Strategies for discerning the boundaries of copyright and patent protections.

• Author: Samuelson, Pamela
• Position: Negotiating IP's Boundaries in an Evolving World

INTRODUCTION I. COPYRIGHT AND UTILITY PATENT BOUNDARIES: MUTUALLY EXCLUSIVE OR OVERLAPPING? A. Baker v. Selden and the Birth of the Categorical Exclusivity Approach B. Commentary Endorsing Overlaps in Copyright and Utility Patent Protections C. Some Reflections on Why Copyright and Utility Patent Domains Should Not Overlap II. More Nuanced Approaches to Discerning Copyright/ Utility Patent Boundaries A. The Layering or Segmentation Approach B. Requiring an Election of Protection C. Inseparability or Merger of Expression and Utility D. Some Intellectual Creations Are Not Works of Authorship in Part Because of Their Patentability E. Relevance of Utility Patents to the Viability of Copyright Claim F. Thin Scope of Copyright If Utility Patents Cover Similar Designs CONCLUSION INTRODUCTION

Copyright and utility patent laws have historically regulated different types of intellectual creations. (1) Copyright protection has been available for original works of authorship, (2) and utility patent protection for inventive technologies. (3) Overlaps in these two types of intellectual property (IP) rights have largely been avoided through the very different statutory subject matters of each law's protection, (4) as well as through channeling doctrines that courts have developed to manage the boundaries when statutory subject matter differences alone have not sufficed. (5)

The copyright and utility patent regimes differ not only in their subject matters, but also in the starkly distinctive mechanisms by which protection arises and the duration for which protections last. (6) The relative ease of acquiring copyright, its long duration, and broad scope, as compared with a utility patent, may tempt creators to claim copyright protection in creations that are utility patent subject matter. (7)

Notwithstanding this temptation, it has been relatively rare for creators to assert both copyright and utility patent protections in the same intellectual creations. Yet it has happened on occasion. (8) One such claim arose in Baker v. Selden, whose plaintiff contended that copyright protected the novel bookkeeping system disclosed in the author's book, a system for which Selden had sought, but apparently had not obtained, a utility patent. (9) In Baker, the Supreme Court rejected Selden's claim and seemingly endorsed a categorical exclusivity approach under which intellectual creations should be understood to be eligible for either copyright or utility patent protection, but not for both. (10)

The principal authority that has regarded overlapping copyright and utility patent protections to be unproblematic has been the Nimmer copyright treatise. (11) The treatise's treatment of the copyright/utility patent overlap issue is, however, deeply flawed. Those flaws notwithstanding, the Supreme Court has been skeptical of categorical exclusivity arguments in some IP cases. This skepticism suggests the need for more nuanced strategies when attempting to discern the proper boundaries of copyright and utility patent protections than the one-or-the-other-but-not-both approach endorsed in Baker- or the overlaps-are-fine approach endorsed in the Nimmer treatise.

When presented with copyright claims as to seemingly ambiguous subject matters, such as toys, puzzles, and computer programs, courts and the Copyright Office have developed several different responses. The most common has been a layering or segmentation approach under which courts treat some aspects of an intellectual creation as protectable by copyright law (e.g., an original drawing of a parachute), while other aspects may be protectable, if at all, by utility patents (e.g., a design of a parachute). (12) But five other strategies for determining copyright and utility patent boundaries are evident in the literature, each of which has sought to preserve separate and distinct domains for copyright and utility patent protections.

1. COPYRIGHT AND UTILITY PATENT BOUNDARIES: MUTUALLY EXCLUSIVE OR OVERLAPPING?

   There are both constitutional and statutory reasons why courts for well over a century have maintained sharp distinctions between the copyright and utility patent domains. (13) The U.S. Constitution plainly distinguishes the "[w]ritings" of "[a]uthors," which it gives Congress the power to protect through copyright laws, and "[i]nvent[ions]" in the "useful [a]rts," which Congress can protect by enacting patent laws. (14) That the framers of the Constitution conceived of copyright and patent as having separate domains is evidenced by the document's reference to the "respective [w]ritings and [discoveries" of authors and inventors. (15) The framers also envisioned that the two laws would serve different purposes: copyright's grant of exclusive rights in the writings of authors was intended to promote progress in science (that is, knowledge), whereas patent law's grant of exclusive rights was intended to promote the useful arts by protecting inventive advances. (16)

