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That is, until earlier this year, when everything changed. In June of 2023, the Supreme Court’s holding in Jack Daniel’s Properties, Inc. v. VIP Products LLC took the world of trademark law by surprise. The Jack Daniel’s case, commonly referred to as the ‘Bad Spaniels’ case, in effect declined to apply the Rogers test under similar circumstances, reasoning that Rogers does not apply where “the challenged use of a mark is as a mark.” The implications of the Supreme Court’s perplexing and somewhat staggering decision in the ‘Bad Spaniels’ case has now created vast legal uncertainty for both major intellectual property (“IP”) owners and creatives alike. Creatives continue to offer free-expression arguments in crafting parodies and satires (e.g., the ‘Bad Spaniels’ dog chew-toy poking fun at the widely recognized whiskey company) to justify the alleged fair use of another’s mark. In stark contrast, IP owners have, unsurprisingly, taken the position that even parodic uses of their mark, as a mark, are in violation of the Lanham Act, thus constituting trademark infringement. Certain trademark owners, however, have taken another route to promoting success of their mark in commerce: teaming up with creatives and licensing their IP rights to effectively engage in self-parody of their own brand. A recent example of such a tactic is demonstrated by the Mattel-sponsored blockbuster film Barbie (2023) from director and screenwriter, Greta Gerwig.12 For now, one thing remains clear: navigation of these now-choppy waters of evolving trademark law requires a closer look at the rationale behind the Supreme Court’s ‘Bad Spaniels’ ruling and the doubts cast upon the continued viability of the Rogers test in the field of trademark infringement cases.

Reforming eligible subject matter requires a choice of institutional actor, and while the Supreme Court could choose to provide clarity, it has steadfastly refused to grant certiorari in cases raising eligible subject matter questions.62 Beyond the apparent lack of interest, the Court is constrained by its precedent and limited constitutional authority, as it is vested with only judicial—not legislative—power.63 Thus, while the Court could provide some measure of interpretive clarity, its authority to wholly rewrite patent statutes is limited both textually and doctrinally.64 Likewise, as a purely executive administrative agency, the US Patent and Trademark Office (USPTO) could not make such a change absent a valid delegation of authority from Congress.65

Congress itself, however, is not so limited. It has substantially greater fact-finding ability than courts, and its authority on the subject of patents is plenary.66 In fact, Congress has previously exercised this authority to rein in a judiciary that was perceived as overly hostile to patentees.67 Faced with the contemporary Court’s priorities, which some commentators see as similarly hostile, Congress has recently taken steps toward reform.68 Despite concerns over Congress’s ability to legislate effectively,69 the most recent and promising legislation, the Patent Eligibility Restoration Act of 2023 (PERA), provides a proposal that would wrest control over eligible subject matter away from the arcane realm of judicial exceptions and replace it with considerably less ambiguous statutory exclusions.7

This approach - codifying courts' interpretation of the utility requirement and eliminating the search for an "inventive concept" would comport with the principles of broad eligibility, clarity, constraint on judicial intervention, and flexibility. First, eliminating the search for an "inventive application" in favor of a requirement of a practical application would certainly broaden eligibility as compared to the current law. While the interpretation of the practical utility requirement to require a "substantial" or "significant" benefit to the public would not appear to extend eligibility to inventions having "any" benefit to the public - such that operability is not all that is required to show a practical utility - courts' application of this aspect of the utility requirement has not proven to be unduly stringent. 258 Second, the law governing the requirement of a practical application has not proven to be unworkable; it is likely sufficiently clear.259 Third, again to meet the principle of restraint on judicial intervention, any amendment to articulate a standard focusing on practical utility would need to include additional language explaining that the requirement - the claimed subject matter be a practical, as opposed to an inventive, application of a natural law, physical phenomena, or abstract idea - is the only eligibility requirement beyond the subject matter requirement. Fourth, a standard focusing on practical utility would provide a workable standard independent of technology areas and would, thus, be appropriate for application to new and unforeseen technologies.

