Working Paper: Patent Injunctions and Speech Technologies By Jason Schultz and Corynne McSherry 1
Every day, more and more citizens are using new communications tools and software to exercise their First Amendment rights online. As a result, the internet has become a “dynamic, multifaceted category of communication [that] includes not only traditional print and news services, but also audio, video, and still images, as well as interactive, real-time dialogue. Through the use of chat rooms, any person with a phone line can become a town crier with a voice that resonates farther than it could from any soapbox. Through the use of Web pages, mail exploders, and newsgroups, the same individual can become a pamphleteer.”2 At the same time, the number of patents on internet technologies has increased dramatically. Judicial decisions issuing or denying injunctions on the use of these technologies are likely to shape the future of online speech. In particular, consideration of the third traditional equitable factor in injunctive relief analysis—the impact of the injunction on the public interest—will play an increasingly crucial role in mediating between the Intellectual Property Clause and the First Amendment. That mediating role will require careful balancing of the conflicting interests of patent holders and patent users. A patent injunction is a court order prohibiting the making, selling, offering for sale or use of a patented method or system.3 It is not difficult to see the conflict when the patent in question is used to engage in what would otherwise be Constitutionally-protected speech. On the one hand, it is a violation of an individual intellectual property right to continue speaking using the patented method. On the other hand, it is a prior restraint for the court to enjoin one’s ability to speak.
1 Staff Attorneys, Electronic Frontier Foundation. Authors can be reached at [email protected] and [email protected]. 2 Reno v. Am. Civil Liberties Union, 521 U.S. 844, 870 (1997). 3 35 U.S.C. § 271.
1 Courts can manage this conflict by analyzing injunctive relief in light of already established speech doctrines. For example, if a patent owner targets a speaker for expressing a particular viewpoint, the court can apply traditional strict scrutiny standards for evaluating the propriety of injunctive relief.4 Where the patent owner targets speech technologies indiscriminately, however, the court can use a content-neutral framework of intermediate scrutiny. This approach will acknowledge and further the important government interest of promoting innovation. At the same time, it will further the fundamental government interest in promoting free speech by requiring any injunction to be narrowly tailored and that alternative channels of communication be available. Indeed, if the effect on protected speech ends up being far greater than the harm to the patentee from the infringement, e.g. if such alternatives channels do not exist, courts may find it appropriate to abandon injunctive relief altogether in lieu of damages.
A. Patented Technologies Increasingly Affect Free Expression Online Until recently, it might have been possible to dismiss the effect of patents on free speech as minimal or indirect at best. While it is true that patents have always covered means of communication,5 enforcement of those patents was often limited to manufacturers and distributors of equipment, not actual speakers and publishers. A certain product for speech might be taken off the market due to a patent injunction, but it was not generally taken out of the hands of the end users who spoke with it. 6 Thus, patent injunctions were less likely to have a direct effect on the First Amendment rights of speakers. The situation has changed. Many new and pending patents “appropriate methods
4 This appears to be the case in Acacia Research v. New Destiny, where the patent owner chose to sue adult media companies exclusively on patents for video and audio streaming because of the specific content they were distributing. 5 Alexander Graham Bell’s patent on the telephone, for example. 6 In fact, the doctrine of patent exhaustion has historically kept patent owners from doing so.
