FROMER IN PRINTER PROOF (DO NOT DELETE) 3/19/2012 8:25 PM Duke Law Journal VOLUME 61 APRIL 2012 NUMBER 7 THE INTELLECTUAL PROPERTY CLAUSE’S EXTERNAL LIMITATIONS JEANNE C. FROMER† ABSTRACT The text, structure, and history of the Intellectual Property Clause (IP Clause), as well as subsequent governmental activity, Supreme Court doctrine, and policy, show that the IP Clause limits Congress from using any of its other powers “To promote the Progress of Science and useful Arts” through laws that reach beyond the power conferred by the IP Clause to “secur[e] for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” That is, the evidence marshaled by this Article shows that the IP Clause externally limits Congress from seeking, via legislation, to promote the progress of science and useful arts, in any way other than by enacting laws that secure to authors and inventors exclusive rights in their writings and discoveries for limited times. Yet the story of Congress’s power in this area has another side: Since the late twentieth century, Congress has increasingly reached beyond the IP Clause’s means to promote the Clause’s ends, often asserting its expansive—and less limited—commerce and treaty powers. To some degree, this shift reflects the fact that laws regulating intellectual Copyright © 2012 by Jeanne C. Fromer. † Associate Professor, Fordham Law School. I thank Martin Adelman; Arnaud Ajdler; Jack Balkin; Barton Beebe; Sujit Choudhry; Harlan Cohen; Nestor Davidson; Erin Delaney; Michael Dorff; Rochelle Dreyfuss; David Fagundes; Tali Farhadian; Brett Frischmann; Jane Ginsburg; Yaron Glazer; Steven Horowitz; Bert Huang; Justin Hughes; Samuel Issacharoff; Amy Kapcsyznksi; Sonia Katyal; Ariel Katz; Edward Lee; Thomas Lee; Mark Lemley; Mark McKenna; Mark Patterson; Aaron Perzanowski; Alice Ristroph; Pamela Samuelson; Susan Scafidi; Katherine Strandburg; William Treanor; Rebecca Tushnet; Benjamin Zipursky; and audiences at Fordham, Southwestern, and Yale law schools and the 11th Intellectual Property Scholars Conference for powerful comments and suggestions. Thanks also to Emily Feuerman for excellent research assistance. FROMER IN PRINTER PROOF (DO NOT DELETE) 3/19/2012 8:25 PM 1330 DUKE LAW JOURNAL [Vol. 61:1329 property often have multiple purposes, including trade and foreign- relations interests, which sometimes point in more expansive directions than do those of the more limited IP Clause. This Article synthesizes these competing purposes and provides an analytical framework under which courts, legislators, and others can assess the constitutionality of federal legislation. This framework affords a presumption against the constitutionality of laws that promote the IP Clause’s ends but subvert its means, a presumption that may be overcome only by clear and convincing evidence that Congress, pursuant to its other more permissive powers, intentionally chose to supersede the IP Clause’s means because of paramount, legitimate interests. This framework suggests that a number of existing federal laws, such as federal trade-secrecy provisions and antibootlegging laws, might be unconstitutional. The framework also suggests how to assess the constitutionality of laws that would protect databases, laws passed pursuant to international agreements with other countries, and laws that establish federal funding for scientific and artistic works. TABLE OF CONTENTS Introduction ........................................................................................... 1331 I. Understanding the IP Clause .......................................................... 1336 A. Text and Structure .............................................................. 1338 B. History .................................................................................. 1345 1. Constitutional Convention ............................................. 1345 2. Early Congressional Activity ......................................... 1352 C. Judicial Doctrine ................................................................. 1359 D. Policy .................................................................................... 1366 II. Framework for Evaluating Constitutionality ............................... 1372 A. Is the Law’s Function To Promote Progress? .................. 1373 B. Potential Conflicts ............................................................... 1379 1. Commerce Clause ........................................................... 1379 2. Spending Clause .............................................................. 1380 3. Necessary and Proper Clause ........................................ 