2020 BORN IN THE LAB, PROVEN IN THE 289 MARKET
the exhibition game91 by virtue of their endurance—a difference they attributed to the scientists’ concoction.92 Since their creation demonstrated some merit in its “real first test,”93 the scientists’ miracle electrolyte solution needed a name. The creators brainstormed a handful of names for the beverage, including Cade’s Cola and Cade’s Ade.94 But creator Dr. James Free blurted out the name that stuck: Gatorade.95 The team rejected Gator-Aid—as the seemingly trivial homophonic difference may have impacted whether the beverage required regulatory approval.96 Despite continuing skepticism from head coach Graves,97 one of the convinced coaches covertly had the doctors prepare a batch to be on the sidelines one fall Saturday for Florida’s game against LSU.98 With Gatorade spontaneously appearing on their sideline,99 the Gators defeated the fifth-ranked LSU Tigers 14–7.100 The Gators would
91 See ROVELL, supra note 3, at 19 (“[T]he second half was owned by the freshmen. They scored touchdown after touchdown and didn't give up a point” after halftime.); Sweat Solution, supra note 9, at 9:11–9:12 (“The freshmen whipped their ass.”) (quoting Dr. Shires). 92 See ROVELL, supra note 3, at 20 (“The freshman apparently didn’t tire out like the B team did . . .”); id. (“Gatorade definitely helped . . . I remember feeling the lift it gave me after I drank it.”) (quoting UF quarterback Larry Rentz); Sweat Solution, supra note 9, at 9:08–9:10 (“They got tired, and we [the freshmen] didn’t.”) (quoting George Dean). 93 Sweat Solution, supra note 9, at 8:55–8:57 (referring to the Toilet Bowl) (quoting Chip Hinton). 94 See ROVELL, supra note 3, at 23. The doctors rejected Gatorade homonym Gator-Aid, as it implied a medicinal use that may require clinical testing. See id. 95 See id. at 23. UF’s football team had the nickname “Gators.” See the Birth of a Nickname, supra note 41. “-ade” is a suffix denoting “a sweetened beverage of: limeade.” See -ade, AM. HERITAGE DICTIONARY, https://ahdictionary.com/word/ search.html?q=-ade (last visited July 9, 2020). The scientists’ use of “-ade” may be incorrect, at least in the literal sense, as the beverage is not literally derived from alligators. But it is arguably correct in the metaphorical sense (as in, “a sweetened beverage [made] of the figurative perspiration and ingenuity of the Gators.”) or using an alternate definition. See -ade, DICTIONARY.COM, https://www.dictionary.com/ browse/-ade?s=t (last visited July 9, 2020) (“a noun suffix indicating a drink made of a particular fruit, normally a citrus: lemonade.”); see also Sweat Solution, supra note 9, at 10:48–10:57 (“My thoughts went to, well, it’s a fluid. A fluid like lemonade. It’s to help the Gators, what about ‘Gator-ade.’”) (quoting Dr. Free). 96 See ROVELL, supra note 3, at 23. 97 See id. at 20 (“Though the concoction seemed to help [the freshmen in the Toilet Bowl], Graves was still hesitant and was not convinced that it worked.”). 98 See id. at 20–21; Rogin, supra note 17 (“when it was first served in a game (UF vs. LSU in 1965)”). 99 See ROVELL, supra note 3, at 21 (“The first time, it just kind of showed up on the sidelines.”) (quoting UF defensive tackle Doug Splane); id. (“[Head trainer Jim] Cunningham was convinced and ordered a batch of Gatorade for the varsity team, unbeknownst to Coach Graves.”). 100 See id. at 21–22. 290 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
continue to finish the 1965 season 7–4, earning Florida its first Sugar Bowl appearance.101 The following season,102 Gatorade had its first signature moment: the Florida Gators came from behind after trailing at halftime, defeating the Auburn Tigers 30–27 in Gainesville on a game-winning field goal and improving to a 7–0 record on the season.103 Throughout the 1966 season, the University of Florida football team earned a reputation for finishing strong in the second half,104 on its way to one of the best seasons in program history.105 Like any good origin story, anecdotes of Gatorade’s effectiveness spread quickly, and before long the whole country knew the legend of Gatorade,106 its reputation surpassing any actual proof of its ability to give players superior endurance.107 After Florida’s 27–12 victory over Georgia Tech in the 1967 Orange Bowl,108 Yellow Jackets Coach Bobby Dodd said, “We didn’t have Gatorade. That made the difference.”109
101 See Florida Gators School History, supra note 42. 102 The Gators drank Gatorade throughout the 1966 season. See Sweat Solution, supra note 9, at 12:36–12:39 (subtitle). 103 See ROVELL, supra note 3, at 29. 104 See Rogin, supra note 17 (“Since 1965, when the Florida football team began drinking Gatorade, it has outscored its opponents in the second half by 379–221; in the first half the totals are 290–204.”); ROVELL, supra note 3, at 27 (“Florida [] proved to be a better team in the second half of the 1966 season.”); Sweat Solution, supra note 9, at 13:03–13:08 (“As it turned out, throughout the year, we managed to win in the fourth quarter.”) (quoting Chip Hinton). 105 The Florida Gators started the season 7–0, finished 9–2, and earned Florida’s first Orange Bowl victory. See Florida Gators School History, supra note 42. 106 E.g., ROVELL, supra note 3, at 30–31 (contributing to Gatorade’s reputation was an apocryphal tale about a group of “thugs” in trucks who forced Florida’s Gatorade truck off the road on the way to Jacksonville before a game against the University of Georgia Bulldogs). 107 See Rogin, supra note 17 (“I’d like to think Gatorade gives me more stamina and endurance. . . . I can’t prove it, but as long as I feel it does me some good I'll continue to drink it.”) (quoting Los Angeles Lakers forward Elgin Baylor); Sweat Solution, supra note 9, at 13:09–13:21 (“Now I don’t know how much of that was [quarterback] Steve Spurrier’s ability to beat them in the fourth quarter and how much was Gatorade. But, we thought it was Gatorade—and I guess that was half the war.”) (quoting Chip Hinton). But see Rogin, supra note 17 (“Preliminary observations suggest that Gatorade . . . enables an athlete to perform at a higher level for a longer period of time . . . .”). 108 1966 Florida Gators Schedule and Results, SPORTS-REFERENCE, https://www. sports-reference.com/cfb/schools/florida/1966-schedule.html (last visited July 9, 2020). 109 Rogin, supra note 17. 2020 BORN IN THE LAB, PROVEN IN THE 291 MARKET
At first, the inventors did not see the market potential for the beverage they had created.110 But before the 1966 season,111 Dr. Cade had approached the University of Florida with a proposition: For $10,000, the university could own Gatorade and a substantial portion of the royalties that could come with it.112 The University declined because of “doubts about its patentability, development costs, and market potential.”113 But as the inventors began to understand the market potential of Gatorade, they sought alternative avenues of commercialization.114 Without the means to undertake development, production, sales, marketing, and distribution themselves,115 early efforts to monetize Gatorade produced meager returns.116 Then, in the spring of 1966, an internist in the kidney clinic with Dr. Cade and Dr. Shires named Kent Bradley took a job at Indiana University Medical School.117 Through a series of fortuitous social collisions while at Indiana,118 Bradley introduced Gatorade to management at Stokely-Van Camp (Stokely),119
110 Sweat Solution, supra note 9, at 15:18–15:31 (“We thought of it as something for athletes who would use it during a game. . . . We didn’t even think of marketing it to the general public.”) (quoting Dr. Cade). 111 See ROVELL, supra note 3, at 25. 112 Darren Rovell, Royalties for Gatorade Trust Surpass $1 Billion, ESPN (Oct. 1, 2015), http://espn.go.com/college-football/story/_/id/13789009/royalties-gatorade- inventors-surpass-1-billion (“Cade offered the product in its entirety to the university’s head of sponsored research in 1966 in exchange for $10,000.”); see also ROVELL, supra note 3, at 26; Williams, supra note 21 (“But Cade first asked his department at the university to develop and patent his idea . . . He was turned down.”). 113 Bruce Galphin, Gatorade’s Creator Threatened with Suit, WASH. POST, reprinted in TUSCALOOSA NEWS, July 10, 1970, at 5; see also ROVELL, supra note 3, at 26 (“[H]e was concerned that he would get fired if it didn’t work.”) (quoting Dr. Robert Cade, alluding to UF’s head of sponsored research). 114 See ROVELL, supra note 3, at 36. 115 See ROVELL, supra note 3, at 37 (“[Dr. Cade] was happy that people were so excited about the product, but finding someone who would take on the responsibility of making and selling it was a different proposition.”); id. (“We were kind of discouraged. . . . None of us really had the money to support it.”) (quoting Gatorade co-inventor Dr. de Quesada). 116 See id. at 36–39 (detailing high schools’ lack of reliability in paying Dr. Cade for Gatorade and the small sums paid for the beverage by early clients, like the Universities of Richmond and Miami (Ohio)). 117 See ROVELL, supra note 3, at 38. 118 While at Indiana University Medical School, Bradley met Conrad Johnston, an endocrinologist at Indiana. ROVELL, supra note 3, at 38. Dr. Johnston’s wife’s sister was married to Alfred Stokely, who was chairman of the board of Stokely. Id. 119 See ROVELL, supra note 3, at 38 (“[B]radley made his way to [Stokely’s] Christmas party in 1966, where, by chance, he met Stokely and told him about the unique product made by a bunch of doctors in Gainesville. Stokely was initially intrigued . . . .”). Dr. Shires and Dr. de Quesada eventually departed UF to work at the 292 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
headquartered in Indianapolis.120 Although Stokely had successful beverage lines,121 it was best known for its pork and beans used in war rations.122 Within months,123 Stokely negotiated and secured an exclusive license to commercialize Gatorade in exchange for a $5,000 signing bonus and a royalty of five cents for every gallon of Gatorade sold.124 Upon conclusion of licensing negotiations, the inventors formed the Gatorade Trust to manage the royalties owed to the inventors.125 To protect their licensed product and facilitate commercialization, Stokely shrewdly sought intellectual property protection by trademarking the name “Gatorade”126 and seeking patent protection for such items as
Indiana University School of Medicine. See Greg Andrews, New Beverage Stirs Old Dispute Over Gatorade, INDIANAPOLIS BUS. J., Oct. 28, 1991, at A1. 120 THE ENCYCLOPEDIA OF INDIANAPOLIS 1301 (David J. Bodenhamer & Robert G. Barrows, eds. 1994) (“William B. Stokely, Jr. . . . relocated to new headquarters in Indianapolis in 1933 when the company merged with Van Camp Packing Company. . . . In 1944 Stokely-Van Camp, Inc., became the official corporate name. . . . In 1967 Stokely-Van Camp acquired the rights to produce and market the now-successful Gatorade line of beverages.”). 121 See ROVELL, supra note 3, at 43–44. 122 See ROVELL, supra note 3, at 43 (“The Type C [Ration] was a box made for soldiers that included a day’s worth of food, including the company’s bestselling Pork & Beans, beef, and candy.”). 123 It is valid to wonder if Stokely would have even been interested in Gatorade if they were unable to acquire an exclusive license. See ROVELL, supra note 3, at 42 (“[Stokely vice president and director of sales and marketing Hank] Warren wasn’t sure what the board would think, but right on the spot, he signed a letter of intent to look at the product. They came up with a three-month exclusive negotiating window.”). 124 ROVELL, supra note 3, at 46; Gator Fumble, supra note 60; see also Rogin, supra note 17 (“Last fall Dr. Cade sold Gatorade on a royalty basis to Stokely-Van Camp. . . .”). But see David E. Rosenbaum, U.S. Sues Gatorade Maker for Its Profits, Saying Grant Financed Developer, N.Y. TIMES (Aug. 12, 1971) https://www.nytimes. com/1971/08/12/archives/us-sues-gatorade-maker-for-its-profits-saying-grant-financ ed.html?searchResultPosition=15 (reporting in 1969 that Stokely’s royalty rate to the Gatorade Trust was three cents on each gallon sold plus an annual royalty of $25,000); Rovell, supra note 112 (reporting in 1993 that Stokely’s royalty rate to the Gatorade Trust was 1.9–3.6 percent of net sales, depending on the amount of Gatorade sold). For more information on licensing in the context of technology transfer and research innovations, see infra note 214–15. 125 See ROVELL, supra note 3, at 45; Karen Grassmuck, Gatorade Brings U. of Florida’s $17-Million and 5 Court Actions, CHRON. HIGHER EDUC. (June 12, 1991), https://www.chronicle.com/article/Gatorade-Brings-U-of-Florida/87070; Andrews, supra note 119. There were nine original trust members, with varying numbers of shares. Id. But see Andrews, supra note 119 (citing 10 trust beneficiaries). What became Bank One Indianapolis—then called American Fletcher National Bank—is the trustee of the Gatorade trust. Andrews, supra note 119. 126 See, e.g., GATORADE, Registration No. 848,245 (filed Sept. 21, 1967) (Registrant: STOKELY-VAN CAMP, INC.). But see Grassmuck, supra note 125 2020 BORN IN THE LAB, PROVEN IN THE 293 MARKET
“Composition of Matter for Limiting Dehydration and Fatigue During Periods of Physical Exertion.”127 Where the inventors were less knowledgeable on how to make a product consumers would actually want to drink,128 Stokely immediately worked to make Gatorade more appealing to consumers by changing the packaging,129 perfecting the
(suggesting UF trademarked the brand name for Gatorade). A search revealed 150 trademark applications containing “Gatorade.” E.g., GATORADE THIRST QUENCHER, Registration No. 1,618,668; BE LIKE MIKE DRINK GATORADE, Registration No. 1,749,144; GATORADE THE SPORTS FUEL COMPANY, Registration No. 5,025,026. 127 This invention relates to novel compositions of matter for replacing body fluids, salts, and minerals lost by an individual during vigorous physical activity and more particularly relates to a method of limiting dehydration of such individuals during the periods of vigorous activity particularly in areas of heat and excessive temperatures. Composition of Matter for Limiting Dehydration and Fatigue During Periods of Physical Exertion, G.B. Patent No. 1,252,781 at 1 l. 11 (filed Jan. 16, 1969). Other research indicated that Stokely had three pending patent applications, all of which it abandoned as part of a settlement with the U.S. government. See infra note 184. Based on patent applications outside the U.S. (some of which became issued patents) claiming priority to the U.S. applications, all three patent applications were provisional patent applications that Stokely did not convert to non-provisional patent applications. The U.S. Patent and Trademark Office does not publish provisional patent applications. See, e.g., Neth. Patent No. 6,808,084 A; Lux. Patent Application No. 56,222 A1; Fr. Patent No. 1,570,800 A (issued); Spain Pat. No. 35,714 A0; Ger. Patent No. 1,767,652 A1; Gr. Brit. Patent No. 1,252,781; Swed. Patent No. 372,170 B; Ger. Patent No. 1,767,652 B2; Neth. Patent No. 156,603 B; Swed. Patent No. 372,170 C (all claiming priority to U.S. Provisional Patent No. 644,318 (filed June 6, 1967)); Gr. Brit. Patent No. 1,204,055 (claiming priority to U.S. Provisional Patent No. 759,209 (filed Sept. 10, 1968)); Isr. Patent Application No. 33,521 D0; Ger. Patent Application No. 1,956,149 A1; Isr. Patent Application No. 33,521 A (claiming priority to U.S. Provisional Patent No. 829,797 (filed June 1, 1969)); see also Can. Patent No. 897,065 (claiming priority to no U.S. patent application). The author could find no evidence of a published U.S. patent application related to a Gatorade product before 1991. See Compositions and Methods for Achieving Improved Physiological Response to Exercise, U.S. Patent No. 4,981,687 (filed July 17, 1989); see also ROVELL, supra note 3, at 36 (describing how the doctors, with help from professional colleague Eugene Tubbs, “found a lawyer in Orlando, who began the process of registering the initial patent for the sports drink and trademarking its unique name.”). 128 See supra text accompanying notes 77–79 (taste); see also Rogin, supra note 17 (“When the product came to us it had a relatively flat taste, for the art of flavor had not come to the docs.”); Sweat Solution, supra note 9, at 15:18–15:31 (“We thought of it as something for athletes who would use it during a game . . . We didn’t even think of marketing it to the general public.”) (quoting Dr. Cade). 129 See ROVELL, supra note 3, at 63 (“Stokely was back, and [Gatorade] introduced an icon that would soon become synonymous with the Gatorade brand––the lightning bolt.”). 294 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
taste,130 altering the color,131 and adding cloudiness that “connotes substance to a drink.”132 While the Gatorade inventors may have disagreed with some changes they found “physiologically ridiculous,”133 their vision of the beverage was sure to be different than a licensee interested in putting Gatorade “in every home” in America.134 Although Gatorade did not thrive commercially overnight,135 its legend as a miraculous performance enhancer continued to grow.136 It developed cult status as journalists used Gatorade as a deus ex machina137 to create compelling copy and neat narratives.138 Still in its infancy as a commercial product, Gatorade became the official sports drink of the National Football League (NFL).139 The NFL’s Green Bay Packers and Kansas City Chiefs—winners of three of the first four Super Bowls140—both drank
130 See Rogin, supra note 17 (“Gatorade now has a distinct lemon-lime taste and is considerably sweeter than Dr. Cade's home brew.”). Stokely’s national sales manager called Gatorade “really awful” before Stokely altered Gatorade’s flavor. ROVELL, supra note 3, at 42 (quoting Bob Rice). 131 See Rogin, supra note 17 (“It is also greenish yellow and opaque, whereas the original Gatorade was clear and colorless.”). 132 Id. (“[A] cloudy product is more popular than a clear one—it connotes substance to a drink.”) (quoting Jack Mooney). See generally ROVELL, supra note 3 at 46 (“[I]n order to make more money, Stokely had a couple things that it had to take care of before Gatorade hit the market.”). 133 Rogin, supra note 17 (“If you're thirsty you don't drink peach juice . . . . This is physiologically ridiculous.”) (quoting Dr. Cade). 134 Id. (“We can live with the team business, . . . but Gatorade's so good we want it in every home. We want to see what your wife says, your mother, as opposed to the 280-pound tackle.”) (quoting Jack Mooney). 135 See Joe Kays & Arline Phillips-Han, Gatorade: The Idea that Launched an Industry, EXPLORE, Spring 2003, at 4, 5 (“[In 1967] Stokely-Van Camp [began] selling hundreds of thousands of gallons of Gatorade annually. . . . The next few years were marked by a series of legal disputes that were ultimately settled in 1973. . . .”), https://research.ufl.edu/publications/explore/v08n1/gatorade.html. 136 See id. at 5 (“In 1983, the Quaker Oats Co. purchased Stokely-Van Camp and, as UF marketing Professor Richard Lutz describes it, ‘launched Gatorade from a sleepy little brand into superstardom.’”). 137 Deus ex Machina, TV TROPES, https://tvtropes.org/pmwiki/pmwiki.php/ Main/DeusExMachina (last visited July 9, 2020) (“A Deus ex Machina . . . is when some new event, character, ability, or object solves a seemingly unsolvable problem in a sudden, unexpected way.”). 138 E.g., Neil Amdur, Florida’s Pause that Refreshes: “Nip of Gatorade”, MIAMI HERALD, Nov. 30, 1966, at 4D; Furman Bisher, Dr. Cade’s Magic Elixir, TAMPA TRIB.-NEWS, May 31, 1970, at G1–G3; Red Smith, Florida Finds Its Stamina in Gatorade, WASH. POST, Sept. 10, 1967 at B4; Doctor Puts Punch in Team Water, WASH. POST, Dec. 15, 1966, at K1. 139 See ROVELL, supra note 3, at 50. 140 Pro Football & NFL History, PRO FOOTBALL REFERENCE, https://www.pro- football-reference.com/ years/. 2020 BORN IN THE LAB, PROVEN IN THE 295 MARKET
Gatorade and credited it for their success.141 Many professional and college football teams soon followed, along with teams in other major professional sports.142 High-profile athletes and celebrities such as Jerry West,143 Arthur Ashe,144 Elvis Presley,145 and others became devotees of the beverage.146 Although there were a few hiccups to overcome in early commercialization efforts,147 Gatorade benefitted
141 See ROVELL, supra note 3, at 51 (“If the Packers stop buying it for the whole team, I’ll go out and buy it myself out of my own pocket.”) (quoting Green Bay Packers offensive lineman Jerry Kramer); Rogin, supra note 17 (“In fact, Gatorade is one of two products Vince Lombardi endorses. . . . [Kansas City Chiefs] Coach Hank Stram says, ‘It has made an amazing difference in the physical capabilities of our squad.’”); Heritage and History of Gatorade, supra note 30 (“The [Kansas City] Chiefs were so impressed with the ‘Gator coach's aid [suggested by UF head football coach Ray Graves]’ that they kept it on their sidelines throughout the entire season . . . which concluded with a stunning victory over the heavily favored Minnesota Vikings in Super Bowl IV.”) (ellipsis in original); Rogin, supra note 17 (“After the [NFL’s Kansas City] Chiefs started using Gatorade, Mays’s cramps disappeared, and he now drops only about seven pounds a game.”). 142 See ROVELL, supra note 3 at 49–50 (describing the adoption of Gatorade by college football teams at Purdue, Notre Dame, and Army); Rogin, supra note 17 (describing that sixteen AFL/NFL teams, nine NBA/ABA teams, five NHL clubs, nine MLB teams, the U.S. Davis Cup team, and sixty-nine college football teams all drank Gatorade as soon as 1968); U. of Florida Gets $115,296 in First Gatorade Royalties, N.Y. TIMES (Sept. 16, 1973), https://www.nytimes.com/1973/09/16/archives/u-of- florida-gets-115296-in-first-gatorade-royalties- promotional.html?searchResultPosition=33 [hereinafter First Gatorade Royalties] (reporting that “the National Football League officially approves [Gatorade] for its teams and all but the Oakland Raiders use it.”). 143 See Rogin, supra note 17 (“I drink it like mad during a game. . . . Since I've used it I never get that real tired, totally exhausted feeling you get in a pressure game.”) (quoting Jerry West). 144 See ROVELL, supra note 3, at 55. 145 See ROVELL, supra note 3, at 57–58. 146 See, e.g., ROVELL, supra note 3, at 4–5 (discussing how racehorses, Michael Phelps, publishing magnate Larry Flynt, former Vice President Al Gore, and the rock band KISS are all regular Gatorade drinkers). 147 See, e.g., ROVELL, supra note 3, at 58–62 (detailing how in 1969, the FDA banned cyclamate—then used in Gatorade as a sweetener—and Stokely had to reformulate Gatorade with a combination of glucose and fructose); First Gatorade Royalties, supra note 142; see also infra Part VI. 296 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
greatly from fortunate timing,148 positive publicity,149 and its affiliation with a successful college football program.150
IV. WON IN COURT: THE LEGAL BATTLE OVER GATORADE
Although Gatorade may not have turned a significant profit immediately,151 it was still a coveted brand and consumer product in 1969.152 Building on its success with athletes,153 Gatorade licensee Stokely initially targeted the active consumer,154 but nevertheless