   Recognition of overlapping subject matters and protections in the copyright and utility patent domains is also inconsistent with the statutory schemes that Congress has created through its enactment of the relevant laws. In keeping with the constitutional grant, Congress has designated "original works of authorship" as the statutory subject matter of copyright law, (17) and assigned functional creations--"process [es], machine [s], manufacture [s], or composition [s] of matter"--as the statutory subject matters of utility patent law. (18)

   The starkly different contours of the copyright and utility patent regimes evidence Congress's intent not to create overlaps between copyrights and utility patents. Copyright protection, for instance, attaches automatically by operation of law to eligible works of authorship and lasts for at least seven decades (and usually decades more than that). (19) Copyright requires only a modest level of originality in expression to qualify for protection, (20) and one need not even register claims of copyright with a government office. (21) Utility patent protection, by contrast, can last no more than twenty years and can only be obtained by applying to the U.S. Patent & Trademark Office (USPTO) for a grant of rights and satisfying that law's much more rigorous standards. (22) USPTO examiners must be persuaded that a claimed invention is novel and nonobvious, both of which are substantially higher qualitative hurdles to protectability than copyright's originality standard. (23) In addition, a patentable invention, unlike a copyrightable writing, must be "useful" (that is, functional). (24)

   Another significant distinction between these two regimes lies in the blanket protection that copyright provides to the original expression in works of authorship without requiring authors to specify the expressive elements of their works to which copyright extends. (25) Patent applicants, by contrast, must specifically claim elements of their inventions and disclose sufficient details to enable others to construct embodiments of them. (26)

   Also quite different are the sets of exclusive rights that the copyright and patent regimes provide to creators. Copyright law grants authors exclusive rights to control reproductions and distributions of their works, along with public performances, public displays, and the making of derivative works. (27) These exclusive rights are, however, subject to many exceptions and limitations, including, notably, fair use. (28) Patent law gives inventors exclusive rights to control all uses of patented inventions, as well as making, selling, and offering to sell products embodying the inventions; these rights are subject to far fewer exceptions and limitations than copyright law provides. (29) One important implication of patent law's broad use right is that it treats independent creators as infringers, (30) whereas copyright law regards the independent creation of the same or substantially similar works as perfectly lawful. (31)

   The remedies available for infringements are also substantially different. Prevailing copyright plaintiffs may be awarded a disgorgement of the defendant's profits, plus actual damages (e.g., a reasonable royalty). (32) Prevailing utility patentees may be awarded reasonable royalties, but not profits disgorgements. (33) Copyright owners also have the option, as an alternative to actual damages and profits disgorgement, to claim statutory damages of up to $150,000 per infringed work. (34) Patent law provides no comparable remedy. Moreover, those who infringe copyrights may be subject to criminal prosecution if the infringement is willful and for commercial advantage or private financial gain. (35) There is no criminal liability for infringing a patent under U.S. law.

   The remedial advantages of copyright law, as well as its much longer duration, help to explain why some creators might want to assert both copyright and utility patent protections in the same creation. (36) They may also want to claim copyright protection in utility-patent-eligible but unpatented functional designs.

   Section LA discusses why these considerations have led some courts to regard copyright and utility patent subject matters as categorically exclusive. Under this approach, an intellectual creation is understood to be eligible for copyright or utility patent protection, but not for both. Section I.B reviews and criticizes the Nimmer treatise's endorsement of overlapping copyright and utility patent subject matters and protections. Section I.C recognizes that the Supreme Court has been sometimes unreceptive to categorical exclusivity arguments in IP cases. There are, however, several policy considerations that courts should take into account when tiying to discern the proper boundaries of copyright and utility patent protections as to subject matters, such as computer programs, that do not fit neatly into either the copyright or utility patent domains.

   1. Baker v. Selden and the...