For over a decade, the nation’s highest court has sowed doubt about whether inventions in certain high-tech industries — ranging from medical diagnostics to finance — are eligible for patent protections. Without that certainty, investors naturally assume the worst and avoid those sectors. As recently retired federal judges who regularly presided over patent disputes, we witnessed the mounting confusion firsthand. Lower courts have tried, and often failed, to make sense of the confused case law. Fortunately, there is an easy solution. Congress could pass a bipartisan bill, the Patent Eligibility Restoration Act, to restore predictability and thereby spur investment and job creation. The root cause of today’s troubles is a pair of Supreme Court decisions, Mayo v. Prometheus in 2012 and Alice v. CLS in 2014. In Mayo, the court ruled that a diagnostic test was ineligible for patent protection because it relied on measuring unpatentable “laws of nature.” In Alice, the justices held that a particular strategy used by a bank for automatically mitigating risk was an “abstract idea” ineligible for patenting. The core defect in these rulings is the justices’ reliance on subjective concepts like “abstractness” and “laws of nature” to determine patent eligibility. This injects tremendous ambiguity into the eligibility analysis, and makes it hard to predict which inventions will be deemed eligible and thus patentable if meeting other requirements of the Patent Act. In the aftermath of these rulings, patent eligibility challenges have skyrocketed. In the year following the Alice decision, the Federal Circuit invalidated patents in 21 of the 22 cases it heard. Yet when issued, these patents were valid. Fields like medical diagnostics and gene therapies face a crisis of patentability, jeopardizing progress on pressing health issues. One study estimated that in the wake of Mayo, venture capital investment in medical diagnostic technologies was $9.3 billion lower than it otherwise would have been. In our former court, which hears patent cases on appeal, concurring and dissenting opinions have proliferated. Veteran jurists have described the state of affairs as “incoherent,” “unclear,” “fraught,” and “inconsistent.” Some defenders of the new status quo have denied there is a problem at all. One study even suggested that “under one of the most well-established metrics for measuring the predictability in the law, Section 101 proved to be more predictable than other areas of patent law over the past decade.” That is, lower court decisions, usually of ineligibility, were rarely overturned on appeal. But that is unsurprising because of the ambiguity of the law. The study is also misleading. While it may be true that expert lawyers can predict the likely outcome of Section 101 disputes — which generally involve finished products that have already been brought to market — startup companies are not making research and investment decisions based on finished products. They, and their investors, are making those decisions based on the reliability of intellectual property protections for inventions that are so early-stage, they often exist only on paper. If there is any doubt about whether those inventions can be protected, entrepreneurs and investors will inevitably err on the side of caution — and direct their resources to other sectors. Fortunately, a ready solution exists. The bipartisan Patent Eligibility Restoration Act (PERA) would effectively overturn Mayo and Alice, restoring Congress’ patent statute. Under PERA, pure mathematical formulas, natural phenomena and basic mental processes would remain ineligible for patent protection because they fell outside the four categories Congress enacted. But novel, useful inventions derivedfrom these building blocks would become eligible again. For instance, metabolic processes would remain unpatentable — but a diagnostic testing company that found a novel way to detect a metabolic disorder could patent its test, assuming the invention met all other requirements of patentability. This would give investors the certainty and objectivity needed to continue funding cutting-edge research with the potential to change, or even save, lives. The U.S. Senate Judiciary Subcommittee on Intellectual Property recently held a hearing on PERA, where lawmakers were able to ask questions and hear from a number of leading patent law experts. The former directors of the U.S. Patent and Trademark Office under both Presidents Trump and Obama testified in favor of the bill. And we hope the full committee will move swiftly to hold a markup of it. Judges try their best to apply the Supreme Court’s precedents in good faith. But the inherent ambiguity of decisions like Alice and Mayo put lower courts into an impossible position — and the costs to innovation and the economy continue to mount. Congress can end the damage by passing PERA without delay. Judge Paul Michel (ret.) served on the United States Court of Appeals for the Federal Circuit from 1988 to 2010. Judge Kathleen O’Malley (ret.) served on the United States Court of Appeals for the Federal Circuit from 2010 to 2022 and the U.S. District Court for the Northern District of Ohio from 1994 to 2010. Both are board members of the Council for Innovation Promotion.

A reliable and robust intellectual property (IP) system is a pillar of the nation’s innovation system. In an era when economic growth, global competitiveness, and national security are all predicated on relative strengths of national innovation systems, the United States needs to take deliberate steps to clarify and strengthen its IP framework.

Indeed, while patents have become more and more difficult to obtain, maintain, and enforce in the United States, China and Europe have moved to make their patent systems more competitive. Notably, China has taken to speed up the adjudication of certain IP cases. It is grooming judges who are technically trained professionals, clarifying rules on patent eligibility, and lowering court costs. There are, of course, lots of problems still with the Chinese patent system, but China is affirmatively working to improve it to its national benefit. The United States needs to do the same. A strong innovation economy cannot exist without a strong IP system.

