From lawrenceliang99 at yahoo.com Mon May 6 10:38:43 2002 From: lawrenceliang99 at yahoo.com (Lawrence Liang) Date: Sun, 5 May 2002 22:08:43 -0700 (PDT) Subject: [Commons-law] Art and the public domain- On going case of Lalit kala Academy Message-ID: <20020506050843.95475.qmail@web13604.mail.yahoo.com> Hi, since this is the first mail to the commons-law mailing list, thought I will just introduce myself. I am Lawrence Liang and am one of the moderators of this list. I am a lawyer and have been interested in issues of law and culture quite some time. As the note had indicated this list is primarily an attempt at creating a community to critically reflect on issues of law and culture in the contemporary context. Starting of the discussnio with what I think is a rather interesting ongoing case which seems to raise a number of questions which we are collectively interested in. Hope to hear form you guys on this. Sorry if the case description is slightly long. Lawrence == Art and the public domain: The Lalit Kala academy case In January 2002, the Lalit Kala academy held an art sale called �A painting for every home�. Essentially they disposed of over 800 paintings, some of great historical and cultural value. The reasons given by the academy included: 1. That they did not have any space in their archive and that the paintings were being destroyed as a result of poor maintenance 2. That they wanted to popularize art and bring it within the reach of the common man. This sale created a huge outcry amongst the artists community including of course some of the well known artists of Karnataka including Vasudev, Arrakal etc. The contention of the artists was that they had sold the paintings to the permanent archive of the academy at a subsidized rate so that it would remain as a part of the public collection that the academy is supposed to maintain. A number of press conferences were held in which the artists raged and vented against the act of the government. In light of this on the 6th of April a seminar was held in Bangalore called � Disinvestment in the arts: Abrogation of state responsibility�. I am including some of the press articles as well the statement made by the artists on the issue for you to read as a background. One of the outcomes of the seminar is that there has been a decision taken that while what has been done is over, it is also important to move forward. I have therefore been asked to prepare a draft declaration on art and the public domain. Issues arising form the case This is my reading of the case and would like you guys to respond. Legally speaking, there are on the one hand the contractual issues and the breach of trusts issues. But on both grounds the artists would stand in rather shaky ground because of the nature of the contract that they have entered into while selling their works. And they are I think the less interesting issues. The more interesting issues as far as I am concerned is the entire question of the public domain itself. There is no doubt that the act of the academy has resulted in the withdrawal from the realm of the public domain a precious body of work that forms an important part of Karnataka�s cultural history. The question however for us to ask is how does one make a claim for the retention of works within the public domain? Also given that we have a chance to articulate this idea of the commons and public domain in the form of the declaration we need to think together through the entire process of what constitutes an art policy and how does on articulate the idea of the public domain through such a policy. 1. First to get rid of the populist claims of the government, that their act was one that sought to popularize art by bringing it within the reach of every home. There clearly is a difference between the idea of the commons and the common man. By bringing it within the reach of the common man , it does not take away from the fact that it still takes the work out of the commons. 2. How does one resolve the conflicting claims between that of the individual artists and that of the public domain? While the artists seem to be making some sort of a communitarian claim, the entire issue is also based on the strong individual personality interests of the artists and the ability to make such claims on the basis of their status as reputed and celebrated artists. For instance on the issue of whether or not there has been a breach of trust, the argument has been constructed on the lines that there has been a breach of trust by the academy towards the artists. This for me is the precise dilemma. If you want to rely on the individual personality argument, then you would also have to subscribe to the free market logic of freedom of contract or the ability to transact at will ( for instance the stet then has the absolute freedom to do as it wills with nay work of art that it has purchased). 2-a. I think there is a necessity to reformulate the breach of trust argument by reconstituting who the trustees and beneficiaries in this case are. The beneficiaries are not the artists who have sold their wok, but the general public with the state holding the works in trust for the general public. This would also mean that the state cannot make a policy decision on the basis of executive non action (that the state did not have the ability to maintain the works for instance). 3. Can it also be argued that the act of taking away the works from the public domain constitutes an indirect violation of article 19(1)(a). Post the cricket association board case there has been a definite move away from reading merely authorial rights in 19(1)(a) to including the rights of readers ors spectatorial rights as freedom of speech and expression. The case along with others has clearly stated that the general public has the right to receive information under the article. 4. If one were to argue on the basis of the interests of the artists, the route that I would prefer to take is to ask the question as to whether or not the moral rights of the author under copyright law includes the right to retain a work within the public domain? Under the Indian Copyright act, moral rights that are recognized are a. The right of paternity and b. The right of integrity���Under laws of other jurisdiction like France and Italy, moral rights are broader and include for instance the right to withdraw the work from the public domain in case the integrity of the work has been compromised. It is of course important to remember that moral rights are special rights which survive any economic transaction including assignment of copyright. The Indian courts have been great at what I call corollary jurisprudence ( that is to say , freedom of speech includes right to remain silent, right to live includes right to die kind of arguments�PS no longer the case though). Interpolating this line of argument for discussion sake would the right to withdraw a work from the public domain also then include the right o retain the work within the public domain, if it has been specifically created for the public domain or has been contributed to the public domain. This note is already rather long and don�t want to burden your reading time although many more issues but for the purpose of the discussion and the declaration posing some of the questions arising: 1. What is the idea of the public domain with respect to art and culture? 2. Do we have any legal claims for this public domain that do not stem from strait jacketed definitions like in IP laws (that realm in which there is no protection afforded?) 3. What should be the role of the state with respect to art and culture, especially that of institutions such as the LKA? 4. Should the state have an active role in the promotion of art and culture and if yes, in what way. If not then does it also mean that they do not invest in art and culture in the public domain? 5. Do we need to have an art policy in place? 6. What should be the guiding principles for such a policy? It also throws open a number of issues on the relationship between law and culture. We have pretended for too long that these are distinct and autonomous realms which do not affect each other. There are of course the popular versions of the story where law is seen to be a reflection of culture. When law and culture are thought of together, they are conceptualized as distinct realms which are only marginally related to one another. For example, we tend to think of the creative process of art or consuming art as cultural acts with no significant legal implications. We also assume that a decision on an art work is primarily a legal act with few cultural implications. I believe that both of these assumptions are wrong, and that our understandings of art and the lawsuit are impoverished when we fail to account for the ways in which culture is a product of law and the lawsuit a product of culture - how the meaning of each is bound up in the other. __________________________________________________ Do You Yahoo!? Yahoo! Health - your guide to health and wellness http://health.yahoo.com -------------- next part -------------- An embedded and charset-unspecified text was scrubbed... Name: statement by artists.txt Url: http://mail.sarai.net/pipermail/commons-law/attachments/20020505/64471cd4/attachment.txt -------------- next part -------------- An embedded and charset-unspecified text was scrubbed... Name: art for every home.txt Url: http://mail.sarai.net/pipermail/commons-law/attachments/20020505/64471cd4/attachment-0001.txt -------------- next part -------------- An embedded and charset-unspecified text was scrubbed... Name: article by shantanu datta.txt Url: http://mail.sarai.net/pipermail/commons-law/attachments/20020505/64471cd4/attachment-0002.txt From jeebesh at sarai.net Mon May 6 17:16:17 2002 From: jeebesh at sarai.net (Jeebesh Bagchi) Date: Mon, 6 May 2002 17:16:17 +0530 Subject: [Commons-law] Questions on Art and Public Domain Message-ID: <02050617161801.00785@pinki.sarai.kit> Dear All, Since this is a new list and a beginning of an online community and journey, I will introduce myself. I am a documentary filmmaker & a researcher with a media collective (Raqs) and at present work in Sarai, Delhi (www.sarai.net). Thanks Lawrence for your posting. It opens up a very critical issue for serious reflection and debate. I would here like to argue for two specific clarifications. 1) State institutions act under mandates with some reference to the `public`. Furthermore, when it is a `producer` or `procurer` of some cultural goods it acts under this mandate. At least this refrence to the `public` keeps coming up in debates about censorship (public order, public morality and public (national) security). Does any such institution have a mandate on `public domain`? And if it does, in what context it is applicable and in what language is it articulated? 2) Cultural and knowledge production (including artistic production) has blindly accepted the langauge of `property rights` within a very restrictive language. This is today clashing against both `peer to peer` (neighbour to neighbour`) sharing and solidarities, besides also making cultural production vulnerable to corporatist and 'populist' takeovers. Does public domain thinking in this kind of production not need a new language to argue for its autonomy? I think we should think these two areas seperately. They are linked but are different aspects of the `culture` and `public domain` argument. I am enclosing Yochai Benkler's url. He has been very active in re-thinking the public domain and commons debate and may be useful to the concerns of this list. best Jeebesh ------------------------------------ Yochai Benkler New York University, School of Law http://www.law.nyu.edu/benklery/ [On Commons and Information Production] - The Battle Over the Institutional Ecosystem in the Digital Environment, 44 Communications of the ACM No.2 84 (2001) - Property, Commons, and the First Amendment: Towards a Core Common Infrastructure (White Paper for the Brennan Center for Justice) (March, 2001) - Free as the Air to Common Use: First Amendment Constraints on Enclosure of the Public Domain, 74 N.Y.U. Law Review 354 (1999) [Abstract] (html) - Overcoming Agoraphobia: Building the Commons of the Digitally Networked Environment, 11 Harvard Journal of Law & Technology 287 (1998) [Abstract] - A Political Economy of the Public Domain: Markets in Information Goods vs. The Marketplace of Ideas, in Expanding the Boundaries of Intellectual Property: Innovation Policy for the Knowledge Society (Rochelle Dreyfuss, Diane L Zimmerman, and Harry First, eds. 2001) - Free Markets vs. Free Speech: A Resilient Red Lion and it Critics, Reviewing Rationales and Rationalizations, Regulating the Electronic Media (Robert Corn-Revere, ed.) 11 European J. Int'l L. 171 (2000) From jeebesh at sarai.net Fri May 10 14:07:00 2002 From: jeebesh at sarai.net (Jeebesh Bagchi) Date: Fri, 10 May 2002 14:07:00 +0530 Subject: [Commons-law] Open Licenses for Publishing - Resources Message-ID: <02051014070000.00648@pinki.sarai.kit> some useful resources for open publishing. From: "Yochai Benkler" (by way of Ravi Sundaram ) Scientific American presents a good introduction to the problem, with some basic background information on academic publishing. http://www.sciam.com/explorations/2001/042301publish/ The original 1999 proposal for an "electronic publishing site" facilitated by NIH. The proposal is written by Harold Varmus, Nobel prize winner and former head of the NIH. It's a long and sorta rambles, but try to read the prolouge and proposal sections. http://www.nih.gov/about/director/pubmedcentral/ebiomedarch.htm The Varmus proposal eventually scaled down its mission to become PubMedCentral. Check out the current offerings at http://www.pubmedcentral.gov/ The next two links are from a web debate hosted by the journal Nature on the future of E-access to primary scientific literature. This debate was sparked by increased pressure from the scientific community to make primary research available free online. A Yale Librarian thoughtfully defends aspects of the current journal system: http://www.nature.com/nature/debates/e-access/Articles/okerson.html Genbank as a model online community resource in biology: http://www.nature.com/nature/debates/e-access/Articles/lipman.html Genbank is a huge success, and drives support for visions of an NIH managed repository for primary literature in biology. Check out http://www.ncbi.nlm.nih.gov/Genbank/GenbankOverview.html if you'd like to learn more about Genbank or explore its data. The main page for the Nature debate is http://www.nature.com/nature/debates/e-access/index.html. Check it out if you'd like to read more opinions. The Public Library of Science "a non-profit organization of scientists committed to making the world's scientific and medical literature freely accessible" circulated this letter, purportedly signed by 30,000 researchers, promising to boycott journals that did not cooperate with PubMedCentral or similar public resources. http://www.publiclibraryofscience.org/plosLetter.shtml Government is not the only player in the effort to change scientific publishing. BioMedCentral has started publishing online peer reviewed journals. Access to the articles in BioMedCentral journals is free, but authors pay $500 to publish a piece. BioMedCentral makes all its content available immediately on PubMedCentral. http://www.biomedcentral.com ------------------------------------------------------- From lawrenceliang at vsnl.net Sat May 11 12:31:44 2002 From: lawrenceliang at vsnl.net (lawrenceliang at vsnl.net) Date: Sat, 11 May 2002 12:01:44 +0500 (IST) Subject: [Commons-law] This strange place xcalled the public Message-ID: <20020511070144.615CD20081@bom6.vsnl.net.in> An embedded and charset-unspecified text was scrubbed... Name: not available Url: http://mail.sarai.net/pipermail/commons-law/attachments/20020511/6a17b825/attachment.pl From shuddha at sarai.net Sat May 11 18:38:24 2002 From: shuddha at sarai.net (Shuddhabrata Sengupta) Date: Sat, 11 May 2002 18:38:24 +0530 Subject: [Commons-law] This strange place xcalled the public In-Reply-To: <20020511070144.615CD20081@bom6.vsnl.net.in> References: <20020511070144.615CD20081@bom6.vsnl.net.in> Message-ID: <02051118382403.01419@sweety.sarai.kit> Dear Lawrence, I am hazarding a few thoughts in response to the questions you have raised about the Public Domain. I am typing as I think, so please dont treat these thoughts as final, arrived at positions, they are just so much "thinking aloud" and nothing more. I think Lefort's conception of the power that flows from representative democracy as belonging to "nobody" is an interesting thing to work with. Its a bit like the fact that the wage relations that characterize capitalism are not necessarily an index of what "belongs" to whom, rhather an index of how surplus gets appropriated, and who is included in the generation of but excluded from the appropriation of surplus value. I think the Public Domain can be thought of in terms of "inclusion" and "exclusion". When we say, this work is located in the public domain, it means no one is excluded from the possible benefits that may accrue from this work, and everyone is included in the ambit of its usability. A work that may enjoy a large measure of "public" acceptance, may still not be in the public domain, if it locates itself in terms of access conditional on factors outside it (price, cost, membership in a club etc.). I think one way to think through the 'publicness' of Hindutva is along similar lines. It is premised on the exclusion from the sphere of public life (do I mean public sphere?) drawn by it (Hindutva) of people who either define themselves as non Hindus, or who are so defined by the agents of Hindutva. This is like the tithe that Microsoft enforces as a price that I have to pay to use MS Word - the inability to change the code of the programme, and the fact that it is a commodity that I have to give up something (money - the fruit of my labour) to acquire. Transpose Hindutva for Microsoft. Again, I am told I cannot change the code that has been fixed by the sants and the mahatmas and the gyanis, and further, I have to give up something (any claims to be anything other than Hindu, or a portion thereof) if I am to have access to the safe 'haven' of Hindutva where I shall not be attacked. This is the 'guarantee' that the RSS demanded recently from minorities in Bangalore, in exchange for which, they would be left un-molested. A commons in culture, however, operates on the opposite principle. I can enter and access any space provided I do nothing that prevents other people from entering and accessing that space. To me, this is the minimum requirement of the "Public Domain" or a commons. Seen this way, the whole idea of "citizenship" is such that it mitigates against the Public Domain in much the same way as Hindutva does. How. The whole premise of the term citizen, is the ability to produce that thing called power, deployed through representative democracy, which belongs to nobody, but which came from some people, who then have the protection of the law in a given space. This means, that others in that space, do not enjoy the protection of the law, or at least not to the same measure. They have to give certain 'guarantees' if they are to enjoy analogous measures of access to common societal goods, that citizens have access to. For instance, the right to life may apply to a non citizen, but not the right to liberty, and so on. I think counterposed to the citizen, we might need to resurrect the idea of a "denizen". A denizen is a resident alien in a given network of social ties, who nevertheless is able to participate in the public life of a community to full measure. This would mean, for instance, that a Muslim is a denizen in so far as Hindus are concerned just as much as a Hindu is a denizen insofar as Muslims are concerned. But both have equal access to the "commons of culture" or a public domain that is created by the contiguity of their traditions. Each has access to each others tradition, without staking claims of ownership, either on the self, or on the other, based on the understanding that the mere fact of presence, of differentiated presence in relation to the other is a factor of enrichment, both of the self and of the other. Traditional empires, such as the Mughal empire, or the Ottoman empire, or even the Chinese imperial imaginations, were, even though not secular, far more accommodating of difference, because in my mind, they were not founded on the idea of citizenship. Everyone, barring the emperor, was a denizen, it matterred little as to whether or not you were a direct subject of the soveriegn, so your participation in public life was not premised neither on your difference from those around you, and nor on your similarity with the people occupying the central axes of power. The fiction that the prime minister and I are the same kind of person is a necessary illusion for the maintainance of the republican state. In imperial or aristocratic societies, i could never say, that the king and I were the same kind of person, but because of that, it did not make any sense for me to say either, that I was special, "because of who I was". This is why, fascism and the institutions of the representatitve democracy have such a close relation. The majoritarian impulse that underlies fascism, cannot even be imagined without the idea of a majority that will dictate terms in a given society. Notice, how the idea of socialism has little to do with whether or not the people being exploited are in a minority or in a majority. Even if the vast majority of the population were exploiters, and a small minority were exploited (as is often the case in slave societies), social equality would still be an idea worth arguing for. Fascism on the other hand, requires the logic of majorities, even minority fascism does. If you take the rhetoric of muslim fundamentalism it cannot escape the language of what the majority of the 'umma' feel and desire. By spearating itself from other groups in society the fascism of minority communities, recreates stable majorities within the community dersignated as 'miniorities' by people outside it. This is the same logic that works in the case of "sub-nationalism". So that Kashmiri or Tibetan nationalism may be viewed as "sub nationalisms" only from the point of view of a "Greater" Indian, or Chinese nationalisms, but because it stresses its separate identity, the Tibetan or Kashmiri nationalist expression, is a full blown, majoritarian nationalism, in and of itself. This logic of greater and lesser numbers is what brings me back to the greater or lesser