148 See, e.g., ROVELL, supra note 3, at 52–53 (“The government was embarking on a national effort to educate Americans on the benefits of vigorous activity, and those who were already exercising tried Gatorade and always seemed to be enthusiastic about it, giving it credit for their performance.”); id. at 55 (“Gatorade hit at a particular time in our cultural history where people started to realize that the use of nutritional supplements was crucial to performance. . . . [I]t was at a time when people were primed to connect science with performance.”) (quoting sports sociologist Jay Coakley). 149 See generally ROVELL, supra note 3, at 49–59; e.g., id. at 49 (“[W]hen the media inquired, Gatorade drinkers and customers would swear by it without any prompting from Stokely.”); id. at 53 (“People [all over the country] knew what Gatorade was, thanks in part to an article by Gil Rogin that appeared in the July 1 issue of Sports Illustrated that year. . . . [I]t was yet another unplanned coup for the brand that continued to be rewarded for being unique.”) (referring to Rogin, supra note 17). 150 ROVELL, supra note 3, at 47. (“[A]n informal poll revealed that Gatorade was already a well-recognized brand name. To destroy the name would be to destroy its association with the [University of Florida]’s teams, which had enjoyed such great success while using it.”) (discussing a contemplated name change of Gatorade by Stokely circa 1967). 151 See Rosenbaum, supra note 124 (quoting a Stokely spokesperson who claimed Gatorade had “never been a substantial contributor or loss item to the company.”); Gatorade and Patent Policy, 100 SCI. NEWS 143, 143 (1971) (“D.H. McVey, senior vice president of Stokely, says his company . . . has made no money on the product to date [Sept. 4, 1971].”). But see ROVELL, supra note 3, (“[T]he money I’m making from Gatorade is several times more than the salary I’m making at the university.”) (quoting Dr. Cade in 1968); Rosenbaum, supra note 124 (indicating in 1971 $1.8 million per year in royalties generated by Gatorade would “not be unreasonable”); Grassmuck, supra note 125 (stating royalties “reached $200,000 a year” by 1970); First Gatorade Royalties, supra note 142 (reporting (based on the University’s received royalties) yearly sales of Gatorade are about 10 million gallons with a resulting gross, for Stokely, of close to $15-million). 152 See ROVELL, supra note 3, at 56 (“By June 1969, Gatorade had become the pride and joy of the Stokely brand.”); Galphin, supra note 113 (“Gatorade has become a star of the Stokely Van-Camp line.”). 153 See First Gatorade Royalties, supra note 142 (“Gatorade’s principal popularity is among athletes, for whom it was originally developed.”); see also supra notes 140– 46. 154 See First Gatorade Royalties, supra note 142 (from 1973) (“Gatorade’s principal popularity is among athletes, for whom it was originally developed.”); ROVELL, supra note 3, at 97 (“[T]he brand had grown rapidly thanks to a broadened 2020 BORN IN THE LAB, PROVEN IN THE 297 MARKET
doubled down on the brand’s broader appeal by investing in Gatorade with extensive marketing efforts.155 Meanwhile, the University of Florida received criticism for balking on Cade’s offer to purchase the drink and missing out on a “piece of the pie” even as Gatorade was still generating modest royalties.156 Whispers that the university would file a lawsuit hung over the heads of the inventors and Stokely.157 An upset Cade remarked, “Sometimes I’m sorry I ever invented the thing.”158 Like the university, Uncle Sam felt left out of the Gatorade party.159 When his team developed Gatorade, Dr. Cade had been working under a grant from the National Institutes of Health (NIH),160 an agency of the United States government.161 The purpose of the grant was to study the “sodium levels in the kidneys of rats.”162 As a result, the Department of Health, Education and Welfare—then home to the NIH163—wanted
availability and a targeted campaign that was meant to acquaint potential active consumers with the benefits of the drink.”). 155 See ROVELL, supra note 3, at 56 (citing “a $4 million advertising campaign— the most Stokely had ever spent on a single campaign for one of its brands.”); First Gatorade Royalties, supra note 142 (reporting in 1973 “a $2-million promotional program on television just started by Stokely-Van Camp and by expansion of sales into the international field”). 156 See ROVELL, supra note 3, at 68 (“[W]hen news got out that the university wasn’t getting a piece of the pie, school officials had a lot of explaining to do.”); e.g., Gator Fumble, supra note 60 (calling UF Chancellor Robert Mautz’s comment, “At some point, somebody dropped a stitch,” “one of the understatements of the year”). See generally ROVELL, supra note 3, at 68–71. 157 See Rovell, supra note 112. 158 ROVELL, supra note 3, at 67 (quoting Scientific Research). 159 See ROVELL, supra note 3, at 65–66 (“[Jan. 1967] the U.S. government informed Cade that since his work had been done under its grant, [Gatorade] might be his to patent.”); Grassmuck, supra note 125 (“[The royalties] attracted the attention of . . . the federal government . . . .”). 160 See ROVELL, supra note 3, at 65 (“Over a five-year period, the NIH had given Cade more than $80,000 to perform his research.”); Gator Fumble, supra note 60 (“[Dr. Cade] has held a succession of research grants from Uncle Sam, including one for $57,296 under which Gatorade was developed.”); Rosenbaum, supra note 124 (“A Justice Department spokesman said the [government] grants [used to develop Gatorade] amounted to $35,000 to $40,000 a year, not all of which went to Dr. Cade.”). But see infra notes 167–68. 161 Who We Are, NAT’L INST. OF HEALTH, https://www.nih.gov/about-nih/who- we-are (last visited Apr. 1, 2020) (“The National Institutes of Health (NIH), a part of the U.S. Department of Health and Human Services [HHS], is the nation’s medical research agency . . . .”). 162 ROVELL, supra note 3, at 65. 163 NIH was part of the Department of Health, Education and Welfare (HEW) in the 1960s and has been part of the Department of Health and Human Services (HHS) since 1980. See A Common Thread of Service: A History of the Department of Health, Education, and Welfare, U.S. DEP’T OF HEALTH & HUM. SERV. (June 1, 1971), https://aspe.hhs.gov/report/common-thread-service (“The Department of Health, 298 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
some of the profits.164 The agency’s policy at the time was that it owned inventions developed under grant-funded research.165 The federal government was also taking an aggressive stance on patent ownership during that time, engaging in other high-profile lawsuits to secure ownership.166 Although as little as $42 of the grant funding may have been expended developing Gatorade,167 the government contended that it owned Gatorade as an invention developed under a federal grant.168 To preempt what appeared to be inevitable,169 the Gatorade Trust filed suit170 against the United States and the University of Florida in
Education, and Welfare [HEW] was created on April 11, 1953, when Reorganization Plan No. 1 of 1953 became effective. . . . The Reorganization Plan abolished the Federal Security Agency and transferred all of its functions to the Secretary of HEW and all components of the Agency to the Department.”); HHS Historical Highlights, U.S. DEP’T OF HEALTH & HUM. SERV., https://www.hhs.gov/about/historical- highlights/index.html#:~:text=The%20Department%20of%20Health%2C%20Educat ion,)%20on%20May%204%2C%201980.&text=The%20Health%20Care%20Financ ing%20Administration%20was%20created%20to%20manage%20Medicare,from%2 0the%20Social%20Security%20Administration. (last visited Sept. 3, 2020) (“HEW became the Department of Health and Human Services (HHS) on May 4, 1980.”). 164 See ROVELL, supra note 3, at 72. 165 See Rosenbaum, supra note 124 (“The Government contends that . . . all inventions arising out of such grants are the property of the Government.”). See generally infra notes 200–02. 166 See Vicki Loise & Ashley J. Stevens, The Bayh-Dole Act Turns 30, 45 LES NOUVELLES 185, 185 (2010) (citing three controversial 1960s cases concerning Gatorade, 5-fluorouracil, and the phenylketonuria test in which the government asserted ownership of patents based on research it funded). 167 See ROVELL, supra note 3, at 78 (“Cade . . . had also admitted to using $42 worth of supplies (in the form of radioactive sulfate to measure the extracellular fluid volumes in the players) that were earmarked for the research covered by the grant.”); Rosenbaum, supra note 124 (“In the past, [Dr. Cade] has said that it took him only a week to do the research that resulted in Gatorade and that during that time he spent only $42 of Government money.”); Williams, supra note 21, at A26 (“Dr. Robert J. Cade, an associate professor of medicine at the university, used his own time and money to develop Gatorade.”). 168 See Galphin, supra note 113 (stating that Cade worked under the NIH, and its parent department, HEW, was asserting a proprietary interest in Gatorade); Grassmuck, supra note 125 (“[T]he federal government . . . decided that year to claim the rights to profits because the drink had been developed while the doctors were employed by the university and were conducting research under a grant from [HEW].”). See also Williams, supra note 21, at A26 (“[T]he National Institutes of Health also claimed rights because Cade had used NIH grants to conduct hormone research at the university.”). 169 See Galphin, supra note 113 (stating that the UF regents were preparing to sue). 170 See Am. Fletcher Nat’l Bank v. United States, No. IP70-C-0003 (S.D. Ind. filed Jan. 2, 1970) (naming Stokely, UF Board of Regents, and UF Research Foundation as co-defendants) (case closed July 28, 1972). Believing the case would be sympathetic to Florida judges, the Gatorade Trust’s lawyer “filed a motion for declaratory judgment in Indianapolis” on January 2, 1970. ROVELL, supra note 3, at 2020 BORN IN THE LAB, PROVEN IN THE 299 MARKET
1970 in the Southern District of Indiana, near Stokely headquarters.171 Some of the defendants later filed suits in Florida (the Regents of the University of Florida)172 and in the District Court of the District of Columbia (the Department of Health and Human Services (HHS)).173 All told, ownership of Gatorade and the resulting royalties would generate at least three lawsuits,174 followed over the years by many others attendant with the global brand.175 The court filings quickly transformed Gatorade from a “thirst quencher”176 to a “litigation generator.”177 What transpired in the courts would become a microcosm of the contemporary debate on sponsored research and IP in the United States. The government (through HEW) argued it had rights in Gatorade due to the federal grant funding that supported development of the invention,178 however little funding that was.179 The University of Florida wanted a piece of the financial pie to recover from the
71. Ironically, the courthouse in the Southern District of Indiana is now named for Senator Bayh, who led passage of the act that was in part a response to lawsuits like the one filed at the courthouse and that could have prevented the lawsuit if passed sooner. See infra Part V; Indianapolis, U.S. DISTRICT CT.: S. DISTRICT OF IND., https://www.insd.uscourts.gov/ (last visited May 3, 2020). 171 See Andrews, supra note 119 (“That [1972 settlement] grew out of suits filed in 1970 among a variety of parties, including the university and HEW, both of which were asserting a right to the Invention.”). 172 See ROVELL, supra note 3, at 72 (“[T]he University of Florida filed suit in Florida against the [Gatorade] trust and Stokely-Van Camp in July 1971”); Rosenbaum, supra note 124 (noting that in July 1971, the UF Board of Regents filed a suit in Florida asserting their property rights to the drink); Samantha Beckett, Gatorade Turns 50: Drink in Its History from the Gridiron to the Courthouse, ABOVE THE L.: REDLINE (Sept. 15, 2015), http://www.atlredline.com/gatorade-turns-50- drink-in-its-history-from-the-gridi r-1730753626. 173 See ROVELL, supra note 3, at 72 (“[T]he U.S. government filed suit in Washington, D.C..”); Rosenbaum, supra note 124 (“The Government sued Stokely Van Camp, Inc., today for all the profits the company has made from Gatorade.”); Beckett, supra note 172. 174 See Grassmuck, supra note 125 (claiming four lawsuits in or around 1970). 175 E.g., ROVELL, supra note 3, at 98 (discussing Sands, Taylor & Woods’ trademark infringement suit for Gatorade’s use of “Thirst Aid,” eventually resulting in a $16.3 million award); Andrews, supra note 119 (explaining the 1991 suit reopened the 1972 suit due to alleged violations of the settlement); Grassmuck, supra note 125 (discussing the 1991 lawsuit over Thirst Quencher II). 176 See Rogin, supra note 17 (“We hang with the word thirst. We call it The Superb Thirst Quencher.”) (quoting Jack Mooney). 177 Grassmuck, supra note 125. 178 See Andrews, supra note 119 (“The HEWs claim was based on the fact that one of the doctors had been working under a federal grant.”); Gatorade and Patent Policy, supra note 151, at 143 (“Because Dr. Cade was working under a Federal grant, the U.S. Government thought it should have the right.”). 179 See supra note 167. 300 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
embarrassment of passing on Dr. Cade’s offer to sell Gatorade in 1966.180 Despite declining the original ownership offer, the University still had a compelling legal position, as the inventors had relied on institutional resources181 to develop Gatorade and leveraged Gatorade’s connection to the University for marketing and securing its trademark.182 Put simply, “Without the Gators, there would be no Gatorade.”183 Ultimately, the government dismissed its case against the Gatorade Trust in exchange for the doctors forgoing the patent rights in Gatorade and publishing the formula for their composition.184 The University of Florida and the Gatorade Trust settled, with the university to receive 20% of the royalties Gatorade produced in perpetuity185 at the cost of great public ignominy to the university.186 Stokely retained the rights it
180 See supra text accompanying note 113; see also Andrews, supra note 119 (“Originally, according to [Gary Klotz, a lawyer for UF], the university had been uninterested in the Invention.”). 181 Gatorade and Patent Policy, supra note 151, at 143 (“Because Dr. Cade was on the faculty and used university students and facilities, the university . . . thought they should have the rights to the invention.”). 182 The University’s case was on better ground, highlighting Stokely’s appropriation of the Gatorade/UF connection. Members of the Gator football team were poked, prodded, and measured to prove Gatorade’s efficacy. Then, the team made headlines with strong 1965 and 1966 seasons. In its advertising, Stokely capitalized on the Gators’ success. Coach Graves and former Gator football players appeared in commercials touting the drink. Beckett, supra note 172; see also ROVELL, supra note 3, at 69–70 (“As the profits from the Gatorade brand rose, the university’s claim to the product actually became more relevant. . . . Gatorade was able to gain publicity because it was tied to the success of the University of Florida football team.”); Curtis, supra note 61 (“When profits [of Gatorade] soared, UF officials claimed their stake in the drink, arguing that its facilities, time and Gator sports were indispensable parts of Gatorade's success.”); e.g., ROVELL, supra note 3, at 70 (describing commercials from Stokely featuring former UF football players and head coach Ray Graves). 183 Beckett, supra note 172. 184 See ROVELL, supra note 3, at 74 (“In order to satisfy the government, the doctors had to promise to publish their findings about Gatorade. Stokely, which was allowed to keep the trademark for Gatorade, was required to abandon all three U.S. patent applications filed for the product.”); Beckett, supra note 172 (“The Government backed off when Stokely and the Trust agreed to abandon the three patent applications for Gatorade and published the formula in a medical journal.”); see GATORADE supra note 126 (patent applications). 185 See ROVELL, supra note 3, at 74 ($237,509 in back pay); Andrews, supra note 119; Beckett, supra note 172; Grassmuck, supra note 125. But see First Gatorade Royalties, supra note 142 (reporting that the University’s royalty rate is one cent per gallon on all Gatorade sold). 186 See, e.g., ROVELL, supra note 3, at 71 (“[A]s “Gatorade sales increased, the public fury over the university’s not getting a cut mounted.”); Gator Fumble, supra note 60 (“Dr. Cade capitalized on a series of horrendous blunders made by university 2020 BORN IN THE LAB, PROVEN IN THE 301 MARKET
had licensed to Gatorade.187 While all the legal disputes eventually wound down without impeding long-term financial success of Gatorade, the controversy provided a high-profile example of the flaws in the U.S. R&D apparatus and highlighted the need for reform.188
V. NOTICED IN CONGRESS: IP POLICY REFORM IN THE AFTERMATH OF GATORADE’S LEGAL BATTLES
The problems raised by the Gatorade fiasco189 were not isolated— by the 1960s, the federal government was funding over $1 billion in R&D190 at universities under grants and contracts191 like Dr. Cade’s.192 By the middle of the twentieth century, federally funded research at national labs, private institutions, and universities had become a novel and prominent feature of the U.S. economy.193 Federally funded
bureaucracy.”); id. (“But done right, the benefits [to UF from Gatorade] would be measurably greater.”). 187 See Grassmuck, supra note 125 (“In 1972 the university, the Gatorade Trust, Stokely-Van Camp, and the government agreed to a federal court judgment that all rights to Gatorade and any alterations, modifications, and innovations to Gatorade had been properly assigned to Stokely–Van Camp.”). 188 See infra Part V. 189 See supra Part IV. 190 In 1953 (the first year HERD data was available), the federal government granted $138 million to higher education R&D. See Higher Education Research and Development Survey: Fiscal Year 2018, NAT’L SCI. FOUND. (Jan. 6, 2020), https://ncsesdata.nsf.gov/herd/2018/ [hereinafter HERD Data] (showing in 1965, the year Gatorade was invented, the federal government provided $1 billion to higher education R&D). 191 In Bayh-Dole, grants are “funding agreements.” See Bayh-Dole Act, 37 C.F.R. § 401.2(a) (2019) (calling universities “contractors”); see also id. at § 401.2(b), (h); supra note 191 (funding agreement); infra note 247 (contractor); WALTER ISAACSON, THE INNOVATORS 217 (2014) (stating by one account, making contracts with universities and industrial laboratories was the “most significant innovation” in the “growth of science and technology”) (quoting MIT President Jerome Wiesner). 192 See supra notes 160–68. 193 See Mary L. Good, Increased Commercialization of the Academy Following the Bayh-Dole Act of 1980, in BUYING IN OR SELLING OUT: THE COMMERCIALIZATION OF THE AMERICAN RESEARCH UNIVERSITY 48, 49 (Donald G. Stein ed., 2004) (stating by the mid-1920s more than 1600 industrial research labs existed in the U.S., becoming “outlets for university research”); Peter Lee, Transcending the Tacit Dimension: Patents, Relationships, and Organizational Integration in Technology Transfer, 100 CAL. L. REV. 1503, 1503 (2012) (observing that the establishment of land-grant colleges in the nineteenth century manifested the federal government’s “commitment to funding basic scientific research.”); David Winwood, Successful U.S. Innovation Ecosystem is Under Threat, FIN. TIMES (June 11, 2015), http://www. ft.com/cms/s/2/26fd1524-f4cc-11e4-8a42-00144feab7de.html#axzz4Gs0VSkV8 (explaining the Morrill Act, signed into law by President Lincoln, codified “the role and expectations of US universities in applying scientific and engineering approaches to the challenge of building a new nation.”). But see Edward C. Walterscheid, The 302 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
research proliferated leading up to and during World War II,194 as the U.S. government realized such research could yield technological outputs with military value.195 After World War II, federal expenditures on research continued to increase196 as the U.S. sought science that was superior to the Soviets’,197 as well as industrial competitiveness between post-war friend and foe alike.198 In the war’s aftermath, the government (via the military), universities, and private corporations “fused together into an iron triangle: the military-industrial-academic complex.”199 However, no uniform national policy on intellectual property ownership of federally funded research inventions existed at that time.200 By one estimate, universities had to contend with twenty-two different patent ownership arrangements with government agencies.201 Despite the lack of uniformity, the government often came to own the inventions produced through its R&D funding.202
Need for a Uniform Government Patent Policy, 3 HARV. J. L. & TECH. 103, 103 (1990) (“Prior to the war, the role of the federal government in funding such activities was almost negligible.”). 194 See Good, supra note 193, at 50 (“World War II saw the mobilization of the nations’ scientists and engineers . . . .”). 195 See Good, supra note 193 (“[T]he results proved the value of government- funded research to the war effort.”); e.g., ISAACSON, supra note 191, at 219 (discussing government funded research of the atom bomb, radar, and air-defense systems). 196 In 1960, the federal government provided $646 million in funding to higher education for R&D. That number grew in every ensuing decade, with $1.6 billion in 1970 (406.7% increase), $4.1 billion in 1980 (248.8% increase), $9.6 billion in 1990 (235.2% increase), $17.5 billion in 2000 (182% increase), and $37.5 billion in 2010 (213.6% increase). See HERD Data, supra note 190 (percentage increases derived by author); see also Walterscheid, supra note 193, at 103 (“During the war and quickly thereafter, government funding became more and more extensive.”). 197 See Good, supra note 193 (“Federal support for research grew during the cold war era . . . . Under this regime and the overriding issue of national security, the physical sciences and engineering flourished.”); ISAACSON, supra note 191, at 228 (“On October 4, 1957, the Russians launched Sputnik, the first man-made satellite. . . . [T]he nation that funded the best science would produce the best rockets and satellites.”). 198 See Lee, supra note 193, at 1512 (“[C]oncerns [over government-owned patents stifling innovation] were exacerbated by perceptions of lagging economic competitiveness with Europe and Japan.”) (footnotes omitted). 199 ISAACSON, supra note 191, at 217. 200 See SUBCOMM. ON DOMESTIC & INT’L SCI. PLANNING & ANALYSIS OF THE HOUSE COMM. ON SCI. & TECH., 94th CONG., BACKGROUND MATERIALS ON GOVERNMENT PATENT POLICY: THE OWNERSHIP OF INVENTIONS RESULTING FROM FEDERALLY FUNDED RESEARCH AND DEVELOPMENT iii (Comm. Print 1976) [hereinafter GOVERNMENT PATENT POLICIES (1976)] (“Over the years, the Federal Government has developed patent policies on an Agency-by-Agency basis.”). 201 The Federal Squeeze on University Research, BUS. WK., June 19, 1978, at 92 [hereinafter Federal Squeeze]. 202 Although the policy varied by agency and time, most policies either provided for agency ownership or contractor ownership. See Memorandum of October 10, 2020 BORN IN THE LAB, PROVEN IN THE 303 MARKET
The government’s position was principled enough: the public funded the inventions, so the public ought to own the inventions.203 However, handling of “public ownership” was not clear-cut: inventions could be in the public domain (owned by no one and hence available to everyone)204 or owned by the government on behalf of the public (the more common scenario),205 two fundamentally different propositions (and justifications).206 The government’s prevailing stance favoring