Thus, Congress has broad power to select the policy that in its view best promotes the progress of the useful arts, and to set forth statutory conditions and requirements for patentability consistent with its view of the best policy. Given this broad power given to Congress under the Constitution to fashion the conditions and requirements of patentability, the Supreme Court would likely defer to Congress and find legislation clarifying, and perhaps even eliminating, the non-statutory exceptions to be constitutional. Indeed, in Kimble the Court repeatedly highlighted that it is the role of Congress to correct the Supreme Court's mistakes in statutory interpretation and determination of patent policy.' 7 While the Court ultimately decided not to reverse its precedent related to patent misuse law based on the doctrine of stare decisis, in this context the Court explained why Congress has the power to overturn the Court's precedent.78 Thus, the Court's reasoning in Kimble is highly relevant to any challenge to an amendment to the patent statute to overturn the Court's precedent interpreting the patent statute. So, what was the Court's reasoning? The Court explained that, "[b]y contrast with the Sherman Act, the patent laws do not turn over exceptional law-shaping authority to the courts." 79 It went on to say that "[cilaims that a statutory precedent has 'serious and harmful consequences' for innovation are (to repeat this opinion's refrain) 'more appropriately addressed to Congress."'80 In more detail, it explained: That branch, far more than this one, has the capacity to assess Kimble's charge that Brulotte suppresses technological progress. And if it concludes that Brulotte works such harm, Congress has the prerogative to determine the exact right response - choosing the policy fix, among many conceivable ones, that will optimally serve the public interest.81 By simultaneously adhering to its precedent and deferring to Congress, the Court claimed it would "promote the rule-of-law values to which courts must attend while leaving matters of public policy to Congress." 82 And, finally, in the end the Court conclusively stated that "the choice of what patent policy should be lies first and foremost with Congress."83

While statutes should be interpreted to avoid an unconstitutional outcome as well as absurd outcomes, the Supreme Court has never stated whether its various exceptions to patent eligibility were necessary under the Constitution, and certainly never addressed the judicial exceptions based on the entirety of Title 35 of the United States Code.

In addressing § 101 and only § 101, the Supreme Court identified three specific exceptions to patent-eligibility principles including: (1) laws of nature, (2) physical phenomena, and (3) abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010).” In declaring these exceptions, the Supreme Court stated, “these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.” Id. at 602. The problem with this statement is that there is no language in the 36 words of § 101 to support such a notion of “statutory stare decisis.”

The patent system, as outlined in the Constitution, is intended to promote the “useful arts.” There is no question that what was done by the patentees in this case was useful. Yet the court still denied them patent protection because the claimed subject matter did not pass a test that was developed by the courts.

We want to encourage research in just these types of diagnostic methods and personalized medicines, as well as in the field of computer-implemented inventions which have also had troubles meeting the new requirements. These emerging technologies are the very areas where the United States has been leading the world and these technologies are driving economic growth and job creation.

Thus, Congress has broad power to select the policy that in its view best promotes the progress of the useful arts, and to set forth statutory conditions and requirements for patentability consistent with its view of the best policy. Given this broad power given to Congress under the Constitution to fashion the conditions and requirements of patentability, the Supreme Court would likely defer to Congress and find legislation clarifying, and perhaps even eliminating, the non-statutory exceptions to be constitutional. Indeed, in Kimble the Court repeatedly highlighted that it is the role of Congress to correct the Supreme Court's mistakes in statutory interpretation and determination of patent policy.' 7 While the Court ultimately decided not to reverse its precedent related to patent misuse law based on the doctrine of stare decisis, in this context the Court explained why Congress has the power to overturn the Court's precedent.78 Thus, the Court's reasoning in Kimble is highly relevant to any challenge to an amendment to the patent statute to overturn the Court's precedent interpreting the patent statute. So, what was the Court's reasoning? The Court explained that, "[b]y contrast with the Sherman Act, the patent laws do not turn over exceptional law-shaping authority to the courts." 79 It went on to say that "[cilaims that a statutory precedent has 'serious and harmful consequences' for innovation are (to repeat this opinion's refrain) 'more appropriately addressed to Congress."'80 In more detail, it explained: That branch, far more than this one, has the capacity to assess Kimble's charge that Brulotte suppresses technological progress. And if it concludes that Brulotte works such harm, Congress has the prerogative to determine the exact right response - choosing the policy fix, among many conceivable ones, that will optimally serve the public interest.81 By simultaneously adhering to its precedent and deferring to Congress, the Court claimed it would "promote the rule-of-law values to which courts must attend while leaving matters of public policy to Congress." 82 And, finally, in the end the Court conclusively stated that "the choice of what patent policy should be lies first and foremost with Congress."83