claims to public space and attention that I think you are referring to when you talk about the Public Space occupied by Hindutva in Gujarat. But if we destabilize this arithmetic, but seeing people not as citizen generators of the real power of the state that nevertheless does not reside in them, but as denizens, equally distant from the impersonal apparatus of the power of the modern state, then I feel that we may be on to something, and to an imagination of the culture of a public domain in which one cannot be excluded on the grounds that one is not born or brought up a Hinud or does not carry a Hindu name. But it would be just as inconsistent as the Hindutva vaadi who sincerely discounts caste while he emphasizes religion, if we were to similarly discount religion and emphasize nationality. Which is why the creation of a secular public domain must necessarily argue against the idea of the citizen. This is what Marx does, in the critique of the Gotha programme when he says that the German Social Democrats make a mistake when they identify secularism with a non religious state, because, in the end, the state, (even a godless state) is its own religion. And the foundation of the project of attaining a secular public life (call it civil society if you like) that guarantees the life and liberty of all who live withing it must ultimatley rest on a criticism of the modern state as a form of power. This is why, to my mind, arguing against the pogroms in Gujarat must be accompanied by an argument against the identification of aliens as opposed to citizens in India, and against, borders, border controls and restrictions on movement across borders everywhere. In effect, in arguing against the nation state. The public domain/commons and the state cannot co exist. Thus the artists who confuse the Lalit kala Akademi in Bangalore with a public institution are in fundamental error. The public sector (whether in thermal power generation, or in fine arts) does not constitute the public domain, but more of that later, cheers Shuddha From monica at sarai.net Sun May 12 13:44:47 2002 From: monica at sarai.net (Monica Narula) Date: Sun, 12 May 2002 13:44:47 +0530 Subject: [Commons-law] Public Domain Scanner - Stopped Message-ID: This has been sent to me by Knowbotic Research (a group of artists/techies who are quite radical) and who made the Public Domain Scanner. In the next mail i will send some info about this scanner. best Monica CRACKED at http://unitedwehack.ath.cx CRACKED public domain scanner http://unitedwehack.homeunix.net/minds3/ The authority of the Internet service provider of the New Museum in NY stopped yesterday the Public Domain Scanner, an installation and web project in the exhibition Open_Source_Art_Hack (http://netartcommons.walkerart.org) The public domain scanner has portscanned worldwide the servers of several hundred NGOs and media activists. It has published the analysed security lacks of the scanned servers, but hides the net.adresses of the scanned organisations and net actors. http://unitedwehack.ath.cx ( mirror site in Cologne with some legal bugs, no active scanner any more) Here is the outline of the contestation: Port scanning is legal: Port scanning is a frequently used tool in network security analysis, involving examination of a remote computer without accessing its programs or data. The port scan used in Public Domain Scanner do not test login passwords, create a significant amount of traffic, or access or alter any data on the scanned computer. In that sense, a port scan is similar to observing a house from across the street, and perhaps knocking on its front door, but not entering even if the door is opened. Only one published opinion has considered the legality of port scans. That court held that such activity did not violate federal or state computer protection statues or other law. The federal district court for the Northern District of Georgia held that a party who conducted port scans of another party's computer systems did not violate the Computer Fraud and Abuse Act (18 U.S.C. s. 1030) [1], because he neither caused damaged nor gained access to the computers at issue. Moulton v. VC3, 2000 WL 3331091 at *6 (N.D. Ga., Nov. 7, 2000). Nor did the port scans violate state law, because they did not interfere with computer or network activity. References: [1] The Computer Fraud and Abuse Act: [2] Moulton v. VC3, 2000 WL 3331091 (N.D. Ga., Nov. 7, 2000) [3] Computer Crime and Intellectual Property Section, U.S. Department of Justice, Legislative Analysis of the 1996 National Information Infrastructure Protection Act: [4] Computer Crime and Intellectual Property Section, U.S. Department of Justice, Field Guidance on New Authorities That Relate to Computer Crime and Electronic Evidence Enacted in the USA Patriot Act of 2001 Knowbotic Research to Provider: Knowbotic Research got informed that you want the New Museum to shut down our server inside their network. Could you please inform me what are the reasons for this decision? We got informed that there was only one complaint until now from an ISP concerning our Public Domain Scanner. The museum has informed this ISP about the art project and as far as I know this ISP showed afterwards sympathy for this project which does not obscure security issues in the network and provides a transparent plattform for this topic inside the artworld. Is this one complaint the full reason to stop our project? Provider: As you can see at our Acceptable Use Policy AUP, running security software, scans against machines you do not have permission to run them against cleary violates a number of provisions of our Acceptable Use Policy. We are required by our upstream providers to carry these clauses, and can lose our access if we do not enforce them. I assure you, our enforcement of the AUP is nondiscriminatory, based soley on the nature of the violations, not the motives behind them. Once again, let me repeat that this decision is based soley upon our contractual obligations to our upstream providers, and the desire to protect our reputation as a responsible ISP. In no way are we making any claims as to the artistic merits of the project. Knowbotic Research: These provokes the question: Who is the net.constituent behind the upstream provider? Open Law expert: Your experience here is actually a very interesting part of the project. It demonstrates how private parties can exert control of the public domain well beyond what the law requires. Even with institutional support for your installation, you are often at the mercy of other economic actors -- the ISPs whom the museum and you depend on for connectivity, who in turn depend upon higher-up ISPs to preserve their connections to the Internet. Any player in this chain has the ability to break the connection and prevent you from displaying and contributing to the public discussion, based on its own feelings, contracts, and interpretations of the law, before any judge is called in to determine whether the activity is legal. Curator Steve Dietz: The fact that Minds of Concern is potentially undermined by the legal system in the form of a standard or "shrinkwrap" license the New Museum has with its ISP is not insignificant. It is precisely a legal bug and the strategy by which so much of the public domain in the U.S., at least, escapes Constitutional and other legal protections by entering into [voluntarily?] contractual agreements that void and/or supercede these supposed rights. Commment Mailing List Lachlan Brown: Indeed, the distinction between assumed rights and legal guarantee of rights, public and private, residesin an interstitial state. Not a 'grey area' to be filled in between the public and private by new conditions for cyber' space, but a contest in which like a Venn Diagramme the public and private vie over the terrain they both occupy. Add to this the interests of several dozen States, thousands of public service institutions hundreds of thousands of companies and millions of users, well... . What would we call it? War? Wrestling? or Seduction? A Million times a million contests. Cultural confusion.These webs of the law are durable and have easy translation to the new media distributive terrain. Despite word play or administrative/bureaucratic assumptions of power. The really interesting fact is that States, institutions, companies, individuals, but not collectivities like artists, writers, coders, primary producers and so on, are beginning to 'stand-off' this terrain. We might, after all, consider a return to the question of the aesthetic, and then of policy, and thenof law over several years. It will become clear as we do so that we NEED insitutions, new institutions perhaps, that are able to host the work you do. knowbotic research, http://ww.krcf.org -- Monica Narula Sarai:The New Media Initiative 29 Rajpur Road, Delhi 110 054 www.sarai.net From sub at yproductions.com Mon May 13 03:37:44 2002 From: sub at yproductions.com (Steve Dietz) Date: Sun, 12 May 2002 17:07:44 -0500 Subject: [Commons-law] Micz Flor, "Hear Me" - Free Radio Linux In-Reply-To: <02051014070000.00648@pinki.sarai.kit> Message-ID: Hear me out Free Radio Linux broadcasts the Linux sources on air and online Micz Flor ++++++++++++++++++++++++++++++++++++++++++++++++++ Flor's essay written for r a d I o q u a l i a's "Free Radio Linux," which was commissioned by Gallery9/Walker Art Center and is presented as part of Open_Source_Art_Hack, raises significant public domain/legal issues. http://www.netartcommons.org/article.pl?sid=02/05/12/038213&mode=thread German version at http://crossfade.walkerart.org +++++++++++++++++++++++++++++++++++++++++++++++++ Every community deserves a radio. And every community gets the station it deserves. "Free Radio Linux"[1] is a new station on the map, catering to a number of contemporary interest groups, such as the free software advocates, the net.radio digerati, the Open Source community and the new-media art crowd. In a unique blend of contemporary academic and legal debates as well as technological possibilities, "Free Radio Linux" is formulating questions to do with the relation of language and code, technology and art, the history of community radio and computers, as well as the battle of freedom of speech and copyright protection. And how is it doing it? Simply by reading thousands of lines of source code on the air and on the web. In "Free Radio Linux", the entire source code of the Linux kernel[2] will be webcast over the Internet. A speech synthesizer will convert into talk radio the 4,141,432 lines of code, which will take about 600 days[3] to read. From a London flat, the sonic entrepreneurs behind the project--r a d i o q u a l i a--will feed the computer voice via a standard cable connection to the streaming media server Montevideo in Amsterdam, from where it will be made available to whoever wants to listen in.[4] On its first day of webcasting, February 3, 2002 (the fourth anniversary of the term Open Source), "Free Radio Linux" proved to hit a nerve. With more than 300,000 visitors on the first day, the server delivered one gigabyte of data to listeners; this refers to the text only and excludes the audio stream. On the same day, two more servers offered to mirror the stream, which is lucky as it would be hard for one server alone to cope with this level of popular demand. "I don't think the chief virtue of a language is beauty"[5] This spectacular reception of the new community station on the block is all the more surprising given that listening to the "spectacle" itself turns out to be a rather sobering experience. Semantic entities such as "struct sigframe underscore ia32"[6] really do not appeal to a wide audience. In fact, it is hard to believe they would appeal even to the core of the Linux developers community. But "Free Radio Linux" is out there to be heard. And it is not even limited to the Net alone. Various smaller and independent--let's say experimental--stations decided to pick up parts of the audio stream and rebroadcast the voice over their local radio frequencies.[7] Which is fair enough, given the kind of programs you receive these days to fill the void of the signal, featuring loops of anything from open fireplaces to live satellite images, aquariums, cameras mounted on trains, webcams from around the world, and so on. Why listen to thousands and thousands of lines of computer code? It is a reasonable question. A reasonable answer would be to decide only after having listened to them. Reading out the sources adds an aesthetic quality to the code that it obviously was not intended to possess in the first place. The code was, after all, meant to be configured and compiled into a binary format that can run on certain computers. But in "Free Radio Linux" the code is shifted away from this context and introduced into another universe altogether: radio. By stressing the fact that code is a human invention and does have language-like features, "Free Radio Linux" foregrounds an aesthetic quality of the code that has been hidden inside its rule set. The strategy of dislocating a set of rules or categories from their initial purpose and implementing them in another context is an interesting conceptual tool. Creating a different sensual experience by forcing this shift has been used in various forms. Early examples of this mechanism would be Bach's use of the notes B-A-C-H in his work--widely applauded by mathematicians and programmers alike--or Mozart's use of the notes C-A-F-F-E-E in a children's song on coffee, which is widely criticized by cultural theorists, but for different reasons. To use computer code as a set of rules for a similar purpose is to play in the same league. Code itself is a human creation and far from random. In fact, programmers do speak of beautiful code, even though this would usually refer to the creative usage of the code's rules to achieve a certain aim. But programming languages and the aesthetics of digital systems have had an immense influence on contemporary poetics, music, and writing. Net.art projects such as jodi.org[8] illustrate how this influence can develop into its own aesthetic. "Free Radio Linux" places itself in proximity to such projects, specifically referring to net.artist Vuk Cosic,[9] who was essential in establishing ASCII art as a genre when he converted the porn movie Deep Throat frame by frame into ASCII images, to be reassembled into a movie.[10] Besides the clear influence of computer aesthetics and code on cultural production[11], the attraction of the "Free Radio Linux" project lies more in the cultural currency surrounding Linux and the Open Source movement today. The language being read out does not appeal as such, but stands for a wider context that has entered the cultural mainstream. In connection to another Open Source project, Larry Wall, linguist and creator of the programming language Perl, has summarized this connection: A language is not a set of syntax rules. It is not just a set of semantics. It's the entire culture surrounding the language itself. So part of the cultural context in which you analyze a language includes all the personalities and people involved--how everybody sees the language, how they propagate the language to other people, how it gets taught, the attitudes of people who are helping each other learn the language--all of this goes into the pot of context.[12] "the memory management can be a bitch"[13] Listening to the "Free Radio Linux" audio stream can be a tiring experience. At irregular intervals, however, the monotonous flow of commands, variables, and punctuation is interrupted by coherent sentences. Such little passages are usually preempted by "slash asterisk" and constitute comments that are written inside the code to make it easier for other programmers to understand what the code is actually intended to do--and are a good example of the cultural context surrounding the programming languages Wall describes. Comments placed inside source code vary in degrees of directness and intention. "Fork is rather simple, once you get the hang of it, but the memory management can be a bitch" is a concrete statement in the fork.c code, apparently written by Linux creator Linus Torvalds himself. On the other hand, this statement from ia32_support.c really excites only the in-crowd: "We never change the TSS and LDT descriptors, so we can share them across all CPUs." To this extent, reading source code out line by line, "Free Radio Linux" manages to achieve something that could not be achieved in any other way: The audio stream makes audible the silent comments that developers wrote in to communicate among each other. These are discussions and experiences living within the code that would never see the light of day if not read out loud. "the good ol' days when I was recording ZX Spectrum games played on radio"[14] Besides the aesthetic pleasure of listening to nearly two years of Linux code on the radio, transmitting code over radio broadcasts can also serve as a different way of distributing software. And if it can be done, it usually has been--as is the case here. In the late seventies and early eighties, pirate broadcasters would exploit the fact that in the early days many computers would store and retrieve code by using audiotapes. The ZX Spectrum is probably the most popular home computer using this technology. Broadcasting such an audio signal allowed listeners to tape the software and load it into their computers. Systems employing different ways of storing data would require special software to modulate it into audio signals, which would then be demodulated by the users at the receiving end. One of the first stations to broadcast computer code was the Dutch station NOS in 1979-80. In its program Hobbyscoop[15], the station would deliver software for specific computers whose storage methods were acoustic.[16] In the United Kingdom, Radio West in Bristol and Radio Victory in Portsmouth were doing the same for their regional communities. The idea was so successful that even the BBC decided to go along with the idea and launched the Chip Shop[17] in the mid-eighties.[18] The limitations of early "code stations" can be boiled down to the fact that each computer had its own way of translating source code into audio. This generated an artificial distinction, as many computers were using the same programming language (BASIC) and the source code itself could in theory be used across a number of computers. To overcome the obstacle, a specific program--Basicode[19]--was invented. It ran on many platforms and made radio transmissions accessible to every computer running it.[20] To bring this little excursion back to "Free Radio Linux", the analogy between audio streaming today and software over the air in the eighties is based on a similar paradigm of reaching a variety of platforms with one data stream. The conversion of an audio signal into data requires a piece of software similar in character to Basicode. Two widely known formats used on the web are RealMedia and MP3, both of which are proprietary standards (meaning that the actual code is owned by private companies).[21] For its audio stream, "Free Radio Linux" uses the Open Source codec Ogg Vorbis[22], which is an alternative audio format published under a nonproprietary license. To the ordinary listener, this difference is not audible. Given the fact that proprietary standards are not open, however, they require the availability of a player if the data stream is to be translated back into audible information. Using a proprietary standard is not unlike locking away your belongings and trusting someone with the key.[23] If such a private company went bust, all the content available in its format would slowly become inaccessible. Being in sync with the Open Source concept, today Ogg Vorbis might therefore be the best candidate to assure the kind of interoperability that Basicode offered in its day. "why publish an entire book ... of boring source code"[24] Listening to thousands of boring lines of source code on "Free Radio Linux" might be only a slightly less numbing experience than reading thousands of boring lines of code in a book. In both cases, the medium chosen to carry the text seems inadequate. But shifting the context alters more than the code's aesthetic quality. Putting code on air stresses the fact that we are dealing with language after all. Software is not merely a combination of tools on a hard disk; software is language, an assumption with legal consequences. Over the past years, a great deal of juridical effort has been spent on establishing a clear distinction between "language" and "code." The mere fact that the U.S. legal system might dedicate its attention to such a linguistic discourse indicates a serious political and economic interest in the issue. The political dimension becomes instantly apparent when taking a closer look at the code that triggered a previous legal battle. This was Pretty Good Privacy (PGP), a powerful encryption software that allows secure communication for anyone on the Internet, without any third party intercepting, not even the government of the United States. In June 1991, Philip Zimmermann's encryption software PGP was made publicly available as freeware on the Internet. As the name suggests, Pretty Good Privacy was developed to secure privacy in digital networks, which the software's author believed to be a fundamental right.[25] Needless to say so shortly after the Gulf War, the U.S. government had other plans. In 1991, the Senate was discussing Bill 266, which had been designed to force manufacturers of secure communications to provide a hidden access point, a back door, by which the federal government could retrieve plain-text versions of encrypted messages.[26] As it was becoming clear that this might be the reality of the Internet in the near future, Zimmermann decided to act and publish the software before it was too late.[27] Soon afterward, he became the target of a criminal investigation by the U.S. Customs Service. The case against publishing PGP on the Internet was based largely on the notion that PGP's potential global availability constituted a security threat. Exporting strong encryption software was similar to exporting munitions, it was decided under the International Traffic in Arms Regulations. Since the main accusation against Zimmermann was based on this notion of international export, PGP developers looked into ways of distributing the source code across borders legally. To cut a long story short: The source code was printed by the respectable institution MIT under the title PGP: Source Code and Internals. It was published in March 1995, priced at $55 and with the ISBN 0-262-24039-4. The book is out of print today, which does not matter much as the only relevant delivery of the book was to the University of Oslo. The font used is also capable of being scanned by computer scanners. If the source code were scanned in and then run through a compiler program, it would be translated into an executable application or object code, which could then be read and executed by a computer to encrypt text and binary files.