2 of communication.”7 The United States Patent and Trademark Office has issued patents on methods for downloading video programs, publishing web pages, sending email messages, making internet telephone calls, and even online fundraising methods. Injunctions against uses of these technologies—and many similar technologies—will inevitably affect, and may even chill, free expression on the internet.8 Consider, by way of example, Acacia Research’s aggressive campaign to enforce its patent on sending and receiving of streaming audio and video over the internet. 9 This patent could cover everything from the transmission of home movies to documents to music—in other words, it could arguably cover much of what individuals, private corporations, political action committees, governments, etc. communicate on the internet. While any lawsuit to enforce this patent would likely be filed against a technology vendor, an injunction stemming from that suit would also affect the ability of thousands, perhaps millions, of non-party end users to communicate. “Speaking” in this way, in violation of a court injunction, would subject the speaker to contempt of court penalties, a punishment that would surely chill speech for some if not most users. Acacia’s campaign is just the tip of the iceberg. As of this writing, approximately 269 patent applications are pending on technologies designed for use in connection with “web logs” or “blogs” i.e., internet-based publications consisting primarily of periodic short writings and images.10 See, e.g. William F. Patry, “The Patry Copyright Blog” at
7 John R. Thomas, Liberty and Property in the Patent Law, 39 HOUS. L. REV. 569, 588 (2002). 8 In addition, the fact that many communications technologies are provided as services to internet users means that an injunction against the service provider effectively enjoins the end user from exercising their expressive rights. 9 U.S. Patent No. 5,132,992 (“Audio and video transmission and receiving system”); Teresa Riordan, A Patent Owner Claims to Be Owed Royalties on Much of the Internet’s Media Content, N.Y. Times, Aug. 16, 2004, at C6 ; M. Hachman, Acacia Wins Small Victory against Porn Firms, Extreme Tech July 16, 2003, at http://www.extremetech.com/article2/0,1558,1195937,00.asp. 10 See, e.g., U.S. Patent App. No. 20050055639 (“Relationship User Interface”); U.S. Patent App. No. 20040267887 (“System and Method for Dynamically Managing Presence and Contact Information”); U.S. Patent App. No. 20040076345 (“Method for
3 http://www.williampatry.blogspot.com (commenting on developments in copyright law); Multiple Authors, “SCOTUSblog” at http://www.scotusblog.com/movabletype/ (reporting and commenting on United States Supreme Court jurisprudence and politics). The Supreme Court has characterized the internet as a “a vast platform from which to address and hear from a world wide audience of millions of readers, viewers, researchers, and buyers.”11 Blogs are an increasingly popular means by which individuals ranging from teenagers to political advocates to corporate executives speak on that platform. Blog content can range from highly-personal writings to relatively neutral news reporting, and may reflect the contributions of one person or the collaboration of a large community. In the few short years of their existence, blogs have become crucial sources of expression and information. For example, in the aftermath of Hurricane Katrina, bloggers located in or near New Orleans provided timely first person accounts of the devastation.12 The same outpouring of political expression has occurred via the internet regarding such topics as the War in Iraq and the 2004 national election.13 Moreover, many weblogs enable visitors to leave public comments, which can foster the development of a community of writers centered around the blog. If patents are issued on blogging technologies, patent owners could threaten to shut down both bloggers and their commentators with injunctions. Key news reporting
Referencing Image Data”); U.S. Patent App. No. 20030187739 (“System and Method of Providing and Interface to the Internet”); U.S. Patent App. No. 20020156879 (“Policies for Modifying Group Membership”). 11 Reno, 521 U.S. at 853. 12 See, e.g., Bloggers Joel and Jake Visit NOLA for Geek Aid, September 10, 2005, at http://www.boingboing.net/2005/09/10/katrina_bloggers_joe.html; Katrina: ‘Rape, Murder, Beatings’ in Astrodome, Say Evacuees, September 7, 2005, at http://www.boingboing.net/2005/09/07/katrina_rape_murder_.html. 13 See generally Beth Potier, How Did Internet Affect Election, Harvard Univ. Gazette, Dec. 16, 2004, at http://www.news.harvard.edu/gazette/2004/12.16/13-netvote.html; Kathy Kiely, Freewheeling ‘Bloggers’ Are Rewriting Rules of Journalism, USA Today, Dec. 30, 2003, at http://www.usatoday.com/news/politicselections/nation/2003-12-30- blogging-usat_x.htm; Bloggers and Journalists, Online NewsHour, Feb. 14, 2005 http://www.pbs.org/newshour/bb/media/jan-june05/blog_2-14.html.