My AEI colleagues Claude Barfield and John E. Calfee have written an excellent book about intellectual property law and its relationship to biotechnology. But I disagree with their argument that the “danger of unintended negative consequences” and the “self-correcting mechanisms” in the status quo necessarily militate against “sweeping legislative changes.” The problem of submarine patents was only fixed when Congress intervened with a sweeping change in 1995. And the problem of patent trolls is growing, notwithstanding the Supreme Court’s tightening of the injunction standard. Barfield and Calfee express legitimate concern that the legislative process can be hijacked by special interests. Indeed, passage of the legislation has been delayed by squabbling between the lobbies of groups who expect to be licensors and those who expect to be licensees. And legislation can shift the balance of power between the two groups, so there is risk of special-interest favoritism—though one concerned about that risk should not neglect the special interest of attorneys in a regime that generates billions of dollars in legal fees. Milberg Weiss spinoff Lerach Coughlin is diversifying from its practice of holding up deep-pocket corporations in securities litigation and is forming a practice that will focus on patent litigation, no doubt planning on employing the same strategy of using the hassle and expense of litigation and the risk of gigantic damages to force profitable settlements. Current debate on patent reform is largely nonpartisan, but this is in large part because the organized plaintiffs’ bar does not currently have a vested interest in the status quo of patent litigation. Should they obtain such a vested interest, future legislative efforts will have a partisan tinge that will make constructive changes more difficult.15 The time for reform, if ever, is now. Barfield and Calfee argue that it is better to resolve many of the problems in the status quo through “developing case law.”16 As a political matter, I think they err in assuming that the judicial branch and the U.S. Patent and Trademark Office (PTO) are in a superior position to solve the problems of the patent system, with little role for Congress. The submarine patent problem was itself an unintended consequence of the PTO changing its refiling procedures in the 1940s. Sometimes the federal common law of patents, as interpreted by the Federal Circuit, accumulates encrusted barnacles that take a working law and move it in the wrong direction. In such situations, the Supreme Court can certainly choose to clear up problems accumulated through years of accreted precedent. It did so in KSR International Co. v. Teleflex Inc., 18 when it loosened the Federal Circuit’s too-narrow “obviousness” test. But the courts can just as easily make a mistake. And the years of waiting for the Supreme Court to act can also impose costs. In the most infamous example, BlackBerry manufacturer Research In Motion Ltd. (RIM) agreed in March 2006 to pay $612.5 million to the patentholding company NTP Inc. to settle an infringement ruling over questionable patents to prevent an injunction that would have shut down its business19— even as the PTO had decided to reject all five patents involved in the dispute.20 Just two months later, the Supreme Court decided eBay v. MercExchange, 21 limiting the availability of injunctions, which would likely have permitted RIM to continue litigating the case to a successful resolution. But RIM does not get their $612.5 million back. Nor is it clear that the eBay rule—creating discretion for a court to choose to refuse to grant an injunction on the grounds that the plaintiff is “only” a licensor of the intellectual property— is the optimal rule for stopping patent trolls. Is the lesson from the BlackBerry case one about the dangers of injunctions at the back end of litigation or one about the dangers of PTO mistakes at the front end in issuing patents when the applications should have been rejected? Though it occasionally acts to the contrary, the Supreme Court is not a legislature, and it can only decide the case before it. What existing statutes and precedents require may not be what public policy requires. In eBay, the Court’s rule does not distinguish between the holder of a legitimate patent that has not yet succeeded in commercializing a patent and one misusing the legal system to enforce a questionable patent; it simply shifts the legal balance from patent-holders to patent-infringers. False positives like the BlackBerry case will be reduced at the cost of increased false negatives in other cases. But no one has answered the empirical question of whether the optimal balance has been struck. If the answer is no, the Supreme Court will have no judicial reason to correct itself. Punting to the courts could have deleterious effects. The Federal Circuit and the Supreme Court will be hard-pressed to seek more sensible apportionment rules for damages when Congress, given the opportunity, refused to do so. Congressional inaction might as easily lead to mistaken results as congressional action. A particular legislative reform may be wise or unwise, but there is no reason to create a presumption for the latter conclusion just because there is a lack of consensus. With that in mind, let us evaluate two areas ripe for reform: venue selection and damages calculation.