1383 4. Treaty Powers .................................................................. 1385 III. Unconstitutional Federal Laws? .................................................. 1391 A. Trade Secrecy ...................................................................... 1391 B. Antibootlegging ................................................................... 1396 C. Copyright Restoration ........................................................ 1402 D. Database Protection ........................................................... 1405 E. Federal Funding of Artistic and Scientific Works ........... 1407 Conclusion .............................................................................................. 1413 FROMER IN PRINTER PROOF (DO NOT DELETE) 3/19/2012 8:25 PM 2012] INTELLECTUAL PROPERTY CLAUSE 1331 INTRODUCTION Could Congress enact perpetual copyright or patent protection? Could it grant copyright or patent rights to an entity other than a work’s author or inventor, respectively? Could it protect against the copying of works that are not fixed in a tangible medium? A look at the Constitution’s Intellectual Property Clause (IP Clause) alone suggests a probable-to-definite no to each of these questions. The IP Clause empowers Congress “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.”1 The power contemplated by the IP Clause, however, is not the only power that the Constitution confers on Congress. Most expansively, the Constitution also enables Congress, under the Commerce Clause, “To regulate Commerce . among the several States.”2 Moreover, the Constitution grants Congress authority to spend money in certain ways to “provide for the . general Welfare of the United States”3 and to “make all Laws which shall be necessary and proper for carrying into Execution” the federal government’s enumerated powers.4 The Constitution also grants one house of Congress, the Senate, a considerable role in treatymaking.5 To the extent that congressional action fails to conform to the requirements of the IP Clause, then, could Congress nevertheless define or regulate rights in intellectual property by enacting any of the aforementioned expansive laws under these other powers? This Article relies on the text, structure, and history of the IP Clause, as well as subsequent governmental activity, Supreme Court doctrine, and policy, to show that the IP Clause is set up to limit Congress from using any of its other Article I powers “To promote the Progress of Science and useful Arts” through laws that would 1. U.S. CONST. art. I, § 8, cl. 8. As a term, “the IP Clause” is inaccurate in at least two ways: neither the term “intellectual property” nor its abbreviation appears in the Clause itself, and the term encompasses trademark law, which is outside the Clause’s scope. Dotan Oliar, Making Sense of the Intellectual Property Clause: Promotion of Progress as a Limitation on Congress’s Intellectual Property Power, 94 GEO. L.J. 1771, 1773 n.1 (2006); Edward C. Walterscheid, Inherent or Created Rights: Early Views on the Intellectual Property Clause, 19 HAMLINE L. REV. 81, 81 (1995); see also infra text accompanying notes 131–38. 2. U.S. CONST. art. I, § 8, cl. 3. 3. Id. art. I, § 8, cl. 1. 4. Id. art. I, § 8, cl. 18. 5. See id. art. II, § 2, cl. 2 (“[The President] shall have Power, by and with the Advice and Consent of the Senate, to make Treaties, provided two thirds of the Senators present concur . .”). FROMER IN PRINTER PROOF (DO NOT DELETE) 3/19/2012 8:25 PM 1332 DUKE LAW JOURNAL [Vol. 61:1329 reach beyond the scope of the power conferred by the IP Clause to “secur[e] for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”6 The evidence marshaled by this Article shows that if Congress seeks, via legislation, to promote the progress of science and useful arts, the only way it may do so is by enacting laws that secure to authors and inventors exclusive rights in their writings and discoveries for limited times. The IP Clause’s text and placement within the constitutional structure suggest that Congress possesses power to pursue the goal of promoting the progress of science and useful arts, but only by using the means specified by the Clause itself: namely, securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. Additionally, the IP Clause’s history indicates that Congress cannot use other means to promote the specified end of promoting the progress of science and useful arts. For one thing, the Framers rejected other possible means of achieving this end, such as the ability to award grants and prizes.7 This choice implies that the Framers intended for Congress to use only the means explicitly identified