4 could be censored; relevant political commentary could be held hostage under the rubric of “licensing negotiations.” Basic free speech values mandate that courts should consider such potential effects before issuing a permanent injunction. Political expression in the world of online grassroots activism may also be threatened. Consider a pending patent application that encompasses:
A method for conducting a fundraising campaign by an organization or person over a wide-area network, comprising the steps of: hosting a website including a plurality of linked web pages, the website providing information about the fundraising campaign and soliciting potential donors to make a charitable contribution to the fundraising campaign; registering on the website; contacting third parties via email messages soliciting charitable donations; and providing one or more reports, on the website, including information on the status of the fundraising campaign. “Method and system for an efficient fundraising campaign over a wide area network,” U.S. Patent App. No. 764787 (emphasis added). Should the applicant succeed in obtaining this patent, it could seek injunctions against virtually every nonprofit in the nation based, in large part, on those nonprofits expressive activity of contacting potential donors and providing information regarding those contacts. Moreover, such injunctive relief might be dangerously timed. For example, imagine the impact of an injunction on use of a fundraising technology political advocates that goes into effect six months before an election. Even the American Red Cross, source of the vast majority of Katrina relief funding, could have its website shut down in the critical days or weeks after a disaster. The threat of such a result could lead these groups to pay questionable license fees to the patent holder because the damage to their First Amendment rights and/or mission while the injunction was pending appeal would be irreparable.14 Therefore, courts must weigh the proper balance of harms and
14 See Arizona Right to Life Political Action Committee v. Bayless, 320 F.3d 1002, 1008-9 (9th Cir. 2003) (finding 24-hour notice requirement for political speech to be unconstitutionally restrictive, particularly for digital political communications, because “timing is of the essence in politics … and when an event occurs, it is often necessary to have one’s voice heard promptly, if it is to be considered at all.”) (quoting Shuttlesworth v. City of Birmingham, 394 U.S. 147, 163 (1969)).
5 equities, especially where freedom of expression is concerned. Academic freedom could also be affected. Every day, more and more entities are attempting to patent online education and research tools, from methods used in distance learning to online instruction in language, music, and mathematics—including a patent on using inductive reasoning to teach vocabulary.15 An injunction against the use of these methods could directly impinge on academic speech and, by extension, academic freedom, long recognized as “a special concern of the First Amendment.” Keyeshian v. Bd. of Regents, 385 U.S. 589, 603 (1967).16 If, as the Supreme Court has declared, “Our Nation is deeply committed to safeguarding academic freedom, which is of transcendent value to all of us,” id., then courts must have discretion to consider whether an injunction risks violating that commitment. Finally, injunctive relief may even hamper the public interest in critical emergency communications. Congress’ public plea to legal adversaries Research in Motion, Inc. (the manufacturer of technology that forwards a user’s incoming email to a handheld device—called a Blackberry—via a customer-selected wireless network) and NTP, Inc., is a case in point. The House of Representatives’ chief administrative officer asked the parties to settle their dispute over the rights to the Blackberry devices because any injunction shutting down the Blackberry service could create “a serious risk to the House’s critical communications and could jeopardize the public interest, particularly in
15 See U.S. Patent No. 6,513.042 (“Method for administering tests, lessons, assessments, and surveys on the Internet, scoring them, and maintaining records of test scores online”); U.S. Patent No. 5,649,826 (“Method and Device for Teaching Language”); U.S. Patent No. 6.015,947 (“Method of Teaching Music”); U.S. Patent No. 6,120,297 (“Vocabulary Acquistion [sic] Using Structure Inductive Reasoning”); U.S. Patent No. 6,155,836 (“System for Teaching Mathematics”). 16 For example, Test.com has threatened several universities with lawsuits based on its patent claiming “A method of making a tests, assessments, surveys and lesson plans with images and sound files and posting them on-line for potential users.” U. S. Patent No. 6,513,042; see Dan Carneval, Company Claims to Own Online Testing, Chron. Higher Ed., Mar 26, 2004, at 31.
6 the even of an emergency.”17 Perhaps recognizing the ramifications of the litigation, the district court appropriately gave due consideration to traditional equitable principles in deciding whether to grant permanent injunctive relief to NTP—as it was required to do before the Federal Circuit imposed its new and untenable standard.18 These examples are but a small sampling of visible threats to free speech that patents present, relating primarily to internet-based technologies. It is virtually certain that as new internet technologies of communication develop, the need to assess the free speech of implications of patents on those technologies will grow as well. Nor is there any reason to suppose that that need will be confined to injunctions affecting internet technologies. If computer source code can be understood as expression for First Amendment purposes, Bernstein v. U.S. Dept. of Justice, 176 F.3d 1132 (9th Cir. 1999), injunctions preventing use of a wide range of infringing software are likely to impact free speech in ways we cannot yet anticipate.19 Traditional equitable principles give judges both the flexibility and the rich precedential history they will need to deal with these new challenges.