Occasionally, state and federal regulatory regimes may clash. That is, even though a state may not have deliberately erected a competing regime for regulating an area controlled by national law, application of state law in a given situation may produce results inconsistent with federal policy. For example, if, in order to prevent public confusion regarding the origin of the goods, a state attempts to forbid copying an article that is itself an insufficient advance over the prior art to merit a federal patent, the state intervention would accord an exclusivity that federal law has declined to extend.16 For American lawyers the crucial question then becomes whether the federal level (or lack) of protection sets the sole measure, or whether the federal law in effect establishes a minimum standard of protection, leaving the states free · to afford more than the national legislature has chosen to accord. 17 If the former, the state law is invalid - "preempted" in the American legal jargon. If the latter, there is no federal preemption. The foregoing example reveals an important feature of American federal-state relations: determination of whether state law has been preempted by federal law is not easy. Case law on this problem abounds in many areas, and the standard formulas employed by the Supreme Court often obscure rather than illuminate. The core idea is that of conflict, but the existence of a conflict is not selfevident. A judgment of this nature requires a precise assessment of the purposes and effects of both the federal and the state laws.18 In the intellectual property field, the extensive scope of federal regulation often does point to the conclusion that federal law should supply the sole measure of what interests are to be protected. Of course, one might always argue that the federal and state authorities are in fact regulating different activities. The copying example discussed above is a good illustration. One could maintain that federal law simply proscribes the act of copying, while forbidding copying is merely an incidental side effect of the state law prohibition, which proscribes acts that may confuse the public concerning the origin of the goods in question. Nonetheless, the conflict between the laws seems unmistakable. Federal law has pronounced that some objects can be copied; state law has stepped in to prevent the reproductions. At this point the purpose of the federal law becomes crucial. If one determines that the absence of federal protection indicates the national legislator's policy that no regime, state or federal, is to prohibit the copying of the object in question, application of the state law would frustrate federal objectives. In that case, the state law must yield to the national ·policy. But there are many instances where state law protection is entirely compatible with the federally prescribed regime. Suppose, for example, that one party federal statutes regulate patents,7 copyrights,8 and trademarks.9 Indeed, national legislation provides that only federal law may govern copyright subject matter,10 and that the federal courts alone may judge patent and copyright claims.11 In addition, the United States Supreme Court has emphasized exclusive federal authority to grant patents.12 By contrast, Congress has, in most instances, left trademarks to concurrent state and federal ordering, 13 although the national uniformity advantages of federal trademark registration and regulation are sufficiently great that congressional enactments set forth the dominant law in this realm. 14 State laws affect intellectual property in several ways. Some state laws create exclusive rights in subject matter not covered by .federal statutes. Examples include certain kinds of idea protection, and the exclusive right of performers and other celebrities to commercialize their names and images (in the U.S., this is called the right of publicity). 15 Other kinds of state laws touch federally regulated subject matter, but they purport to respond to a range of activities broader than or different from those proscribed by federal law. For example, federal patent and copyright laws essentially forbid use or copying; state unfair competition law may strike at a variety of unethical business practices, including deception of the public, breach of a trust relationship, and conversion. In so doing, however, the state law may also prohibit unauthorized uses and reproductions.

Nonetheless, the U.S. Constitution proves quite accommodating to federal protection for many varieties of intellectual property. The document both authorizes and anticipates creation of a federal patent and copyright system, for it explicitly authorizes the national government "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. " 3 The little available evidence of the Framers' intent in including this authority indicates that they recognized the inefficacy of disparate state regulation of inventions and works of authorship: in Federalist No. 43, James Madison observed, "The utility of this power will scarcely be questioned . . . . The States cannot separately make effectual provision for either ... [copyright or patent]." Madison's point would seem equally applicable to other varieties of intellectual property. Indeed, today, most commentators would acknowledge the national government's authority to regulate all forms of intellectual property by virtue of the constitutional grant to Congress of the power "to regulate Commerce ... among the several States. " 5 But the existence of authority is one thing, its exercise quite another. Here the historical dynamics of American federalism are important. The vast domain of federal power has not been fully occupied, and accordingly, outside the realm of patent and copyright, the states do play a role in the regulation of intellectual property. Moreover, state-based protections have occasionally penetrated even these core federal areas. There are various reasons for continued state intervention in at least certain intellectual property areas. Some stem from the states' established role in governing property rights and relations in general. Another, which forms one focus of this paper, derives from the U.S. tradition of looking to the states as "laboratories" for the development of the law and social policy. 6 According to this tradition, state courts and legislatures experiment locally with evolving rights and modes of regulation. Subsequently, the local experience may form the basis for adoption of the same or similar laws by other states, and perhaps ultimately by the national legislature

All opinions of the Court are, typically, handed down by the last day of the Court's term (the day in late June/early July when the Court recesses for the summer). With the exception of this deadline, there are no rules concerning when decisions must be released. Typically, decisions that are unanimous are released sooner than those that have concurring and dissenting opinions. While some unanimous decisions are handed down as early as December, some controversial opinions, even if heard in October, may not be handed down until the last day of the term.