[28] With a small tweak in the medium by which the source code was delivered, the legal framework prohibiting its use had become unhinged. It was no longer the "weapon" it had represented in digital form--merely language in a book. Needless to say, the program was successfully compiled at the receiver's end. And nearly a year later in January 1996, the case against Zimmermann was dropped. "is there a point in distinguishing between source code and English prose"[29] The relation between code and language is not resolved yet. In fact, it is again being debated in and outside the U.S. courts in relation to a short piece of code published under the name of DeCSS, which effectively undermines DVDs' copyright protection. DeCSS means that playing DVDs does not require any customized hard- or software solution. Instead, they can be viewed on any machine using the DeCSS code. The case against those who developed and/or published the DeCSS program and source code still continues today. One of the remaining questions, since the case against Zimmermann, is to what extent source code is protected by the First Amendment to the U.S. Constitution. In other words: Is code speech? Listening to "Free Radio Linux", which runs by virtue of speech synthesis, it seems to be speech after all. Still, it is clear that its 4,141,432 lines of code could in theory be translated back into the code's digital form and compiled into the kernel. Similarly, this could be done using scanned versions of Zimmermann's book. In both the Linux kernel and PGP source code cases, we are dealing with a large amount of data. In contrast, the DeCSS program is rather short. (In fact, it is short enough to be printed on T-shirts30 that one can buy to support the legal defense of the accused in the DeCSS case.[31]) Because it contains only a few lines of code, several versions have been developed in various languages.[32] This diversification--T-shirts on one side, clones and translations on the other--attempts to point out the absurdity of a situation in which source code can be legally differentiated from other forms of written expression. In fact, the algorithm protecting the DVD content from "unauthorized" use could even be described in plain English in an essay. Based on the description, a programmer could conceivably develop the DeCSS code without ever having seen the source code itself. In an interesting attempt to blur the distinction even further, Jonathan Baccash coded the software BabelBuster, which translates C code to some form of colloquial English and back again without losing the information contained in the code. One simple line of C code, "main ()," would translate into the more poetic phrase "Let main be a function returning an integer. It is called with no arguments."[33] As the discussion unfolds and the lobbying interests of the multinational entertainment industries become both transparent and vicious, "Free Radio Linux" will continue blurting out source code for a year to come. "can we submit bug reports to the radio station now?"[34] The bizarre reality is that "Free Radio Linux" marks a specific point in time in which issues to do with Open Source, Linux, software licensing, copyright protection, and streaming media are being debated in the mainstream, while the project itself demands stamina to be followed until its completion in late 2003. In the initial postings on the Slashdot website, this schizophrenic aspect became an issue, with users asking if the station would provide updates if the kernel changed in the meantime. Looking at "Free Radio Linux" from a conceptual point of view, it seems adequate to continue broadcasting a code freeze of the day transmission started and carry it all the way. It might remind its listeners of the open legal disputes and multinational lobbying occurring when the project was launched. Looking at "Free Radio Linux" from a pragmatic point of view, another posting on Slashdot suggested that something useful is finally leaving this planet in the form of radio transmissions. Intelligent alien life forms could receive a stable version of the Linux kernel. What a success for the Linux community and what an audience for grassroots media! Micz Flor works with and writes on new media. http://mi.cz 1. "Free Radio Linux" http://radioqualia.va.com.au/freeradiolinux/ 2. Kernel meaning the part of the operating software Linux on top of which all other applications run. "Free Radio Linux" is webcasting Linux kernel 2.4.18 from http://www.kernel.org. 3. 14,253.43 hours, or 593.89 days, to be precise. See the readme file on the site. 4. Live audio link of "Free Radio Linux". http://www.xs4all.nl/~qualia/freeradiolinux/playlist.m3u 5. Larry Wall, creator of the Perl programming language, on computer code and linguistics: http://www.ddj.com/documents/s=923/ddj9802a/9802a.htm 6. A small extract from the code at linux/arch/ia64/ia32/ia32_signal.c 7. Find a list of some of the rebroadcasters at http://www.xs4all.nl/~qualia/freeradiolinux/cron.html 8. jodi http://www.jodi.org 9. Vuk Cosic, "ascii history of art for the blind" http://www.ljudmila.org/~vuk/ascii/blind/ 10. Vuk Cosic, "Deep ASCII." http://www1.zkm.de/~wvdc/ascii/java/. See more of his work at http://www.ljudmila.org/~vuk/. 11. For a good introduction to the subject, see Florian Cramer's text "Digital Code and Literary Text" at http://beehive.temporalimage.com/content_apps43/app_d.html 12. Larry Wall, creator of the Perl programming language, on computer code and linguistics: http://www.ddj.com/documents/s=923/ddj9802a/9802a.htm 13. Comment taken from fork.c of the Linux kernel 14. Posting by Shiny Metal S. on Sunday, February 3, 2002, on Slashdot: http://slashdot.org/ 15. For a brief introduction, dust down your Dutch: http://www.hobbyscoop.nl/NOStalgie.htm 16. Such computers would include TRS-80, Commodore PET, Apple II, Exidy Sorcerer 17. Find more information on the Chip Shop history: http://www.sincuser.f9.co.uk/024/news.htm 18. When exactly the first BBC software broadcast happened is hard to research: http://www.users.globalnet.co.uk/~jimg/yr09/yr09_03.htm 19. More information on the history of Basicode: http://www.xs4all.nl/~lennartb/basicode.html 20. The Basicode software is still available today: http://www.void.jump.org/utils/b.html 21. For a detailed discussion see http://mi.cz/txt/crosscodeccompatibility.htm 22. More on the Ogg Vorbis format: http://www.vorbis.com/ 23. This comparison was brought up by Adam Hyde in preparation for this article. 24. Philip Zimmermann's preface to the book PGP: Source Code and Internals: http://www.philzimmermann.com/essays-preface.shtml 25. The International PGP Home Page http://www.pgpi.org 26. Introduction to PGP encryption http://www.lugod.org/presentations/pgp/history.html 27. Philip Zimmermann's preface to the book PGP: Source Code and Internals: http://www.philzimmermann.com/essays-preface.shtml 28. Declaration of Philip R. Zimmermann in support of plaintiffs' opposition to defendants' motion to dismiss: http://people.qualcomm.com/karn/export/zimm.html 29. Jonathan Baccash: BabelBuster--C to English to C Translator: http://www-2.cs.cmu.edu/~dst/DeCSS/Baccash/ 30. Copyleft DeCSS T-shirt: http://www.copyleft.net/item.phtml?dynamic=1&referer=%2F&page=product_276_fr ont.phtml 31. Wired News on DeCSS T-shirts: http://www.wired.com/news/technology/0,1282,37941,00.html 32. Gallery of CSS Descramblers: http://www-2.cs.cmu.edu/~dst/DeCSS/Gallery/index.html 33. BabelBuster example: http://www-2.cs.cmu.edu/~dst/DeCSS/Baccash/example1.e 34. Posting by mESSDan on Sunday, February 3, 2002, on Slashdot.: http://slashdot.org/ 7 of 7 "Hear me" by Micz Flor is first published May 2002 for r a d i o q u a l i a's ""Free Radio Linux"," which was commissioned by Gallery 9/Walker Art Center with the support of the Jerome Foundation. All rights reserved to the author. http://gallery9.walkerart.org/radioqualia/ http://netartcommons.walkerart.org/article.pl?sid=02/05/12/038213&mode=threa d German version at http://crossfade.walkerart.org/ Crossfade is a joint project of San Francisco Museum of Modern Art, Walker Art Center, and ZKM with support from the Goethe Institute From monica at sarai.net Mon May 13 18:33:40 2002 From: monica at sarai.net (Monica Narula) Date: Mon, 13 May 2002 18:33:40 +0530 Subject: [Commons-law] more on the public domain server Message-ID: http://www.nytimes.com/2002/05/13/arts/design/13ARTS.html Museum's Cyberpeeping Artwork Has Its Plug Pulled By MATTHEW MIRAPAUL An Internet-based artwork in an exhibition at the New Museum of Contemporary Art was taken offline on Friday because the work was conducting surveillance of outside computers. It is not clear yet who is responsible for the blacking out — the artists, the museum or its Internet service provider — but the action illuminates the work's central theme: the tension between public and private control of the Internet. The shutdown also shows how cyberspace's gray areas can enshroud museums as they embrace the evolving medium. The work in question is "Minds of Concern: Breaking News," created by Knowbotic Research, a group of digital artists in Switzerland. The piece is part of "Open Source Art Hack," an exhibition at the New Museum that runs through June 30. The work can be viewed as an installation in the museum's SoHo galleries or online at newmuseum.org. Although the installation is still in place, and the work's Web site remains live, the port-scanning software that is its central feature was disabled Friday evening and was inactive yesterday afternoon. Port scanning sounds like a cruise-ship captain's task. The term actually refers to a technique for surveying how other computers are connected to the Internet. The software essentially strolls through the neighborhood in search of windows that have been left open. Merely noticing where they are is no crime. Things get dicier, though, if what is seen is conveyed to a ne'er-do-well relative, who then breaks in somewhere, rearranges the furniture and makes off with a gem-encrusted putter. One court has ruled that port scanning is legal so long as it does not intrude upon or damage the computers that are being scanned. Internet service providers, however, generally prohibit the practice, which can cause online traffic jams. That prohibition appears to be what led to the shutdown. After the Knowbotic work started its peeping, the Internet service provider for one of the targets of the scan complained to the museum's Internet service provider, Logicworks. In turn, Logicworks notified the museum that port scanning violated its policies. On Friday, Lauren Tehan, a museum spokeswoman, said the museum was seeking a creative technical solution to keep the work online. That effort did not succeed. Ms. Tehan said the museum, at Logicworks' request, shut down the work after the museum closed on Friday evening. On Saturday morning, Christian Hübler of Knowbotic Research said the group realized the port-scanning software had been disabled and decided to move the work's Web site to an Internet service provider in Germany. Ms. Tehan said that the museum suggested a way to put the work back online but that Knowbotic rejected the proposal. The dispute calls attention to one of the very points the piece is intended to make. Because the lines between public and private control of the Internet are not yet clearly defined, what artists want to do may be perfectly legal, but that does not mean they will be allowed do it. Before the New Museum exhibition opened on May 3, Knowbotic Research had already decided to remove the most troublesome features of the port-scanning software. Mr. Hübler said the group changed the work after consulting with a lawyer who specializes in Internet law. "I wanted to know the situation I'm in," Mr. Hübler said, "because when I work with the border as an artist, I want to know at least what the border might be." When it is functioning, "Minds of Concern" resembles a slot machine. Viewers are prompted to scan the computer ports of organizations that protested in February against the World Economic Forum. While colored lights flash, a list of the vulnerable ports and the methods that might be employed to "crack," or penetrate, them to gain access to private information scrolls across the bottom of the screen. No internal information is exposed, but the threat is suggested. European digital artists are more politicized than their American counterparts, and "Minds" is designed to advance a social agenda. By choosing to explore the computers of anti-globalization groups instead of Nike or Coca-Cola, Knowbotic is warning those groups that they are at risk of losing sensitive data. But to present the work at the New Museum, Knowbotic had to defang it. At first, the group reviewed the 800 tools in the port-scanning program and removed 200 it deemed intrusive or malicious. After consulting with a lawyer, the group then encrypted the name of the organization being scanned because it was unsure if publishing the information was illegal. In place of the name on the screen, one saw the phrase "artistic self-censorship." The group's disappointment in having to scale back the work was obvious in a message to an electronic mailing list: "Due to the ubiquitous paranoia and threat of getting sued, the museum and the curators made it very clear to us that we as artists are 100 percent alone and private in any legal dispute." There is a sense of a missed opportunity here. The dozen works in "Open Source Art Hack" are intended to prompt discussion about the public versus the private in cyberspace while demonstrating how artists "hack," or misuse technology, to creative effect. Port-scanning software, for instance, is meant to be used for reconnaissance, yet Knowbotic has made it a political tool. But "Minds of Concern" is also the only online work in the exhibition to operate in a legal gray area. In its fully functional state, it had the potential to cause a ruckus that might have yielded some black-and-white rulings. But instead, the exhibition commits no real transgressions. Steve Dietz, the new-media curator at the Walker Art Center in Minneapolis, was one of the exhibition's curators. Its goal, he said, "was more nuanced than bringing cracking to the dull havens of a museum." "Being bad and doing something illegal hold very little interest for me," he said, "but being tactical and creative hold a great deal.` Artists like to be bad, and although museums are sometimes their targets, they can also serve as shields when artists become controversial. A recent example was the exhibition "Mirroring Evil: Nazi Imagery/Recent Art," for which the Jewish Museum, not the participating artists, took most of the heat. As museums embrace cyberspace, its fuzzy rules are posing unfamiliar problems, and "Minds of Concern: Breaking News" is a case in point. As for how well those issues can be raised within a museum's walls, Lisa Phillips, director of the New Museum, said: "That really is the dilemma. We can only go so far." Web Site: wwww.newmuseum.org -- Monica Narula Sarai:The New Media Initiative 29 Rajpur Road, Delhi 110 054 www.sarai.net From zamrooda at sarai.net Tue May 14 16:15:42 2002 From: zamrooda at sarai.net (zamrooda) Date: Tue, 14 May 2002 16:15:42 +0530 Subject: [Commons-law] sound recording In-Reply-To: <02011615422301.01942@legal.sarai.kit> References: <02011615422301.01942@legal.sarai.kit> Message-ID: <02051416154202.00992@legal.sarai.kit> > The Indian Copyright Act,1957 > > > A sound recording cannot be published unless and until the following > particulars are displayed on the sound recording and on any container > thereof: > > 1. the name and address of the person who has made the sound recording, > 2. the name and address of the owner of the copyright of that work and > 3. the year of its publication. > > Which are the acts that will not be deemed to be Infringement of Copyright? > > 1 Making of sound recording of any literary,dramatic or musical work with > the licence or consent of the owner of the right in the work. > 2 Where the person making the sound recording has given a notice of his > intentions, has provided the copies of all the covers and labels with which > the sound recording is to be sold. The royalties have been paid in > conformation to the rates fixed by the Copyright Board. > 3 Provided that no alterations are made that have not been made previously > or with the consent of the owner of the rights. > 4 Sound recording cannot be packed or labeled in a fashion as to mislead or > confuse the public of their identity. > 5 Copies of sound recording cannot be made till the expiration of two > calendar years after the end of the year in which the recording was first > made. > 6 The person making the copy of the recording has to allow the owner or a > duly appointed agent to inspect all records and books of accounting > relating to such sound recording. > 7 Playing of recordings in an enclosed area or hall meant for residents as > part of the amenities provided. Or as part of a club or similar > organisation which is not established or conducting it for profit. > 8 When performance is given to non paying audience, or for the benefit of a > religious institution. > > Internet effects XI: Napster and beyond > > > > > One of the most talked about cases on the subject of ASP liability is the > one Rodney D. Ryder * Rodney D. Ryder * that pitted the Recording Industry > Association of America (RIAA) against Napster. Napster delivers an Internet > service that enables users to create their own private libraries of sound > recordings. These libraries are then made available to other users for > instantaneous distribution and copying. In March 2000, the RIAA, which > represents music labels, filed a complaint against Napster, alleging that > Napster's wilful conduct constitutes contributory and vicarious copyright > infringement. > > Napster moved for summary judgement. In May, the judge denied the motion, > holding that Napster was not an ISP because Napster did not "transmit, > route or provide connections for allegedly infringing material through its > system". (It actually provides the computer software application by which > the allegedly infringing activity can occur.) > > In June, the association asked the judge to grant an injunction to prevent > Napster, while the case was pending, from "facilitating or assisting others > in the copying, downloading, uploading, transmission or distribution of > copyrighted musical works". After a two-hour hearing on July 26, a federal > judge granted a temporary injunction, barring "digital music upstart" > Napster from trading music online, pending a trial. > > Napster immediately filed an appeal. On July 28 an appellate court granted > an emergency stay, ruling that Napster had "raised substantial questions of > first impression going to both the merits and the form of the injunction". > On October 2, both parties had the opportunity to address the arguments for > and against the injunction to the appeals court. > > Napster - the Indian position > > Under Indian law, the activities of Napster would not, on the face of it, > amount to direct copyright infringement as they are not: > reproducing the copyrighted works or storing them; > selling or hiring copyright works; > issuing copies of the works to the public; > performing the works in public or communicating them to the public; > making any translations or adaptations of the works. > > In the Garware Plastic & Polyester versus Telelink case, which pertained to > the showing of video films over a cable network, the Indian Supreme Court > held that such an action amounted to broadcasting or communicating material > to a section of the public. The court also held that such broadcasting of > the programme directly affected the earnings of the author and violated his > intellectual property rights, and stated that assisting in infringement > would amount to infringement of copyright. > > On the basis of this case, it may be possible for some to argue that > Napster facilitates unauthorised copying and, hence, should be liable for > contributory and vicarious infringement of copyright. But the Garware case > is different from the Napster affair since Napster is not 'broadcasting' > the music to any of its subscribers; it is merely providing software that > may be used to locate songs for copying over the net. The legal position in > India is as yet unclear and much would depend on the facts and > interpretation of these facts by the adjudicating judge. > > Indian law has a provision similar to the 'personal, non-commercial' fair > use exception set out in the US Home Recording Act, 1992. This is explained > in Section 52 of the Indian Copyright Act 1957, which holds that use of a > work will not amount to infringement of copyright > if it is private use; > for criticising or reviewing the musical work; > for making back-up copies; > or reporting the work in a newspaper or for judicial or legislative > proceedings. > > Therefore, it may be possible for Napster to run the argument of > non-infringement, since its subscribers are using the music only for > private use. But Napster would not be able to claim immunity under the > 'network service provider' provision of the Indian Information Technology > Act 2000. The provision stipulates that a network service provider can > claim immunity against 'third party information' only if it proves that the > contravention (in this case, copyright violation by the Napster > subscribers) was committed without its knowledge, or that it had exercised > due diligence to prevent any such offence or contravention. Napster is not > only aware of such > contravention, but is facilitating it by actively supplying the software > and service that makes such contravention possible. > > The outcome of this case could change the application of traditional > copyright laws. If the court finds that Napster's use of the copyrighted > material was a fair use, traditional protection of copyright law will be > worthless. Furthermore, a fair use decision may have an effect on one of > the major purposes behind copyright law, which is to allow artists to > restrict reproduction of the works they create. This protection gives > artists an incentive to create works. A decision