1963: Government Patent Policy, 28 Fed. Reg. 10,943 (providing guidelines to federal agencies indicating when taking title to inventions and when granting title to the contractor was appropriate). Compare Research and Marketing Act of 1946, Pub. L. No. 79-733, 60 Stat. 1087 (requiring the Department of Agriculture obtain assignment of the results of research or otherwise make results public), and National Science Foundation Act of 1950, Pub. L. No. 85-510, 64 Stat. 149 (requiring NSF contracts have “provisions governing the disposition of inventions produce thereunder in a manner calculated to protect the public interest”), and Walterscheid, supra note 193, at 112 (finding the Atomic Energy Commission the “epitome of the title-taking approach to patent policy”) (footnotes omitted), and Federal Squeeze, supra note 201, at 92 (reporting HEW and NSF allowed arrangements where universities could license research patents), with Walterscheid, supra note 193, at 108 (suggesting the National Defense Research Committee (NDRC) and Office of Scientific Research and Development (OSRD) could “could grant title in any subject inventions made under the contract to the contractor or to anyone else.”) (internal footnote omitted), and id. at 112 (finding the Navy and War Departments, later the Department of Defense, were “classic examples” of the title-granting approach to inventions), and Federal Squeeze, supra note 201, at 93 (noting the opposition by the Department of Energy (DOE) to university licensing). 203 See Good, supra note 193, at 50 (“It was assumed that the public good would be served by an approach where private industry could use the ideas published and the government could control the science and technology for its own use.”); Walterscheid, supra note 193, at 124 (“[A group of] Congressmen shared a basically populist view predicated on the argument that research which is funded by the taxpayer belongs to the taxpayer and should be in the public domain.”) (internal footnote omitted). 204 See Good, supra note 193, at 50 (“[A]ny intellectual property discovered by government by university scientists funded by the government was either the property of the government or put into the public domain by publication of research results.”). 205 See supra note 197 (agency ownership). 206 The justification for inventions in the public domain was that the public funded the invention, hence the public should have access. See supra notes 203-04. The justification for government ownership was that the government funded the invention, hence the government should receive compensation. See Federal Squeeze, supra note 201, at 92 (“The critics say that the government has been denied income from such famous university innovations’ as computer magnetic-core memory and Gatorade.”). However, no complaints can be raised about the government’s loss of income on a public domain invention because there is no need to compensate the government to use an invention in the public domain. See Federal Squeeze, supra note 201, at 92. Yet, some sources conflate the difference between the public domain and government ownership, despite their different propositions & justifications (although proponents of either view could argue it encourages widespread adoption and maximizes public benefit). See, e.g., Gatorade and Patent Policy, supra note 146, at 143 (stating that 304 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
government ownership of research inventions as the public’s surrogate was flawed for many reasons, several of which were evident from the clash over Gatorade.207 Namely, government-owned inventions were underutilized, with as little as 5% of government-sponsored patents actually being put to commercial use, according to a 1968 statistic.208 Inventions owned but not invented by the government or public are not widely adopted because successful implementation of innovation takes effort and expertise.209 In the case of Gatorade, the inventors themselves undertook the early commercialization efforts for the beverage.210 It is unclear who would have commercialized Gatorade had the government or public owned it from the start.211 An agency bureaucrat with no hope of realizing any of the financial gain is unlikely to be highly motivated to commercialize an invention, and the government “has never distinguished itself at running a business.”212
“Government-owned patents” were “previously considered to be in the public domain”). 207 See supra Part IV. 208 U.S. GEN. ACCOUNTING OFFICE, GAO/RCED-98-126, TECHNOLOGY TRANSFER: ADMINISTRATION OF THE BAYH-DOLE ACT BY RESEARCH UNIVERSITIES (1998) (“Before the [Bayh-Dole] Act, in 1979, a government audit showed that fewer than five percent of 28,000 patented inventions that had been funded with public money had been developed.”); see also HARBRIDGE HOUSE, INC., FCST COMM. ON GOV’T PATENT POLICY, GOVERNMENT PATENT POLICY STUDY 6 (1968) [hereinafter HARBRIDGE HOUSE REPORT] (finding 12.4% of government-sponsored inventions in use); Lee, supra note 193, at 1512 (“Empirical evidence that government-owned patents achieved very low commercialization rates fueled these concerns [that government-owned patents were stifling innovation.”); Federal Squeeze, supra note 201, at 92 (citing that 15% of 28,000 government-owned patents are licensed); id. (claiming that 0 HEW-funded inventions reached the market before 1968 while sixty reached the market after the introduction of university licensing); Birch Bayh, U.S. Senator, Statement at Public Meeting of National Institutes of Health (May 25, 2004) [hereinafter Senator Bayh Statement], https://www.ott.nih.gov/sites/default/files/ documents/2004NorvirMtg/2004NorvirMtg.pdf (“However, the result of this policy was billions of taxpayer dollars spent on thousands of ideas and patents which were collecting dust . . . . [T]axpayers were getting no benefit whatsoever.”). But see Eisenberg, supra note 13, at 1680 (noting that data was flawed because institutions could elect title in inventions funded by the Department of Defense). 209 See ISAACSON, supra note 191, at 215 (“Innovation requires having at least three things: a great idea, the engineering talent to execute it, and the business savvy (plus deal-making moxie) to turn it into a successful product.”). 210 See supra Part III. 211 See NAT’L RESEARCH COUNCIL, supra note 22, at 61 (“In the pre-1980 system . . . . [government agencies] had no incentive and negligible capacity to pursue further development and commercialization . . . .”). See generally STEVEN D. LEVITT & STEPHEN J. DUBNER, FREAKONOMICS 6–21 (3d ed. 2009) (“But experts are human, and humans respond to incentives.”). 212 Federal Squeeze, supra note 201, at 92 (quoting Thomas F. Jones); see also, e.g., Michael Behar, The Forecast is Cloudy, N.Y. TIMES MAG., Oct. 23, 2016, at 26, 2020 BORN IN THE LAB, PROVEN IN THE 305 MARKET
Put simply, “federally controlled patents available to everyone end up being exploited by no one.”213 Furthermore, the government is too remote both geographically (from campuses) and socially (from the originating scientists) to be well-positioned to take advantage of research innovations developed at campuses all over the country.214 The lack of local expertise familiar with the technology impairs the possibility of commercialization for the invention. It was not merely the ownership of inventions for which the government took a counterproductive approach. The parameters of invention ownership were also of utmost importance. Perhaps the most harmful position the government took with regard to commercializing research inventions was the prohibition on exclusive licensing.215 By
28 (“There is so much stuff on the shelf that isn’t being used.”) (quoting National Weather Service Director Nezette Rydell on weather prediction technology). 213 Federal Squeeze, supra note 201, at 92 (argument from university spokespeople); see also Good, supra note 193, at 51 (“[O]ne point seemed clear: if intellectual property were left in the public domain, corporate strategist would not move aggressively toward the development of new discoveries.”); Winwood, supra note 193 (“Without strong intellectual property (IP) protection, most inventions will never see the light of day [because] the costs of developing most of them into a marketable product are significant. Without proper patent protection, no one will invest in the mere promise of an invention.”). 214 See Ajay Agrawal, University-to-Industry Knowledge Transfer: Literature Review and Unanswered Questions, 3 INT’L J. MGMT. REVS. 285, 301 (2001) (“[C]ommercialization of university inventions remains somewhat localized to the region of invention.”); Peter Lee, Patents and the University, 63 DUKE L.J. 1, 65 (2013) (“[R]representatives argued that universities were better conduits for technology transfer than agencies because they were more familiar with the inventions and had direct access to faculty inventors. In particular, universities could facilitate the direct interaction between inventors and licensees that is often critical to technology transfer.”) (footnotes omitted); Juan Alcácer & Wilbur Chung, Location Strategies and Knowledge Spillovers, 53 MGMT. SCI. 760, 760 (2007) (“Because knowledge is partially tacit and localized, its transfer requires frequent interaction that proximity facilitates.”). 215 See Ashley J. Stevens, The Enactment of Bayh-Dole, 29 J. TECH. TRANSFER 93, 94 (2004); see also Lee, supra note 188, at 1512 (“In the late 1970s, concerns grew that government-owned patents were stifling innovation, as firms would not develop inventions into commercial products without possessing exclusive rights.”); Federal Squeeze, supra note 201, at 92 (“Industry is not going to touch inventions held by the government, without exclusive licensing.”) (quoting AAAS Executive William Carey), Gatorade and Patent Policy, supra note 151, at 143 (“Commercial developers have been unwilling to buy licenses for the use of inventions since they had no guarantee of exclusive rights.”). In the context of IP, a license is permission to use the rights associated with that IP. Licensing Agreement, BLACK’S LAW DICTIONARY (10th ed. 2014). Licenses may be exclusive, unique to the licensee, or nonexclusive, by which the licensor could grant permission to multiple parties. Exclusive License, Non-exclusive License, BLACK’S LAW DICTIONARY (10th ed. 2014). 306 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
removing the incentive prompting commercialization efforts, the government had deterred the effort and thus the successful implementation of inventions.216 Without any possibility of benefiting from the profits,217 Gatorade’s inventors would likely not have expended the effort to market and sell the beverage.218 If the government had owned the electrolyte solution, Kent Bradley would not have introduced his former colleagues and Gatorade to Stokely while at Indiana.219 This profit-motive rationale is the same that underlies the entire patent system.220
At the expense of oversimplification, tech transfer ordinarily occurs by licensing the IP associated with a research innovation to one (exclusive) or more (non-exclusive) companies or licensing it to a startup or spinout company. See KYLE WELCH, SAN DIEGO STATE UNIVERSITY FOUNDERS MANUAL: A GUIDE TO RESOURCES FOR ENTREPRENEURSHIP & THE COMMERCIALIZATION OF IDEAS 34 (2019) (“Although it is not exactly a binary choice, most ideas from university settings are commercialized in one of two ways: 1. Licensed to an existing company; or 2. Created as the core idea of a new startup company.”). In the case of Gatorade, the inventors exclusively licensed the rights in their IP (likely trademark, trade secret, and patent) to Stokely in exchange for royalties on products, relying in part on those IP rights. See supra Part III. 216 Gatorade and Patent Policy, supra note 151, at 143 (describing “greater rights to Government-financed inventions to private contractors . . . a necessary incentive for commercialization.”). 217 As of 1991, Gatorade inventors earned about $8 million in royalties. Grassmuck, supra note 125. 218 See ROVELL, supra note 3, at 55 (“When [Dr. Cade] talked about how much money his product would be earning, it was his way of expressing his pride in how successful his product would one day become.”); Rogin, supra note 17 (“Of course, I wouldn't spend all of [the money from Gatorade] on medicine. My wife wants a couch and I'd like to have another violin and I'd love to get a Porsche 911 for Mike Pickering to race.”). But see ROVELL, supra note 3, at 55 (“[T]here was never any evidence to show that Cade was particularly enamored with money.”). 219 See, e.g., supra notes 118-20. 220 See U.S. CONST. art. I, § 8 (“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 . . . .”); see also Terry Healy, Wi-Fi Router, in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS 377, 383 (Claudy Op Den Kamp & Dan Hunter eds., 2019) (arguing the patent system is the “most important policy instrument” in encouraging innovation); Bradford C. Auerbach, Biotechnology Patent Law Developments in Great Britain and the United States, 6 B.C. INT’L & COMP. L. REV. 563, 566 (1983) (“The patentee exchanges full and complete disclosure of how to make and use the claimed invention for the court-protected right to exclude others from making, using or selling the claimed invention . . . .”); e.g., ISAACSON, supra note 191, at 121 (“But when it came to hardware, such as computers and microchips, a proprietary system provided incentives for a spurt of innovation in the 1950s.”). An open, non-proprietary approach can be better suited for widespread adoption and successful transfer for certain inventions—despite the lack of a limited monopoly incentive. See, e.g., ISAACSON, supra note 191, at 121 (“In the cases of the Internet, the Web, and some forms of software, the open model would turn out to work better.”); Jonathan Zittrain, Internet 2020 BORN IN THE LAB, PROVEN IN THE 307 MARKET
Had Stokely (and later Quaker Oats221) been unable to license Gatorade exclusively, there is little possibility that the company would have expended the financial resources and marketing efforts to promote Gatorade to consumers and put Gatorade on store shelves.222 By virtue of being outside of the traditional bounds of research inventions at the time—unowned by the government and able to be exclusively licensed—Gatorade served as an example of what could go right with changes to national IP policy on ownership and exclusivity of research inventions. On the other hand, the court melee over Gatorade was an example of what could go wrong without a national IP policy promoting uniformity223 and certainty224 for research inventions. While the government eased the zeal with which it clung to ownership of research inventions in the 1960s,225 still no coherent national policy existed on which university contractors could rely.
(claiming the internet would not exist without its inventions “disclaiming any property interest in its success”), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 369, 371. 221 See infra notes 268–69. 222 See supra Part III; see also Joe Kays & Arline Phillips-Han, Gatorade: The Idea that Launched an Industry, EXPLORE: RES. AT U. FLA. (2003), https://research.ufl.edu/publications/explore/v08n1/gatorade.html (“Drawing on its vast marketing resources . . . Quaker Oats was able to secure more than 80 percent of the sports beverage market for Gatorade.”); see also STANFORD, NINE POINTS, supra note 22, at 2 (“When significant investment of time and resources in a technology are needed in order to achieve its broad implementation, an exclusive license often is necessary and appropriate.”); Senator Bayh Statement, supra note 208, at 2 (“Since the government refused to permit ownership of the patents, private industry and business refused to invest the resources necessary to bring the products to consumers.”); Walterscheid, supra note 193, at 133 (“The inventions failed to be commercialized because the private sector was not willing to take the developmental investment risk associated with commercialization when competitors could then manufacture the commercial product with no legal liability.”). 223 See Gatorade and Patent Policy, supra note 151, at 143 (“Experience . . . indicated a need for revision and modification [to patent policy]”); BayhDole25, Inc., The Bayh-Dole Act at 25, U. OF N.H.: FRANKLIN PIERCE SCH. OF L. (Apr. 17, 2006), https://ipmall.law.unh.edu/sites/default/files/BAYHDOLE/BayhDole25_WhitePaper .pdf (“The general problem was clear [leading up to the Bayh-Dole Act]: despite years of debate, the federal government still lacked a uniform technology transfer policy.”). But see Gatorade and Patent Policy, supra note 151, at 143 (“[F]lexible, Government- wide policy best serves the public interest.”) (quoting President Nixon). 224 See Gatorade and Patent Policy, supra note 151, at 143 (“[A 1971 policy change] still does not make clear what will be the disposition in the Gatorade case or what will be the impact on other patents resulting from billions of dollars of Government-financed research and development.”). 225 See supra notes 165–65. 308 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
Motivated in part by the Gatorade debacle,226 the U.S. government began relenting in its stance on ownership. In 1973, President Richard Nixon released a memo on patent policy granting federal agencies the discretion to allow universities to own inventions and grant exclusive licenses,227 building momentum on suggestions from the Kennedy administration that agencies grant title in patents to contractors such as universities.228 Nevertheless, this waiver system was still uncertain and insufficient.229 As the 1970s progressed, national concerns grew about U.S. economic vitality and industrial competitiveness with countries such as Japan.230 As a result of the economic consternation, the underutilization
226 See supra Part IV; Gatorade and Patent Policy, supra note 151, at 143 (“In a move designed to simplify and clarify such matters, President Nixon . . . issued a revised statement of Government patent policy for cases involving the disposition of rights to inventions made under Government-sponsored grants and contracts.”); U.S. Patent Rein Loosened, WASH. POST, Aug. 24, 1971, at A17. 227 Memorandum of August 23, 1971: Government Patent Policy, 36 Fed. Reg. 16,887, 16,888 (discussing recommended improvements that provide agency heads authority to permit contractors to greater rights to inventions to achieve utilization or when justified by equitable circumstances); id. at 16,890 (allowing for greater contractor rights when: (1) necessary to push an invention to the point of practical application, (2) government contribution is small compared to the contractor, (3) the contract originates to build on or develop inventions for use by the government, and the work is in a field which the contractor has acquired technical competence, or (4) deemed most likely to serve the public interest); BayhDole25, Inc., supra note 223 (“[N]ixon’s administration also sought to unify policy, and generally favored granting agencies additional discretion to facilitate transfer of patent rights to the private sector.”). 228 See Memorandum of October 10, 1963: Government Patent Policy, 28 Fed. Reg. 10,943 (providing guidelines to federal agencies indicating when taking title to inventions and when granting title to the contractor was appropriate). 229 See NAT’L RESEARCH COUNCIL, supra note 22, at 61 (“[T]he uncertainty of success and the complexities of obtaining waiver of government ownership under certain agency rules were often high.”); Sheila Slaughter & Gary Rhoades, The Emergence of a Competitiveness Research and Development Policy Coalition and the Commercialization of Academic Science and Technology, 21 SCI. ,TECH., & HUM. VALUES 303, 318 (1996) (“Before the Bayh-Dole Act, universities could secure patents on federally funded research only when the federal government, through a long and cumbersome application process, granted special approval.”). 230 See Good, supra note 193, at 51 (“Japan’s economic vitality and the commercial success of Japanese manufacturing created real concern about U.S. economic competitiveness.”); Slaughter & Rhoades, supra note 229, at 316 (“In the late 1970s and early 1980s, the emerging competitiveness R&D coalition . . . the new narratives about science and technology focused more on economic competitiveness.”); Walterscheid, supra note 193, at 131 (“The legislative history makes clear that the [Bayh-Dole] Act arose out of a deep concern about the ability of U.S. industry to keep pace with its foreign competition in technological innovation.”); BayhDole25, Inc., supra note 223 (“Bayh-Dole addressed the ‘malaise’ famously described by President Jimmy Carter in a July 1979 speech.”); Stevens, supra note 2020 BORN IN THE LAB, PROVEN IN THE 309 MARKET
of research innovations,231 and the collective embarrassment with inventions “like the Gatorade skeleton,”232 proper ownership of research inventions became a debatable topic.233 Suddenly patent policy reform was on the congressional agenda— although what shape that reform took was a contested topic.234 In 1979, multiple bills on patent reform were put forth, all differing in their approaches to commercializing research innovations.235 Senator Birch Bayh (D-Ind.) was receiving pressure from Purdue University officials to allow universities to own inventions after missing out on the rewards from some of its research, then later benefitting from the discretion President Nixon extended to federal agencies.236 Senator Bob Dole (R-
215, at 93 (“[B]y the end of the 1970s it was clear that U.S. industry had lost its international competitiveness to Europe and, particularly, to Japan.”); Senator Bayh Statement, supra note 208 (“By the late 70s, America had lost its technological advantage.”). 231 See BayhDole25, Inc., supra note 223 (referring to the NDRC, the MIT Radiation Laboratory, and the Manhattan Project) (“Beginning in 1978, forward- looking members of Congress realized that the U.S. could no longer afford to receive minimal returns on its now considerable annual investment of nearly $8 billion in largely university-based research and development.”). 232 See also Gator Fumble, supra note 60, at 4A (describing Dr. Cade as “effervescent”); Federal Squeeze, supra note 201, at 92 (“Another favored example [of the government being denied income from a famous university innovation] is Gatorade . . . .”). 233 See, e.g., GOVERNMENT PATENT POLICIES, supra note 200, at iii (“[T]he impact of these policies for patenting and licensing federally-funded R. & D. results have been suggested as a timely subject for review.”); U.S. DEP’T OF JUSTICE, INVESTIGATION OF GOVERNMENT PATENT PRACTICES AND POLICIES: REPORT AND RECOMMENDATION OF THE ATTORNEY GENERAL TO THE PRESIDENT 89–90 (1947); see also Lee, supra note 193, at 1512 (“Since the rapid expansion of government science funding following World War II, the federal government has wrestled with the question of who should take title to patents arising from federal funds.”). 234 See Walterscheid, supra note 193, at 131 (“The Bayh-Dole Act was the culmination of significant Congressional consideration and debate in the late 1970s.”); Stevens, supra note 215, at 94 (“The seemingly arcane issue of government patent policy became a battlefield for these competing philosophies as economic stagnation pushed this issue to the fore.”). 235 See BayhDole25, Inc., supra note 223 (“The Stevenson-Wydler Act, passed at roughly the same time, pursued a different approach, and centralized technology licensing authority for government laboratories.”); see also Stevens, supra note 215, at 98 (describing the Bayh-Dole Act and the Stevenson-Wydler Act as “diametrically opposite in their spirit and intent.”). 236 See Memorandum of August 23, 1971: Government Patent Policy, 36 Fed. Reg. 16,887, 16,888; Jason F. Perkins & William G. Tierney, The Bayh–Dole Act, Technology Transfer and the Public Interest, 28 INDUS. & HIGHER ED. 143, 144 (2014) (“[P]urdue University . . . contacted Birch Bayh, Indiana’s senator to investigate options for change.”). 310 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