The outline of this revised research agenda, begins by looking at a 1993 article written by Mark Graber challenging the countermajoritarian difficulty paradigm. Graber's observations point to the importance of studying systemic transformations, such as the evolution of judicial supremacy. Using historical case studies on abortion, the Dred Scott controversy, and anti-trust issues to study perceived incidents of judicial independence, he contends that scholars who seek to justify independent judicial policymaking, even in the face of believed democratic deficiencies, misunderstand and inaccurately represent the relationships between justices and elected officials. By looking at the dialogues between these parties it becomes apparent that judicial independence, when it actually occurs, is often exercised at the invitation of elected officials, and in the absence of any expressed majoritarian choice, in order to resolve political controversies that elected officials cannot or do not want to resolve themselves. Hence the counter-majoritarian difficulty can be more appropriately characterized as the “non-majoritarian difficulty.”33 According to Graber, where crosscutting issues divide a lawmaking majority an invitation is often tacitly but consciously issued to the Court by political elites to resolve the political controversy that they themselves are unwilling or unable to address, thereby “foisting disruptive political debates off on the Supreme Court.”34 Graber writes that “elected officials encourage or tacitly support judicial policymaking both as a means of avoiding political responsibility for making tough decisions and as a means of pursuing controversial policy goals that they cannot publicly advance through open legislative and electoral politics.” 35 Furthermore, political and electoral advantages can accrue by ducking these tough questions and sending them on to be settled by the Court. Graber explains that elites (including the executive) can benefit from passing the political buck to the Court in multiple ways. Party activists can be redirected to focus on legal action in the courts, thereby reducing pressure on mainstream politicians who wish to maintain a more politically viable moderate stance. Voters can be redirected to focus any ire they might have over policy outcomes on the Court. Politicians can take responsive positions on judicial decisions that may make for a good sound bite but really require no politically accountable action on their part. Finally, political compromise between the legislature and the executive might be had under the table of Court policymaking. 36 This is an impressive set of political benefits that can stem from a practice of judicial supremacy that creates a Court equipped with the interpretive authority and legitimacy to make controversial public policies. Graber's article, then, highlights the perversion of political accountability that can possibly occur where everyone in the system, the public included, accepts and expects interpretive authority to reside with the courts.

Political leaders in such a situation will have reason to support or, at minimum, tolerate the active exercise of judicial review. In the American context, the presidency is a particularly useful site for locating such behavior. The Constitution gives the president a powerful role in selecting and speaking to federal judges. As national party leaders, presidents and presidential candidates are both conscious of the fragmented nature of American political parties and sensitive to policy goals that will not be shared by all of the president’s putative partisan allies in Congress. We would expect political support for judicial review to make itself apparent in any of four fields of activity: (1) in the selection of “activist” judges, (2) in the encouragement of specific judicial action consistent with the political needs of coalition leaders, (3) in the congenial reception of judicial action after it has been taken, and (4) in the public expression of generalized support for judicial supremacy in the articulation of constitutional commitments.

Although it might sometimes be the case that judges and elected officials act in more-or-less explicit concert to shift the politically appropriate decisions into the judicial arena for resolution, it is also the case that judges might act independently of elected officials but nonetheless in ways that elected officials find congenial to their own interests and are willing and able to accommodate. Although Attorney General Richard Olney and perhaps President Grover Cleveland thought the 1894 federal income tax was politically unwise and socially unjust, they did not necessarily therefore think judicial intervention was appropriate in the case considered in more detail later (Eggert 1974, 101– 14). If a majority of the justices and Cleveland-allies in and around the administration had more serious doubts about the constitutionality of the tax, however, the White House would hardly feel aggrieved. We should be equally interested in how judges might exploit the political space open to them to render controversial decisions and in how elected officials might anticipate the utility of future acts of judicial review to their own interests.

“This Court has been politicized for some time,” said panelist Janai Nelson, president and director-counsel of the NAACP Legal Defense Fund. “It’s important that we recognize how, over time, that has calcified in ways that are now forcing this Court to overturn precedent that we’ve come to rely on.”Beyond the influence of politics on the Court, Litman also worried about the impact of the Court on politics, “in a term where we are facing down the prospect of the Supreme Court essentially nullifying the protections of the Voting Rights Act [by] diluting voting power of racial minorities and potentially green-lighting state legislatures to limit voting rights, and not allow state courts and state constitutions to protect them.” Hollis-Brusky agreed that increased political polarization had helped politicize the Court, and illuminated two other factors she saw as contributing to the problem over time. First is Americans’ “demand for total justice” — that is, “the idea that if the technology exists to protect us and keep us safe, that the government” should put it into practice. When one “layers [this] on top of a set of fragmented institutions, [because] power is divided so many ways in the United States, those demands end up hemorrhaging into the Court,” she said. The second factor, she said, was the expansion of the Court’s powers in the mid-20th century. These developments collectively create incentives to appoint justices who will closely hew to the political ideology of the nominating president, said Hollis-Brusky. Today, “The Supreme Court has not just been divided along the ideological lines that always existed, but divided along partisan lines, with every justice appointed by a Democrat voting more liberally than every justice appointed by a Republican. That is far from the historical norm.” There is “the sense that law is nothing more than partisan politics,” she added. “And I think that’s the dangerous place we find ourselves in right now.” Baude acknowledged that something had shifted in the Court in recent years, but disagreed that political pressure is exerting an influence on the justices’ decision-making. “I think the majority of the Court has a strong view about what the law is and how it works,” he said. “The fact that the Court is committed to law over politics actually makes it seem more radical than previous Courts, not less, because it means that the Court is less inclined to tack toward the center in high-profile cases, or to consider public opinion as an anchor.” Politics do come into play during the selection and appointment process, Baude said, but with respect to the justices themselves, “I think they do come by their legal views honestly and legally, and [they] don’t think they’re doing partisan politics when they do it.” Supreme Court appointments are political by design,” he said. “The president appoints, and the Senate, made up of sophisticated politicians, confirms, so there is politics on the front end. And oddly, the major constitutional way we want to give the justices independence, life tenure, actually injects politics on the back end, because they make strategic decisions about when to retire so that they can be replaced by someone ideologically similar. … You can have these justices operating in perfectly good faith, but nonetheless [they] are guided missiles who will, for legal reasons, execute a political agenda.” And there are consequences, he said. “When the public perceives that there is a political element to judging, it is offended, because it thinks the law is a different realm. The public is prepared to accept this anti-democratic institution because it is doing something other than politics.” As that illusion has been challenged, “the confidence rating has been dropping, as it does whenever the public perceives the Court to be a political, not a legal, institution,” he said.

