2019] PATENTS, COPYRIGHTS, AND THE CONSTITUTION 1019
matter eligibility2 to the right to a jury.3 Although the two intellectual property
(“IP”) doctrines often present similar questions,4 and even though both flow
from the same constitutional grant of authority to Congress,5 the Court has
shown a markedly different pattern in how it adjudicates copyright and patent
cases.6 The Court has displayed a willingness to demarcate the constitutional
boundaries for copyright law and a reluctance to do so for patent law. Instead,
the Court grounds its patent jurisprudence in statutory analysis, even when it
treats analogous questions as constitutional ones for copyright.7 This pattern
has held true since the first Patent and Copyright Acts were passed in 1790,
and shows no signs of changing, despite the hopes and pleas of scholarly
Put simply, the difference between the Supreme Court’s copyright and
patent precedent is the difference between creating paths and building
fences. Paths show the traveler (here, Congress) one possible course to follow,
but the wanderer remains free to strike out on her own, perhaps at her peril.
Fences, by contrast, constrain completely: The explorer cannot lawfully
2. See, e.g., Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1008–09 (2017)
(discussing subject matter eligibility and copyright); Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208,
215–27 (2014) (discussing subject matter eligibility and patent).
3. See, e.g., Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 342–55 (1998)
(discussing the right to a jury and copyright); Markman v. Westview Inst ruments, Inc., 517 U.S. 370,
372–91 (1996) (discussing the right to a jury and patent).
4. See Lee v. Runge, 404 U.S. 887, 888 (1971) (Douglas, J., dissenting from denial of
certiorari) (“The constitutional power over copyrights is found in the same clause that governs
the issuance of patents . . . . [m]any of the same interests underlie both grants of power.”).
5. See Impression Prods., Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523, 1536 (2017) (noting
the “historic kinship between patent law and copyright law” (quoting Sony Corp. of Am. v.
Universal City Studios, Inc., 464 U.S. 417, 439 (1984))).
6. See Dan L. Burk & Mark A . Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1596
(2003) (“[R]ecent Supreme Court jurisprudence suggests that even though congressional power
to create patents arises from the same constitutional clause as the power to create copyrights,
copyright and patent can be treated differently under the Constitution.”).
7. Compare Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc.,
563 U.S. 776, 782–93 (2011) (determining inventorship based on federal statute), with Burrow-
Giles Lithographic Co. v. Sarony, 111 U.S. 53, 54–61 (1884) (deciding scope of Congressional
power to confer authorship based on constitutional considerations).
8. See, e.g., Christina Bohannan & Herbert Hovenkamp, IP and Antitrust: Reformation and
Harm, 51 B.C. L. REV. 905, 950–64 (2010) (discussing the subject matter of patents); Dan L.
Burk, Patenting Speech, 79 TEX. L. REV. 99, 150–58 (2000) (discussing possible reform to patents
based on copyright developments); Dennis S. Karjala, Distinguishing Patent and Copyright Subject
Matter, 35 CONN. L. REV. 439, 523 (2003) (advocating for changes to categorical exclusion);
Sapna Kumar, Life, Liberty, and the Pursuit of Genetic Information, 65 ALA. L. REV. 625, 671–80
(2014) (discussing patent reform related to genetics); Kali Murray, Constitutional Patent Law:
Principles and Institutions, 93 NEB. L. REV. 901, 947–49 (2015) (discussing the constitutional
complexity of modern patent law). But see Michael Risch, Everything Is Patentable, 75 TENN. L. REV.
591, 635–37, 651–52 (2008) (rejecting a constitutional basis for limits on patentable subject
matter). See generally Paul J. Heald & Suzanna Sherry, Implied Limits on the Legislative Powe r: The
Intellectual Property Clause as an Absolute Constraint on Congress, 2000 U. ILL. L. REV. 1119 (discussing
Constitutional limits on congressional powers vis-à-vis the intellectual property clause).