Kan.) had also explored the underutilization of research due to a lack of economic incentive.237 The fallout from the Gatorade litigation238 and the royalties forfeited by the University of Florida hung over the debate over IP policy reform.239 In 1980, Congress passed the Bayh-Dole Act,240 which incorporated some of the lessons learned from the litigation surrounding Gatorade.241 The act’s passage was largely a tribute to Senator Bayh242 despite strong bipartisan support.243 Although his administration opposed the law,244 President Jimmy Carter signed the Bayh-Dole Act into law on December 12, 1980.245 The Bayh-Dole Act finally provided a national, uniform, clear policy246 regarding research inventions produced at universities, other
237 See Perkins & Tierney, supra note 236, at 144 (“[Senator Dole] investigated how important research discoveries and innovations were inefficiently utilized without economic incentives in place.”). For more information on the under-utilization of research, see supra notes 208, 231. 238 See Gatorade and Patent Policy, supra note 151 (“[Nixon’s patent guidelines do] not make it clear what will be the disposition of the Gatorade case or what will be the impact on other patents resulting from billions of dollars of Government-financed research and development.”); Stevens, supra note 215, at 94 (“[T]he federal government sued Stokely Van Camp in 1965 to force the company to abandon the patents filed on Gatorade . . . . Some people had started to realize that this idealistic approach was inhibiting the development of promising inventions simply because the government owned the rights.”). 239 See GOVERNMENT PATENT POLICIES (1976), supra note 200, at 91 (“The rise of interest in patents among nonprofit institutions has been fanned by reports in the press and popular periodicals about the ‘gold mine’ of patentable research findings. Scarcely a month goes by without a report or a feature article on [other examples] or a super-juice called ‘Gator Ade’ at the University of Florida.”). 240 Bayh-Dole Act, 37 C.F.R. § 401 (2019). 241 See supra notes 226–29; e.g., infra notes 248–49 (allowing universities to own research inventions); e.g., infra note 253 (allowing universities to license inventions exclusively). 242 See Stevens, supra note 215, at 97 (“As a farewell present to Birch, you’ve got it.”) (quoting Wiley Jones, staffer of Sen. Russell Long (D-La.), the most vocal opponent to the Bayh-Dole Act); id. (describing Sen. Long’s “willingness to yield” on his opposition to Bayh-Dole as a “senatorial courtesy”). 243 See Stevens, supra note 215, at 96 (describing how very politically diverse senators supported the bill that became the Bayh-Dole Act and describing its unanimous approval in the Senate Judiciary Committee as “a remarkable achievement”). 244 See Stevens, supra note 215, at 93 (“Bayh-Dole . . . barely survived a pocket veto by Jimmy Carter, who signed it into law on the last day possible.”). See generally id. at 98. 245 H.R. 6933, 96th Cong., (1980). 246 See Bayh-Dole Act, 37 C.F.R. § 401.3(a) (2019) (“Each funding agreement awarded to a contractor . . . shall contain the clause found in § 401.14.”); see also id. § 401.14(a), at Standard Patent Rights [hereinafter Bayh-Dole Act, at SPRC (for “Standard Patent Rights Clause” as defined in § 401.14(a))]; 96 CONG. REC. H29,901 2020 BORN IN THE LAB, PROVEN IN THE 311 MARKET
research institutions, and small businesses.247 Most importantly, the Bayh-Dole Act permitted universities to own research inventions developed through federal R&D in nearly all circumstances,248 the Act’s chief contribution to the national research apparatus.249 This policy innovation “put universities in the business of technology transfer”250 and “the process of getting ideas from lab to markets.”251 Although this article focuses on tech transfer in the context of American universities, the Bayh-Dole Act also allowed individuals, small businesses, and other nonprofit organizations besides universities to own the fruits of their inventive labor.252 In addition to allowing universities to own the products of federally funded research, the Bayh-Dole Act allowed universities to exclusively
(daily ed. Nov. 17, 1980) (statement of Rep. Hollenbeck) (describing the Bayh-Dole Act as “[A] large step forward in the direction of improving the uniformity and quality of our patent laws [that] will help to stimulate industrial innovation and economic productivity by increasing the commercial development of Federal R&D.”); see infra note 247. The Bayh-Dole Act was “the first patent policy statute applicable to all federal agencies.” Walterscheid, supra note 193, at 129. But see generally id. (arguing for a more uniform patent policy than that implemented by the Bayh-Dole Act). 247 37 C.F.R. § 401.2(b) (“The term contractor means any person, small business firm or nonprofit organization . . . which is party to a funding agreement.”); id. § 401.2(a) (“The term funding agreement means any contract, grant, or cooperative agreement entered into between any Federal agency . . . and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the Federal government.”); id. § 401.14, at SPRC(a) (“Nonprofit Organization means a university or other institution of higher education or an organization of the type described in [the applicable sections of the Internal Revenue Code] or any nonprofit scientific or educational organization qualified under a state nonprofit organization statute.”). Because the article focuses on research inventions in the university context, “university” may hereinafter be used to stand in for “contractor.” 248 See 37 C.F.R. § 401.14, at SPRC(b) (“The Contractor may retain the entire right, title, and interest throughout the world to each subject invention subject to the provisions of this clause and 35 U.S.C. 203.”); id. at (a)(2) (“Subject invention means any invention of the contractor conceived or first actually reduced to practice in the performance of work under this contract . . . .); see also Walterscheid, supra note 193, at 129 (“enacted the first patent policy statute applicable to all federal agencies.”). 249 See Lee, supra note 193, at 1514 (“For the framers of the Act, the key to commercializing government-funded inventions lay in providing universities with patent rights that they could then license to private firms.”); Slaughter & Rhoades, supra note 229, at 323 (describing how the rule changes allowed entities to enter the market creating ownership rights “on a scale with the enclosures of communal property by large landholders in Great Britain and Latin America with the onset of market economies.”). 250 Good, supra note 193, at 51; see also Meredith Wadman, The Winding Road from Ideas to Income, 453 NATURE 830, 831 (2008) (“The US wave in technology transfer began when the Bayh-Dole Act of 1980 gave universities title to ownership of inventions resulting from research funded by the federal government . . . .”). 251 Williams, supra note 21. 252 See 37 C.F.R. § 401.2(b); see also supra note 247. 312 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
license inventions,253 subject to several restrictions.254 The ability to exclusively license inventions allowed universities to find licensees willing to expend greater resources developing creations ripe for commercialization,255 as exclusivity greatly increased the value of many licenses to IP. Its proponents believed the Bayh-Dole Act’s policy changes would “enhance technology transfer to the private sector, thus promoting commercialization.”256 As a tradeoff for the new ownership powers granted, the Bayh-Dole Act imposed duties upon universities to protect federally funded inventions257 and keep the government informed of commercialization efforts.258 The Act also included restrictions on what
253 See infra note 254. The right to exclusively license inventions is not explicitly provided by the Bayh-Dole Act, but implicit in the rights associated with ownership of subject inventions and in sections of the SPRC that acknowledge and limit exclusive licensing. See id. In most circumstances, nonprofit organizations may not assign away the rights in inventions, but merely license them. See generally id.; see also 37 C.F.R. § 401.14, at SPRC(k); see also infra note 259. 254 See, e.g., 37 C.F.R. § 401.14, at SPRC(i) (“[T]he contractor agrees that neither it nor any assignee will grant to any person the exclusive right to use or sell any subject inventions in the United States unless such person agrees that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in the United States.”); id. at (b) (“With respect to any subject invention in which the Contractor retains title, the Federal government shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world.”); id. at (d) (“Conditions When the Government May Obtain Title”); id. at (j) (“March-in Rights”); id. at (k)(4) (efforts to attract small business licensees). 255 See BayhDole25, INC., supra note 223, at 21 (“Bayh-Dole created the mechanisms to allow the private sector to step in and fulfill this role [of developing technology], enabling private investors to decide which innovations showed the greatest potential for successful commercialization and then to allocate their capital and resources accordingly”); see also ROVELL, supra note 3, at 119 (“It takes sales, distribution, and research and development as well as marketing to create a business success.”). 256 Lee, supra note 193, at 1508; see also 126 CONG. REC. 22, 29899 (1980) (“So the bottom line is that if we want to see any significant commercialization of these patents, we are going to have to grant some form of exclusivity.”). 257 See, e.g., 37 C.F.R. § 401.14, at SPRC(d)(1) (“The contractor will convey to the Federal agency . . . title to any subject invention . . . .”) (emphasis removed); id. at (d)(2) (“In those countries in which the contractor fails to file patent applications . . . .”); id. at (d)(3) (“In any country in which the contractor decides not to continue the prosecution of any non-provisional patent application . . . .”); see also, e.g., supra note 253. 258 See, e.g., 37 C.F.R § 401.14, at SPRC(c)(1) (disclosure of invention to agency); id. at (c)(2) (election of title to agency); id. at (c)(3) (initial patent application); id. at (h) (reports on utilization of subject inventions); id. at (f)(1)(i) (government license); id. at (f)(1)(ii) (execution of documents to convey title to agency); id. at (f)(3) (notifications regarding prosecution decisions); id. at (f)(4) (statement of government support in patent applications). 2020 BORN IN THE LAB, PROVEN IN THE 313 MARKET
universities could do with such inventions, chiefly a prohibition on the sale of inventions to third parties.259 Gatorade’s rapid success and the consternation over its litigation had a dual impact on national IP policy: demonstrating what goes right with universities empowered to own and exclusively license research inventions260 and what goes wrong when IP policy lacks uniformity, clarity, and certainty for handling research innovations.261 In so doing, Gatorade influenced the Bayh-Dole Act,262 a bipartisan bill that unified treatment of research inventions263 by vesting in universities the power to own and commercialize those inventions via exclusive licenses.264
VI. PROVEN IN THE MARKET: GATORADE’S ASCENDANCE IN THE GLOBAL BEVERAGE BUSINESS
While universities and the government were grappling with the Bayh-Dole Act’s fundamental changes to policy for research inventions,265 Gatorade’s licensees were wrestling with the competitive
259 See id. § 401.14, at SPRC(k) (“If the contractor is a nonprofit organization, it agrees . . . Rights to a subject invention in the United States may not be assigned without the approval of the Federal agency . . . .”). 260 See supra notes 120–45. 261 See supra notes 164–83. 262 See supra notes 221–40. 263 See NAT’L RESEARCH COUNCIL, supra note 22, at 61 (“The Bayh-Dole Act substituted a system of university and small business ownership and removed the inconsistencies and uncertainties in agency policies with respect to performer rights, a considerable achievement.”); John Fraser, Communicating the Full Value of Academic Technology Transfer: Some Lessons Learned, 28 LICENSING J. 1, 1 (2008), reprinted in 1 TOMORROW’S TECH. TRANSFER 1, 9 (2009) (“Essentially, by pre- assigning the option to acquire ownership of intellectual property (IP) created using federal grants, universities and small U.S. businesses would have certainty of ownership. [Senator Bayh] believed that such certainty would increase the commercialization of academic and small-business discoveries into products that would improve the U.S. economy and U.S. competitiveness.”). 264 See supra notes 243–47. 265 See Lee, supra note 214, at 31 (“The [Bayh-Dole] Act allowed and encouraged small businesses and nonprofits that received government funds to take title to patents arising from federally funded research. Congress enacted this legislation on the view that exclusive rights were necessary to motivate additional private investment to develop patented inventions into commercial products.”) (footnote omitted); Donald S. Siegel et al., Assessing the Impact of Organizational Practices on the Relative Productivity of University Technology Transfer Offices, 32 RES. POL’Y 27, 28 (2003) (“Bayh–Dole dramatically changed incentives for firms and universities to engage in [technology transfer]. . . . [I]t allowed universities to own the patents that arise from federal research grants.”). 314 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
soft drink industry.266 Despite being a nationally-recognized brand in the late 1960s,267 Gatorade did not become a large profit-generator until the 1980s,268 long after litigation for its earnings settled.269 The Gatorade brand thrived because of its ubiquity,270 cleverly engineered by the Stokely team. After Gatorade became the “official sports drink” of the NFL,271 Stokely insisted that the players use cups and coolers branded with the Gatorade logo272—the orange coolers with white tops and green cups with the lightning bolt are today instantly recognizable to any former amateur or professional athlete.273 Partially motivated by the desire to acquire Gatorade,274 Quaker Oats Co. (Quaker) purchased Stokely in 1983, and with it the license to the sports drink.275 Gatorade continued to grow in popularity throughout the
266 See generally Karl Stark & Bill Stewart, Want to Grow Fast? Focus on Profits, Not Revenue, INC. (Oct. 15, 2013), https://www.inc.com/karl-and-bill/should-you- sacrifice-growth-for-profits.html. 267 See supra notes 135-148. 268 See Pamela G. Hollie, Quaker “Insurance” on Bid for Stokely, N.Y. TIMES, July 19, 1983, at D3 (reporting revenues of $100 million in fiscal year 1982). 269 See supra Part IV for more on the litigation surrounding Gatorade. 270 Nielsen’s Sports Sponsorship Scorecard credited Gatorade with more than 590 million impressions from logos on cups, towels, and coolers during Super Bowl XXXIX. ROVELL, supra note 3, at 92. 271 See First Gatorade Royalties, supra note 142 (reporting the NFL officially approved Gatorade for use and it was used by all but the Oakland Raiders). 272 See ROVELL, supra note 3, at 50 (“When negotiating the agreement, Jim Keys had the idea of putting in the contract that all NFL teams would have to put coolers on their sidelines for every game.”). 273 See ROVELL, supra note 3, at 51 (orange coolers with white tops”); id. (describing how a young marketing intern helped develop the “green waxed-paper cups that have been so closely connected with the Gatorade brand”); ROVELL, supra note 3, at 62 (origin of the lightning bolt logo). 274 See Hollie, supra note 268 (citing analysts stating Gatorade as a “principal attraction” for Quaker); H. J. Maidenberg, Stokely Approves Quaker Bid, N.Y. TIMES, July 18, 1983, at D1 (discussing Quaker’s attraction to Stokely based partly on its production of Gatorade). 275 See Maidenberg, supra note 274 (“The tender offer calls for Quaker Oats to buy all the 2.7 million common shares outstanding of Stokely for each, or a total of $208 million.”); Andrews, supra note 119 (discussing how Quaker purchased Stokely, which came with an exclusive license to Gatorade); see also ROVELL, supra note 3, at 78. 2020 BORN IN THE LAB, PROVEN IN THE 315 MARKET
1980s and 1990s thanks to some viral moments276 and splashy marketing.277 For instance, consider how a sideline prank became a free national advertisement and feel-good story associated with the brand. On October 20, 1985, as retribution for a week of harassment from head coach Bill Parcells,278 New York Giants defensive tackle Jim Burt dumped one of the team’s Gatorade buckets on Parcells following a victory against Washington.279 The “Gatorade shower” became a tradition for the Giants, who drenched their coach after many victories in the 1985 and 1986 seasons.280 The Giants overturned the cooler on Parcells following their Super Bowl XXI victory in January 1987, which USA TODAY later named the 42nd greatest Super Bowl moment of all time.281 The Gatorade shower remains such an iconic tradition282—especially in football—that betting on what color players dump on the winning Super Bowl coach has become a popular gambling proposition.283 The ritual has such intrinsic marketing value284 that
276 See Viral Marketing, DICTIONARY.COM, https://www.dictionary.com/browse/ viral-marketing (last visited Apr. 19, 2020) (n., “a marketing strategy that focuses on spreading information and opinions about a product or service from person to person, especially by using unconventional means such as the Internet or email.”); see also ROVELL, supra note 3, at 91 (“The Gatorade dunk basically meant we had arrived. Mainstream America included mom, apple pie, Chevrolet, and now Gatorade.”). 277 See Rovell, supra note 112 (“Things really took off when Quaker Oats bought the brand. They really knew how to connect it to what was going on the field and had all the deals with the major sports.”) (quoting Dr. Free, co-inventor of Gatorade). 278 See ROVELL, supra note 3, at 78 (“The whole week Coach Parcells was telling him how [Washington offensive lineman] Jeff Bostic was going to eat him up, and it infuriated him.”) (quoting Giants teammate Harry Carson). 279 See ROVELL, supra note 3, at 78–79 (“They waited until Parcells took his headphones off, then doused him with the orange-colored drink in the orange cooler.”). 280 See ROVELL, supra note 3, at 78–82. 281 Nate Davis, The 50 Greatest Super Bowl Moments of All Time, USA TODAY (Jan. 28, 2016, 11:03 PM), http://www.usatoday.com/story/sports/nfl/2016/01/28/ greatest-super-bowl-moments-plays-all-time/79378274/. 282 See ROVELL, supra note 3, at 77–78 (“Over nearly two decades, the dumping of the Gatorade cooler on the coach has become a tradition at every level of sports. During every fall weekend, a Gatorade dunking probably happens on a football field in every state, and the reporting of the event gives the brand thousands of free media mentions and impressions every year.”). 283 See Charles Curtis, Have Super Bowl Bettors Figured Out What Color Gatorade Will Be Poured on the Winning Coach?, USA TODAY (Feb. 2, 2020, 3:13 PM), https://ftw.usatoday.com/2020/02/2020-super-bowl-gatorade-color-bet-purple. 284 E.g., ROVELL, supra note 3, at 80 (“The media loved the display. Along with television commentators mentioning it, newspaper writers filled their columns with mentions, even noting the time left in the game when the dunk occurred. The required photo along with each Giants victory was, of course, one of Parcells getting doused.”); id. at 82 (“We had corporations in New York who wanted to get their hands on a cooler 316 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
Gatorade competitor Powerade contractually forbids players at partner schools, like the Ohio State University, from drenching their coach in Gatorade.285 By the end of the 1980s, Gatorade was generating hundreds of millions of dollars in sales for Quaker286 and solidified its status as the nation’s top-selling sports drink.287 The brand went international288 and continued to grow through the 1990s. In 1991, Gatorade scored another marketing coup by winning a competition against Coca-Cola for the endorsement of Michael Jordan,289 two-time MVP290 and two-time league champion291 for the Chicago Bulls of the National Basketball Association (NBA).292 A photo of Jordan, a lifelong Gatorade drinker,293 dunking from the free throw line in the 1988 Slam Dunk
for their annual meeting so that they could dunk their CEO who had a good year.”); id. (“[W]hen Reagan greeted the Giants [after their Super Bowl victory], he walked into the Rose Garden with an orange bucket filled with popcorn and dunked it on [N.Y. Giant Harry] Carson.”); id. at 90 (stating that “no brand has ever received more free publicity than Gatorade got and is still getting from the dunk”). 285 Murray Sperber, College Sports, Inc., in BUYING IN OR SELLING OUT: THE COMMERCIALIZATION OF THE AMERICAN RESEARCH UNIVERSITY, supra note 193, at 27 (“For example, the football players at Ohio State University are not allowed to celebrate an important victory by dousing their head coach with Gatorade . . . . The players must use PowerAde because Coca-Cola, the company that makes PowerAde, has exclusive contracts with Ohio State.”). 286 See ROVELL, supra note 3, at 98 (“Sales went up at least 25 percent each year, so that by the end of 1990, sales were approaching $900 million annually.”); Grassmuck, supra note 125 (estimating in 1991 sales were about $600 million a year). 287 See Andrews, supra note 119 (“Gatorade . . . remains the nation's No. 1 sports drink.”). 288 See supra note 155; ROVELL, supra note 3, at 96 (stating that Quaker launched Gatorade in Italy in 1987 and it became the country’s number one sports drink); id. at 123 (stating that Gatorade was doing business in 13 countries as of 1992). 289 See Stuart Elliot, It’s Official: Michael Jordan Is Now Promoting Gatorade, N.Y. TIMES, Aug. 9, 1991, at D16; see also ROVELL, supra note 3, at 98–105; Terry Lefton, To “Be Like Mike,” Gatorade Had to Poach Michael Jordan from Coke, SPORTS BUS. J. (Feb. 17, 2014), https://www.sportsbusinessdaily.com/Journal/ Issues/2014/02/17/Champions/Schmidt-Jordan.aspx; id. at 104 (“Gatorade stepped up to the table . . . with a ten-year deal worth $13.5 million.”). 290 NBA MVP & ABA Most Valuable Player Award Winners, BASKETBALL REFERENCE, https://www.basketball-reference.com/awards/mvp.html (last visited Apr. 20, 2020) (stating that Jordan won the MVP award in the 1987-88 and 1990-91 seasons and would go on to win three more times). 291 NBA & ABA League Index, BASKETBALL REFERENCE, https://www.basketball- reference.com/leagues/ (last visited Apr. 20, 2020) (stating the Chicago Bulls won the league championship in 1990–91 and 1991–92); see also Michael Jordan Stats, BASKETBALL REFERENCE, https://www.basketball-reference.com/players/j/jordami 01.html (last visited Apr. 20, 2020). 292 See Michael Jordan Stats, supra note 291. 293 See ROVELL, supra note 3, at 100 (discussing that Jordan was “a Gatorade drinker growing up,” “continued to drink Gatorade at North Carolina,” and used it to 2020 BORN IN THE LAB, PROVEN IN THE 317 MARKET
Contest (sponsored by Gatorade) would become iconic in sports and pop culture.294 After that, posters of Jordan’s dunk accompanied by the Gatorade logo295 became a fixture in dorm rooms and dens all over the country.296 By the mid-1990s, Jordan was the most popular athlete in the United States and possibly the most recognizable person in the world.297 Behind the success of its “Be Like Mike” advertising campaign with Jordan,298 Gatorade outsold Quaker’s signature oatmeal299 for the first time in 1991.300 In 2000, PepsiCo (Pepsi) acquired Quaker,301 making it a foundational licensed product for one of the world’s three largest