Operating alongside statutory and regulatory environmental protections, the federal common law of public nuisance “protects the public against unreasonable and substantial interference with a public right.”52 What rights are included is not entirely clear, but the doctrine roughly covers “rights in health, safety, and comfort that are not necessarily tied to land or a particular resource.”53 What differentiates federal public nuisance from ordinary public nuisance, which has a long lineage in state common law, is federal jurisdiction, which is established by Article III, Section 2’s grant of original jurisdiction to the Supreme Court to resolve disputes between states or between states and citizens of another state.54 States have a quasi-sovereign interest in reducing environmental harms that originate out-of-state but affect the state’s citizenry.55

The Supreme Court has developed the federal common law of public nuisance in a series of environmental cases spanning over a century.56 Indeed, as Robert Percival has observed, “[p]rior to the enactment of comprehensive federal regulatory statutes, the common law of nuisance was the first line of legal defense for the environment. In the early decades of the twentieth century, the Supreme Court itself heard many prominent disputes between states over transboundary air and water pollution.”57 For instance, in 1906 the Court recognized the possibility of using public nuisance to remediate the contamination of public water that occurred when the City of Chicago, aiming to protect Lake Michigan, reversed the flow of the Chicago River and directed its sewage down the Illinois River and into the Mississippi River.58 Just a year later, the Court recognized the possibility of states suing private defendants in a case involving two Tennessee Copper Company smelters that spewed sulfur dioxide across state lines and into Georgia.59 The Court continued to hear similar cases for decades,60 sometimes appointing special masters to oversee the technical and scientific questions raised by the litigation.61 Ordinarily, the relief in these cases took the form of an injunction to abate the nuisance, although in recent decades it has become clear that money damages of some kind are suitable remedies as well.

Nevitt and Percival also argue that nuisance law claims would be particularly successful if brought by state governments against EPA. These suits could more likely reach the legal merits, they write, because the Supreme Court has historically been more attentive to the needs and rights of “quasi-sovereign” entities like states. The Court has granted this solicitude because, as Justice Oliver Wendell Homes wrote, a state should have the “last word as to whether its mountains shall be stripped of their forests and its inhabitants shall breathe pure air.”

Arguing for the viability of nuisance law claims, though, is not meant to endorse them as a replacement to administrative rulemaking, Nevitt and Percival say. Instead, they argue that the common law will remain an “essential backstop when existing regulatory authorities fail to address significant environmental problems.”

It is worth emphasizing that I am not arguing for the replacement of all statutory intellectual property regimes with common law alternatives. My normative claims in this Article are two- fold. First, that some forms of informational resources, to the extent that they merit protection at all, would benefit from a common law approach to protection. Discussions of institutional design in intellectual property have thus far paid little attention to the potential benefits of the common law. Thinking creatively, scholars and policymakers ought to recognize the viability of common law protection as an alternative to one-size-fits-all statutory approaches. Second, even within the world of federal statutory intellectual property, courts should understand a larger number of statutory provisions as actively delegating lawmaking power to them. Federal courts should embrace pragmatic incrementalism in intellectual property protection whenever needed, and be far less dogmatic about deferring to Congress for guidance.