allowing copyrighted works > to be easily downloaded from the Internet may cause artists to refrain from > creating works. Additionally, the RIAA complains that it will lose revenue > from CD sales. > > By the time the time research for this article was concluded, the infamous > Napster judgement became well known. The ruling against Napster is a > tremendous blow to lovers of the "freedom of the Internet", but it is vital > for the safeguarding of intellectual property worldwide. Even if Napster is > shut down, many more will emerge to take its place. This is a "menace" > that's virtually impossible to contain. > > > In 1957, cinematographic films got separate copyrights of their own, quite > apart from their components, such as music and story. Fresh amendments > followed, though the issue of piracy, a raging issue today, was not > adequately addressed until 1984. The Amending Act 65 of 1984 acknowledged > piracy as a "global problem" thanks to the rapid advances in technology. > The legislature finally woke up to realise the fact that it was not just > the copyright owners who suffered losses in the form of royalties, but also > the national exchequer by way of tax evasions. Here's how the Act justified > the amendment: > > "Recorded music and video cassettes of films and TV programmes are > reproduced, distributed and sold on a massive scale in many parts of the > world without any remuneration to the authors, artistes, publishers and > producers concerned. The emergence of new techniques of recordings, > fixation and reproduction of audio program, combined with the advent of > video technology have greatly helped the pirates. It is estimated that the > losses to the film producers and other owners of copyright amount to > several crores of rupees. The loss to Government in terms of tax evasion > also amounts to crores of rupees. In addition, because of the recent video > boom in the country, there are reports that uncertified video films are > being exhibited on a large scale. A large number of video parlours have > also sprung up all over the country and they exhibit such films recorded on > video tapes by charging admission fees from their clients. In view of these > circumstances, it is proposed to amend the Copyright Act, 1957, suitably to > combat effectively the piracy that is prevalent in the country." > > To add teeth to the legislation, punishment for copyright infringement was > enhanced to a maximum of three years and a minimum of six months, and a > fine up to Rs 2 lakh, and a minimum of Rs 50,000.The provisions now > specifically also addressed video films and computer programmes. Producers > of records and video films were now statutorily obliged to display > information such as the name of the copyright owner and year of first > publication etc. > > The law protects cinematographic films as a distinct work, giving the > producer of the film exclusive rights to make a copy of the film, including > a photograph of any image forming part thereof; and to sell or give on > hire, or offer for sale or hire, any copy of the film regardless of whether > such copy has been sold or given on hire on earlier occasions; to > communicate the film to the public. > > India is a member of the two major global copyright conventions, Berne > Convention and the Universal Copyright Convention. Hence, Indian works are > accorded copyright protection in all leading countries of the world. > Likewise, foreign works and works of foreign authors are accorded the same > protection in India as Indian works. > _________________________________________ reader-list: an open discussion > list on media and the city. Critiques & Collaborations > To subscribe: send an email to reader-list-request at sarai.net with subscribe > in the subject header. List archive: > From zamrooda at sarai.net Tue May 14 16:16:22 2002 From: zamrooda at sarai.net (zamrooda) Date: Tue, 14 May 2002 16:16:22 +0530 Subject: [Commons-law] Authors special Rights Message-ID: <02051416162203.00992@legal.sarai.kit> The Indian Copyright Act 1957, Section 57 Authors special rights : Apart from the right to Copyright the author of a work has the right to claim authorship of the work;and to restrain or claim damages for any distortion, mutilation,modification or other work in relation to the said work done before the expiration of the copyright term and or if it is prejudicial to his honor or reputation. Are software companies obliged to give credit to all its employees or contractors who have worked on a product or project, however small it may be? Can programmers who develop software for MNCs demand that they be named as co-authors of the programme when the product or project is finally delivered? The answer to these questions can throw the whole software industry into chaos with programmers demanding their 'rights'. Legal experts assert that the Indian Copyright Act (Amended) confers Special Rights (Section 57 of the Indian Copyright Act) on software programmers to demand that they be named as co-authors of a 'work' even though they were involved in merely writing a small module of a large programme. "A programmer has a legal right to get the company name him in the copyright. He or she also has the right to stop mutilation of source code-," says Mr Mustafa Safiyuddin solicitor, M&M Legal Ventures, Mumbai and a specialist in intellectual property rights in the infotech industry. Since software programme is listed under the literary work, the copyright comes into existence the minute the programme is written. The rights may be shared or rest .in one individual as is the circumstance. However, at no time does a software code or even a 'flow-chart' for that' matter lies unprotected. In some of the developed countries, these rights are termed as Moral Right and Integrity Right. In fact, Japan has made it mandatory for companies to name programmers as co-authors of a 'work' and extend royalty to them. However, the special rights under the Indian Copyright Act does not provide for any monetary benefit. Mr Safiyuddin says the special rights applies not only to employers of a company but also the outside contractors. This brings the attention on what will happen when all the employees start asserting their rights. Mr Safiyuddin says the only way out is to get the employee or the contractor waive his/her special right. rights applies not only to employees of a company but also the outside contractors who are developing part of the work. Mr N.L. Mitra of the National Law School of India University, says as per the General Agreement on Trade and Tariffs (GATT), India can change its Copyright Act to accommodate the Moral Rights and provide greater protection to Under the definition of the law, special rights cannot be assigned to authors. He reveals that India is considering defining Moral Rights. Today, moral rights are conferred on the 'author' (in this case, programmer) by the Special Rights. Another but can only be waived. "Even before a company embarks upon a project, it should get its employees to waive their rights if it does not wish to name them as co-authors," Mr Safiyuddin advises software development companies. This is just the tip of the iceberg. As India moves closer to the deadline to fulfill the GATT guidelines, fuller implications of copyright act with respect to the software industry is becoming manifest. AP-PTI Legal experts recommend a rigorous IPR management by corporates. "Right from day one, companies should document what it considers is of importance and confidential nature," says Mr Safiyuddin. Today, companies are struggling to find ways to stop its employees from misusing confidential information after leaving the company. The problem is holding information is ruled out as companies need to reveal information crucial to their business to aid the employees in executing the assignments. This has created a catch-22 situation in the industry. With attrition rate being as high as 40 per cent in the software industry, this issues has attained scary proportions. One solution is to organise their information more deftly. Know what is confidential and what is public, and then go about documenting the confidential information to bring it under the copyright protection law. Develop a system where employees are educated about their rights and their obligations in copyright protection. While joining work or during the taking up of assignments, the company should ensure that all its copyright requirements are met such as getting employees sign the Non-Disclosure Agreement document, and waiver of moral rights. Indian software industry is highly lax in copyright issues. Neither do companies realise its full rights nor are the employees aware of their rights. This has apparently led to a severe IPR erosion. Analysts point out that copyright has not got as much mindshare and exposure as patents even though the latter is seldom extended to software programmes in India. Legal experts say since copyright is universally recognised, Indian companies will have to secure their IPRs before looking at acquiring patents. ------------------------------------------------------- From zamrooda at sarai.net Tue May 14 16:17:58 2002 From: zamrooda at sarai.net (zamrooda) Date: Tue, 14 May 2002 16:17:58 +0530 Subject: [Commons-law] video voyeurism Message-ID: <02051416175804.00992@legal.sarai.kit> Melissa traded keys with her neighbor, expecting her old childhood friend to keep an eye on the home when her family was away and use them only in an emergency. Instead, she and authorities contend, Steven Glover secretly installed a video camera in the attic above her and her husband's bedroom and later moved the camera into the bathroom. Prosecutors say Glover admitted to the taping, but he can't be prosecuted for it because Louisiana has no law against video voyeurism. It's a situation that some states, including Louisiana, are now beginning to address. "If I'm a Peeping Tom and look into your bedroom, I can be prosecuted," said Jerry Jones, the prosecutor in the Glover case. "If I put a video camera to do the same thing and I do not record sound, I am committing no crime." From zamrooda at sarai.net Tue May 14 16:14:21 2002 From: zamrooda at sarai.net (zamrooda) Date: Tue, 14 May 2002 16:14:21 +0530 Subject: [Commons-law] video piracy case Message-ID: <02051416142101.00992@legal.sarai.kit> The Indian Copyright Act : A video film cannot be published until the following particulars are displayed on the video cassette or other container thereof: 1 if the work is a cinematographic film required to be certified for exhibition under the provisions of the Cinematograph Act, 1952, a copy of the certificate granted by the Board of Film Certification under section 5A of the Act in respect of such work. 2 The name and address of the person who has made the video film and a declaration by him that he has obtained the necessary license or consent from the owner of the copyright in such work for making such video film and the name and address of the owner of the copyright in such work. The Supreme Court in a significant judgement on "infringement of copyright' in a "video piracy case" convicted and sentenced an owner of a video library in Tenali (Andhra Pradesh) to pay a fine of Rs. 1 0,000 for offence under Section 68 A of the Copyright Act read with Section 52 A of the Act. According to the findings of the courts below (namely, the "trial court' and the District and Sessions Court, Guntur) ? N. Venkataramanan (respondent-owner of the video library), was exhibiting the cinematograph films in his "Video City" for hire or sale of the cassettes to the public which did not contain the particulars envisaged under Section 32 A of the Act, the Bench noted. Section 52A deals with particulars like, a copy of the certificate granted by the Board of Film Certification under section 5A of the Cinematograph Act in the case of a 'cinematograph film" (including a "video tape"). the name and address of the person who has made the video film and a "declaration" that he had obtained necessary licence or consent from the owner of the copyright in such work for making such video film etc and the name and address of the owner of the copyright of such work ? to be included in "sound recordings" and 'video films". Section 68A provides penalty for contravention of Section 52A of the Act. The Bench consisting of Mr. justice K. Ramaswamy and Mr. Justice G B Pattanaik, set aside a judgement of the Andhra Pradesh High Court acquitting the respondent. The High Court held that unless the owner (of a video film or video cassette etc) was identified and gave evidence that he had a copyright of the video films concerned, there was no offence made out under relevant provisions of the Copyright Act. The apex court, on an analysis of the provisions and scheme of the Copyright Act, as amended, in 1954, noted that the amending provisions were introduced in the Act "to prevent piracy which became a global problem due to rapid advances in technology and to punish the pirates" in the interest of protecting copyrights. The Bench, in allowing an appeal from the State against the judgement of the High Court observed that on the facts and circumstances of the case "it would be unnecessary for the prosecution to track on and trace out the owner of the copyright to come and adduce evidence of infringement of copyright." The absence thereof does not constitute lack of essential element of infringement of copyright and "if the particulars on video films etc as mandated under Section 52A do not find place, it would be infringement of copyright," the Bench pointed out. The Court in imposing a sentence of fine of Rs. 10,000 on the respondent, modified a sentence of imprisonment of six months and imposition of fine of Rs 3000 as awarded first, by the trial court and later, by the District and Sessions Court (first appellate court), In default (of payment of sentence of fine of Rs, 10,000), the respondent should undergo rigorous imprisonment for three months, the Bench directed and ordered that "even if he does not pay the fine and undergoes the sentence, the State is at liberty to recover the fine from the respondent." _________________________________________ reader-list: an open discussion list on media and the city. Critiques & Collaborations To subscribe: send an email to reader-list-request at sarai.net with subscribe in the subject header. List archive: ------------------------------------------------------- From zamrooda at sarai.net Wed May 15 10:05:39 2002 From: zamrooda at sarai.net (zamrooda) Date: Wed, 15 May 2002 10:05:39 +0530 Subject: [Commons-law] legal infobook Message-ID: <02051510053902.00647@legal.sarai.kit> Dear All, sarai is planning to bring out a legal infobook by the end of July 2002. For this we will like all help that is possible. The infobook will be a part of the sarai website along with being availabe in hard copy. Here is the plan: We first thematise the book....around topics that are both general interests and specific Sarai interest. Topics could be Human rights (it gives a huge sweep), Gay-lesbian rights, General legal info, Public domain debates within law, Media laws (specific details on copyright), Right to Information, Legal help, Databases on law, others (we all will think of more). The book will essentially provide resources and links (Here online and offline) to these thematics. Looking forward to contributions and suggestions. A peep into the work that has begun: http://www.supremecourtonline.com  site for the referances on the judgements of the supreme court. http://www.nic.in/lawmin/Legis.htm#CHRONOLOGICAL  chronoligical list of the various Indian Acts. http://indiacode.nic.in/incodis/acts.html  Alphabetical List - Central Acts http://indiacode.nic.in INDIA CODE INFORMATION SYSTEM (INCODIS) containing all the STATUTES of INDIA enacted by the PARLIAMENT http://indianpatents.org/  Free Online Access to First Indian Patent Searchable Database http://www.naukri.com/lls/tm/caselaw/nl.htm i mportant decisions on Intellectual Prperty Rights. http://www.scatindia.com/contactpage.htm Satellite and Cable TV: Indias largest magazine exclusively for satell ------------------------------------------------------- From lawrenceliang at vsnl.net Thu May 16 11:36:48 2002 From: lawrenceliang at vsnl.net (Lawrence Liang) Date: Thu, 16 May 2002 11:36:48 +0530 Subject: [Commons-law] More stuff on employee rights and software Message-ID: <4.3.0.20020516112834.00bc2d80@mail.vsnl.net> Hi just to add some stuff on Zamrooda's posting on employee rights and whether they can be considered a part of the moral rights of authors. I am sending a detailed article which addresses various issues arising out of employees rights in the context of pre invention agreements. While it would be desirable to have employees credited as authors of the software that they help program, the current legal position in India does not allow for that. Most pre employment contracts vigorously ensure that employees contract out of any IP rights that they may have and all the work that they do are then considered to be work done in the course of employment ( in the context of full time employees) or works for hire contracts ( in the case of outsourced work). The interesting argument made in this essay is the manner in which the personality interests of employees are dissolved in favour of the fiction of the corporation that employs these employees. Lawrence A Penny for Their Thoughts: Employee-Inventors, Preinvention Assignment Agreements, Property, and Personhood Steven Cherensky * * B.S. 1980, The Johns Hopkins University; M.S. 1982, University of Michigan, Ann Arbor; J.D. candidate 1993, Boalt hall School of law, University of California, Berkeley. I would like to thank Professor Rachel Moran for her assistance and encouragement. This Comment benefited greatly from her generosity, insight, and energy. Thanks also to Professor Peter Menell for his significant contributions to earlier drafts. Special thanks to jodie Carter, Tom Freedman, Gary Gold, my editors Stephanie Siegel, Ann Kim, and Jeff Rake, and my friends and colleagues on the California Law Review. Finally, I wish to thank my parents, Carl and Gilda Cherensky, for their love and support. SUMMARY: ... Most technologists at American corporation work under preinvention assignment agreements whereby the employee-inventor promises to assign to the employer all interests in future patentable inventions that arise from the employment relationship. ... These aspects of intellectual property must be considered as part of any proposed resolution to preinvention assignment agreement disputes. ... The inventor as defined by current patent law is an underinclusive indicium of personality, however, because other entities, such as an assistant, may also have a personality stake in an invention. ... Third and most importantly, the personality stake that should be protected is the extent to which both the process and the physical embodiment of the invention are constitutive of the inventor's personhood. ... As discussed above, patent law already recognizes the personhood interests of inventors in two ways: by requiring the identification of the human creators responsible for the invention on the patent application, and by notation of the inventor on the issued patent. ... If an employee created an invention during the course of employment that was patented in the employee's name and assigned to the employer under a preinvention assignment agreement, the inventor could enjoy continuing access to the invention through the availability of an affirmative "personhood" or "inventor's" defense to patent infringement actions. ... TEXT: [*597] Most technologists at American corporation work under preinvention assignment agreements whereby the employee-inventor promises to assign to the employer all interests in future patentable inventions that arise from the employment relationship. These agreements are typically upheld by courts. This Comment suggests that employee-inventors should retain greater property interests in their inventions. The author argues that the rubrics under which preinvention assignment agreements have been analyzed in the past--patent and contract doctrine and traditional property theories--fail to address the complex employee-employer and inventor-invention relationships implicit in organized invention. As an alternative framework for resolving preinvention assignment conflicts, the author proposes the application of personhood theory, particularly the market-inalienability concept forwarded by Margaret Radin. This approach suggests that an employee-inventor's elationship with her work can be justifiably constitutive of her personhood and that preinvention assignment agreements can interfere with this relationship. The Comment discusses specific proposals that preserve the personhood interests of employee-inventors without unduly impairing the economic interests of employer-corporations. I Introduction If a man write a better book, preach a better sermon, or make a better mousetrap than his neighbour, though he build his house in the woods, the world will make a beaten path to his door. - Ralph Waldo Emerson n1 [*598] The world is probably beating down the wrong path in search of the better mousetrap. For today, that mousetrap was likely invented not in a house in the woods, but rather in a corporate research and development facility. And it is also likely that the employee who invented that better mousetrap agreed, before it was even invented, to assign her entire interest in the invention to her employer. Such an agreement is known as a preinvention assignment agreement. n2 This Comment focuses on what are referred to here as "preinventions." Preinventions are inventions n3 that have not yet been (and may never be) conceived at the time the parties agree to assign potential future patent rights. Whereas inventions are tangible, identifiable things, preinventions are intangible expectancies. Although much of what is said here will apply to inventions as well as preinventions, the goal of this Comment is to better understand and help to resolve the conflicting interests of employee-inventors n4 and their employers in preinvention assignment agreements. Preinvention assignment agreements have presented "ancient but eternal" n5 problems of contract and patent law for courts and commentators. These problems are different from those raised by assignment agreements for existing inventions. While assignment of rights in existing inventions commodify and alienate the tangible invention, assignment of rights in preinventions commodify and alienate the inventive process. Consequently, parties who bargain