mitigate weight loss when he lost “as much as five pounds in water weight per game” in the NBA). 294 See Mike Fiammetta, Walter Iooss Jr. Discusses Classic Michael Jordan Photo, SPORTS ILLUSTRATED (Feb. 27, 2015), https://www.si.com/nba/2015/ 02/17/walter-iooss-jr-michael-jordan-1988-nba-dunk-contest-photo (“The result was among the most ubiquitous photos of Jordan . . . .”). Bleacher Report named the photo of Jordan the second most iconic photograph in sports history. See Michael Akelson, The 101 Most Iconic Photographs in Sports History, BLEACHER REPORT (Aug. 19, 2011), https://bleacherreport.com/articles/804404-the-101-most-iconic-photographs- in-sports-history. 295 Gatorade sports marketing head Bill Schmidt strategically “scouted out the arena beforehand and knew where the best points of interest would be.” ROVELL, supra note 3, at 101. 296 However, the most popular Jordan poster features a different classic photo than the oft-discussed iconic one, see supra note 288. E.g., Michael Jordan Famous Foul Line Dunk Vintage Sports Poster Print, ALLPOSTERS, https://www.allposters.com/- sp/Michael-Jordan-Famous-Foul-Line-Dunk-Vintage-Sports-Poster-Print- Posters_i8758797_.htm. 297 See DAVID HALBERSTAM, PLAYING FOR KEEPS: MICHAEL JORDAN AND THE WORLD HE MADE 7 (Broadway 2000) (“Whether he was the best or not, there was no doubt that he was the most compelling and most charismatic athlete in all of sports in the nineties. . . . He was arguably the most famous American in the world, more famous in distant parts of the globe than the President of the United States or any movie or rock star.”); see also ROVELL, supra note 3, at 102 (“Jordan was so big [in 1991] that the Bulls coming into town probably meant the closest form of hero worship since the Beatles.”); Oprah Winfrey and Michael Jordan Interview, YOUTUBE, at 1:00 (June 14, 2019), https://www.youtube.com/watch?v=ZaHlXVQcRFI (“[J]ust about the most famous man on the planet is here!”) (quoting Oprah Winfrey). 298 See ROVELL, supra note 3, at 105–15; see also id. at 109 (“In Gatorade’s 26- year history, this was definitely its shining moment.”). 299 Oatmeal had been Quaker’s signature product since the company’s inception. See Quaker Oats History: Oat Origins, QUAKER OATS, http://www.quakeroats.com/ about-quaker-oats/content/quaker-history.aspx (last visited Apr. 19, 2020). 300 ROVELL, supra note 3, at 109 (“[In 1991] Gatorade had, for the first time, passed oatmeal in sales.”). 301 See ROVELL, supra note 3, at 144 (discussing Pepsi’s purchase of Quaker for $13.4 billion in stock). 318 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
food and beverage companies.302 Revenues continued to grow throughout the 2000s in the now substantial sports drink market Gatorade had created,303 and sales in the 2010s exceeded $5 billion per year.304 As of 2010, Gatorade was the official sports drink of the NFL, NBA, MLB, MLS, NHL, and WNBA.305 As of 2015, Gatorade’s licensees had paid the Gatorade Trust over $1 billion in royalties.306 The University of Florida’s share of the Gatorade royalties307 had net the university $200 million as of 2016.308 By design, Gatorade continues to be omnipresent in amateur and professional athletics.309 Notably, the Gatorade brand never forgot its R&D roots, touting its connection to research whenever possible.310
302 See Chloe Sorvino, The World’s Largest Food and Restaurant Companies in 2019, FORBES (May 15, 2019, 5:50 PM), https://www.forbes.com/sites/chloesorvino/ 2019/05/15/worlds-largest-food-restaurant-co mpanies-2019/#36fced8f5f0d (stating that Anheuser-Busch, Nestle, and Pepsi are the top three food and drink companies in the world). 303 See ROVELL, supra note 3, at 126 (citing that the sports drink market “was on an upward climb toward $1 billion” in 1992). Gatorade had 83% of the sports drink market in 1992. See id. at 127. 304 Rovell, supra note 112 (“[S]ales in recent years have surpassed $5 billion a year.”); Sweat Solution, supra note 9, at 16:35 (“[In 2014], Gatorade is made by PepsiCo and accounts for more than $3 billion per year in worldwide sales.”) (on- screen text). 305 Company Fact Sheet, GATORADE (2010), https://web.archive.org/web/ 20101221172620/http://pepsico.com/Download/Gatorade_Company_Fact_Sheet.pdf ; see also Heritage and History of Gatorade, supra note 30 (“Gatorade is now also the official sports drink of the NBA, AVP, and PGA, Major League Baseball, Major League Soccer, and numerous other elite and professional organizations and teams.”). Gatorade had been the official sports drink of the NFL since the 1960s. See supra notes 138–40. 306 Rovell, supra note 112; see also The U.S. Liquid Refreshment Beverage Market Accelerated in 2015, BEVERAGE MARKETING CORP. (July 12, 2016), http://www.beveragemarketing.com/news-detail.asp?id=382 [hereinafter Beverage Market]. 307 See supra Part IV, notes 185–86 (discussing UF’s share of royalties from the Gatorade settlement). 308 Rovell, supra note 112; see also Anthony Clark, UF Still Profiting from Gatorade, GAINESVILLE SUN (Feb. 10, 2009), https://www.gainesville.com/article/ LK/20090210/news/604173062/GS (stating UF receives $12 million or more per year from Gatorade); Sweat Solution, supra note 9, at 16:50 (stating UF received over $200 million from Gatorade since 1973) (on-screen text). 309 See Heritage, supra note 30 (“Today, Gatorade can be found on the sidelines of more than 70 Division I colleges as the official sports drink of their men's and women's intercollegiate sports.”); see also ROVELL, supra note 3, at 143 (“[P]eople have come to expect [Gatorade] in a sports setting, to the point where its presence is taken for granted.”) (quoting sports sociologist Dr. Jay Coakley). 310 See Heritage, supra note 30; ROVELL, supra note 3, at 128 (“Gatorade had the science behind it to prove to the consumer that Gatorade worked. Coca-Cola didn’t have the same body of research [with Powerade].”); e.g., Thirst Quencher, supra note 2020 BORN IN THE LAB, PROVEN IN THE 319 MARKET
Over the course of a half-century, what started as a nephrologist’s pet project on a bunch of football-playing Gators became one of the most identifiable trademarks in the world,311 the apex predator of the sports drink market,312 and one of the most valuable beverage licenses on the planet.313
VII. EMULATED IN PRACTICE: LESSONS FROM THE GATORADE SAGA FOR THE COMMERCIALIZATION OF RESEARCH
While Gatorade was establishing its preeminence in the sports beverage market,314 American universities were acclimating to the changes in IP policy introduced by the Bayh-Dole Act315 and trying to replicate the success of Gatorade on their own campuses. With the advent of university ownership of federally-funded research inventions,316 universities had to build tech transfer operations that
2; Product Information, PEPSICO, https://www.pepsico.com/brands/product-in formation (last visited Apr. 26, 2020) (“With a legacy over 50 years in the making, it’s the most scientifically researched and game-tested way to replace electrolytes lost in sweat.”). The Gatorade Sports Science Institute (GSSI) was founded in 1985 to help “athletes optimize their health and performance through research and education in hydration and nutrition science.” About GSSI, GATORADE SPORTS SCI. INST., https://www.gssiweb.org/en/about/about-gssi (last visited Apr. 26, 2020). 311 Beverage Market, supra note 306 (valuing Gatorade as the “sixth largest liquid refreshment beverage trademark during [2015]”). Gatorade “expanded to Canada in 1984, Japan in 1982[,] and Europe and South America in 1988,” and was available in eighty different countries as of 2010. Company Fact Sheet, supra note 305. 312 Beverage Market, supra note 306. 313 See Kays, supra note 10 (stating that Gatorade brought UF more than $250 million in royalties); Most Valuable Soft Drink Brands Worldwide in 2019, Based on Brand Value, STATISTA (2019), https://www.statista.com/statistics/273063/leading- 15-most-valuable-global-soft-drink-brands-based-on-brand-value/ (showing Gatorade as the fourteenth most valuable soft drink brand in the world), Sports Drink Dollar Sales in the United States from 2013 to 2018, by Brand, STATISTA (2019), www.statista.com/statistics/1048937/sports-drink-brands-in-us-dollar-sales/ (showing sales of Gatorade totaled $5.5 billion in 2018, compared to $1.05 billion for Powerade and $250 million for BodyArmor). 314 See supra Parts III, VI. 315 See Rebecca Zacks, The TR University Research Scorecard 2000, MIT TECH. REV. (July 1, 2000), https://www.technologyreview.com/2000/07/01/236249/the-tr- university-research-scorecard-2000/ (“[After the Bayh-Dole Act] [u]niversities that would previously have let their intellectual property lie fallow began filing for and getting patents a unprecedented rates.”); infra Part VII for more information on the Bayh-Dole Act and its passage; see also infra note 319. 316 Bayh-Dole Act, 37 C.F.R. § 401.14, at SPRC(b) (2019) (allowing a contractor to retain title to an invention); see also supra Part V. 320 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
complied with the terms of federal awards,317 protected inventions,318 and at least nominally commercialized research innovations.319 This required an investment of great resources, and some universities adapted quickly to this new truth,320 while others were slow to build a tech transfer infrastructure.321 Although it took time for tech transfer to mature at many universities, the overall number of patents at universities grew substantially in the years immediately following the passage of the Bayh-Dole Act.322 All the while, Gatorade’s fascinating story of moving from the practice field to the top of the soft drink market has served as an
317 See Good, supra note 193, at 51–52 (discussing how the Bayh-Dole Act helped universities develop their IP through federal grants and contract); e.g., 37 C.F.R. § 401.8(a) (“[A]gencies have the right to receive periodic reports from the contractor on utilization of inventions.”); id. § 401.14, at SPRC(c)(1) (“The contractor will disclose each subject invention to the Federal Agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”); id. at (c)(2) (“The contractor will elect in writing whether or not to retain title to any such invention by notifying the Federal agency within two years of disclosure to the Federal agency.”). 318 37 C.F.R. § 401.14, at SPRC(c)(3) (stating contractors file the initial patent application); id. at (d)(2) (stating contracts convey the title to the Federal agency to any invention in countries where it failed to file a patent); id. at (d)(3) (stating contractors relinquish the title to the Federal agency in any country in which it does not continue patent prosecution); id. at (f)(1) (stating the contractor must deliver to the Federal agency all instruments necessary to establish rights the government has throughout the world in the subject inventions) (emphasis omitted); id. at (f)(2) (stating the contractor must agree to require its employees disclose any inventions and establish government rights in the inventions). 319 37 C.F.R. § 401.14, at SPRC(e)(2) (“The contractor’s domestic license may be revoked or modified . . . to achieve expeditious practical application of the subject invention . . . .”) (emphasis omitted); id. at (j) (stating the Federal agency can retain license to an invention if the contractor has not taken “effective steps to achieve practical application of the subject invention in such field of use”); id. at (j)(3) (“Such action is necessary to meet requirements for public use specified by Federal regulations.”). 320 See supra Parts III, VI; see also Wadman, supra note 250, at 831 (“At the time [of the passage of the Bayh-Dole Act], TTOs in the United States numbered in the single digits. Today, more than 230 universities have them.”). 321 See ISAACSON, supra note 191, at 450 (“[In the mid-1990s], most other elite universities emphasized scholarly research and avoided commercial endeavors.”). 322 From 1969–80, there was an average of 287.7 patents granted to American universities and colleges, but from 1981–92 there was an average of 853.8 patents granted to American universities and colleges. See University Patent Count & Expenditures, USPTO, https://developer.uspto.gov/sites/default/files/viz/university- patent-count-expenditures.xlsx (last visited Aug. 10, 2016). Since the year 2000, American universities and colleges have secured an average of 3,000 patents per year. See id.; see also NAT’L RESEARCH COUNCIL, supra note 22, at 61 (“The [Bayh-Dole Act] was followed by a surge not only in patent and licensing activity but also in universities creating internal capacity to undertake this new level of activity.”). 2020 BORN IN THE LAB, PROVEN IN THE 321 MARKET
aspirational story for universities across the country.323 Beyond being motivational, the Gatorade saga is instructive: it provides valuable lessons for American universities, policymakers, and tech transfer professionals of what to do, what not to do, and how innovation may materialize when shepherding research innovations.324 The Gatorade saga’s lessons for what to do when commercializing a research idea include the following:
• Incentivize scientists to commercialize their research by allowing them to retain a portion of the profits from commercialization;325 • Involve inventors in commercializing research innovations, such as by leveraging inventors’ personal and professional networks in identifying licensees;326
323 Andrews, supra note 119 (“[T]he invention of Gatorade is widely viewed as one of the early successes of technology transfer.”) (citing Indiana University Technology Transfer Director Mel DeGeeter). 324 See Williams, supra note 21, at A1 (“It is a classic example of how not to handle a patent idea.”) (quoting Donald Price, Dir., UF Off. Corp. Programs). Although this article focuses on university research and research innovations, there is not an extraordinary amount of literature on the origin stories of most university tech transfer inventions, even the “home runs.” See infra note 380 (examples of research innovations). 325 See supra Parts III, VI; e.g., Jorge L. Contreras & Jacob S. Sherkow, CRISPR, Surrogate Licensing, and Scientific Discovery, 355 SCI. 698, 698–99 (Feb. 17, 2017) (discussing how CRISPR patent holders exclusively licensed the right to develop therapeutics to startups with the technology’s principal researchers because it “delegates the job of licensing” in exchange for allowing the researchers to “profit far more than they otherwise would”); Jessica Silbey, Photocopier (stating Xerox inventor Chet Carlson retired “a wealthy man” from the patent royalties he shared with Battelle Memorial Institute), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 233, 234. 326 See supra ROVELL, supra note 3, at 38 (“Luckily, [Cade’s] web of colleagues was in the right place at the right time.”); supra notes 117–19 and accompanying text (outlining the relationships that led to an introduction to eventual Gatorade licensee Stokely); see also NAT’L RESEARCH COUNCIL, supra note 22, at 59 (describing licensing as one of the “mechanisms that enable or depend on repeated personal contact”); Lee, supra note 214, at 48 (“Indeed, patent-mediated technology transfer necessarily involves a high degree of personal contact between faculty inventors and licensees.”); e.g., ISAACSON, supra note 191, at 256–59 (discussing how the relationship between Robert Kahn and Vint Cerf led to the their collaboration that helped precipitate the development of the internet). 322 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
• Recognize that research327 can lead to transformative results,328 including in ways that influence culture and society;329 • Foster collaboration between scientists of varying backgrounds and disciplines;330 • Generate collisions between scientists and diverse groups of people;331 • Allow input from surprise contributors;332
327 See ROVELL, supra note 3, at 65; e.g., Healy, supra note 220, at 377 (highlight how core Wi-Fi technology was developed by radio astronomists searching for gravitational waves associated with exploding black holes); see infra note 378. 328 See infra note 394; e.g., ISAACSON, supra note 191, at 261 (state the internet would “become a transformative tool”); id. at 464 (“[Google] represented a climactic leap in the relationship between humans and machines. . . .”); Adam Mossoff, Morse Telegraph, (discussing how the NY Sun called the telegraph “the greatest revolution of modern times”), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 6; Stef van Gompel, Light Bulb (stating the light bulb “transformed the world”), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 105; Beth Webster, Bell Transistor (calling the transistor is “one of the most profound enabling technologies to be invented in the twentieth century”), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 217. 329 Despite seeming unimportant, Gatorade’s impact changed many people’s day- to-day lives, or at least their dietary habits. See ROVELL, supra note 3, at 126 (“Sports drinks were also starting to emerge as a casual drink, appearing at occasions that would otherwise be reserved for a soda.”); see infra note 362 (Gatorade “would inspire the multimillion-dollar sports beverage industry.”); see also, e.g., Melanie Brown, Oral Contraceptive Pill (claiming development of the pill was the “single biggest revolution” for women), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 225; Gompel, supra note 328, at 105 (“[B]y illuminating homes, schools, factories, offices, shop windows, theaters, street corners and parks, [light bulbs] also improved conditions for learning and reading, furthered economic and commercial progress, created opportunities for leisure and night life . . . .”); Silbey, supra note 325, at 239 (claiming Xerox copying “transformed the world”). 330 See supra Part II; e.g., ISAACSON, supra note 191, at 225 (discussing how one team that developed interactive computing (a key development enabling the internet) was half psychologists and half engineers). 331 See supra notes 55–57 (calling Dewayne Douglas’ a “coffee buddy” of the Gatorade inventors); e.g., ISAACSON, supra note 191, at 221–24 (discussing J. C. R. Licklider’s tactics for fostering collaborations that contributed to the development of the internet); Webster, supra note 328, at 221 (describing how Bell Lab’s campus “was designed to encourage physical connections between groups” and to ensure “people bumped into each other”). 332 See supra note 82 (Mrs. Cade’s suggestion of lemon juice); A “lab assistant” at the federal research lab in Peoria, Illinois, provided a moldy cantaloupe vital to culturing penicillin. See, e.g., BILL BRYSON, THE BODY 42 (2019). Stanford officemate Sean Anderson suggested that the Google cofounders name their search engine for googol, “the term for the number 1 followed by a hundred zeros.” ISAACSON, supra note 191, at 460; Stavroula Karapapa, Post-it Note (discussing how a next-door lab with on a scrap of yellow paper inspired the iconic Post-it Note color), 2020 BORN IN THE LAB, PROVEN IN THE 323 MARKET
• Recognize the potential value in seemingly “small ideas”;333 • Protect research innovations through intellectual property (especially patents),334 including multiple forms of IP if possible;335 • Partner with an external party to move ideas to the market, particularly to acquire needed expertise or business acumen;336
in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 215, at 329, 334. 333 See Sweat Solution, supra note 9, at 1:06 (quoting Phoebe Cade-Miles, daughter of Dr. Cade); see also, e.g., Healy, supra note 220, at 377 (discussing how Wi-Fi patents began to process research data, not serve in wireless network technology); ISAACSON, supra note 191, at 458 (Google cofounder “had no thought of building a search engine. . . . The idea wasn’t even on the radar.”); Megan Molteni, Crispr's Origin Story Comes to Life in a New Documentary, WIRED (Mar. 11, 2020, 8:00 AM), https://www.wired.com/story/crisprs-origin-story-comes-to-life-in-a-new- documentary/ (discussing CRISPR’s origins as a “humble yogurt culture helper”). 334 See supra note 126 (patent applications related to Gatorade); see also Lee, supra note 214, at 32 (“For universities, however, patents were seen as a necessary conduit for transferring federally funded technologies to the private sector for commercialization.”); see also, e.g., Method for Node Ranking in a Linked Database, U.S. Patent No. 6,285,999 B1 (filed Jan. 9, 1998) (Google search engine); Improvement in the Mode of Commc’ing Info. by Signals by the App. of Electro- Magnetism, U.S. Patent No. 1,647 (issued June 20, 1840) (Morse telegraph); Three- Electrode Circuit Element Utilizing Semiconductive Materials, U.S. Patent No. 2,524,035 (filed June 17, 1948) (Bell transistor); Acrylate Copolymer Microspheres, U.S. Patent No. 3,691,140 (filed Mar. 9, 1970) (Post-it note); Methods and Compositions for RNA-Directed Target DNA Modification and for RNA-Directed Modulation of Transcription, U.S. Patent No. 4,405,829 (filed Apr. 13, 2015) (CRISPR); Healy, supra note 220, at 377 (patents used in Wi-Fi); ISAACSON, supra note 191, at 121 (patents for computer hardware such as computers and microchips). 335 See supra notes 1, 30, 31, 123 (Gatorade trademarks); e.g., Lionel Bentley, Singer Sewing Machine (stating Singer found “maintaining the trademarks” related to the sewing machine “was far better than having any patent”), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 77; Catherine Bond, Aspirin Pill (discussing how Bayer held both a trademark and valid patent for Aspirin, see Bayer Co. v. United Drug Co., 272 F. 505, 507 (S.D.N.Y. 1921) for background on the trademark), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 212; Silbey, supra note 325, at 234 (Haloid Co. trademarked trademark of Xerox for); Karapapa, supra note 332, at 334 (Post-it Trademark); STANFORD CREATOR’S GUIDE, supra note 20, at 24–25 (discussing how Stanford licensed both the patent and copyrightable software code to Google). 336 See ROVELL, supra note 3, at 18 (“But we didn’t know a damn thing about flavoring.”) (quoting Dr. Shires); id. at 46–47 (describing Stokely’s efforts to improve the taste of Gatorade); see supra Parts III & VI; e.g., BRYSON, supra note 332, at 42 (discussing how federal government researchers needed to partner with American pharmaceutical companies to scale up production of penicillin). But see, e.g., ISAACSON, supra note 191, at 462–64 (discussing how Google cofounders had to start a company due to lack of initial interest from potential licensees). 324 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
• License IP exclusively to give a licensee a competitive advantage worth expending the significant investment needed to develop an idea;337 • Appreciate the value of marketing in the successful commercialization of a research innovation;338 • Capitalize on publicity and an idea’s association with the university;339 • Understand that seemingly “low-tech”340 ideas can be extremely valuable;341 • Build upon early adopters of a product or service by recognizing alternative uses or users;342