My choice of state common law regimes to explicate the functioning of pragmatic incrementalism is certainly not to contrast state law with federal law. Neither is it directed at showing that the trademark, copyright, and patent regimes have consciously disavowed any reliance on the common law method. Several features of pragmatic incrementalism may indeed be found in the functioning of parts of the federal intellectual property regimes, even though the overlay of statutory regulations and administrative rules has resulted in the common law-like parts receding in importance. Rather, this choice is to illustrate how courts are well equipped to develop rules for intellectual property in the absence of direction from legislatures and the process by which they can continue to do so in coordination with legislative intervention that takes their lawmaking role seriously. The fact that most common law in the United States is today state law rather than federal law is thus a descriptive reality that this choice represents, rather than a prescriptive one. I leave for future work a fuller discussion of how the federal regimes might do well to integrate common law rule development into their framework and functioning, and indeed the costs and benefits that this might entail.

The evolution of copyright law’s fair use doctrine and of patent law’s nonobviousness requirement illustrates important symbiotic pathways by which IP law has developed and evolved from its terse original formulation. Justice Story crafted copyright’s fair use defense from the general purposes of the copyright system and English case law. Courts evolved this doctrine over more than a century before Congress brought it into the statute – but with the expressed intention that courts would continue to evolve the doctrine.154 Although the early U.S. patent statutes required only that an invention be novel and useful to be patentable,155 the Supreme Court in 1850 read such a separate inventiveness limitation into the statute based on the intuition that the mere substitution of porcelain for wood or metal in the design of a doorknob, even if novel, lacked the requisite “skill and ingenuity which constitute essential elements of every invention.”156 The courts evolved this doctrine over the course of a century.157 The source of the requirement – whether constitutional, statutory, jurisprudential, or some combination – remained somewhat murky.158 After the Supreme Court elevated the nonobviousness threshold to a “flash of creative genius,”159 Congress stepped in and integrated a nonobviousness standard into the statute, but specifically removed the reference to “creative” or “inventive genius.”160 Courts today focus on the statutory text, but they also reference the historical development of the nonobviousness doctrine.161 The courts continue to play a central role in developing these “statutory” regimes. And although the modern statutes have become bloated with detailed and often technical provisions,162 fundamental aspects of the copyright and patent regimes trace back to the original statutory enactments, remain relatively terse, and reflect the judicial gloss and fine-tuning that ensued.163 The mixed heritage of IP law has important ramifications for statutory interpretation. In applying IP law, courts should trace the origin of statutory text or doctrine to determine the proper judicial lens – whether to use a common law approach or to focus narrowly on statutory text. In assessing the provenance of statutory provisions, courts should be open to examining legislative history, especially with regard to codification statutes and other amendments intended to explain the nature and purpose of judicially developed doctrines. This use of legislative history does not force courts to follow any particular mode of statutory interpretation, but rather guides them in determining their own role in applying the law. That use largely sidesteps the more controversial issues surrounding legislative history.164 There is very little reason to suspect that lobbyists in the period from 1950 to 1952 (with respect to the modern Patent Act) or from 1955 to 1976 (with respect to the modern Copyright Act) were distorting the role of judicial doctrine in the evolution of these systems. There is extensive historical and jurisprudential evidence to corroborate those accounts.165 The copyright studies that formed the basis for omnibus reform were thoughtfully prepared, widely vetted, and thoroughly discussed in open sessions. The patent codification and reform processes were carefully conducted and documented. The development of copyright and patent law also informs the growing debate over the treatment of so-called common law statutes.166 It lends support to Professor Margaret Lemos’s skepticism (see Chapter 4) about labeling statutes as “common law” or “ordinary.”167 Rather than distinguishing between two caricatured buckets, courts should recognize that there can be a spectrum of statutory/common law regimes even within the same statute. The patent and copyright regimes are particularly distinctive in their mixed heritage – tracing back to the founding of this nation when courts played a greater role in fleshing out statutes and evolving through various stages of judicial embellishment and tweaking, legislative codification, and transformative technological change. The analogy to the Sherman Act may be apt for particular judicially developed and legislatively delegated features, but does not make sense for some of the highly specified legislative compromises passed within the past few decades. Courts should be mindful of the provenance and distinctive context by which statutes emerge and develop. As this chapter has illustrated, the modern copyright and patent regimes can best be understood as rich mosaics – each comprising detailed and specific statutory provisions, open-ended statutory standards authorizing judicial common law development, and important elements still existing entirely outside of the statutory text. Over more than two centuries of statutory accretion, the source and character of the statutory strata have evolved. As a result, tracing the contextual background of particular provisions is essential to interpreting and applying the copyright and patent laws faithfully. Furthermore, a robust, contextually grounded judicial role is critical to maintaining the vitality of the IP system. For these reasons, courts should be especially careful to trace the provenance of copyright and patent provisions and doctrines to determine the proper interpretive lens in applying these laws.