for interests in existing inventions know or should know exactly what they are getting and giving up. Parties who bargain for preinventions have no such knowledge. Both employee-inventors and their employers have strong proprietary interests in the inventions that result from the employment relationship. The employee-inventors' interest may be based on their investment of personal capital: training and education, personality, individual genius, extraordinary effort, creative spark, and even divine revelation. The employers' interest, in contrast, may be based on the financial capital invested in creating a work environment conducive, if not essential, to invention: plant and equipment, employee salaries, management and oversight, and opportunities for collegial exchange. For much of this century, courts, commentators, and legislators [*599] have tried to balance the proprietary interests of employee-inventors and their employers in preinvention rights. n6 The courts have developed a comprehensive set of common law rules to allocate preinvention rights; however, the pervasiveness of private agreements allocating these rights between employee-inventors and their employers has made these rules all but irrelevant. Today, virtually all technical employees agree, as a condition of employment, to assign to the employer all rights to inventions conceived by the employee while at work, or in subject matters related to work, or while using any resources of the employer. n7 These preinvention assignment agreements are generally upheld by courts. n8 Courts may be enforcing preinvention assignment agreements in part because they feel such agreements fill a gap in patent law. In its current state, patent law (or, more accurately, instrumental arguments about granting property rights in order to encourage invention) cannot provide a normative solution to preinvention assignment disputes. The business and nature of invention have changed dramatically since the first Patent Act was enacted in 1790, but Congress and the courts have not adequately adapted the meaning of invention to reflect these changes. Today's Patent Code n9 retains the eighteenth-century paradigm of the solitary, [*600] heroic inventor and fails to take into account the modern paradigm of the team as inventor. Thus, existing patent laws justify granting property rights to the inventor-entity, n10 but they do not help in determining whether the employee-inventor or employer should be entitled to such rights. Similarly, courts may enforce preinvention assignment agreements in order to avoid difficult contract issues such as adhesion and unconscionability, adequacy of consideration, freedom of contract, and structural difficulties implicit in ex ante bargaining for speculative rights. For example, employers almost universally offer preinvention assignment agreements on a take-it-or-leave-it basis. Given the employer's advantages in bargaining power, n11 these preinvention assignment agreements raise thorny questions of contract law. By granting blanket enforcement of such agreements, courts avoid these questions, thereby obscuring and devaluing the contributions of individuals. A word on the methodological organization of this Comment is appropriate here before the substantive organization is discussed. The use of preinvention assignment agreements to appropriate the future inventions of employee-inventors presents courts with a difficult problem - difficult not in the sense of determining what the positive law is, n12 but rather in reconciling patent and contract doctrine with the complex relationships between, and contributions of, employee-inventors and their employers. n13 After establishing the limitations of doctrine, this Comment will proceed to apply traditional theories of property law to the problem. Like doctrine, however, traditional theory is not up to the task of resolving preinvention assignment disputes. Thus, an alternative theoretical approach - personhood theory - will be investigated as a potentially powerful tool for analyzing preinvention assignment disputes. The approach taken here differs from many prior studies of preinvention assignment agreements by focusing on the underlying theoretical property issues rather than on issues of patent or contract law. General property law theory, however, is itself not without problems in analyzing preinvention assignment disputes. Most theories of property law suffer from the same deficiencies as does patent law when applied to rights in preinventions; that is, most traditional justifications of private property focus on the rights of claimholders as against society and do not [*601] resolve disputes between arguably legitimate claimholders. The focus here will be on examining claims to property interests made by employee-inventors and employers. It will be argued that each has significant, cognizable proprietary interests in preinventions; that these interests are different interests based on different property justifications; and that the property rights in preinventions should be disaggregated and allocated between employee-inventor and employer according to the interests of each. This Comment concentrates on inventorship and the allocation of property rights in patentable inventions in the corporate workplace. n14 Although the discussion is largely relevant to invention in other organizational environments, such as university and government laboratories, and to other forms of innovation and intellectual property, such as copyrights and mask works, the focus is not on these other areas. Where useful, distinctions from and comparisons to these other areas will be made. The substantive organization of the Comment follows the methodological organization outlined above. Part II discusses the limitations of patent and contract doctrine as applied to preinvention assignment agreements. Because doctrine fails to deal adequately with the problems posed by these agreements, Part III examines traditional property law theory as a potential dispositive source of legal authority. Traditional property justifications, it will be shown, provide little guidance for resolving preinvention assignment disputes. Part IV presents an alternative property approach for the resolution of preinvention assignment agreement disputes: personhood theory. Personhood theory suggests that certain rights of employee-inventors in their inventions be non-appropriable when those rights are justifiably constitutive of the inventor's personhood. This Comment explores two consequences of applying personhood theory to the problem of preinvention assignment agreements. First, the employee-inventor should retain rights in her invention only when she can demonstrate a justifiable personhood interest in the invention; otherwise, the employer should retain all interests in the invention, including credit as the inventor-entity. Thus, corporate inventorship is appropriate under certain conditions. Second, when the employee-inventor can demonstrate a justifiable personhood interest in her invention, this personhood interest should be protected by removing the protected interest from the market. [*602] II The Limitations of Doctrine: The Employee-Inventor and Preinvention Assignment Agreements Under Patent and Contract Law Most inventions today result from the efforts of employee-inventors. n15 The Patent Code does not address the issue of inventions arising out of employment relationships, but the courts have devised a common law allocation of patent rights between employee-inventor and employer. Most corporations, however, perhaps uncomfortable with the level of uncertainty that exists in the common law scheme, require their technical employees (and often all employees) to sign preinvention assignment agreements. This Part explores the legal context of these preinvention assignments. A. Patents: Inventorship and Ownership The term "inventorship" defies precise definition. The Constitution grants Congress the power "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," n16 but does not elaborate on what is meant by "inventors" or "discoveries." Although the Supreme Court has often ruled on the meaning of authorship, n17 it has had little to say concerning the constitutional meaning of inventorship. n18 Patent law is no clearer on the subject. Under common law, inventorship refers to the process of conception and reduction to practice of a patentable invention. n19 As William Bennett notes, an inventor is [*603] simply "the agency through which invention is effected." n20 Although this definition is straightforward to apply in the simple case of an individual, self-employed inventor, it becomes murky in cases where the invention arises from an employment relationship or where multiple inventors are involved. The Patent Code does little to ameliorate these difficulties. According to the Code, the inventor of a "process, machine, manufacture, or composition of matter" n21 may obtain a patent provided that the invention is "useful," n22 "novel," n23 and "non-obvious," n24 the subject matter is patentable, n25 and the patentee complies with certain procedural requirements. n26 A patent, once issued, grants the patent holder the right "to exclude others from making, using, or selling the invention throughout the United States" n27 for a period of years. n28 The patent, however, does not grant the patent holder the right to exploit the invention itself, n29 as such right may be blocked by another patent. n30 Although the Patent Code defines precisely what constitutes a patentable invention, it is not as precise in defining the term "inventor." One qualification is clearly required, however: only "natural" (that is, human) persons may qualify as inventors. Corporations and other non-natural persons cannot be inventors under the Patent Code. n31 Neither the legislative history nor commentators have articulated a clear justification for denying the fiction of the corporate person. n32 [*604] Establishing inventorship represents only the starting point for determining patent right ownership. Inventorship and patent ownership are distinct concepts under patent law. Inventorship is significant primarily for determining the patentability of claims and the procedural sufficiency of a patent application. n33 Patent ownership, by contrast, carries with it the temporary, exclusive right to make, use, or sell an invention. Thus, "inventorship" connotes a "power"-constituted n34 relationship between individuals (inventors and non-inventors) with respect to inventions, whereas "patent ownership" connotes a "claim-right"-constituted n35 relationship between individuals (patent holders and non-patent holders) with respect to patents. There is no necessary legal relationship between inventor and patent holder for any given invention. Although the inventor is the presumptive owner of property rights to patents issued for her invention, these rights are transferable by assignment. Patents have the attributes of personal property, n36 and patents and patent applications may be assigned by written instrument. n37 In fact, patents granted to inventors who have assigned their interest may be issued directly to the assignee, n38 which may be any [*605] legal entity, including a corporation. n39 B. Invention Paradigms and Metaphors: From "Hero-Inventor" to "Team-as-Hero" n40 and Beyond The current Patent Code is based on the eighteenth-century view of invention - a view centered on a "hero-inventor" model. Eli Whitney, Alexander Graham Bell, and Thomas Edison, for example, represent familiar images of "hero-inventors." n41 Today, "hero-inventors" are less common. n42 Although the disappearance of the "hero-inventor" may reflect, in part, changes in societal values, n43 it reflects more significantly a shift from individual to team invention. The late-twentieth-century analogue [*606] to the "hero-inventor" is the "team-as-hero;" that is, invention resulting from the combined, coordinated efforts of a group rather than from the heroic efforts of an individual. This Section will briefly describe some of the dominant characteristics of eighteenth- and twentieth-century invention and will discuss aspects of the modern inventive process relevant to preinvention assignment disputes. n44 This Section will show that, while the "hero-inventor" paradigm inaccurately explains contemporary invention by devaluing the contributions of teams, support staffs, and facilities, its widely accepted replacement - the "team-as-hero" model - inaccurately reflects contemporary invention by devaluing individual contributions. The term "inventive process" is itself inappropriate to the extent that it implies there exists some formula of how to invent. There is, of course, no such formula. Nevertheless, there are some common characteristics among the work environments in which much of today's invention takes place. A description of these common characteristics is what is referred to here as an "inventorship paradigm." n45 Certainly, inventorship paradigms will vary among industries and technologies, among firm sizes, and even from inventor-entity to inventor-entity. In fact, as will be argued, the tendency of courts, legislators, corporations, and indeed, individual inventors to subscribe to a single (albeit different) inventorship paradigm lies at the root of preinvention assignment agreement conflicts. The patent system, as originally conceived, was intended to encourage invention in a regime of individual inventors that differs markedly from today's workplace. "When this country's patent system was adopted ... it was the independent, the "lone' inventor who created new ideas through the exercise of his inventive faculties." n46 Eighteenth-century [*607] invention was characterized by the individual efforts of non-professional, unspecialized, untrained inventors who worked primarily in their "house in the woods," as Emerson would say, n47 or on their farms. n48 These independent inventors had little need for capital beyond living expenses since they did not hire employees and generally used readily available materials in their work. Eli Whitney's invention of the cotton gin in many ways typifies late- eighteenth-century invention. n49 Whitney did not study to be an inventor; indeed, such an education would have been unavailable had he desired it. n50 While a guest at a South Carolina plantation, he heard neighboring planters discuss the difficulty of cleaning the local upland cotton of its seeds and the importance to the region of an improved cleaning machine. Whitney was persuaded to try his hand at a solution: Whitney had never seen a cotton boll and had scarcely listened to the talk around him. But when his hostess proposed, albeit without undue urging, that he try to devise a machine, he pursued her suggestion .... ... A few days later he "involuntarily happened to be thinking on the subject and struck out a plan of a machine ...." n51 That machine, of course, was the cotton gin. Whitney built his first model from wood, wire, and other materials that were readily available on the plantation. n52 Invention has changed dramatically in the 200 years since Whitney "struck out a plan" of his machine. Whitney's development of the cotton [*608] gin is the inventorship paradigm envisioned by the drafters of the first Patent Act: the ad hoc problem-solving of the individual, generalist "hero-inventor." Organized invention was virtually unheard of at this time. n53 Although the work of independent inventors remains important, n54 most economically significant inventions today arise out of organizational environments. n55 Thus, this Comment proceeds from the assumption that the most important changes in inventorship paradigms over the last two centuries have been due to the appearance and growth of industrial laboratories and the professionalization of invention. Nineteenth-century firms, were, by and large, passive consumers of technology rather than active participants in the inventive process. n56 Inventors were not retained by firms as regular employees to develop needed products or processes - indeed, firms made little or no effort to direct independent inventors' efforts towards their specific needs. n57 Most firms interested in acquiring improvements adhered to this passive approach, because they considered invention to be a product of individual inspiration, which could be guided in only the most general fashion. It was up to the inventors themselves to direct their efforts towards particular markets in the hope they might gain fame and fortune. n58 Firms began to abandon this ad hoc approach to invention in the late-nineteenth century and sought to exert some control over invention through the establishment of industrial laboratories. Early examples of influential industrial laboratories include Thomas Edison's "invention laboratory" established in Menlo Park, New Jersey, in 1876, n59 the Eastman Kodak Industrial Research Laboratory established [*609] in Rochester, New York, in 1912, n60 and the laboratories at Bell Telephone and DuPont. n61 There are many reasons for the rise of industrial laboratories at the beginning of the twentieth century, n62 but perhaps the primary reason was the desire to improve efficiency and focus by bringing invention and innovation within the same firm. n63 Innovation has been described as "the search for, and the discovery, development, improvement, and adoption of new processes, new products, and new organizational structures and procedures." n64 Invention is a much narrower concept, encompassing merely the "discovery" part of innovation. n65 Innovation is an inherently risky and cumulative activity, [*610] often turning up "dry holes" and "blind alleys," n66 while requiring the inventor to "build on what went before." n67 Moreover, innovation is complex, requires contributions from many disciplines, and can be very expensive. Industrial laboratories are intended to address these aspects of innovation. According to one commentator, "Since innovation is so risky, so complex, and so expensive, companies strive to rationalize it - to build "innovation factories.' That's the Holy Grail that launched Bell Labs, GE Labs, and the very idea of industrial research in America." n68 These "innovation factories" are designed to provide a fertile environment for invention and eliminate the distractions faced by the independent inventor. n69 A development that paralleled and helped to facilitate the rise of the industrial laboratory was the professionalization of invention. n70 At about the time Edison established his "invention factory," science and invention became linked as never before. n71 This linking of science and invention resulted in the development of the modern engineering disciplines and modern technical education. n72 The formalization of the engineering [*611] disciplines, in turn, resulted in the professionalization of invention: And what has engineering done for the inventor? Through the development and application of scientific principles engineering has not only supplied necessary controls for design, construction, and operation, but it has in addition provided the great background of knowledge for use in further invention. In earlier times the inventor was an individualist. Today he is most likely to work in groups. The time has passed when it is easy for the lawyer or the doctor to come forth with a fundamental invention. n73 The professionalization of invention is, in some respects, a self-perpetuating condition that has contributed both to the decline of the independent inventor and to the routinization of invention. n74 Today, virtually all would-be inventors will complete some minimum standard of technical training. It is debatable whether scientific training is now required for invention or whether that is simply a perception entertained by firms. n75 Whichever the case, at least an undergraduate degree in science or engineering is considered generally to be a prerequisite for many types of inventive employment. n76 By requiring that technical employees come from similar educational backgrounds, the professionalization of invention has served to limit the intellectual, n77 gender, n78 and racial [*612] diversity n79 of inventors. The rise of the industrial laboratory and the professionalization of invention may have come at great financial and creative cost. Prospective inventors must make a significant financial investment to attain the level of education required for today's inventive careers. This investment may cause individuals to become risk-averse, making the secure salaries of industrial laboratories even more enticing. Furthermore, the standard training received at most universities emphasizes tools and techniques that are beyond the financial means of most individuals. Thus, professionalism can undermine entrepreneurship, which lies at the heart of the traditional concept of patent law. As one commentator has asked: Since invention has traditionally been so closely bound up with independence and since, even in this century, so many significant innovations have seen the light of day in industrial laboratories, it may be asked whether the growing importance of the industrial research laboratory is an unmixed blessing. To put it in terms of policy, is the trend one which should be consciously encouraged? Or is it one to which we should seek to set limits by trying to make easier the lot of the inventor who prefers to choose a path for himself? n80 The development of institutional research and the professionalization of invention reflected general societal trends toward specialization [*613] and the division of labor, as connoted by the phrase "invention factory." It was believed that the economies of mass production and division of labor that Adam Smith documented in the production of pins n81 could be applied to the production of inventions. n82 Inventions are not pins, however, and industrial laboratories are not necessarily efficient producers of inventions. n83 Moreover, the specialization of labor encouraged, if not demanded, by institutional research can work to the disadvantage of individual employee-inventors. While firms can spread technology risks by acquiring a diversified portfolio of technologically trained employee-inventors, it is impracticable for individual employee-inventors to acquire a diversified portfolio of technology- or firm-specific skills. n84 Thus, the "team-as-hero" paradigm of invention has both positive and negative implications. The benefit of "team-as-hero" inventing is that through specialization and division of labor, inventions that might never have resulted from individual, independent, haphazard efforts