337 See supra notes 123–24; 128–31; see also STANFORD CREATOR’S GUIDE, supra note 20, at 25 (“[A]n exclusive license is often the best option to provide the company with an incentive to invest the resources needed for commercialization.”); see also, e.g., Contreras & Sherkow, supra note 325, at 698 (discussing how the key CRISPR patent holders were granted exclusive license rights to a spinout company (with respect to therapeutics)); STANFORD CREATOR’S GUIDE, supra note 20, at 25 (highlighting how Stanford exclusively licensed the copyrights associated with its search engine to Google). But see Lee, supra note 193, at 1552 (“Cetus and Genentech were among dozens of biotechnology companies that licensed” the technology behind recombinant DNA from UCSF). 338 E.g., Graham Dutfield, Viagra Pill (attributing sales of Viagra to “direct-to- consumer publicity” and media hype), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 391. 339 E.g., ISAACSON, supra note 191, at 463–64 (examining how Google cofounders capitalizing on a connection from a Stanford professor and on the “favorable buzz” to land investments from the rival top venture capital firms in Silicon Valley). 340 The term “low-tech” (adj.) means, “Of or relating to low technology.” Low- tech, AM. HERITAGE DICTIONARY, https://ahdictionary.com/word/search.html?q=low- tech (last visited Apr. 28, 2020); see also Low-tech, MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary/low-tech (last visited Apr. 28, 2020) (“technologically simple or unsophisticated”). Describing Gatorade and other inventions as “low-tech” is not intended to slight the scientific acumen required to create such inventions or overcome technical hurdles to develop it, but only the perception that such ideas are unsophisticated. See, e.g., supra notes 355 (describing Dr. Cade a “unique genius”); Rogin, supra note 79 (describing how the glucose initially “turned into rock” rather than dissolving into the water). 341 See supra Part II (listing the initial ingredients of Gatorade as water, glucose, sodium, and potassium); see also Karapapa, supra note 332, at 329 (describing the Post-it note as “a piece of stationery consisting of a small piece of paper with re- adherable stirp of adhesive on the back.”). 342 Gatorade was initially targeted at only the collegiate and professional athlete, then the hyper-active consumer. See supra note 154. Consumers quickly seized upon it for other applications. See, e.g., supra note 265; e.g., Rogin, supra note 17 (alcohol mixer); id. (hangover cure); see also id. (explaining Gatorade could be of value to soldiers, those working in engine or furnace rooms, racehorses, and the UF choir); see also, e.g., ISAACSON, supra note 191, at 226 (discussing how key developments in the creation of the internet were initially devised for air defense systems). 2020 BORN IN THE LAB, PROVEN IN THE 325 MARKET
• Avoid costly hurdles where possible;343 • Identify the profound public benefit that can result from quaint research innovations.344
The Gatorade saga’s lessons of what not to do when commercializing a research idea include the following:
• Have unclear ownership policies at the national or institutional level;345 • Lack standardized processes through which researchers can disclose or otherwise share inventions and creations with the university;346
343 See ROVELL, supra note 3, at 23, 58–62 (reviewing rejection of the name Gator-Aid to avoid potential need for regulatory approval and reformulation to eliminate FDA-banned cyclamate). 344 See Rogin, supra note 17 (arguing that Gatorade has “substantially improved not only the lot of the Florida football team but that of all sweaty mankind.”); e.g., id. (discussing use of Gatorade to prevent heat prostration, heat stroke, and incidents of injuries related to fatigue, infant diarrhea, fluid loss related to severe burns, colds, upset stomachs); Curtis, supra note 61 (highlighting the use of Gatorade “in third- world countries to fight dehydration and diarrhea”); see also, e.g., Good, supra note 193, at 53 (discussing University of Wisconsin’s development of Warfarin for “rodent eradication” but is now known as blood thinner Coumadin). 345 See Mark L. Gordon, University Controlled or Owned Technology, 30 J.C. & U.L. 641, 656 (2004) (“At the time, the University did not have a formal policy in place regarding the ownership of faculty inventions . . . .”); e.g., STANFORD CREATOR’S GUIDE, supra note 20, at 24 (discussing that Stanford did not own any IP related to Yahoo! because “use of basic desktop computers is considered incidental” but owned IP related to Google because the founders developed it “in the course of research toward their Ph.D. degree requirements.”). Oddly enough, a 1991 dispute over a new beverage line, similar to Gatorade, debatably subject to Florida’s updated patent policies would revive the 1970 dispute and spring from such an assignment document. See Andrews, supra note 119 (“According to court papers filed last April reopening the 1970 litigation, Bank One contends that one of the doctors, J. Robert Cade, bypassed the trust in assigning rights to the new drink to the University of Florida Research Foundation, an Independent fund-raising arm of the university.”). 346 See ROVELL, supra note 3, at 65 (“In December 1966 . . . . Cade was urged by an executive at the University of Florida to report his invention—more than fourteen months after it had been conceived.”). Another administrative measure is a university committee that reviews ownership issues and commercial potential of technologies— to act as a decision-making buffer for the administration. See, e.g., Andrews, supra note 119 (“What [disputes over successful technology transfer] requires is better up- front review and upfront strategy so you don’t get into these legal problems [like that surrounding Gatorade] five years later.”); Williams, supra note 21 (“Faculty members are required to disclose all inventions to a university committee that reviews the potential to obtain a patent and the commercial prospects of the invention, [Donald] Price[, Dir., UF Off. Corp. Programs,] said.”). 326 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
• Fail to obtain assignments and other important documents from creators early in the process;347 • Have an unsophisticated tech transfer operation;348 • Forecast with certainty the commercial success of a research idea at its inception;349
347 See ROVELL, supra note 3, at 68; Beckett, supra note 172 (“Dr. Cade had never signed the University’s standard invention assignment form.”); Gator Fumble, supra note 60 (“[U]niversity files . . . did not contain the usual waiver of patent rights to his discoveries.”); id. (“If the agreements between Dr. Cade and the university had been properly executed back in early 1967, the university would be getting something like 75 percent of the royalty—not 20 percent.”); Rovell, supra note 112 (“Cade had somehow never signed the standard invention agreement, which in most cases assigned about 75 percent of the earnings from a deal reached by a University of Florida employee back to the school.”); see also, e.g., Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. 776, 793 (2011) (holding that the Bayh-Dole Act did automatically vest title with Stanford, and the faculty member owned and could assign the HIV test procedure he invented); Williams, supra note 21 (“[Donald] Price[, Dir., UF Off. Corp. Programs] said [UF] now requires all of its faculty members to sign employment agreements assigning the university rights to all patents resulting from their research. . . . Such employment agreements are now common on campus.”). The Bayh-Dole Act requires universities obtain assignment for inventions developed under federal grants. See Bayh-Dole Act, 37 C.F.R. § 401.14, at SPRC(f)(2) (2019) (as amended by Rights to Federally Funded Inventions and Licensing of Government Owned Inventions, 83 Fed. Reg. 15,954, 15,962 (Apr. 13, 2018)). 348 See Auerbach, supra note 220, at 565 n.11 (“Universities with coherent patent and licensing strategies will not lose the benefits of research accomplished in their laboratories.”); Gordon, supra note 345, at 656 (“The University of Florida was not prepared to take full advantage of technology transfer when a University researcher invented Gatorade in 1965.”); Williams, supra note 21 (“If we had done Gatorade right, we would be getting $5 or $6 million [a year].”) (quoting Donald Price, Dir., UF Off. Corp. Programs) (alteration in original). Florida’s contemporaries were also prone to such misjudgments. See id. (estimating that the University of Indiana missed out on $95 million in revenues from a fluoride compound licensed to Procter & Gamble used in Crest toothpaste). 349 See Williams, supra note 21 (“Gatorade was developed in 1965 when many universities were ill equipped to judge the commercial potential of ideas emerging from their research labs. Officials blew the university’s chance to control the Gatorade royalties when they declined to develop a professor’s idea. . . . It is probably a safe bet that no university would make such a mistake today. Academia is vastly more sophisticated about the commercial potential of its research.”); see also ROVELL, supra note 3, at 45 (“[T]he $1 million price tag [flat fee requested by the doctors] wasn’t going to work, since the [Stokely] board wasn’t sure the product would ever sell. To protect itself from making a foolish investment, the board authorized . . . a royalty structure, in which the doctors would earn a percentage of the sales.”); Sweat Solution, supra note 9, at 15:10–15:31 (UF’s doubts of market potential). See also, e.g., Christopher Beauchamp, A.G. Bell Telephone (discussing Western Union’s declined opportunity to buy the telephone patent for $100,000), in A HISTORY OF INTELLECTUAL PROPERTY IN 50 OBJECTS, supra note 220, at 99. Yahoo!, Excite, and 2020 BORN IN THE LAB, PROVEN IN THE 327 MARKET
• Engage in costly litigation that could hinder commercialization;350 • Be unprepared to capitalize on useful research innovations.351
The Gatorade saga also provides lessons on how innovation may materialize with research ideas through:
• Luck, serendipity, or pure coincidence;352 • A messy, complicated, and convoluted process;353
AltaVista all passed on a $1 million offer to license the Google search engine. See ISAACSON, supra note 191, at 462. 350 However, it is likely that a highly successful commercial product will attract litigation because of the financial stakes, and in other cases litigation may be necessary to extract value from the idea if firms are infringing on the idea while evading royalties. See, e.g., ROVELL, supra note 3, at 67 (discussing how Dr. Cade’s was told to expect multiple law suits per year); see also, e.g., Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed. Cir. 1993) (lawsuit over recombinant DNA in which the Regents of the University of California were codefendants). 351 See Andrews, supra note 119 (“The wrangling [in court for Gatorade] underscores the importance of forethought in technology transfer.”) (citing Mel DeGeeter). While there are many examples where this again occurred, such mistakes usually ensure that a research invention will not be commercially successful, and many of the top research universities are sufficiently prepared to capitalize on a valuable idea. 352 See ROVELL, supra note 3, at 91 (“There are things that happen serendipitously . . . .”) (quoting former Gatorade Executive Peter Vitulli). Dewayne Douglas was a coffee buddy of Dr. Cade’s before approaching him with the Gators’ “dehydration problem.” See supra notes 55–57. Georgia Tech Coach Bobby Todd credited Gatorade for UF’s victory in the Orange Bowl. See supra notes 106–07. Alfred Stokely of Stokely-Van Camp was Kent Bradley’s coworker’s wife’s sister’s husband. See supra notes 117–20; see also, e.g., BRYSON, supra note 332, at 40–42 (discussing Alexander Fleming’s “serendipitous discovery” that mold from the genus Penicillium inhibited bacterial growth, leading to the first antibiotic); ISAACSON, supra note 191, at 451 (discussing how Google cofounder Sergey Brin was other cofounder Larry Page’s orientation guide before graduate school at Stanford). 353 See Patricia E. Campbell, University Inventions Reconsidered: Debunking the Myth of University Ownership, 11 WM. & MARY BUS. L. REV. 77, 96–97 n.110 (2019) (“[Universities] recognize that patent management is a complicated undertaking, that it is expensive and that it demands a high degree of legal competence, administrative astuteness and promotional zeal . . . .”) (footnote omitted); Lee, supra note 193, at 1539 (“[T]echnology transfer often unfolds as a complex process rather than a simple one-off conveyance of patent rights.”); Gatorade and Patent Policy, supra note 151, at 143 (“Patent law, a complicated business, becomes even more complex when universities, researchers, big business and Government get into the act. This has happened in the Gatorade case.”); see, e.g., supra Parts III & IV; see also, e.g., BRYSON, supra note 332, at 41–43 (commercializing the discovery of antibacterial mold via penicillin); Healy, supra note 220, at 77 (commercializing the Wi-Fi router). 328 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
• The ingenuity of individual or small groups of scientists;354 • The work of eccentric, brilliant creators;355 • Acts of individual-minded iconoclasts;356 • Unpredictable sources of inspiration;357 • Fortuitous timing;358 • The sheer fun of scientific experimentation.359
The most obvious and inspirational lesson from the Gatorade story is that amazing results can occur when a team of research scientists
354 E.g., ISAACSON, supra note 191, at 446–65 (Google with Larry Page and Sergey Brin); Webster, supra note 328, at 217–18 (Bell transistor with Bill Shockley, John Bardeen, and Walter Brattain). 355 Everyone who encountered or studied Dr. Cade was enamored by his eccentricities and apparent genius, which seem to have been intertwined. See supra note 60 (discussing Dr. Cade as eccentric); Rogin, supra note 17 (“When you first meet friends and colleagues of Dr. Robert Cade . . . they invariably inform you that he is a genius.”); id. (“He has a lot of different and unusual ideas, and his approaches are outstandingly different.”) (quoting one of Dr. Cade’s interns); Sweat Solution, supra note 9, at 2:15 (“Well Bob Cade was a unique genius. He could do almost anything.”) (quoting Dr. Shires); see also, e.g., BRYSON, supra note 332, at 41 (describing the principal investigator of penicillin at Oxford as eccentric); ISAACSON, supra note 191, at 221–24 (discussing some eccentricities of J.C.R. Licklider, MIT professor and “the single most important person in creating the internet”). 356 See Rogin, supra note 17 (“He's such a rebel. He’s surely an individualist.”) (quoting Mary Cade); id. (“I don't mind being the only person in the world thinking what I think.”) (quoting Dr. Cade); see also, e.g., ISAACSON, supra note 191, at 451 (“And I think [our success] was part of that training of not following rules and orders, and being self-motivated, questioning what’s going on in the world and doing things a little bit differently.”) (quoting Larry Page); Google Founders Talk Montessori, YOUTUBE, at 1:00 (Feb. 11, 2010), https://www.youtube.com/watch?v=0C_DQxpX- Kw. 357 See Sweat Solution, supra note 9, at 5:00; see also, e.g., ISAACSON, supra note 191, at 457 (describing how Larry Page woke up “in the middle of the night” with the initial idea that became Google); Karapapa, supra note 332, at 331 (explaining that Arthur Fry wondered “if he could create a bookmark that would stick to the page but could be removed without damaging it” before inventing the Post-it note). 358 See Rogin, supra note 17; see also, e.g., BRYSON, supra note 332, at 42 (explaining that the U.S. benefited from the opportunity to scale up production and commercialize penicillin due to World War II hindering Oxford’s opportunity to do so). 359 See ROVELL, supra note 3, at 71 (“Gatorade started out as fun . . . A lark, just a little probe into man’s machinery.”) (quoting the ATLANTA J.-CONST.); Rogin, supra note 17 (“Gatorade started out to be fun, a joke. It's no longer a joke. There's a lot of money involved.”) (quoting Dr. Cade); see also, e.g., ISAACSON, supra note 191, at 254 (describing how those receiving the first request for comment seeking input on host-router links “felt that they were being included in a fun process.”). 2020 BORN IN THE LAB, PROVEN IN THE 329 MARKET
hypothesize solutions to an important problem.360 The greatest asset a university has is the collective expertise and creativity of its researchers.361 For Gatorade, what began as a simple inquiry into what football players lost in sweat became a billion-dollar industry.362 A team of researchers saw a problem, gathered data, hypothesized a solution, and performed experiments to test the hypothesis.363 While no one envisioned Gatorade becoming a commercial success of such magnitude, its marvelous path demonstrates the promises of marrying university researchers with a problem ripe for solution. Perhaps the most satisfying lesson from the Gatorade saga was how a commercially valuable, successfully transferred research product can create a “virtuous cycle of tech transfer activity.”364 The royalties generated from a Gatorade can reinvigorate, nourish, and even
360 See ROVELL, supra note 3, at 11 (“For Cade, [the intrigue of working with the football team] was more about using science to solve problems.”); Kays & Phillips- Han, supra note 222 (“It’s obvious why [the athletes were not urinating during practice], but it’s just not the kind of thing I went around giving great periods of thought to. That question changed our lives.”) (quoting Dr. Cade); Sweat Solution, supra note 9, at 15:00 (“You don’t wake up one morning and say, ‘What am I going to invent today?’ You wake up one morning and say, ‘There’s this problem, and I’ve got to solve it.’”) (quoting Phoebe Cade-Miles); see also, e.g., ISAACSON, supra note 191, at 232 (discussing how ARPA’s Bob Taylor realized problems “could be solved by building a data network to connect research centers,” the central “epiphany” of the internet). 361 E.g., ISAACSON, supra note 191, at 246 (“The Internet was born of an ethos of creative collaboration . . . .”). 362 See L.A. Times Staff, Dr. J. Robert Cade; Gatorade Inventor Pioneered The Multimillion-Dollar Sports Beverage Industry, CALGARY HERALD, Dec. 2, 2007, at B11 (“Dr. J. Robert Cade began with a simple intention 40 years ago: help the University of Florida football team stay hydrated. His invention—Gatorade—would inspire the multimillion-dollar sports beverage industry.”); KAYS & PHILLIPS-HAN, supra note 222. 363 See supra Part II, note 56, for more on the initial development of Gatorade. 364 See ASS’N OF UNIV. TECH. MANAGERS, U.S. LICENSING ACTIVITY SURVEY: FY2014 33 (2015) (“Under the Bayh-Dole Act, some of [the licensing] income is to be distributed to the inventors and creators of the technology, with the remainder used by the institution to support further academic and research purposes. This is the virtuous cycle of tech transfer activity.”); see, e.g., Grassmuck, supra note 125 (“Tremendous good has come from the royalties of Gatorade.”) (quoting Donald Price, Dir., UF Off. Corp. Programs). Yet, royalty income is still only a miniscule amount compared to other sources of revenue for universities, hospitals, and research institutes. See Ashley Stevens, Academic Licensing: Royalty Income and Economic Impact, 3 LES NOUVELLES 133, 140 (2003) (“[R]oyalty income is still a relatively minor contributor to the finances of these institutions, amounting to just 3% of total sponsored research funding and dwarfed by tuition income, patient care revenues and charitable donations.”); Jon Marcus, Think Universities are Making Lots of Money from Inventions? Think Again, HECHINGER REP. (Jan. 17, 2020), https://hechinger report.org/think-universities-are-making-lots-of-money-from-inventions-think- again/. 330 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
transform a university’s research program through the reinvestment into future research efforts365—in fact, the terms of grants promulgated under the Bayh-Dole Act require it.366 At the University of Florida, the tens of millions of dollars in royalties generated from Gatorade367 have funded research programs,368 built facilities,369 and bankrolled incubators.370 Gatorade has inspired a spirit of entrepreneurship and
365 As early as 1973, the Gatorade royalties were earmarked to fund kidney research, marine science, biological sciences, oceanography, and other health and education-oriented programs. See U. of Florida Gets $115,296 in First Gatorade Royalties, N.Y. TIMES (Sept. 16, 1973), https://www.nytimes.com/1973/ 09/16/archives/u-of-florida-gets-115296-in-first-gatorade-royalties- promotional.html; see also NAT’L RESEARCH COUNCIL, supra note 22, at 60 (“The public good [from university technology transfer] might include inputs into further research. . . .”). But see Gregory K. Sobolski et al., Technology Licensing: Lessons from the U.S. Experience, 294 J. AM. MED. ASS’N 3137, 3139 (2005) (“Since the US model indicates that only 5% of research sponsorship can be expected in returns from licensing income, it is unlikely that licensing income can subsidize further research activities significantly and alleviate the burden of government sponsorship . . . .”). 366 See Bayh-Dole Act, 37 C.F.R. § 401.14, at SPRC(k)(3) (2019) (“The balance of any royalties or income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidental [sic] to the administration of subject inventions, will be utilized for the support of scientific research or education . . . .”). 367 See Grassmuck, supra note 125 (estimating $17 million in royalties for the university as of 1991). 368 See id. (reporting that the “university uses all of its royalty payments for medical research”); First Gatorade Royalties, supra note 142 (reporting the “royalties will also support a number of other health and education-oriented research programs”). 369 See Jeff Schweers, Gatorade: 50 Years of the Thirst Quencher, GAINESVILLE SUN (Oct. 4, 2015, 12:01 AM), https://www.gainesville.com/article/LK/20151004/ SPORTS/604135445/GS (“Gatorade money helped build the $53 million UF Research and Academic Center at Lake Nona in Orlando.”). Gatorade’s revenues have also funded research outside the University of Florida. See, e.g., First Gatorade Royalties, supra note 142 (“The university's new Cornelius Vanderbilt Whitney research center at St. Augustine’s Marineland will get $30,000 for studies in marine science, biological sciences and oceanography.”); Heritage, supra note 30 (“[T]he Gatorade Sports Science Institute was founded in Barrington, Illinois, to conduct scientific research in the areas of exercise science, hydration, and sport nutrition. Three years later, the lab would be expanded to provide advanced testing for athletes and new Gatorade products and flavors and develop education materials for sports health professionals around the world.”); id. (“[G]atorade and [GSSI] begin [sic] working with auto racing organizations to develop a hydration tool that could withstand 130- degree temperatures and keep drivers hydrated safely throughout the course of a race. The result of their research was the development of GIDS, the Gatorade In-Car Drinking System, which is now considered an essential piece of racing equipment.”). 370 See Schweers, supra note 369; id. (“Gatorade helped build Sid Martin Biotech Incubator in Alachua and provides grants to startups at the Innovation Hub downtown, which was recently awarded another U.S. Department of Commerce grant to double its size.”); id. (“Gatorade also provided $200,000 for tuberculosis research in Haiti, 2020 BORN IN THE LAB, PROVEN IN THE 331 MARKET
innovation at the University of Florida371 and “allowed [it] to be competitive with some of the top schools in the country” in tech transfer.372 For these reasons, Gatorade is a grand illustration of how revenue created through tech transfer can support a university’s ongoing research mission.373 As such, Gatorade is a shining example374 of the good that can result from successful commercialization of university research, and the “happy arrangement” that can exist among a university, faculty creators, and commercial partners.375
VIII. GROUNDED IN REALITY: THE BENEFITS OF RESEARCH INNOVATION & THE CHALLENGES OF REPLICATING GATORADE’S SUCCESS
Gatorade remains a premium example of a “home run”376 research innovation that can benefit a university, its scientist creators, industry,
