TRADITIONAL CONTOURS IN INTELLECTUAL PROPERTY: BEFORE AND AFTER GOLAN AND PROMETHEUS Elizabeth Townsend Gard• I. INTRODUCTION: IN SEARCH OF TRADITIONAL CONTOURS “The Congress shall have the Power to enact...[t]o 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." U.S. Constitution, I.8.8. “[W]hen, as in this case, Congress has not altered the traditional contours of copyright protection, further First Amendment scrutiny is unnecessary.” Eldred v. Ashcroft, 537 U.S. 186, 221 (2003) “This appeal requires us to clarify the contours of the “safe harbor” provision of the Digital Millennium Copyright Act (DMCA)…. Opening line, Viacom v. YouTube, 2nd Cir, (April 2012) A. ARE THERE “TRADITIONAL CONTOURS”? We are in a state of crisis, of transition, of dramatic change—we have witnessed the first major revision of the patent act in sixty years, we are in the midst of a revolution well under way through user-generated content and social media challenging the traditional expectations of the copyright act, and a global, digitized world that still must operate within the construct of nineteenth century concepts of territoriality. To keep up, new laws, new treaties, new cases try to address the latest changes. How are we to understand the changes and the response to changes? Could the response to changes go too far or not be in the spirit of the law as we know it? The proposed Google book settlement, You Tube’s Copyright School, and Ebay’s actual harm standard leading to damages rather than injunctions are all examples of challenges to our traditional expectations within the intellectual property world. This essay argues that “traditional contours” as a concept could provide a tool for evaluating the boundaries and questions that arise in our Twenty-first century world. This paper argues that copyright and patent law are more than merely ad hoc rules, that instead there is a physics, a system, a predictability that is part of that system, and when new laws, treaties, or case law deviates from that predictability, they should be evaluated within a traditional contours framework—that is, does a particular amendment, • Associate Professor, Tulane University Law School, and Co-Director, Tulane Center for IP, Media and Culture. Thanks to Keith Werhan, Joel Friedman, George Strickler, Claire Dickerson, Joerg Fedke, Steve Griffin, Jancy Hoeffel, Glynn Lunney, David Levine, Roberta Kwall, Portions of this paper were presented before the Tulane Law School faculty (January 2012), the 2012 IP Works in Progress Colloquium in Houston (February 10-11, 2012) and Louisiana Junior Faculty Forum at Southern Law School (March 2012). Thanks to Bri Whetstone for her assistance. 1 for instance, change our expectations of how the system works. If it does, we should more carefully analyze the needs for and limits to that change. Traditional contours, then becomes a mechanism for continuity, a checkpoint. Copyright and patents are bound together by the IP clause: 1.8.8. Both serve the public good by granting for “limited Times” monopolies to inventors and authors. For over two hundred years, a discourse filled with certain expectations has developed in both copyright and patent law. The question is what components are essential for a working system in each area, and which elements can be altered. This essay seeks to find a dataset: how do we define traditional contours of intellectual property protection. The phrase “traditional contours” is usually attached to “copyright protection” – “traditional contours of copyright protection,” and whether those traditional contours have been altered by a new law or judicial decision. However, to know whether traditional contours have been altered, we must first identify the data set itself. What makes up traditional contours? While a number of scholars and courts (including two Supreme Court cases) have used the phrase, no systematic analysis of the phrase itself—what constitutes traditional contours—has occurred. Rather, courts and scholars begin with when traditional contours have been altered. Yet, how can we know when a system has been altered if we do not know the contours of the system itself? When I began this paper—before the Golan U.S. Supreme Court decision—the question of what constituted traditional contours was fairly straightforward. While the doctrine or test had remained rather undeveloped, there was a clear roadmap and path evolving from Eldred to Golan in the 10th circuit. Ginsburg would change all of that— some might even say—she tried to strangle traditional contours, or at least dramatically limit its usefulness. But with in just a few months, the 2nd circuit, in Viacom v. YouTube, would begin its opinion defining its task as clarifying the “contours” of a particular area of copyright law. So, that’s interesting. And then, about the same time, Breyer (who dissented in Golan and