can be realized. A darker side is the personal cost to the individual inventor, as described above. There may be societal costs as well. Revolutionary inventions appear to occur less frequently in large institutional environments. n85 Perhaps this is due to the numbing effects of the professionalization of invention or to the exigencies of "rational" firm goal-setting. Another possibility, though, is that the organizational environments, complete with preinvention assignment agreements that remove individual incentives (and, as will be argued in Part IV, alienate the inventor's personhood interests) constitute structural impediments to truly creative [*614] invention. These impediments reflect a larger cost associated with the popular perception of "team-as-hero" inventing: the societal devaluation of inventors and inventing. It is difficult for the general public, legislatures, and courts to appreciate the efforts of those inventors who may be perceived as "corporate tools" and more difficult still to appreciate the efforts of individual members of corporate teams. n86 The preceding pages may paint a rather depressing picture of corporate drones marching blindly but methodically through corporate laboratories squelching individual invention and creativity - "crowds of people milling around with an air of fictitious activity, behind a facade of massive mediocrity." n87 But this scenario is clearly not representative. While independent invention may be on the decline, individual invention is still thriving. Individuals invent, even in large organizations. n88 In fact, much of what teams do at industrial laboratories can be characterized more as innovation or development than invention; that is, corporate laboratories and teams "rationalize" innovation, not invention. The act of invention is still described by many commentators as essentially an individual act, even within large corporate laboratories. n89 Consider the comments of a CEO of a large corporation known for innovation: The creative process usually starts with a brilliant idea .... .... ... Innovation is an emotional experience.... The desire to innovate comes partly from the genes; you're born with it. It also comes from your early life, your education, the kind of encouragement [*615] you got to be creative and original. Innovative people come in all shapes and sizes and in all personality types. Some people are happiest when they're wrestling with a problem; I'm one of those. Others go into a green funk. They're miserable and depressed until they have the answer. But you can't have a good technologist who's not emotionally involved in the work. You can't have a good technologist who doesn't wake up in the middle of the night searching for answers. You can't have a good technologist who doesn't come into the lab eager to see the results of last night's experiment. n90 The danger, then, of the "team-as-hero" paradigm is that it is applied overinclusively; that is, those outside the team (including courts) discount the contribution of individuals and focus solely on the team. The challenge faced by Patent Code revisers is thus to develop a concept of inventorship which recognizes both organizational and individual inventors. This Section has discussed how the inventorship paradigm upon which the Patent Code was premised - "hero-as-inventor" - is, in many respects, not the inventorship paradigm under which invention proceeds today. Similarly, the inventorship paradigm that has largely supplanted the eighteenth-century paradigm - "team-as-hero" - does not accurately describe much of today's invention. Neither paradigm nor, for that matter, the Patent Code or the courts recognize the special problems of the employee-inventor. Perhaps the problem is that "hero-inventor" and "team-as-hero" are more metaphor than paradigm. That is, "heroes" and "teams" are merely figures of speech that suggest the two poles of inventorship rather than models that accurately describe inventorship in any particular instance. If this is true, then it is important that the law not rely on one or the other as a rigid paradigm, but rather be flexible enough to encompass the spectrum of inventorship that exists between the poles. Despite the problems with using the term "inventorship paradigm," it continues to be useful when employed as a shorthand means of expressing changing conceptions and meanings of inventorship. As used in this Comment, then, "inventorship paradigm" will have a very broad meaning, encompassing both model and metaphor. This Section has discussed some of the many changes that have occurred over the last 200 years in inventorship and in the public and legal perception of inventorship, and how patent law has remained relatively [*616] static during this time. n91 The next Section will document how the common law has played a "gap-filling" role n92 by resolving employee-inventor disputes in light of the disjunction between changing inventorship paradigms and the relatively unchanging patent law. The next Section will also discuss how private agreements between employee-inventors and their employers have largely supplanted the common law formulation. C. The Legal Status of Employee-Inventors 1. The Common Law Absent an express agreement between the parties, courts use equitable common law principles to allocate property rights in inventions between employee-inventors and employers based on the nature of the employment relationship, the subject matter of the invention, and the resource contributions of the employer. The common law formulation n93 distinguishes among three types of employment: (1) specific inventive employment, which is employment for the express purpose of creating employer-specified inventions; (2) general inventive employment, which is typically referred to today as "research," "design," or "development" employment; n94 and (3) general employment. Specific inventions are the [*617] property of the employer. n95 General inventions - which include inventions of specifically inventive employees that are not employer-specified, inventions of generally inventive employees, and inventions of general employees - are the property of the employee-inventor, though employers have a "shop-right" or non-exclusive right to practice the invention if it is developed on company time or though the use of company resources. n96 Free inventions, which include all other inventions, are the exclusive property of employee-inventors. n97 Today, the operational significance of the common law allocation of property rights between employee-inventor and employer is slight due to the prevalence of express preinvention assignment agreements, which are essentially private agreements not to abide by the common law or default allocation. Nevertheless, the common law rules are instructive in that they provide an indication of norms, policies, and usages as understood by the courts over a period of time. n98 2. Preinvention Assignment Agreements The common law approach applies equitable principles to the factual circumstances of individual cases. Most employers are unwilling to rely on the uncertainty n99 and perceived equities n100 of the common law. Thus, most employers make preinvention assignment agreements a condition of employment. n101 These agreements supersede the common law [*618] allocation rules. This Comment argues that, based on property law principles, preinvention assignment agreements should not be enforced in their entirety. Such agreements appropriate from the employee-inventor that which should be inalienable. n102 This property analysis makes the contractual analysis to some extent irrelevant. n103 However, because the solution proposed by this Comment will leave much of the attempted preinvention transfer intact, and because courts rely so heavily upon a contractual analysis in resolving preinvention assignment disputes, this Section will address some of the salient points of preinvention assignment agreements qua contracts. Contrary to the position generally taken by the courts, this Section will argue that these agreements are problematic under a contract law analysis. The scope of most preinvention assignment agreements is broad. n104 Some agreements require employee-inventors to assign all inventions [*619] made during the employment term, n105 while others reach only those inventions related to the employer's business or research interests or made with the assistance of the employer's resources. In some cases, these contracts may extend to periods prior to or subsequent to the employment period. As a general rule, courts uphold preinvention assignment agreements as valid and enforceable contracts. n106 The agreements may not be enforced, however, if the employer overreaches, for example, by attempting to appropriate inventions unrelated in subject matter to the employment relationship or inventions conceived long after the termination of the employment relationship. n107 A threshold question in determining the validity of a preinvention assignment agreement is whether federal or state law applies. Although patents are creatures of federal law, state law is not preempted simply because a patent is at issue. n108 For example, federal statutory law, which has exclusive control over the manner in which patents may be assigned, n109 contains no provision for the assignment of patents for inventions not yet made. n110 Thus, agreements to assign patents have no federal statutory basis. n111 Consequently, "state law, rather than federal [*620] patent law, generally governs ownership rights in patentable inventions, including the rights as between an employer and employee." n112 Courts generally enforce preinvention assignment agreements on the basis of freedom-of-contract principles. n113 Of course, "freedom of contract" is really free only if there is parity of bargaining power between the [*621] contracting parties. n114 This parity may be lacking between employee-inventors and employers. Today, the majority of employment contracts are offered on a "take-it-or-leave-it" basis. n115 The process by which an employee-inventor agrees to assign her preinvention rights to her employer is not one of hard arms-length bargaining, "but rather of a fly and flypaper." n116 As a result, most commentators agree that freedom of contract does not generally exist in the employee-inventor context; that is, preinvention assignment agreements are contracts of adhesion. n117 The fact that a contract is adhesive does not, however, end the court's inquiry. As one court recently noted in a preinvention assignment agreement context: The determination that a contract is adhesive is "only the beginning and not the end of the analysis insofar as enforceability of its terms is concerned." A contract of adhesion can be fully enforced according to its terms unless some other factors exist, such as the oppressive or "unconscionable" provision. Unconscionability includes " "... an absence of meaningful choice on the part of one of the parties together with contract terms which are unreasonably favorable to the other party.'" n118 There are two types of unconscionability: substantive and procedural. n119 [*622] Substantive unconscionability refers to grossly one-sided and oppressive contractual terms; n120 procedural unconscionability refers to the unfair process through which an agreement is reached. n121 Preinvention assignment agreements present arguable cases of both types of unconscionability. A claim of substantive unconscionability must be based on the absence of meaningful choice together with unreasonable contract terms. In the preinvention assignment context, absence of meaningful choice may exist because such agreements are used on an industry-wide basis. n122 A claim of procedural unconscionability must be based on unfair surprise together, again, with unreasonable contract terms. The unfair surprise in the preinvention assignment context may arise if a valuable invention comes out of the employment relationship even though such an event seemed highly unlikely at the time of contracting. n123 Many employee-inventors may be quite surprised to find out that they have no rights to their inventions, particularly when the inventions are unrelated to the employer's business or not developed on company time. The preinvention assignment agreement thus eviscerates a basic expectation of the employee-inventor. In the preinvention assignment context, both substantive and procedural unconscionability rest ultimately on the reasonableness of the agreement's terms. n124 Here, reasonableness is determined by analyzing the adequacy of consideration. This analysis is particularly difficult in the preinvention context because the parties are bargaining for something which does not exist and which may never exist, and thus is not easy for the parties to evaluate. Ex ante bargaining for patent rights in preinventions is difficult due to their speculative nature; the likelihood that any given employee-inventor will invent a truly valuable invention sometime in the future is exceedingly [*623] small. n125 Neither employee-inventor nor employer is likely to evaluate properly the worth of a given employee-inventor's preinvention rights ex ante. The employee-inventor will have little basis for making a realistic estimate of the likelihood of invention or of any such invention's value. The employer, particularly the large employer, may have an informational advantage over employee-inventors based on the employer's ability to evaluate preinvention rights statistically over a large sample size. n126 The employer will probably be unable to account for special attributes of particular employees, and thus will discount the value of preinvention rights of those employees most likely to be the best inventors. Preinvention assignment agreements are in this way similar to contracts between firms and consumers where the difference in access to information has led to regulation of such contracts. n127 Ex post bargaining presents equally difficult problems. Even if the total value of the invention may be agreed upon by the parties, the value of each party's contribution will be difficult to agree upon. The employer will tend to overvalue the contribution of the work environment and the employee-inventor will tend to overvalue her individual contribution. Some preinvention assignment agreements offer no additional consideration for the assignment of an employee-inventor's invention to the employer beyond the continued employment of the employee. n128 Most courts hold that even this is adequate consideration, since the employee-inventor is dischargeable "at will." n129 Certainly, there is no requirement that the consideration approximate the value of the invention, though some courts may find that nominal consideration is inadequate. n130 [*624] Is continued at-will employment adequate consideration for the assignment of valuable patents? Take the case of an employee-inventor who agrees to a preinvention assignment clause but never develops a patentable invention. Is she in breach of her contract? Almost certainly she is not. n131 The employer cannot reasonably expect that a particular employee-inventor will conceive of a valuable patentable invention. After all, a patentable invention, by definition, must be unanticipated (that is, "novel" and "non-obvious"). n132 Similarly, most employee-inventors do not consider it likely that they will conceive of a valuable patentable invention. Thus, the terms of the assignment clause are probably not of utmost importance at the time of the contract's formation. It is therefore unlikely that either employee-inventor or employer really mistakes continued employment as consideration for the assignment of valuable patents by the employee-inventor. This Section has discussed how employers use their bargaining advantage over employee-inventors to appropriate rights in inventions that would otherwise accrue to the employee-inventors under the common law formulation. The prevalence of preinvention assignment agreements can be attributed to a form of market failure: labor monopsony. n133 There is, in effect, no market for technical jobs that does not require relinquishment of preinvention rights. This market failure has eviscerated the policy of individual incentive and recognition implicit in a Patent Code that recognizes only human inventors. n134 Because failures of the self-regulatory mechanism of the market are viewed as appropriate occasions for public regulation, n135 state and federal legislators have initiated several responses to the proliferation of preinvention assignment agreements. These responses will be examined in the following Section. [*625] D. Legislative Responses to Preinvention Assignment Agreements To date, five states have enacted legislation to limit the reach of preinvention assignment agreements. n136 The statutes all require some relationship between the employee-inventor's invention and the employer's resources, or its present or contemplated business areas, in order to justify mandatory assignment. n137 None of the state statutes, however, give employee-inventors any rights to inventions related to the work that the employee-inventor was hired to perform for the employer. The state statutes have been effective in restricting employers from overreaching or appropriating inventions of employee-inventors where those inventions do not relate to the employer's actual or anticipated line of business or research. It is reasonable to expect, however, that most inventions - particularly most important inventions - an employee-inventor might produce would relate to the employer's business, and more specifically, to the actual work the employee-inventor performs for the employer; after all, this is the area of the employee-inventor's expertise and focus. n138 Thus, the state statutes by design do not reach the most important inventions of employee-inventors. Federal legislation to reform patent law with respect to private sector employee-inventors has been proposed at least nine times since 1963. n139 The proposed bills ranged from a return to the common law allocation of patent rights n140 to mandatory compensation for employee- [*626] inventors who assign patent rights to employers. n141 None of these proposals has been enacted. It is unlikely that such legislation will be enacted in the foreseeable future due to the strong lobbying efforts of corporate employers. n142 Moreover, engineer- and scientist-employees and potential employees represent a diffuse and poorly organized lobby. n143 This Part has discussed the failure of patent and contract doctrine to resolve adequately the problem of the employee-inventor. Patent law is limited by its antiquated and rigid conception of inventorship. Under its current formulation, patent law does not address the inventorship environments in which today's employee-inventors operate. Similarly, contract law is limited by its wooden application of freedom-of-contract principles to situations in which market failure has made such principles inappropriate. In addition, contract law analysis fails to address the underlying property issues implicated by preinvention assignment agreements. Finally, federal and state reforms have not resolved the problems of preinvention assignment agreements because policymakers have viewed the dispute in terms of inadequate contract or patent doctrine. Part III will look beyond doctrine to theory in an attempt to resolve preinvention assignment disputes. Several traditional private property justifications will be examined in the context of preinvention assignment disputes. [*627] III The Limitations of Theory: The Employee-Inventor and Preinvention Assignment Agreements Under Traditional Theories of Property As discussed in Part II, commentators, judges, and legislators have been aware for years of the limitations of patent and contract doctrine as applied to the employee-inventor. Yet little significant reform has occurred at judicial or legislative levels. Although there are possible structural explanations for the lack of reform, n144 this Comment will focus on a theoretical explanation: that preinvention assignment disputes are ultimately a property law problem rather than a contract or patent law problem, and that traditional property law itself is ill-equipped to resolve these disputes. This Part will examine how, although preinventions share many of the attributes of real and personal property, n145 traditional property law theory is of limited utility due to the distinctive nature of the property and the manner in which the property is created within the employer-employee relationship. Although they are ultimately rejected, traditional property law theories are useful for illuminating the strengths and weaknesses of the approach advocated in Part IV: the removal of an employee-inventor's future inventions from a contract-law-only regime (a regime of full market alienability) to a property law regime (a regime of partial market inalienability). A. The Distinctive Nature of Intellectual Property An appreciation of the distinctive nature of intellectual property is a necessary prerequisite to the application of property theories to preinvention disputes. This Section will briefly describe those attributes of intellectual property that distinguish it from other forms of property, such as real property and tangible personal property. The Patent Code provides that "patents shall have the attributes of personal property." n146 Patents, and indeed, all forms of intellectual property have some of the attributes of personal or tangible property, such as the right to exclude and the right to alienate. However, there are significant differences between the nature of intellectual property and that of personal or tangible property. Because of these differences, some of the property rules that govern tangible property may be inappropriate for intellectual property. Several distinctive aspects of intellectual property are of particular [*628] significance in the preinvention context: intellectual property has both "free good" and "public good" attributes; n147 intellectual property rights are of limited scope; n148 and intellectual property rights have traditionally been thought of as a "democratic" form of property. n149 These aspects of intellectual property must be considered as part of any proposed resolution to preinvention assignment agreement disputes. n150 [*629] B. Traditional Property Theories Although a number of theories have been put forth to justify the concept of private property, n151 those most frequently invoked are based on either natural law or utilitarian foundations. There is a certain tension between these two bases, for, as will be demonstrated, natural law focuses on the rights of individuals at the expense of the general welfare of society, whereas utilitarianism emphasizes general welfare at the expense of individual right. n152 This dichotomy may help to explain why neither theory is particularly helpful in resolving preinvention assignment disputes, for both employers and employee-inventors can make legitimate and persuasive individual rights and general welfare arguments. 