B. Courts Have An Equitable Duty To Examine The Rights Of All Parties And Non-Parties Before Enjoining Use Of A Speech Technology. As the Supreme Court recently affirmed, courts have an equitable duty to take into account a variety of factors, including the balance of harms to each party and the public interest affected, prior to granting injunctive relief in patent cases.20
17 See Jonathan Krim, House Makes Plea to Keep Blackberrys, Wash. Post, Jan. 17, 2003, at E01. 18 NTP v. Research in Motion, 2003 WL 23100881 at *2 (E.D. Va. 2003), affirmed in part, vacated in part and remanded on other grounds in 392 F.3d 1336 (Fed. Cir. 2004). 19 But see Dan L. Burk, Patenting Speech, 79 TEXAS L. REV. 99 (2000) (arguing that patent laws pass First Amendment scrutiny even if code is speech). 20 See eBay Inc. v. MercExchange, L.L. C., 547 U.S. ----, ----, 126 S.Ct. 1837, 1842, 164 L.Ed.2d 641 (2006); “[I]t is the duty of a court of equity granting injunctive relief to do so upon conditions that will protect all—including the public—whose interests the injunction may affect.” Inland Steel v. U.S., 306 U.S. 153, 157 (1939); see also Meredith v. City of Winter Haven, 320 U.S. 228, 235 (1943) (“An appeal to the equity jurisdiction
7 One such public interest factor is the promotion of innovation through the patent system.21 However, courts assessing the propriety of injunctive relief routinely consider First Amendment interests as part of the third equitable factor as well. The Supreme Court has held that injunctions “carry greater risks of censorship and discriminatory application than do general ordinances” and “require a somewhat more stringent application of general First Amendment principles.”22 In cases where free speech activities are potentially threatened by patent injunctions, courts must consider the injunction’s impact on speech as part of its public interest analysis.
C. Content-based Patent Injunctions Require Strict Scrutiny
That consideration should begin with a determination of whether the injunction effectively targets a particular kind of speech. In normal First Amendment jurisprudence, a law or regulation that targets a specific type of content or a specific viewpoint is considered a content-based restriction and subject to strict scrutiny analysis.23 This same analysis must apply to injunctions enforcing patent claims that target specific content. For example, Test.com’s patent on online educational testing techniques directly targets a conferred on federal district courts is an appeal to the sound discretion which guides the determinations of courts of equity [citation omitted]. Exercise of that discretion by those, as well as by other courts having equity powers, may require them to withhold their relief in furtherance of a recognized, defined public policy.”). Hecht Co. v. Bowles, 321 U.S. 321, 329 (1944). (“The essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it.”). 21 See, e.g., Polaroid v. Eastman Kodak, 641 F.Supp. 828, 876 (D. Mass 1985), denial of stay aff’d., 833 F.2d 930 (Fed. Cir. 1986) (“the public policy at issue in patent cases is the ‘protection of rights secured by valid patents’”), quoting Smith Int’l v. Hughes Tool Co., 718 F.2d 1573, 1581 (Fed. Cir., cert. denied 464 U.S. 996 (1983). 22 Madsen v. Women’s Health Ctr. 512 U.S. 753, 754, 764 (1994). 23 Turner Broadcasting System, Inc. v. FCC, 512 U.S. 622, 643-45 (“As a general rule, laws that by their terms distinguish favored speech from disfavored speech on the basis of the ideas or views expressed are content based. . . . [and] Our cases have recognized that even a regulation neutral on its face may be content based if its manifest purpose is to regulate speech because of the message it conveys.” (citing United States v. Eichman, 496 U.S. 310, 315 (1990)
8 particular type of online communication based on its content – educational materials.24 Thus, any injunction entered by a court would specifically target educational communications and not others using the exact same means of communications. Even generic patent claims can lead to content-based restrictions when they are selectively enforced. For example, Acacia Research first asserted its Digital Media Transmission patents exclusively in court against adult media companies.25 Thus, just as a governmental obscenity prosecution of these particular companies for their content would be subject to strict scrutiny, so must Acacia’s targeted patent attack. Under strict scrutiny, courts look at whether the given speech restriction is “narrowly tailored to serve a compelling state interest.”26 The regulation must also be the least restrictive means to accomplish the governmental interest.27 As discussed below, in the context of patent injunctions, strict scrutiny would likely prohibit most patent injunctions from issuing where free speech would be restricted based on its content.