and supports many new hires in the preeminence program.”); id. (“Gatorade money also financed the creation of the LifeLink Foundation in 1982, a nonprofit organization dedicated to organ and tissue donation and recovery.”). 371 See Schweers, supra note 369. (“Nan-Yao Su and creator of [UF licensed product] Sentricon termite control said he was inspired by Cade.”); id. (“It has fueled biotech research and inspired other UF scientists to pursue technology licensing, helping to launch over 175 biomedical and technology startups since 2001. UF ranked sixth nationally with 16 startups in 2013 and ranked eighth for U.S. patents with 107. Last year, UF had 15 new start-ups.”); id. (“Gatorade has helped assemble brilliant people . . . . People like Marco Pahor at the Institute on Aging, Patricia Snyder at the Anita Zucker Center for Excellence in Early Childhood Education, and Linda Bartoshuk at the UF taste center.”). 372 See Schweers, supra note 369. 373 See Schweers, supra note 369. (“No other commercial product is more closely associated with a university than Gatorade is with the University of Florida.”); id. (“It certainly was a marvelous accomplishment. . . . It has allowed us all to move forward in the field of medical research and application of clinical and research medicine.”) (quoting Dr. Shires); Williams, supra note 21 (“Technology transfer . . . has become an integral part of the academic consciousness.”); Marcus, supra note 364 (“[M]oney that comes from licensing typically goes back into the research budget.”). See generally STANFORD, NINE POINTS, supra note 22, at 9 (“[A] multiplicity of approaches are possible to address the dual goals of [tech transfer], nurturing future research and using the innovations of university research to provide the broadest possible benefit to the public.”). 374 E.g., Healy, supra note 220, at 382 (explaining how CSIRO used AUD $150 million from litigation settlements related to Wi-Fi patents to invest in endowment for scientific research projects). 375 Grassmuck, supra note 125 (noting the “happy arrangement” the distribution of funds from Gatorade resulted in for all parties) (quoting Donald Price, Dir., UF Off. Corp. Programs); see also Lee, supra note 193, at 1506 (“[T]he link that connects publicly sponsored research and private-sector commercialization is technology transfer.”). 376 See Good, supra note 193, at 53 (citing Gatorade as an example of a “home run” for a university licensing program); see also, e.g., ROVELL, supra note 3, at 110 332 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
and the public. Other current and future household names in university research innovations include the internet,377 Google,378 and CRISPR.379
(describing Gatorade’s advertising campaign with Michael Jordan as a “home run”); Zacks, supra note 310 (“All it really takes to win the financial game is one IP home run.”). 377 See generally ISAACSON, supra note 191, at 217–61 (discussing how the innovations that culminated in the internet occurred in part at MIT, Harvard, Stanford, and UCLA); see also Zittrain, supra note 220, at 369 (detailing that the Internet Protocol (IP) sprang from “the cooperative and academic environment”). While some universities have realized value from components making up what is “the internet,” see, e.g., supra notes 332–34 (Stanford’s equity stake in Google). No single university realized the financial gains of commercializing the internet as a whole. Instead of being commercialized, many of the important developments made openly available and successfully transferred via indirect mechanisms, such as academic publications. E.g., Vinton G. Cerf & Robert E. Kahn, A Protocol for Packet Network Intercommunication, 22 IEEE TRANSACTIONS ON COMM. 637, 648 (1974); see also ISAACSON, supra note 191, at 259 (stating that “the Internet was born” when discussing the Cerf and Kahn paper). 378 See generally ISAACSON, supra note 191, at 248–65 (describing development of Google at Stanford). Although Google’s research origins are often obscured in retellings of history, its co-creators Sergey Brin and Larry Page were graduate students (who are more likely to be directly involved in research than undergraduates) with a research grant from the federal government. See Sergey Brin & Lawrence Page, The Anatomy of a Large-Scale Hypertextual Web Search Engine, 30 COMPUTER NETWORKS & ISND 107, 107 (1998) (“In this paper, we present Google, a prototype of a large-scale search engine which makes heavy use of the structure present in hypertext.”); id. at 116 (“The research described here was conducted as part of the Stanford Integrated Digital Library Project, supported by the National Science Foundation under Cooperative Agreement IRI-9411306. Funding for this cooperative agreement is also provided by DARPA and NASA. . . .”); see also Award Abstract No. 9411306: The Stanford Integrated Digital Library Project, NSF (start date Sept. 1, 1994) (Sponsor: Stanford) (“This project . . . is to develop the enabling technologies for a single, integrated and ‘universal’ library . . . includ[ing] both on-line versions of pre-existing works and new works and media of all kinds that will be available on the globally interlinked computer networks of the future.”). Brin and Page also relied in part on the Stanford Office of Technology Licensing, which licensed both patent and copyrights to Google. See ISAACSON, supra note 191, at 462; STANFORD CREATOR’S GUIDE, supra note 20, at 24–25. 379 Mitchell R. O’Connell et. al., Programmable RNA Recognition and Cleavage by CRISPR?Cas9, 516 NATURE 263, 263 (2014) (“The CRISPR-associated protein Cas9 is an RNA-guided DNA endonuclease that uses RNA:DNA complementarity to identify target sites for sequence-specific doublestranded DNA (dsDNA) cleavage.”). CRISPR is a “gene-editing technology.” Molteni, supra note 333. Many scientists, journalists, and other experts think CRISPR is a revolutionary technology that will profoundly alter how humans interact with biology, disease, and heredity. See, e.g., id. (describing CRISPR as “one of the most revolutionary technologies of the modern era”); id. (explaining CRISPR is “handing humans the ability to profoundly alter the evolution of any species on the planet”). CRISPR originated in part from federally funded research at universities, in particular UC Berkeley and (through the Broad Institute) MIT and Harvard. See id. at 266 (acknowledging funding from NSF, NIH, and the DoD Nat’l Sci. & Eng’g Graduate Res. Fellowship); see, e.g., Project No. 2020 BORN IN THE LAB, PROVEN IN THE 333 MARKET
Although there is a sluggers’ lineup of examples,380 home runs in tech transfer are relatively rare381—at least in the financial, commercial sense. Nevertheless, these “big winners”382 are sought after and warp realistic expectations383 for universities, policy experts, and the public. A university trying to find the “next Gatorade”384 or hit a home run of its own may be swinging blindly at a 100-mile per hour fastball.385 While Gatorade was a home run for the University of Florida,386 recreating such a smashing success requires the alignment of innumerable factors.387 There were some circumstances unique to Gatorade that are not frequently present for research innovation.
5P50GM102706-03: Center For RNA Systems Biology, NIH REPORTER (Awardee Organization: UC Berkeley). 380 See, e.g., supra notes 377 (the internet), 378 (Google); 379 (Crisper-Cas); see also, e.g., Good, supra note 193, at 53 (FSU’s anti-cancer drug, Taxol); id. (Carnegie- Mellon’s text-crawling search engine, Lycos); Lee, supra note 193, at 1552 (recombinant DNA licensed to Genentech and several other biotech companies (UCSF)); Marcus, supra note 364 (University of Illinois’s web browser, Mosaic); id. (Georgetown’s non-drowsy allergy medicine, Allegra); U.S. CONG. JOINT ECON. COMM., 98TH CONG., THE U.S. CLIMATE FOR ENTREPRENEURSHIP AND INNOVATION 29 (Comm. Print 1984) (Columbia’s pre-Bayh-Dole laser technology and atomic power); Good, supra note 193, at 53 (University of Wisconsin’s blood thinner, Coumadin); Lee, supra note 214, at 40–41 (Columbia’s creation of cotransformation, a “process for inserting exogenous DNA into a host cell to produce particular proteins”); Auerbach, supra note 220, at 565 n.11 (Fluoride at IU); Sobolski, supra note 365, at 3138 (Michigan State’s chemotherapy medication). 381 See Good, supra note 193, at 53 (“These discoveries, which have major commercial value, are unique . . .”); Marcus, supra note 364 (“[T]hose kinds of [big] payoffs . . . [are] more exceptions than rules.”); Wadman, supra note 250, at 830 (“[W]indfall deals are rarities.”). 382 Life of a Stanford Invention, STAN.: OFFICE OF TECH. LICENSING (2018), https://otl.stanford.edu/sites/g/files/sbiybj10286/f/otl_overview_fy18_1.59.44_pm_1 .pdf; see also Wadman, supra note 250, at 831 (explaining that when there are “big winners—some mind-boggling numbers are involved”). 383 See NAT’L RESEARCH COUNCIL, supra note 22, at 67 (describing “the likelihood of very significant payoff from IP-based transactions slim and disappointed expectations high”); Sobolski, supra note 365, at 3139 (“Too frequently, discussions of technology licensing ignore establishing reasonable expectations and expected values from licensing programs.”); id. (“[T]he chance to generate significant revenue, however slight, tends to create a distorted perception.”). 384 Wadman, supra note 250, at 453 (“Every tech-transfer person in the country wants to land the next Gatorade, the next Taxol, the next Cisplatin.”) (quoting John Frangioni); id. (“Other universities look at those very few rare cases and imagine they can also hit the invention jackpot”) (quoting former Stanford Professor Daria Mochly- Rosen). 385 See supra notes 378–80. 386 See supra note 376 (describing Gatorade as a “home run”). 387 See, e.g., Behar, supra note 212, at 29 (“There is no orderly process to take some really great idea somebody has in research and turn it into something that the weather service can use.”) (quoting Under Sec’y of Oceans & Atmospheres Conrad Lautenbacher). 334 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
Notably, Gatorade was significantly closer to a commercially viable product upon its inception than much of the basic, commercially distant research being performed at universities.388 Basic research by its very nature often originates as a solution looking for a problem389 rather than the other way around, as was the case with Gatorade.390 Basic research is also extraordinarily risky,391 requiring significant time and development before commercialization is feasible.392 Despite several
388 See supra Parts II-III (explaining that in 1965 players were drinking a prototype of Gatorade and within weeks Stokely was selling the product); Walterscheid, supra note 193, at 133 (“As a practical matter, such inventions [produced through federal R&D funding] are almost never in a commercial form when they are first reduced to practice.”). 389 See HERD Survey, supra note 13, at 3 (describing basic research as “without any particular application or use in view”); see also NAT’L ECON. COUNCIL & OFFICE SCI. & TECH. POLICY, A STRATEGY FOR AMERICAN INNOVATION 21 (2015) (“Basic research, by definition, will sometimes lead us down blind alleys, but it will also tell us what we don’t know, which then helps us figure out new pathways.”) (quoting Pres. Barack Obama); ISAACSON, supra note 191, at 451 (“I think the productivity of pure research [at Stanford] was a lot higher, because it had a real-world grounding. . . . It’s not just theoretical. You want what you’re working on to apply to a real problem.”) (quoting Larry Page); Karapapa, supra note 332, at 329 (“Unlike the common assumption linked to inventorship that there is a technical problem that needs solving, the discovery of the glue that is used in the Post-it notes was—according to its inventor—‘a solution waiting for a problem to solve.’”); Auerbach, supra note 220, at 564 (“University scientists traditionally engage in pure research, regardless of the prospects of commercial success.”). 390 See Sweat Solution, supra note 9 (describing the Gators’ severe dehydration problem). 391 See About, NAT’L SCI. FOUND., nsf.gov/news/special_reports/i-corps/about.jsp (last visited July 23, 2020) (“The goal of the NSF Innovation Corps (I-Corps) program . . . has been and will continue to be to reduce the time and risk associated with translating promising ideas and technologies from the laboratory to the marketplace.”); Marcus, supra note 364 (describing commercialization as high-risk and imprecise); see also, e.g., Webster, supra note 328, at 222 (“These contracts [for basic research at Bell Labs] . . . underwrote the high-risk, high cost end of many innovations that later metamorphosed into civilian use.”). 392 See VANNEVAR BUSH, SCIENCE THE ENDLESS FRONTIER 10 (U.S. GPO, 1945), https://www.nsf.gov/od/lpa/nsf50/vbush1945.htm (“[N]ew products and new processes do not appear full-grown. They are founded on new principles and new conceptions, which in turn are painstakingly developed by research in the purest realms of science.”); Marcus, supra note 364 (“The basic research performed in university laboratories underpins discoveries that may take years to end up in the market, if they ever do.”); see also, e.g., BRYSON, supra note 332, at 40-43 (detailing how Penicillin was not turned into a usable medicine until 14 years after Fleming discovered Penicillium’s antibacterial properties); Healy, supra note 220, at 377–83 (explaining the core Wi-Fi patent took decades to be commercialized and began as a basic research idea unrelated to wireless communication); ISAACSON, supra note 191, at 251 (detailing the 40-year development of the internet); id. at 465 (“Figuring out what Crispr is, where its key bacterial genetic sequences come from, and what they 2020 BORN IN THE LAB, PROVEN IN THE 335 MARKET
other inventions and attempted commercial products, Dr. Cade was unable to recreate a fraction of the success that his miracle beverage realized.393 In addition to the nascency of most university research,394 there is an abundance of obstacles that can doom a research invention. The path to commercialization of research has many pitfalls,395 a great number of which are out of the control of the tech transfer office and inventors.396 Possible pitfalls may include patentability issues,397 researcher and tech transfer naivete or lack of industry mentorship,398 lack of inventor commitment or cooperation,399 lack of institutional or government support such as money for prototyping or proving concepts,400 technical
could do with it took scientists scattered across the globe years of chipping away at a molecular mystery.”). 393 Dr. Cade developed several inventions besides Gatorade. E.g., Grassmuck, supra note 125 (protein drink Go!) (“Thirst Quencher II”); Rogin, supra note 17 (detailing the invention of Gator-Go (nutritious dietary supplement beverage), a hydraulic football helmet, a hemispherical shoe polish can, Hopn Gator (a mixture of beer and a fluid similar to Gatorade), an organic foam to fertilize and protect plants from frost, the irradiated pecan, and a cookbook “Rabbit Recipes for Bunsen Burners”). 394 See, e.g., Marcus, supra note 364 (“We are a university that focuses on research. We’re not a product development company.”) (quoting Brooke Beier, V.P., Technology Commercialization, Purdue Res. Found.). 395 Behar, supra note 212, at 27 (finding that legions of NOAA scientists face many challenges with regards to their weather forecasting innovations). 396 See Marcus, supra note 364 (“There’s a lot of steps there [in commercializing an invention] that are out of your control . . . .”) (quoting a staffer quoting Senator Bayh). 397 See Lee, supra note 214, at 7 (“[C]ourts viewed academic science as falling outside of the scope of patentability . . . .”); id. at 62 (“[T]hese changes [narrowing patentability] have disproportionately impacted university inventions, which tend to be rather upstream and embryonic.”); e.g., Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013) (invalidating patent claims owned in part by the University of Utah Research Foundation); Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916 (2004) (rejecting a less stringent written description requirement for universities under 35 U.S.C. § 112 in the interest of transferring innovations to the public). 398 See Marcus, supra note 364 (“[A]cademicians are absolutely clueless about what needs to be done to make a project attractive to industry.”) (quoting Stanford Professor Daria Mochly-Rosen); Wadman, supra note 250 (“The TTOs are being stretched too thinly, and lack expertise in the huge range of fields from which inventions may issue.”). 399 See Marcus, supra note 364 (“First, researchers have to be willing to invest time in translating abstract concepts into tangible products. Many aren’t, technology- transfer directors said.”); id. (noting that “faculty are awarded tenure and promotion based on . . . how much research money they bring in and how many papers they publish, not their numbers of patents or startups or the licensing revenue they earn”). 400 See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 ( “[U]niversity research relates to basic research, including research into scientific principles and 336 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
and scientific challenges,401 the propensity and desire in academia to share information via publication in scientific journals and presentations,402 regulatory hurdles,403 trouble identifying and securing a licensee,404 lack of funding or access to capital,405 failure identifying market interest, the inability or disinclination to bring infringement
mechanisms of action, and universities may not have the resources or inclination to work out the practical implications of all such research . . . .”) (citation omitted); Marcus, supra note 364 (noting that “technology transfer administrators say government grants typically don’t cover” proof-of-concept funding); Sobolski, supra note 365, at 1339 (“Also, the institutional infrastructure around technology licensing requires paying skilled employees at higher wages . . . .”); Wadman, supra note 250, at 830 (“There are also problems with small staffs—the median size of a US TTO is six employees, and many others around the world are smaller.”); see also, e.g., Marcus, supra note 364 (discussing an organization started by a former Stanford professor giving research innovations “$50,000 a year for two years to create . . . proofs of concept”); id. (detailing how Johns Hopkins faculty complained about a lack of institutional resources to commercialize research). 401 See Rogin, supra note 17 (discussing how Gatorade scientists had to solve how to dissolve glucose in water); Bush, supra note 392 (stating that most basic research requires significant time and development to reach market); see also, e.g., BRYSON, supra note 332, at 40 (discussing Alexander Fleming’s difficulty in turning the discovery of Penicillium’s antibacterial properties into a usable medicine). 402 See Stifling or Stimulating – the Role of Gene Patents in Research and Genetic Testing: Hearing Before the Subcomm. on Courts, the Internet, & Intellectual Prop., 110th Cong. 29 (2007) (statement of Lawrence M. Sung, Law Professor & I.P. Law Program Director, University of Maryland Law School) (suggesting that “ensuring that researchers are able to publish the results of their research in dissertations and peer-reviewed journals” be considered in licensing inventions); see also, e.g., In re Klopfenstein, 380 F.3d 1345 (Fed. Cir., 2004) (holding a printed slide presentation at a meeting of the American Association of Cereal Chemists was a “printed publication” that acted as a statutory bar to patenting under 35 U.S.C. § 102); MIT v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985) (holding an orally presented paper was a “printed publication” under 35 U.S.C. § 102 and could serve as prior art). 403 E.g., Healy, supra note 220, at 379 (showing that initial commercialization efforts of Wi-Fi were hindered because regulatory authorities only allowed use of the technology at high frequencies). 404 See Marcus, supra note 364 (“But you have to find somebody willing to pay money for [an invention], license it, develop it.”) (quoting a former staffer to Senator Bayh). 405 See BRYSON, supra note 332, at 46 (estimating that development of a new drug requires $3 billion). Some universities are taking measures to combat this challenge. See, e.g., Williams, supra note 21, at A26 (describing how Harvard’s Medical Science Partners was created “to find a way to close the funding gap between research and development”); Marcus, supra note 364 (detailing how the University of Chicago and others “have created their own multimillion-dollar funds to invest in early stage faculty startups”). 2020 BORN IN THE LAB, PROVEN IN THE 337 MARKET
lawsuits,406 and the banal administrative defects of bureaucracy.407 There is also the general unpredictability about what is commercially viable and what will transpire in the wacky marketplace408—even Gatorade’s initial licensee grossly underestimated its commercial potential.409 Simply put, the commercialization of university research ideas is a complex process410 with an infinite number of ways to fail. If there is a high probability of success, a company will likely undertake the effort itself rather than rely on a university to do the research at all.411 One need not look further than the Gatorade tale to see the necessary steps that required a specific outcome for Gatorade to exist and succeed: Dewayne Douglas had to have a preexisting relationship with Dr. Cade,412 Dr. Cade had to be available and interested in solving the problem,413 Coach Graves had to be receptive to some doctors conducting experiments on his players,414 the initial results had to be promising,415 the football team had to perform spectacularly well after they started drinking Gatorade,416 Dr. Cade’s wife had to suggest adding lemon to improve the taste,417 Gatorade had to receive an inordinate amount of publicity,418 Kent Bradley had to relocate to the University
406 See Lee, supra note 214, at 45 (“At the enforcement level, universities holding patents often assert far less than their full exclusionary force.”); Marcus, supra note 364 (“Another way a few universities are trying to maximize their income is by becoming more aggressive in protecting their existing patents, something they’ve previously been reluctant to do because there wasn’t any money in their budgets for it.”). 407 See, e.g., Behar, supra note 212, at 29 (“Dysfunctional, compartmentalized bureaucracy gets in the way [of tech transfer].”). 408 See supra Parts III & VI, note 344; see also NAT’L RESEARCH COUNCIL, supra note 22, at 67 (“As with research itself, it is exceedingly difficult in technology transfer to predict with confidence what the successes will be.”). 409 See sources cited supra note 347. 410 See sources cited supra note 348; see also Marcus, supra note 364 (“But moving research from a lab to the market is complex.”). 411 See Wadman, supra note 250, at 831 (“Frankly, if there wasn’t a need to fill this gap between basic science and product development, we wouldn’t need to operate a tech-transfer enterprise.”) (quoting Ted Bianco, Tech Transfer, Wellcome Trust). 412 See supra notes 54–56. 413 See supra notes 57–59. 414 See supra notes 64–69, 86–87. 415 See supra notes 88–93. 416 See ROVELL, supra note 3, at 70 (“If the Gators hadn’t done well while using Gatorade, it would have been highly unlikely that the drink would have made it out of the laboratory.”). The basketball team also had to have “its greatest year in its history” for Stokely’s intrigue to turn into “serious interest.” Id. at 38. 417 See sources cited supra note 82. 418 See ROVELL, supra note 3, at 79 (“The following season [after the Gatorade shower became a New York Giants’ ritual], the stunt caught on nationally in a serendipitous marketing coup that was too good to be true for those who worked on 338 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