1. Natural Law Justifications The term "natural rights" refers to universally recognized rights attributable to human nature or to immutable conceptions of "reason" rather than to the enactment of statute. n153 The Declaration of Independence, for example, is based on a natural rights justification. n154 Although the Declaration of Independence does not speak directly of natural rights in property (except obliquely through the phrase "pursuit of happiness"), such rights were widely regarded as self-evident in eighteenth- and nineteenth-century America: "It may then be taken as an [*630] established proposition that whatever thing that is property-subject-matter which a man makes out of materials belonging to no one else, is his exclusive property by natural right." n155 Natural rights form the basis of a common law right of inventors to use their inventions. n156 The natural right and common law right are often treated interchangeably, n157 and will be so treated here. The relationship between natural or common law rights in inventions and statutory rights conferred by patents ought not to be confused, however. The natural law or common law right is the right of an inventor to make, use, or sell her invention. n158 This right is non-exclusive. An inventor's natural right does not preclude others from making, using, or selling the invention, once the invention is disclosed to the public. n159 The patent right (if held by the inventor) is broader than the common law right, for it is the patent that grants the right to exclude others from making, using, or selling the invention. n160 Therefore, although natural rights in inventions are recognized by the courts, they may be extinguished or suppressed through patents or by other statutes. n161 Since patent rights are granted, if at all, to the first inventor of an idea, n162 the natural rights of later independent inventors of equivalent inventions are temporarily suppressed by the patent rights of the former. n163 Exclusive rights in inventions are not only distinct from [*631] natural rights in inventions, they are also "at odds with the inherently free nature of disclosed ideas." n164 Furthermore, any natural rights justification for ownership of ideas would seem to be offset by a natural rights argument to copy the ideas of others. n165 The distinction between the natural rights of inventors and patent rights granted by statute, however, does not rule out a natural rights basis in patents. The "embarrassment of an exclusive patent" n166 must be justified on some sound, reasoned, moral basis. n167 Natural rights could provide such a justification; that is, by enacting the Patent Act, Congress could have been trying to protect or codify the natural rights of inventors. The natural right of inventors to the use of their inventions has long been recognized, usually conceptualized as a form of first occupancy or discovery. n168 Natural rights also form the basis for other justifications of private property, such as the labor justification. n169 Often, however, natural rights are asserted as an undifferentiated justification [*632] for intellectual property. First occupancy and undifferentiated natural rights justifications and their application to preinventions will be discussed first, followed by a discussion of labor theory. a. First Occupancy Justifications First occupancy represents one potential natural- rights-based justification for patent rights. The first occupancy justification proposes that previously unowned property belongs to the first party to "occupy" the property. n170 Property justifications based on first occupancy have, however, been widely criticized. n171 First occupancy provides a satisfactory justification for private property ownership, it has been argued, only when certain conditions are met; two such conditions are: "(1) the object occupied is unowned; and (2) occupation is in some relevant sense actual as opposed to intentional or declaratory." n172 Neither condition is satisfied in the case of preinvention assignment agreements. The first requirement for first occupancy seemingly cannot be resolved in the preinvention assignment context. An invention is, of course, unowned until invented; once invented, however, it can be claimed immediately by both employee-inventor and employer. Each can claim a natural right as "inventor" based upon first occupancy. n173 Thus, while natural rights arguments may support patent rights for inventor-entities as against society, natural rights do not appear helpful in justifying patent rights of employee-inventors as against their employers (or vice versa). In the parlance of property law, the act of invention by an employee-inventor does not create a single first occupant but rather a joint first occupancy in the property. The second requirement for first occupancy - actual occupancy (or exploitation) of the invention - is not a condition precedent to enforcement of patent rights under current patent law. Thus, a corporation could sue an inventor for infringing a patent issued for her invention (assuming that patent had been assigned to the corporation) merely on the basis of the corporation's status as patent holder. There need be no showing that the corporation ever had any intent to make, use, or sell the [*633] invention. In other words, contrary to the requirements of first occupancy, ownership can be based on a declaratory occupancy. n174 b. Normative Labor Justifications The labor theory is the predominant property justification articulated in Anglo-American jurisprudence and philosophy n175 and thus requires careful consideration when analyzing the property issues at stake in preinvention disputes. The labor theory is generally attributed to John Locke and the influential chapter on property in his Second Treatise of Government. n176 Locke's theory has both a normative and an instrumental justification. n177 The normative justification maintains that society rewards labor with property because labor is unpleasant and should be rewarded, n178 whereas the instrumental justification maintains that society rewards labor with property because labor (the expenditure of which is beneficial to society) is unpleasant and would not be expended without reward. n179 Although the two justifications are clearly distinct, it can often be difficult to determine which theory is being invoked by the courts. n180 In order to avoid such confusion, only the normative justification [*634] will be discussed under this heading; the instrumental (or utilitarian) justification will be addressed under a separate heading. In his Second Treatise, Locke articulates three distinct but related normative labor justifications for property. n181 The first normative justification - referred to here as the basic labor justification - proceeds in three steps: (1) one's body is one's property; (2) thus, one's labor - the product of one's body - must be one's property; (3) thus, the product of one's labor must also be one's property. n182 The second justification - referred to here as the "value-added" justification - claims that one's labor, which is one's property, adds value to things as they exist in their natural unlabored-upon state, and this addition of value justifies property in the thing labored upon. n183 The third justification - referred to here as the "labor-desert" justification - maintains that one's labor, which is one's property, adds value to things as they exist in their natural unlabored-upon state, and it would be unjust for others to appropriate the benefit of one's labors, so long as the laborer [*635] leaves "enough and as good" in the commons for others. n184 Although Locke's normative labor justifications have come under some criticism from commentators, n185 each provides powerful arguments in support of allocating intellectual property rights to inventors rather than to society. n186 However, the issue underlying preinvention assignment disputes is not whether society should allocate intellectual property rights, but rather, how society should allocate such rights. None of Locke's normative justifications provides a satisfactory answer. Instead, the justifications raise additional questions. Who is the laborer under the basic labor justification: the employee-inventor or the employer? What added the value under the value-added justification: the employee-inventor's personal capital or the employer's financial capital? And who deserves to be rewarded under the labor-desert justification? Once again, the lack of a meaningful legal definition of inventorship - one that reflects contemporary models of invention - stands in the way of a satisfactory resolution. 2. Utilitarian (or Instrumental) Labor Justifications Instrumental justifications n187 have long been recognized as the basis for both statutory and common law intellectual property rights. n188 In fact, the usual justification for intellectual property in general, and the patent system in particular, is an instrumental one: society rewards inventors with patents (that is, provides exclusive rights to make, use, or [*636] sell inventions) because it must do so in order to encourage innovation. n189 The instrumental justification states that real work is required to innovate, and such work is unpleasant enough (at least, relative to leisure) that a rational actor would not engage in it without the expectation of some benefit. n190 Thus, people should be rewarded with property to motivate them to do work. n191 With respect to intellectual property, the instrumental argument contends that society rewards inventors and authors with patents and copyrights because inventors and authors must be motivated to exert themselves to create. This theory relies on four essential premises. First, inventions require labor; in other words, the "eureka" model of invention (that is, invention by a sudden stroke of genius) either does not apply or applies so infrequently as to justify a per se reward. n192 Second, the labor of invention is unpleasant, or at least less pleasant than leisure. n193 Thus, inventors will not invent simply for the love of it; they need external incentives. n194 Third, inventions, in aggregate, improve social welfare. Thus, it is worthwhile for society to provide incentives for inventors to suffer the unpleasantness of labor. Finally, the "public good" attribute of inventions requires intellectual property protection for inventors to appropriate value from their inventions. n195 Courts and legal commentators often rely on instrumental labor justifications for the patent system. Congressional grants of exclusive patent rights to inventors are frequently conceptualized as a quid pro quo from society to inventors (although there is far from universal agreement as to what is the quid and what is the quo). n196 The most commonly articulated [*637] purpose of patents is to foster or stimulate invention. n197 This is often the sole purpose articulated by the courts. n198 Occasionally courts have noted additional instrumental purposes for the patent system, such as creating an incentive to disclose inventions. n199 Economic commentators, too, tend to frame the purposes of the patent system in incentive-based terms. For example, Edwin Mansfield has identified three justifications for patent laws: (1) to induce individual inventors to put in the work required to produce an invention; (2) to induce firms to make the investments required to bring the invention to commercial use; and (3) to induce firms to disclose inventions earlier than would otherwise be the case. n200 Economic arguments, such as Mansfield's, tend to focus on the social utility of inventions and the need for inventors to appropriate rents on their creations. It should be noted, however, that not all economists are convinced about the efficacy of patent [*638] laws in fostering invention. n201 Setting aside these concerns about the efficacy of patent laws, it remains unclear how one would resolve preinvention assignment disputes based on instrumental justifications. The resolution of these disputes would seem to depend upon the inventorship paradigm that one accepts. Adherents of the "hero-inventor" paradigm are sensitive to the need for individual incentives. n202 "Team-as-hero" proponents stress the importance of providing incentives for investment of capital in inventive activities. n203 Both arguments have merit, and there appears to be no analytic [*639] basis upon which to favor one view over the other. It is possible to argue that the purposes of the patent system are best furthered by providing incentives for individuals to invent or by providing incentives for firms to invest in invention. One commentator, Professor Jay Dratler, has proposed recognizing the need for incentives for both employee-inventors and their employers by dividing ownership of patent rights between individuals and firms according to the relative extent of "extraordinary effort" each has contributed towards the invention. n204 Because the relationship between patent incentives and inventive output is difficult to demonstrate, n205 however, it is difficult to imagine how instrumental arguments can be used to divide the patent incentive between employers and employee-inventors. Additionally, as Dratler himself has persuasively argued, incentives do not act on an undifferentiated corporate entity but rather upon individuals within the corporate structure. n206 When the roles of individuals other than inventors within firms are examined, patents may not provide real incentives to innovate. n207 [*640] One might argue that it does not matter whether the employee-inventor or employer receives the initial patent entitlement because the parties will distribute it between themselves by private agreement so as to maximize inventive productivity. n208 This argument is flawed on several grounds. First, it assumes that transaction costs are zero. As discussed earlier, however, transaction costs are particularly high in the preinvention context because of the difficulties of ex ante bargaining for speculative rights, and those of ex post bargaining where the contributions of the parties are hard to quantify objectively. n209 Second, this claim assumes a functioning market for employee-inventors. In fact, the market for technical employees is susceptible to contracts of adhesion. n210 Finally, the argument assumes that firms and society value inventions similarly. In reality, a given invention may be of little value to a particular firm but of great value to society generally (or vice versa). Instrumental labor arguments, then, are not useful in resolving preinvention assignment conflicts. Even if incentives are required to get inventor-entities to invent, it is impossible to determine ex ante which component of the inventor-entity - employee-inventor or employer - requires that incentive. Moreover, even if ex post determinations can be made to allocate intellectual property rights to the employee-inventor or employer based upon relative contribution or other criteria, such determinations, strictly speaking, are normative rather than instrumental in approach. Furthermore, any incentive effect of an ex post reward would be severely attenuated due to the extremely speculative nature of the reward: the likelihood of successful invention is speculative, the likelihood of a patent award upon success is speculative, n211 and the likelihood of a property interest in the patent if awarded is speculative since the relative contributions of the parties cannot be determined ex ante. [*641] 3. The Failure of Traditional Theories None of the natural law and utilitarian theories discussed in this Comment is appropriate for resolving preinvention assignment disputes because none adequately distinguishes between the employee-inventor and employer. Similarly, other justifications that have been used for private property generally and for patents in particular n212 provide little guidance in resolving preinvention assignment disputes. Given this failure of traditional theories, it is not surprising that employee-inventors and employers have been unable to arrive at a contractual agreement that is satisfactory to both parties. Perhaps, then, it is time to go beyond the traditional theories in search of a resolution for preinvention assignment disputes. IV Personhood and the Employee-Inventor: An Alternative Framework for the Resolution of Preinvention Assignment Disputes Part II explained that the proliferation of preinvention assignment agreements was partly a response by corporations to changes in inventorship paradigms that were not reflected in the patent law conception of inventorship. Although these agreements present numerous contractual difficulties, they are generally enforced by the courts, perhaps in recognition of the deficiencies in patent law. Part III responded to the limitations of contract and patent doctrine by applying traditional property justifications to the allocation of property rights in preinventions. These traditional justifications were found inadequate for resolving preinvention assignment disputes. However, the full range of theoretical property justifications was not exhausted in Part III. This Part of the Comment will examine an alternative theoretical property framework: personhood theory. [*642] A. Personhood Theories of Property The personhood theory of property focuses on the relationship between property and personality. Property, it is argued, is justified because it is conducive, perhaps necessary, to the development of personality. Personality has many meanings. For example, personality can refer to "moral and political personhood," n213 "awareness of individuating characteristics," n214 or "the desirable integration of the self's thoughts and attitudes." n215 Every meaning of personality contains some notion of the person as an autonomous, moral, individuated agent. Although different formulations of personhood theory emphasize different meanings of personality, elements of each of these meanings are always present. Personhood theory has been characterized here as an alternative theory of property in the sense that the analysis is, to some extent, outside the mainstream of judicial, if not philosophic, thought. However, personhood theories of property are by no means new. Elements of a personhood theory of property are evident in the work of Plato and Aristotle, n216 although personhood theory as we understand it today was first hinted at in the work of Kant in the eighteenth century. n217 Kant, however, was working within a natural rights framework, n218 and thus Kantian personhood is really more a variant of traditional property theory than an alternative theory. n219 [*643] 1. Hegelian Personhood An alternative philosophy of property and its relationship to personality independent of natural rights or utilitarian justifications was developed by Hegel in the early nineteenth century, based on his conceptions of will, freedom, and personhood. n220 Hegel believed that each person has both an internal and an external existence. n221 One's internal existence is her will, and one's external existence is her sphere of freedom. n222 Hegel stressed the importance of self-actualization, or the lack of dependence on an other. n223 However, self-actualization and the extension of one's sphere of freedom are achieved, in Hegel's view, not by withdrawing from the external world but rather by "overcoming it," n224 or putting one's will into external objects - into property. For Hegel, freedom meant relating to external objects so that they become integrated into one's personality. Personality is the reconciliation of the inner self and external world. n225 Property - the relationship between persons and things n226 - is the means by which we achieve this reconciliation. Property, then, is central to Hegel's theory of the fully [*644] self-actualized free person; it is the essence of personality. n227 The rules of Hegelian property law flow directly from the Hegelian conception of property. To make a thing one's property, one must be the first n228 to take actual possession n229 of the thing, or the first to mark the thing as one's own. n230 Property, in the form of ordinary external things, is alienable, n231 but property which forms an essential element of personality must be inalienable. n232 2. Radinian Personhood In recent years, Professor Margaret Radin has used an essentially Hegelian framework to extensively examine the relationship between property and personhood. n233 Property rights exist, Radin argues, because [*645] people achieve self-identification (that is, they define their "selves" as people) through external objects. n234 Certain objects become "bound up with personhood" n235 because of the way we use those objects to define ourselves as people. Unlike more traditional theories which focus on the creation of the property, the personhood theory looks to the "subjective relationship between the holder and the thing." n236 Radin uses a wedding ring, a portrait, an heirloom, and a home n237 as examples of objects which may be bound up with personhood for particular individuals. n238 An indicium of a personality interest in property is a value to its owner that exceeds market value. n239 At the opposite end of the property spectrum from personhood property n240 is fungible property: n241 Property that is "personal" in this philosophical sense is bound up with one's personhood, and is distinguishable from property that is held merely instrumentally or for investment and exchange and is therefore purely commercial or "fungible." One way to look at this distinction is to say that fungible property is fully commodified, or represents the ideal of the commodity form, whereas personal property is at least partially noncommodified. n242 By definition, the value of fungible property to its owner is its market value. Noncommodifiable property, by contrast, is property that is removed from the marketplace and is nonsalable. n243 A fungible property market regime can be useful because it allows dissimilar property rights to be commensurable. Radin theorizes, however, that certain property rights are incommensurable. Property rights at the fungible end of the spectrum may be overridden, while property rights at the personhood end of the spectrum may not. Thus, Radin suggests, "The more closely connected with personhood, [*646] the stronger the entitlement." n244 Radin does not propose that all property be inalienable and non-commodifiable. Rather, she stakes out a pluralist position somewhere on the broad continuum between Karl Marx and Richard Posner n245 which she calls "market-inalienability," where some property is fully commodified, some is noncommodified, and some is partially or incompletely commodified. n246 Incomplete commodification is designed to solve problems of "contested commodification" - property issues where there is active debate over the wisdom of either fully alienable or fully inalienable regimes. Radin identifies infants and children, fetal gestational services, blood, human organs, sexual services, and the services of college athletes as examples of contested commodification. n247 Employee preinventions, it will be demonstrated, also represent a problem of contested commodification. 