1. There is a compelling governmental interest in promoting innovation, but not necessarily through injunctive relief
As noted above, the first question under strict scrutiny is whether or not there is a compelling governmental interest in the speech restriction. Faced with a First Amendment challenge, a plaintiff seeking a patent injunction will doubtless argue that the injunction promotes the government interest in patents by enforcing the key patent right: the right to exclude. However, that argument depends on a simplistic view of the nature and purpose of patents, one that elides the distinction between intellectual and real property.28 Properly understood, a patent is nothing more or less than a statutorily created
24 See U.S. Pat. No. 6, 513, 042, Claim 1 (limiting patent scope to educational testing activities). 25 See no 26 Austin v. Michigan Chamber of Commerce, 494 U.S. 652, 655 (1990) 27 ACLU v. Reno 28 Moreover, even if patents were like other property, a patent right would not amount to an absolute right to exclude. See Carrier, supra, at 50-76 (describing limits on property rights, including limits on the right to exclude such as: easements, capture, and bona fide
9 and limited monopoly, designed solely to encourage inventors to disclose their inventions to the public.29 As Thomas Jefferson, one of the first administrators of the U.S. patent system, observed, “Inventions cannot, in nature, be the subject of property. Society may give an exclusive right to the profits arising from them . . . but this may or may not be done according to the will and convenience of society.”30 Simply put, patents embody a “carefully crafted bargain for encouraging the creation and disclosure of new, useful and nonobvious advances in technology and design.”31 The distinct public purpose of patents is reflected in the numerous unique constraints on their enforcement, such as the experimental use exception and the medical testing exception, see, e.g., Roche Prods. v. Bolar Pharm. Co., 733 F.2d 856, 862-63 (Fed. Cir. 1984), cert. denied, 469 U.S. 856 (1984), superseded on other grounds by statute, 35 U.S.C. § 271(e); Merck KGaA v. Integra LifeSciences I Ltd., 125 S.Ct. 2372 (2005), and 35 U.S.C. § 271(e); patent misuse and antitrust limitations, see, e.g., Brulotte v. Thys Co., 379 U.S. 985 (1965), Walker Process Equip., Inc. v. Food Mach. & Chem. purchaser rights). 29 See generally, Mazer v. Stein, 347 U.S. 201, 219 (1954). (“Intellectual Property Clause based on “conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in Science and Useful Arts.”); Kendall v. Windsor, 62 U.S. 322 (1858) (“it is undeniably true that the limited and temporary monopoly granted to inventors was never designed for their exclusive profit or advantage; the benefit to the public or the community at large was another and doubtless the primary object in granting and securing that monopoly”); Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 US 503 (1917) (“this court has consistently held that the primary purpose of our patent laws is not the creation of private fortunes for owners of patents but is ‘to promote the progress of science and the useful arts’”); Mercoid Corp. v. Mid-Continent Co., 320 US 661, 666 (1944) (patent is a privilege “conditioned by a public purpose”); Pfaff v. Wells Elecs. Inc., 525 U.S. 55, 63 (1998) (“the patent system represents a carefully crafted bargain” between the public and the inventor); Richard Posner, Do We Have Too Many Intellectual Property Rights?, 9 MARQ. INTELL. PROP. L. REV. 173, 175, 185 (physical property, unlike intellectual property, not limited by scope or duration, and lacking in robust concept of fair use). 30 VI Writings of Thomas Jefferson, 180-81 (Washington ed.), quoted in Graham v. John Deere, 383 U.S. 1, 9 n.2 (1966); see also, generally, Wheaton v. Peters, 33 U.S. 591, 595 (1834). 31 Bonito Boats Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150 (1989).