Eldred) delivered a 9-0 opinion in a patent case, Prometheus v. Mayo. What is remarkable about the opinion is that the case itself seemed to be a battle over traditional contours, with the Petitioners even invoking a First Amendment argument. Is the traditional contours test alive and well? Could it be a case of “The king is dead. Long live the king?” This essay focuses the discussion on case law and scholarship surrounding “traditional contours” itself, searching for definitions and the dataset. B. TRADITIONAL CONTOURS OF COPYRIGHT AND ND PATENT LAW For the 2011-12 season, the Supreme Court accepted only the second case that looks directly at the concept of “traditional contours” in intellectual property. The case, Golan v. Holder, concerned the boundaries of copyright law, and whether Congress had altered the traditional contours of copyright protection when they removed foreign works from the public domain, restoring copyright to previously public domain works.1 1 See Elizabeth Townsend Gard, Copyright Law v. Trade Policy: Understanding the Golan Battle Within the Tenth Circuit, 34 Colum. J.L. & Arts 131 (2011) and Elizabeth Townsend Gard, In the Trenches with S 2 Traditional contours was a concept that began with Eldred v. Ashcroft in 2003 where Justice Ginsberg found that extending the term of copyright did not violate the traditional contours of copyright protection; now in Golan she revisited the term.2 But it was a second case that the Supreme Court accepted for cert that prove deven more interesting in the context of traditional contours and intellectual property, even though the phrase is never mentioned in the Breyer opinion in Mayo v. Prometheus, and the question of the boundaries of patentable subject matter.3 The two cases at first blush seem very different. Golan v. Holder concerns the boundaries of how far Congress can legislatively go in enacting laws; Mayo v. Prometheus concerns clarifying judge-made exceptions to patentability. Yet, both cases struggle with how far protection can extend, and both Petitioners believe that the law has crossed over into unnatural territory, violating basic principles of intellectual property. Both cases see the system as in jeopardy if the law is allowed to stand, either as a statutory amendment in the case of Golan v. Holder, or as an interpretation of judge- made concept of preemption, or nonpatentability, as seen in Mayo v. Prometheus. Both cases show the struggles of a system to define boundaries and to stay true to the underlying functions that drive protection. Both cases challenge the court to better define the public domain.4 This article suggests that “traditional contours” could become a powerful doctrinal tool within the theoretical arsenal of intellectual property law. While the concept began as a conclusionary sentence in Eldred, the phrase “traditional contours” may be able to provide balance, guidance, and structure to an otherwise ever changing and expanding laws of intellectual property. When are new laws merely an expansion necessary to keep up with technology, a global economy and new ways of thinking, and when do these laws go beyond the “traditional contours” of intellectual property, potentially upsetting the balance, the physics, of the system? This paper looks at how courts and scholars have defined the term “traditional contours.” The phrase originates with Justice Ginsburg in Eldred v. Ashcroft (2003), and nearly ten years later, Ginsburg takes up the question of traditional contours again in the recently decided Golan v. Holder (January 18, 2012). This article looks at not only her two opinions, but also the case law and scholarship surrounding the defining of the phrase traditional contours, and in the end, suggests a robust potential test of traditional contours. The paper uses patentable subject matter as the testing ground, looking at Bilski, Prometheus, and the America Invents 104a: An Evaluation of the Parties' Arguments in Golan v. Holder As It Heads to the Supreme Court, 64 Vand. L. Rev. En Banc 199 (2011) 2 Eldred v. Ashcroft, 537 U.S. 186, 221 (2003). 3 Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed.Cir.2010), cert. granted, 131 S.Ct. 3027 (2011). 4 For importance of preserving the public domain, see Tyler T. Ochoa, Is the Copyright Public Domain Irrevocable? An Introduction to Golan v. Holder, 64 Vand. L. Rev. En Banc 123 (2011) and Diane Leenheer Zimmerman, Is There A Right to Have Something to Say? One View of the Public Domain, 73 Fordham L. Rev. 297 (2004). 3 Act. The paper ends suggesting why a traditional contours helps sort out the hard problems, the boundary issues, in both copyright and patent law. Part II, “History of Traditional Contours,” looks at how “traditional contours” developed from Eldred to Golan. In almost a decade since Eldred, traditional contours have remained fairly undefined and under-utilized.