Introduction: negotiating IP's boundaries in an evolving world.

Author:Yelderman, Stephen

You can learn a lot about the center of a thing by studying its edges. This is, perhaps, the best defense that can be made on behalf of law professors, who stubbornly insist on teaching topics that students are unlikely to encounter if they practice forty years. Peruse a typical law school syllabus and you'll surely find, milling about with treatments of the most commonly litigated questions and important workaday doctrines, a generous helping of cases that are nonrepresentative, rare, or downright sui generis. Why, in a semester of only twenty-six precious class sessions, a thoughtful copyright student might wonder, must we pause to ponder the legal status of paintings composed by gorillas and selfies taken by monkeys? (1)

I'm guilty of this too. I customarily begin my patent course with a discussion of Kewanee Oil (2) and Bonito Boats, (3) both cases considering whether state law was preempted by federal patent law. The significance of their holdings ranges from moderate (good to know: state trade secret law is a real thing) to basically irrelevant (states may not create IP-like protections for unpatented boat hull designs), but neither opinion exposits doctrine that future attorneys are especially likely to confront in practice. These particular matters are long-settled; both trade secrets (4) and boat hulls (5) are afforded federal protection now anyway; and, though new IP preemption questions can arise with time, (6) it's the rare case rather than the quotidian one that forces them to the surface.

But I like these opinions, in large part because the interaction between state and federal law requires us to stop and think about what we're doing here. What, really, are the reasons for offering a particular form of IP? What are the limitations of the means that have been chosen to advance those goals? Are the activities that IP seeks to encourage meant to displace alternative activities, or simply supplement them? These questions, so easily assumed away or ignored in cases of "core" doctrine, come rushing to the fore when federal and state law collide, (7) when Congress brushes the outer limits of its powers, (8) when idle hands start tinkering with expiration dates. (9) Questions at the margin demand contemplation of the middle.

This basic move is employed repeatedly, and profitably, throughout the pages that follow. Timothy Holbrook, for example, shows us how throwing a sovereign border down the middle of a patent case forces us to...

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