10 Corp., 382 U.S. 172 (1985), and 35 U.S.C. § 271(d); and prior user rights, see, e.g., 35 U.S.C. § 273; see also, generally, Michael Carrier, Cabining Intellectual Property
Through a Property Paradigm, 54 DUKE L. J. 1, 106-125 (2004). These limits are designed to ensure that the public receives the full benefits of the patent bargain. Thus, while patent rights, like other forms of property, include the right to exclude, that right is not, and has never been, an absolute right. Moreover, as the Supreme Court acknowledged this year, the patent right to exclude “is distinct from the provision of remedies for violations of that right.” Specifically, the right to exclude, like other patent attributes, is subject to the related provision that injunctive relief "may" issue only "in accordance with the principles of equity,”32
In sum, the Intellectual Property Clause supports a compelling government interest in promoting innovation. Injunctive relief enforcing a right to exclude may not always serve that interest in a given context. Indeed, four Supreme Court justices implied as much in their concurring opinion in Ebay, noting that an injunction may not serve the public interest as well as damages when “the patented invention is but a small component of the product the companies seek to produce and the threat of an injunction is employed simply for undue leverage in negotiations” or where patents are of “suspect validity.”33
2. Patent injunctions will likely fail the “ Least Restrictive Means ” Test If the patentee is successful in establishing a compelling government interest in encouraging innovation through enforcement of the patent, it must still show that an injunction is the least restrictive means of serving that interest available to the court.34 In passing the Patent Act, Congress listed a number of remedies available to achieve its goal
32 See Ebay, supra. 33 See Ebay (Kennedy, J. concurring, joined by Souter, J, Breyer, J, and Stevens, J.). 34 Arizona Right to Life Political Action Committee v. Bayless, 320 F.3d 1002, 1011 (9th Cir. 2003)
11 of promoting innovation. One is damages.35 Another is attorneys fees.36 And finally, there is the remedy of an injunction.37 Under the recent eBay decision, there is much to suggest that some calculation of damages would suffice to serve the governmental purpose of promoting innovation without requiring a speech-restricting court order. While the Court’s majority opinion was careful not to comment on the propriety of damages as appropriate relief in any particular case, its affirmation of judicial discretion to apply traditional principles of equity to injunction requests clearly leaves open the possibility of damages as an alternate form of relief. And, the concurring opinion of Justice Kennedy, Souter, Stevens and Breyer specifically holds out damages as an option where an injunction does not serve the public interest. Thus, when speech-restricting patents are at issue, a court may be required to deny an injunction in order to limit relief to the least speech-restrictive means possible in content-based cases.
D. Content-neutral Patent I njunctions Deserve Intermediate Scrutiny While content-based patent injunctions are likely unconstitutional, they are also likely to remain a relatively rare case. It is much more likely that a proposed injunction will target not a particular type of speech, but rather a particular type of speech technology. For example, a company called Acceris has a patent on “Method and apparatus for implementing a computer network/internet telephone system & voice internet transmission system,” which purportedly covers Voice-over-IP (VOIP) technology, the technology behind most internet telephone calls.38 According to reports, Acceris is going after other VOIP providers, not actual speakers themselves.39 Yet, an injunction shutting down these VOIP providers would also affect thousands and
35 35 U.S.C. § 284. 36 35 U.S.C. § 285. 37 35 U.S.C. § 283. 38 See U.S. Pat. No. 6,243,373. 39 See Acceris Communications Technologies Files Lawsuit Against ITXC, http://www2.ccnmatthews.com/scripts/ccn- release.pl?/2004/04/14/0414016n.html.
12 potentially millions of speakers, must like an injunction against Research In Motion’s Blackberry service threatened to squelch the speech of millions of email users. As the injunction would be based on general VOIP activity and not the content of the VOIP calls, however, courts would likely considered the injunction a content-neutral restriction on speech.40 In cases involving content-neutral regulations, courts have generally followed the test laid out in United States v. O’Brien.41 There, the Court held that a content-neutral regulation is constitutional “if it furthers an important or substantial governmental interest; if the governmental interest is unrelated to the suppression of free expression; and if the incidental restriction on alleged First Amendment freedoms is no greater than in essential to furtherance of the interest.”42
1. There may be strong government interest in encouraging innovation via injunctive relief Much as in content-based situations, the same government interest in promoting innovation discussed above applies in the content-neutral context, subject to the same caveat that litigants and the courts must recall that the interest is in promoting innovation —not promoting exclusion per se.