of Indiana and interact with Stokely,419 Stokely had to be a capable licensee and expend adequate resources to market Gatorade,420 the market had to be ready for a product fit for the physically active and health-conscious consumer,421 the litigation had to unfold in a way that allowed commercialization to continue unimpeded, Gatorade’s early adopters had to win Super Bowls and sing its praises,422 and a series of publicity boons had to work in Gatorade’s favor for it to become the beverage powerhouse it is today.423 Change the outcome of any one of those events and Gatorade likely does not become the commercial success it is today. Remove one of the events and no one outside Gainesville ever hears of it.424 If the 1966 Florida Gators go 4-5-1 (as they did in 1961425), the Gatorade on the shelf of 7/11 or the pallet at Costco likely disappears.426 Other research ideas at universities face a similar fate and improbability of success. For this reason, it is wholly unrealistic for other universities to depend on or forecast the fortune that Gatorade has produced for the University of Florida. Most tech transfer offices still operate at a deficit.427 Some of the policy changes from the Bayh-Dole Act, partially inspired by the Gatorade saga, have been of great benefit
the Gatorade brand.”); id. at 84 (“The [Gatorade] cooler had started out as a way to allow trainers to mix a large volume of liquid without having to transfer it, but [after the popularity of the Gatorade shower] it was seen as one of the world's first forays into product placement.”). 419 See supra notes 117–119. 420 See ROVELL, supra note 3, at 3 (noting that in both 2003 and 2004, $135 million was spent on advertising alone). 421 See supra notes 148, 154; see also ROVELL, supra note 3, at 159 (“Had the exercise boom not been anticipated or had it been analyzed as a momentary blip, Gatorade could have lost the advantage of dominating the category . . . .”). 422 See supra Parts III & VI. 423 See Schweers, supra note 369 (“Gatorade turned out to be a billion-dollar fluke, one of those rare collisions of events and ideas that created a one of a kind product.”). 424 See ROVELL, supra note 3, at 28 (“Had the Gators not been successful, marketing Gatorade might have been a struggle. . . . Being tied to a winning program at least made it easier to claim that the drink was working.”); Sweat Solution, supra note 9, at 9:25 (“If they lost, we might not have survived”) (quoting Dr. Shires). 425 Florida Gators School History, supra note 42. 426 See Bob Henderson, Clearwater Doctor Sips Sports Drink of Success, ST. PETERSBURG TIMES (Sept. 19, 1996), https://www.tampabay.com/archive/1996/10/ 19/clearwater-doctor-sips-sports-drink-of-success/ (“If [the UF football team] had lost [its first game with Gatorade on the sidelines], you probably never would have heard of Gatorade again.”) (quoting Dr. Free). 427 See Marcus, supra note 364 (“[Colleges and universities are] making so little money from licensing inventions that, at many schools, it doesn’t even cover the cost of managing them.”); Wadman, supra note 250, at 830 (“[S]ome TTOs lose more money than they make for their institutions . . . .”). 2020 BORN IN THE LAB, PROVEN IN THE 339 MARKET
to the American economy.428 Yet the positive impacts are produced by a disproportionate number of universities, leading to a very top-heavy picture in income from licensing university innovations.429 Most of the universities that produce large amounts of revenue to help sustain their ongoing research are traditional research-intensive universities430 or have a home run technology like Gatorade431 that skew the perception of success—or at least the uniformity of that success.432 At the expense of mixing sports metaphors, tech transfer and the commercialization of research are “a bit like college football” in that there are “big-time programs that make a lot of money,” but they are “few and far
428 See sources cited infra notes 430-449. 429 See ASS’N OF UNIV. TECH. MANAGERS, supra note 364, at 34 (stating that only 223 of 41,792 active licenses (0.5%) generated more than $1 million in 2014); see also Eric G. Campbell et al., Inside the Triple Helix: Technology Transfer and Commercialization in The Life Sciences, 23 HEALTH AFF. 64, 70 (2004) (“[T]echnology transfer produces limited revenues for most universities. Of the total $1.7 billion in licensing revenues earned by the 140 respondents . . . the top ten income-producing universities generated $1 billion, or 60 percent of all licensing revenues”) (citation omitted); Sobolski, supra note 365, at 3137 (“[T]he 6 highest earners (top 7%) obtained nearly 60% of all income [from licensing]. This distribution represents a classic “winner-take-all” phenomenon with a few earning most of the income.”); Marcus, supra note 364 (“Just fifteen [universities] accounted for 72 percent of all the money [in licensing revenue].”). 430 See Sobolski, supra note 365, at 3138 (describing two of the four broad groups of licensing at U.S. universities as U.C., a large research-intensive university with many campuses, and a group “composed of several traditionally research-intensive universities—Stanford, MIT, University of Washington, University of Wisconsin, and Harvard” as having large budgets and incomes). 431 See id. (describing one of the four broad groups of licensing at U.S. universities as having “high licensing incomes with comparatively low levels of sponsored research, driven by one or a few highly lucrative patents [including UF]”); see also Good, supra note 193 (“[W]hat makes a program really substantial is an intellectual ‘home run.’”); Keys & Phillips-Han, supra note 222 (“Often, Gatorade revenue has provided ‘seed money’ for projects that offered great potential but were still in the developmental stage. Many of these projects went on to win competitive national grants, recouping the university’s investment in them many times over.”) (quoting UF V.P. for Research Win Phillips); see also, e.g., Grassmuck, supra note 125 (finding that in 1989 $2.6 million of Florida’s total $2.7 million in royalty revenue came from Gatorade); Life of a Stanford Invention, supra note 382 (citing a cumulative $404 million from equity and $68 million from “non-Google equity” (leaving $336 million in Google equity, or 83.2% of cumulative equity)). 432 See Sobolski, supra note 365, at 3138 (describing the last of the four broad groups of licensing at U.S. universities as “earn[ing] relatively little income with small to moderate research budgets.”). 340 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
between.”433 If you are as lucky as the University of Florida—you can be good at both tech transfer and college football.434 While the Gatorades and Googles of the world are infrequent,435 the overall importance of research innovation to an advanced economy like the U.S. is hard to refute.436 Put one way, basic research “leads to new knowledge” that “provides scientific capital” for practical inventions deployed by industry and the broader economy.437 Given the degree to which it reinvented R&D in the United States, the success of the Bayh-Dole Act on its own is hard to deny.438 Described as the “Viagra for campus innovation,”439 the Bayh-Dole Act has incentivized universities440 and laboratories to perform commercially valuable research and to transition that research to the market.441 Since its inception, the Bayh-Dole Act has resulted in over
433 Marcus, supra note 364 (quoting emeritus University of Wisconsin Professor Marc Levine). 434 See ROSS DEVOL ET AL., CONCEPT TO COMMERCIALIZATION: THE BEST UNIVERSITIES FOR TECHNOLOGY TRANSFER 5 (2017) (ranking UF with the third highest “technology transfer and commercialization index”); Florida Gators School History, supra note 42 (showing the Gators winning two BCS Championship games and finishing top-ten in the AP postseason poll 8 times since the year 2000). 435 See supra note 381 (describing that home runs in tech transfer are comparatively rare). 436 Jonathan R. Cole, The Triumph of America’s Research University, ATLANTIC (Sept. 20, 2016), https:// www.theatlantic.com/education/archive/2016/09/the- triumph-of-americas-research-university/500798/ (“When educated Americans think of their best universities, they probably don’t think that . . . . [t]hese institutions have become the engines of innovation and discovery that now drive a large part of the economic growth and social change in the United States.”); see also The State of U.S. Science and Engineering, NSF (2020), https://ncses.nsf.gov/pubs/nsb20201/global- science-and-technology-capabilities (calculating U.S. value-added output from R&D intensive industries at $1.04 trillion in 2018). 437 ISAACSON, supra note 191, at 219 (quoting BUSH, supra note 392, at 15). 438 See Good, supra note 193, at 53 (“The economic impact of these [tech transfer] activities is now well understood, not just in terms of university return but in overall economic stimulus . . . .”); Zacks, supra note 315 (“[T]he result [of the Bayh-Dole Act] seems nothing less than a major boon to national economic growth.”). 439 Zacks, supra note 315. 440 See Good, supra note 193, at 54 (“In the United States, the Bayh-Dole Act has been very successful in helping create the technological advancements its sponsors had hoped for.”); see also LEVITT & DUBNER, supra note 211, at 16 (“An incentive is a bullet, a lever, a key: an often tiny object with astonishing power to change a situation.”); see e.g., Bayh-Dole Act, 37 C.F.R. § 401.14, at SPRC(b) (2019) (allowing a contractor to retain title to an invention). 441 See, e.g., Walterscheid, supra note 193, at 112 (“The grant of title was the most effective means of obtaining R&D work from the most competent contractors.”); see also S. REP. NO. 480, 96th Cong. (1979) (“It is in the public interest to see that new discoveries are commercialized as quickly as possible without the artificial restraints caused by the unnecessary delays and uncertainties of the present Government patent 2020 BORN IN THE LAB, PROVEN IN THE 341 MARKET
100,000 patents obtained by research institutions,442 millions of jobs,443 tens of thousands of startup companies or spinouts,444 a boost of billions of dollars for the national economy,445 and a system of indirect benefits that result in a feedback loop helping to sustain academic R&D.446 Furthermore, non-monetary rewards of invention can spur innovation and creativity for market solutions by providing tangible examples of the benefits of scientific work.447 The Bayh-Dole Act has helped the United States remain at the forefront of international innovation,448 inspired other countries to emulate its model for research and
policies which only serve to make an already risky attempt to develop new products more of a burden on interested companies.”). 442 Driving the Innovation Economy, AUTM (2018), https://autm.net/AUTM/ media/Surveys-Tools/Documents/AUTM_FY2018_ Infographic.pdf; ASS’N OF UNIV. TECH. MANAGERS, supra note 364, at 10 (claiming 6363 issued U.S. patents in 2014 to U.S. institution survey respondents). But see Walterscheid, supra note 193, at 104– 05 (“Ascertaining exactly how many subject inventions arise out of this federal R&D expenditure is difficult, but each year literally thousands of such inventions are made.”) (footnotes omitted). Utilization of patents has also improved, perhaps as high as 30%. See BayhDole25, Inc., supra note 223, at 22. 443 See LORI PRESSMAN ET AL., THE ECONOMIC CONTRIBUTION OF UNIVERSITY/NONPROFIT INVENTIONS IN THE UNITED STATES: 1996–2017 21 (2019) (estimating 2.68–5.88 million jobs are supported by sales of products licensed from academia over a 22-year period); Driving the Innovation Economy, supra note 442 (claiming 5.9 million jobs supported by academic technology transfer from 1996– 2015). 444 See Driving the Innovation Economy, supra note 442 (citing 13,000+ startups formed from academic technology transfer from 1996–2017); see also Brady Huggett, Reinventing Tech Transfer: US University Technology Transfer Offices are Adopting New Models in Search of Increased Return on Research Investment, 32 NATURE BIOTECHNOLOGY 1184, 1184 (2014) (“[M]ajor metrics for gauging tech transfer output—licensing income, licenses and/or options executed, patents and startups formed—have risen over the past ten years, and in particular over the past five.”). 445 See PRESSMAN ET AL., supra note 443, at 22 (estimating the total contribution of academic licensors to GDP from $374 billion to $865 billion over a 22-year period); Driving the Innovation Economy, supra note 443 (claiming $1.7 trillion was contributed to U.S. gross industrial output and $865 billion contributed to U.S. GDP by academic technology transfer from 1996–2017); see also Stevens, supra note 364, at 140 (estimating that “sales of products resulting from academic inventions totaled $26 billion as of 1999”). 446 See Stevens, supra note 364, at 140 (estimating that “tax revenues would have been almost $10 billion, implying that the tax revenues resulting from the economic spin-off of academic research is paying for over a third of the current annual federal investment in academic research.”). 447 See Sweat Solution, supra note 9, at 15:35 (“I think everyone likes to see results when they work on something. They like to have something you can see or hold in your hand. It gives you a sense of accomplishment.”) (quoting Dr. Cade). 448 See Good, supra note 193, at 54 (citing “the nation’s immense lead in the biotechnology industry” as an example of a positive effect from the Bayh-Dole Act). 342 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
commercialization,449 leveraged U.S. intellectual property to maintain competitiveness even as domestic manufacturing declined,450 and nourished regional economies throughout the country.451 While the Bayh-Dole Act and the model of university ownership are not without their critics,452 they retain prominent advocates453 and bipartisan support in Congress thirty years after the act’s passage.454 The relationship between government, industry, and academia further aroused by the Bayh-Dole Act “was, in its own way, one of the significant innovations that helped produce the technological revolution of the late twentieth century.”455 While Gatorade is a shining example of successful tech transfer,456 it may provide a model for tech transfer success that is unrealistic for
449 See Stevens, supra note 215, at 93 (“[F]oreign countries are now adopting the Bayh-Dole model . . . because they want to replicate the high technology-led economic development that Bayh-Dole is generally credited with having helped create.”); Winwood, supra note 193 (“Widely mimicked by other nations, [the Bayh-Dole Act] formali[z]ed how universities manage their inventions, so there is a clear path from basic discovery to commercial implementation.”); see also Andrew Browne, Mr. Xi’s Trump Moment, WALL ST. J., Oct. 22-23, 2016, at C1, C2 (“[Chinese] Premier Li Keqiang is . . . promoting ‘mass entrepreneurship and innovation’ to create jobs.”). 450 See Exec. Order No. 12,591, 3 C.F.R. 220 (1987) (“It is important not only to ensure that we maintain American preeminence in generating new knowledge and know-how in advanced technologies, but also that we encourage the swiftest possible transfer of federally developed science and technology to the private sector. . . . to keep the United States on the leading edge of international competition.”). 451 See Good, supra note 193, at 48 (citing studies indicating “the presence and participation of universities, especially research universities, is a major factor in the growth of economic clusters in the new knowledge-based economy”); e.g., id. (Silicon Valley); id. (Cambridge); id. (NC Research Triangle). 452 See, e.g., BUYING IN OR SELLING OUT: THE COMMERCIALIZATION OF THE AMERICAN RESEARCH UNIVERSITY, supra note 193; Campbell, supra note 353; Wadman, supra note 250, at 830 (“The list of complaints about TTOs is long and diverse. . . .”). 453 For example, The Economist praised the Bayh-Dole Act as “innovation’s golden goose.” Opinion, Innovation’s Golden Goose, ECONOMIST (Dec. 14, 2002), https://www.economist.com/technology-quarterly/2002/12/14/innovations-golden- goose; see also NAT’L RESEARCH COUNCIL, supra note 22, at 61 (“The system put in place by the Bayh-Dole Act . . . is unquestionably more effective than its predecessor system . . . in making research advances available to the public.”). 454 See H.R. Con. Res. 328, 111th Cong. (2010) (“Expressing the sense of the Congress regarding the successful and substantial contributions of the amendments to the patent and trademark laws that were initially enacted in 1980 by [the Bayh-Dole Act] on the occasion of the 30th anniversary of its enactment.”). 455 ISAACSON, supra note 191, at 220. 456 See Andrews, supra note 119 (“Despite the legal wrangling, the invention of Gatorade is widely viewed as one of the early successes of technology transfer.”). 2020 BORN IN THE LAB, PROVEN IN THE 343 MARKET
most universities to duplicate.457 Even if the economics are not in every university’s favor,458 the hope of a spectacular success like Gatorade— combined with more modest victories and the cumulative public benefit from research innovation—justifies the whole enterprise.459 For this reason, the Gatorade saga is an important prototype for universities and the U.S. economy at large to use as a model460—as “fuel of interest” for the their own “fire of genius.”461 Gatorade’s lessons are vital ones for a modern, advanced economy like the United States that relies on knowledge-based industries for its economic competitiveness462 and universities for its research, education, and innovation.463
457 But see Perkins & Tierney, supra note 236, at 144 (“Such high royalties are certainly uncommon in academe; but technology transfer continues to be a significant part of many research universities’ plans for new revenue streams.”). 458 See supra note 427. 459 See NAT’L RESEARCH COUNCIL, supra note 22, at 60 (“[T]he goal of expeditious and wide dissemination of discoveries and inventions places IP-based technology transfer squarely within the research university’s core missions of discovery, learning, and the promotion of social well-being.”). Compare ISAACSON, supra note 191, at 449 (“If you invent something, that doesn’t necessarily help anybody. You’ve got to actually get it into the world; you’ve got to produce, make money doing it so you can fund it.”) (quoting Larry Page of Google), with id. (“He was one of the greatest inventors, but it’s a sad, sad story . . . . He couldn’t commercialize anything, he could barely fund his own research.”) (quoting Larry Page on Nikola Tesla). 460 See generally STANFORD, NINE POINTS, supra note 22, at 1 (“Licensing approaches, even for comparable technologies, can vary considerably from case to case and from institution to institution based on circumstances particular to each specific invention, business opportunity, licensee and university. In spite of this uniqueness, universities share certain core values that can and should be maintained to the fullest extent possible in all technology transfer agreements.”). But see Siegel et al., supra note 21, at 117 (“[G]iven that the stakeholders in this process (i.e., university scientists, university administrators, and firms/entrepreneurs) have different motives and behaviors, and operate in different cultural environments, there is room for considerable disagreement and misunderstanding.”). 461 Catherine L. Fisk, Removing the ‘Fuel of Interest’ from the ‘Fire of Genius’: Law and the Employee-Inventor, 65 U. CHI. L. REV. 1127, 1127 (1998) (emphasis removed) (quoting Abraham Lincoln, Second Lecture on Discoveries and Inventions (Feb. 11, 1859)). 462 See Good, supra note 193, at 54 (“In the evolving knowledge-based global economy, this dependence on universities for cutting-edge, commercially viable science and technology . . . is destined to increase.”); Healy, supra note 220, at 382 (“Governments agree that innovation is the key to the future, particular for advanced economies.”). 463 Remarks by the President in State of the Union Address, THE WHITE HOUSE: PRES. BARACK OBAMA (Jan. 24, 2012), https://obamawhitehouse.archives.gov/the- press-office/2012/01/24/remarks-president-state-union-address (“Innovation also demands basic research. Today, the discoveries taking place in our federally financed labs and universities could lead to new treatments that kill cancer cells but leave healthy ones untouched.”); see also Winwood, supra note 188 (claiming that in recent years, U.S. research universities educated as many as 500,000 graduate students in 344 WAKE FOREST J. VOL. 20 BUS. & INTELL. PROP. L.
IX. CONCLUSION
The story of Gatorade is not only a tale of an outrageously successful consumer product, but one of a research invention that impacted U.S. IP policy and provided a template for technology transfer. Gatorade was born in the lab—the product of an inquisitive group of scientists at the University of Florida—and proven on the field—shown to improve athletic performance by replenishing what was lost through sweat464—and in the market—becoming a massively successful consumer product, dominating the sports beverage market, and growing into one of the most valuable brands in the world.465 The litigation over ownership of Gatorade in the years after its development highlighted legal deficiencies in the nation’s R&D apparatus, prompting reform to IP and research policy. The clash over Gatorade influenced the Bayh-Dole Act, the 1980 piece of legislation that standardized contractor ownership of research inventions and launched the field of tech transfer at universities. Thereafter, Gatorade would serve as an inspirational story (and cautionary tale) of how innovation transpires at universities in the U.S. Although replicating the success of Gatorade may be a fruitless endeavor for many universities, it is still an indispensable template for universities to emulate and aspire to achieve. The story of how Gatorade went from a “small idea”466 in the laboratory of the football field,467 to a congressionally-recognized “super-juice,”468 to a “home run”469 in the marketplace serves as the quintessential example of how the commercialization of research can benefit the public, inventors, and science and engineering, performed as much as 15% of research and development in the U.S., and accounted for as much 53% of national basic research). 464 See supra Part II. Despite literature discussing its ability to rehydrate, see supra note 2, and the brand’s celebration of its scientific roots, see Heritage and History of Gatorade, supra note 30, there are doubts to its efficacy to improve performance. See, e.g., ROVELL, supra note 3, at 203 (quoting Dr. Robert J. Murphy, team doctor at Ohio State, telling “a group of doctors at an Am. Med. Ass’n meeting that Gatorade did not, in fact, travel through the body and get absorbed faster than water.”). 465 See Stuart Elliott, Brands That Shaped Marketing in the 20th Century, and Some with Promise in the 21st, N.Y. TIMES (Dec. 13, 1999), http://www.nytimes.com/1999/12/13/business/media-business-advertising-brands- that-shaped-marketing-20th-century-some-with.html (ranking Gatorade as the 25th most powerful corporate, media, or product brands of the twentieth century). 466 See supra note 333 and accompanying text. 467 See Sweat Solution, supra note 9, at 3:45 (“This is a laboratory”) (video footage of football field). 468 See HARBRIDGE HOUSE REPORT, supra note 208 (“Scarcely a month goes by without a report or a feature article on [other university inventions], or a super-juice called ‘Gator Ade’ at the University of Florida.”). 469 See supra note 376 (describing Gatorade as a “home run”). 2020 BORN IN THE LAB, PROVEN IN THE 345 MARKET
the ongoing research missions of universities across the country.470 Is it in you?471
470 See supra Part VII; see also NAT’L RESEARCH COUNCIL, supra note 22, at 59 (“Discovery, learning, and promotion of social well-being are mutually supportive core university missions. Transfer of new knowledge to those in society who can make use of it for the general good contributes to each of these missions.”). 471 See supra note 1.