2. Content-neutral patent injunctions may restrict more speech than necessary to justify them constitutionally
The analysis changes, however, with respect to the least restrictive means requirement. Content-neutral regulations must not “‘burden substantially more speech than is necessary to further the government's legitimate interests.’”43 Thus, “a regulation is not ‘narrowly tailored’—even under the more lenient [standard applicable to content-
40 Courts have also held that there is a speech interest in enabling others to speak and providing the means for others to speak. See Nixon v. Shrink Mo. Gov’t PAC, 528 U.S. 377, 400 (2000) (Breyer, J., concurring); Buckley v. Valeo, 424 U.S. 1, 14-19, 24-25 (1976). 41 391 U.S. 367, 377 (1968). 42 Id. 43 Turner at 662.
13 neutral regulations]—where . . . a substantial portion of the burden on speech does not serve to advance [the State's content-neutral] goals.”44 Whether the restriction on speech is no greater than is necessary to further the governmental interest will depend on the potency of the various incentives available. In some cases, an award of damages may be sufficient to serve the governmental interest in promoting innovation. In other cases, an injunction may be required for more forceful effect. In each situation, the court will have to assess the benefits offered and the burdens imposed. When a patent injunction would suppress a large amount of free expression, the balance of harms may well weigh against injunctive relief when damages are available and sufficient incentive for encouraging innovation. Consider, for example, a patent on blogging. If asserted against a website like Blogger.com, a patent of this nature could potentially affect thousands if not millions of individual speakers. Because blogs continue to publish and republish old entries, an injunction enforcing the patent would not only shut down the Blogger service, but force Blogger.com to disable all old posts as well. In such a situation, the harm to speech interests would be severe and might impose a burden that outweighs any additional benefits from an injunction, especially if Blogger (which is owned by Google, Inc.) were able to pay sufficient damages to effectuate the incentives for innovation of the patent at issue. Moreover, as noted above, blogging has become a primary tool for both news reporting and political speech, two core areas deserving of the highest constitutional protections.45 To allow a patent injunction to shut down this type of speech, even incidentally, would offend the Constitution and would be especially inequitable to the rights of a non-party speaker if only the service provider were sued. Such an approach to speech-restrictive patent injunction is also supported by First
44 Id. 45 See Arizona Right to Life Political Action Committee v. Bayless, 320 F.3d 1002, 1008 (9th Cir. 2003) (political speech “is at the heart of our democratic process and ‘operates at the core of the First Amendment.’”)
14 Amendment policy. In the copyright context, Professors Lemley and Volokh have argued that, unlike libelous or obscene expression, derivative works that inform or enlighten have constitutional value even if they infringe a copyright.46 Thus, even where withholding injunctive relief may result in some cost to the government interest in the copyright system, there may be a significant “countervailing benefit t the marketplace of ideas.”47 In the case of patents, while the speech technology may infringe a patent and therefore be of low constitutional value, the speech that relies on that technology may provide significant countervailing benefits to the marketplace of ideas that should be considered prior to issuing the injunction.
3. Content-neutral patent injunctions may not leave sufficient speech alternatives Another key inquiry for content-neutral patent injunctions would be whether speakers would have access to sufficient alternative channels of communication.48 Under a content-neutral analysis, a court may find that an injunction is inappropriate if equivalent non-infringing alternative channels are not readily available. Again, it is not difficult to imagine such a situation. While websites have been around for many years, blogging tools have made the web a crucial forum to share and access information for large numbers of people who are not technically savvy. An injunction might prevent use of key blogging tools, e.g., the ability to link, and other
technologies that cannot be readily replaced by others means. There might also be timing considerations, e.g., if the injunction were to go into effect shortly before an election or some other political or newsworthy event. Certainly, there are other ways for online commentators to debate and share information, but perhaps not so quickly,
46 Mark A. Lemley and Eugene Volokh, FREEDOM OF SPEECH AND INJUNCTIONS IN INTELLECTUAL PROPERTY CASES, 48 Duke L. J. 147 (1998) 47 Id. at 269-70. 48 See Ward, 491 U.S. at 802 (content-neutral regulation affecting speech “must leave open ample alternative channels of communication.”)
15 cheaply and easily. And, while competitors might be able to develop a noninfringing substitute, that substitute might not be available in time to allow the web to function as effectively as a forum for speech related to the upcoming election. In such a situation, an injunction would not leave open comparable channels of communication as required by the Constitution, and thus might fail to survive the content-neutral test under the First Amendment.
16