3. Personhood and Inventorship If pork bellies are fungible and wedding rings are personal, where do patent rights belong? Courts have recognized the peculiarly personal nature of patent rights: The reluctance of courts to imply or infer an agreement by the employee to assign his patent is due to a recognition of the peculiar nature of the act of invention .... It is the result of an inventive act, the birth of an idea and its reduction to practice; the product of original thought .... n248 Commentators, too, have recognized the personality element of intellectual property. n249 The identification of an inventor with her creation is similar to that of the writer or the painter with her creation. n250 Personality in these latter forms of intellectual property has long been recognized. n251 This Section will show that inventors have significant personality stakes in their inventions as well. [*647] According to Radin, the identification of an element of personality in property is merely the first step in determining whether that property ought to be treated as legally personal. The next step is to determine if the personal identification is "justifiable." Radin believes that person-thing relationships that facilitate an individual's understanding of "freedom, identity, and contextuality" n252 are justifiable personhood interests because they contribute to "our conception of human flourishing." n253 There is no formula for determining if a particular property interest is justifiably personal. We are left to "rely instead on our best moral judgment in light of the best conception of personhood as we now understand it." n254 Work is an example of incomplete commodification. We expect nonmonetary returns from our work, even though we demand payment in return for our services. n255 A person's relationship with her work facilitates an understanding of the three elements mentioned above that contribute to human flourishing: freedom, identity, and contextuality. n256 Preinventions are reified inventive work which implicate each of these three elements. "Freedom" refers to the autonomy aspect of personhood, the ability "to act for ourselves through free will in relation to [*648] the environment of things and other people." n257 "Identity" refers to individuation, which requires "the integrity and continuity of the self over time." n258 Autonomy and individuation are, as mentioned earlier, common elements of any definition of personhood. "Contextuality," as that term is used by Professor Radin, combines elements of both autonomy and individuation. Contextuality refers to the development and constitution of the self through "relationships with the social and natural world." n259 An inventor's autonomy over her own inventiveness is diminished when another entity, her employer, holds the exclusive right to make, use, or sell her creative output. Some degree of control over one's own inventions is required to make possible, and protect, the constituting of autonomous personhood in inventive work. n260 An inventor's individuation is threatened when an employer can preclude an inventor from continuing to work with her creation even after she leaves the employment relationship. Some degree of inventive continuity is required to make possible, and protect, the constituting of individuating personhood in inventive work. n261 An inventor's self-development and self-conception through contextuality are impaired when her relationship with her inventions - her work - is determined not by her, but by her employer, n262 and when her work is monetized, alienated, and detached from her self n263 and from the "particulars" integral to her self. n264 Thus Professor Radin's personhood theory can provide useful insights for resolving preinvention assignment disputes. One might ask why inventors should receive special treatment under personhood theory that other laborers do not enjoy. For example, as Professor James Boyle has noted in a somewhat different context, "We do not think it is necessary to give car workers residual property rights in the cars that they produce - wage labor is thought to work perfectly well." n265 The rebuttal, of course, is that the important distinction is not between "car workers" and inventors, but rather between the making of [*649] cars and the making of inventions. Cars are assembled according to precise specifications by the repetitious performance of assigned tasks. Inventions are "the fugitive fermentation of an individual brain." n266 It is justifiable and consistent with our notions of human flourishing for an inventor to embody her personality in her invention (or at least in certain of her inventions), even when she receives wages in return for her efforts. It is not justifiable for an autoworker to embody her personality in any one of the many identical automobiles upon which she labors. n267 The notion that patent rights are bound up with personhood is a familiar one to patent law. For example, under the Patent Code, applications must be made by human inventors, not their corporate assignees. n268 Furthermore, the application must include an oath by the human inventor. n269 Similarly, the remedies available in patent disputes indicate that the law views patents as a form of property imbued with a strong element of personality. In disputes over fungible property, damages are considered an adequate remedy; in patent disputes, however, equitable relief is the norm. n270 More to the point, contracts for the assignment of patent rights are specifically enforceable, even though traditionally only contracts with strong personality elements have been specifically enforceable. n271 [*650] It should be noted that at least one commentator, Justin Hughes, has cautioned against the application of personhood theory to inventions. n272 Hughes articulates three specific concerns. First, it is difficult to determine reliable indicia of who does and does not have a personality stake in any particular invention. n273 Second, personality will be manifested to different degrees in particular inventions, and it is unclear whether different levels of personality call for different levels of protection. n274 Finally, different categories of inventions embody different levels of personality, which may (or may not) justify different levels of protection. n275 When each of these concerns is examined in terms of preinventions, however, none appears particularly problematic. n276 Patent law has a distinct advantage over many other forms of property law when identifying reliable indicia of personality: the inventor-entity must be identified on the patent application. The inventor as defined by current patent law is an underinclusive indicium of personality, however, because other entities, such as an assistant, may also have a personality stake in an invention. n277 This situation is a criticism of personality theory generally, however, rather than as applied to intellectual property. After all, any indicium of a personality stake in property can be underinclusive. For example, a mother may have a personality stake in her child's rental apartment if she visits regularly. The law recognizes the renter's interest, n278 just as the law should recognize the inventor's interest. In both cases, the indicia of personality (such as having one's name on the rental agreement or patent application, respectively) are reliable. The law generally does not recognize the mother's or the assistant's [*651] personality stakes because those indicia are less reliable. n279 As to Hughes' second objection, different inventions will indeed have different levels of personality invested in them, but this need not be reflected by different levels of protection under an intellectual property regime. Indeed, under current patent law, inventions that are more useful or that require more labor or more investment to create do not receive more protection. All inventions are treated alike once they meet the statutory thresholds of utility, novelty, and non-obviousness. n280 Hughes' last objection, in essence, asserts that inventions are simply not the repository for personality as are other forms of intellectual property, such as literature and music. n281 Few would dispute that Edison's light bulb expresses a lower quantum of personality than Tolstoy's Anna Karenina, and it is certainly the rare patent application that expresses the personality evident in an e.e. cummings poem. But this is not a valid comparison. First, inventions do reflect the personality of their inventor. The personality may not be apparent to those without expertise in the art, but practitioners can often identify the source of an invention merely by examining the engineering designs. n282 Engineers do not design by rote; some design decisions are made just because they "feel" right to the designer. Second, the inventor's personality is reflected in the process that led to the invention as much as in the invention itself. n283 Third and most importantly, the personality stake that should be protected is the extent to which both the process and the physical embodiment of the invention are constitutive of the inventor's personhood. n284 Thus, the important issue is how the inventor defines herself, not how society defines the inventor. n285 This need not be a wholly subjective test. As discussed [*652] above, reliable indicia can be established so that only reasonable, objectively justifiable personhood interests are protected. A central premise of this Comment is that inventors have a strong personhood stake in their inventions and in the inventive process, or in the terminology used here, in inventions and preinventions. However, the identification of a personhood interest does not necessitate a rule of total inalienability for inventions and preinventions. n286 Furthermore, a given rule of market inalienability need not apply to both inventions and preinventions, nor for that matter to all inventions or all preinventions. Rather, I propose here to protect certain personhood interests only in employee preinventions. n287 I distinguish employee preinventions from other inventions and preinventions because the employee-inventor's "decision" to alienate her preinventions is particularly suspect. n288 First, the employee-inventor must decide to alienate her interests before she even conceives of the invention and before she has invested any personality. Second, the employee-inventor has no meaningful choice but to accept the terms offered by the employer if she wishes to develop her personhood by participating [*653] in the inventive process, given that large firms dominate access to necessary resources and opportunities. n289 Alienation of other inventions n290 and preinventions n291 shares at most one of these concerns and thus are not as suspect. Given the suspect nature of the decision to alienate preinventions, the remainder of this Comment will focus on identification of the personhood interests to be protected in the preinvention context and on how this protection might be implemented. B. Non-Personal Inventions: Corporate Inventorship as a Consequence of Personhood Theory As discussed above, patent law already recognizes the personhood interests of inventors in two ways: by requiring the identification of the human creators responsible for the invention on the patent application, and by notation of the inventor on the issued patent. This non-transferable, non-assignable, market-inalienable inventorship identification is a form of protection for a personhood interest - the association of the person with her invention. This limited form of protection is both overbroad and underprotective, however. Inventorship identification is an overbroad form of personhood protection because it creates an irrebuttable presumption of justifiable investment of personhood. While this presumption is often accurate, [*654] there are instances where the corporate contribution so exceeds any individual contribution that investment of personhood in the invention or the inventive process is simply not justifiable. Inventorship identification is underprotective of personhood because, in instances where personality is implicated, inventorship identification alone leaves important personhood interests open to appropriation. The remainder of this Comment proposes changes in the patent law designed to overcome its current shortcomings in protecting the personhood interests of employee-inventors. The overinclusiveness objection is addressed by arguing that there are really two classes of employee preinventions: those with and those without justifiable personhood interests. This Section will consider preinventions without justifiable personhood interests and will advocate recognition of corporate inventorship in those cases. The following Section will look at preinventions that do have justifiable personhood interests. Although inventorship has become increasingly organizational and less independent during the twentieth century, patent law has largely ignored this shift. n292 Admittedly, some changes in the Patent Code have made it easier to obtain patents for team inventions. The Patent Act of 1952, for example, abolished the judicially imposed requirement that a patentable invention result from a flash of "inventive genius" n293 and replaced it with the current novelty, utility, and non-obviousness standards. n294 These standards allow the results of methodical and organized corporate research to be patentable. n295 Similarly, the Patent Law Amendments of 1984 n296 provided for an expanded concept of joint inventorship that is more in line with team invention in a corporate environment. n297 The 1984 amendments modified the non-obviousness requirement n298 to reduce the risk that team inventions would be unpatentable [*655] due to the prior research efforts of team members. n299 These statutory changes and the gradual acknowledgment of team invention in the case law, n300 however, have been of only limited effect. At its core, patent law still clings to the concept of the "hero-inventor" and rejects the modern paradigm of "team-as-hero." Despite the deficiencies of the "team-as-hero" paradigm, the recognition of corporate inventorship would be a significant step toward modernizing patent law to reflect contemporary inventorship paradigms. n301 Corporate inventorship need not be a particularly radical step for patent law. n302 First, recognition of corporate inventorship would merely parallel developments in other areas of American intellectual property law, such as copyright n303 and mask work protection, n304 where "authorship" [*656] can be based on economic grounds as well as on the more traditional creation grounds. Furthermore, most foreign countries already recognize corporate inventors. n305 Second, the availability of corporate inventorship would not harm employee-inventors, since nearly all employee-inventors are already required to assign their patent rights to their employer. In fact, the availability of corporate inventorship could significantly help employee-inventors. Courts generally enforce questionable preinvention assignment agreements as a matter of policy. If corporate inventorship were available and a corporation did not qualify for inventor status, courts might be less likely to enforce adhesive contracts purporting to assign a patent to the corporation. n306 The question remains, however, as to when a corporation should qualify as an inventor. One model is provided by the "work for hire" doctrine of section 101 of the Copyright Act of 1976. n307 Section 101 defines two classes of works made for hire: works prepared by employee-inventors within the scope of their employment, and works specially ordered or commissioned for use as a contribution to a collective work. Another potential model, prescribed by the state statutes discussed earlier in Section II.D, would describe those employee-inventions that are not eligible for corporate inventorship. Thus, under a model suggested by the California statute, corporate inventions would be limited to those invented by employee-inventors during corporation time, or using corporation resources, or relating to present or anticipated areas of corporate business or research or development. n308 These models would probably provide too broad a scope for corporate inventorship, however, for both definitions of inventors would include virtually all employee inventions conceived at work. Many of these inventions would represent windfalls to the corporate employer if insignificant corporate resources had been expended and the corporation had not directed the activity leading to the invention. In other words, an invention that owes more to the initiative of the employee-inventor than to the resources and direction of the corporate employer should not qualify as a corporate invention. A better definition of corporate inventions would combine aspects of both of the models by limiting a corporate invention to an anticipated result of corporate direction n309 that was conceived [*657] and reduced to practice using significant corporate resources. All other patent applications would still require named human inventors. This model of corporate inventorship should include a rebuttable presumption of individual inventorship by natural persons. If, for example, a corporation files a patent application claiming corporate inventorship, and one or more employee-inventors feel that the invention resulted primarily from their personal efforts, they could file an interference action with the Patent Office to determine inventorship. n310 If corporate inventorship were the only patent law modification made, however, little change would be reflected in the actual allocation of patent rights. Corporations would, of course, hold title to those patents for which the corporation was given inventorship credit, and through preinvention assignment agreements, corporations would obtain title to their employee-inventors' patents. What is needed to supplement this modification is a means to deal with bona fide personal inventions of employee-inventors. C. Personal Preinventions: The Employee-Inventor and the Personhood Defense Thus far, this Comment has argued that employee preinventions are a form of partially noncommodifiable property. How should this idea affect the allocation of rights between employee-inventors and employers in inventions with justifiable personhood interests? This Section explores three possible methods of applying personhood theory to employee preinventions. First, the law could recognize the justifiable personhood interests of employee-inventors in their preinventions and make these interests inalienable. This will be referred to as a "non-appropriability approach." Second, the law could recognize corporate proprietary interests in the preinventions of employee-inventors analogous to human personhood interests. The corporate interest could either cancel the employee-inventor's [*658] personhood interest in the same property - thus making the property alienable - or be balanced against the interests of the employee-inventor on a case-by-case basis. This will be referred to as a "cancelling or balancing approach." Finally, the law could reject corporate "personhood" interests and disaggregate the rights incidental to employee preinventions. Those interests that are justifiably constitutive of the personality of the employee-inventor could be identified and made market-inalienable. All other rights incidental to employee preinventions would then be freely alienable. This will be referred to as a "disaggregation approach." 1. A Non-Appropriability Approach The non-appropriability approach suggests that employee preinventions should be non-assignable because they embody the personality of their inventor. Inventions, however, have both personal and non-personal attributes. A regime of complete inalienability of invention rights would be overprotective of personhood, since it would remove non-personhood interests from the market. Non-appropriability can be overinclusive, as well, if non-personal inventions are protected. Thus, a regime of total inalienability is difficult to imagine, let alone advocate, absent corporate inventorship for a significant percentage of the inventions of the employee-inventor. Under a regime of total inalienability, employee preinventions could only be exploited by their original, human inventor, unless the employers obtained rights to the inventions via costly ex post negotiations. Such a regime would be far worse for corporations than a regime with no intellectual property protection at all, since corporations could be forbidden from exploiting the output of their own laboratories. Investment in organized research and development would likely be curtailed significantly. This negative consequence could be ameliorated, however, by permitting the gift-giving or sharing of the noncommodifiable property. n311 Thus, it might be possible under an inalienability regime for a group of researchers to work together, placing all patents received by any member into a common pool. n312 Such an approach, of course, would be more a cooperative arrangement than an employer-employee relationship. Moreover, if an invention were particularly valuable, the inventor would presumably be free of compulsion to place it in the pool, for such compulsion would alienate her personality. For this reason, the system would be unlikely to work in a corporate environment. Another variation on the inalienability regime would be to make [*659] employee inventions inalienable but to grant employers non-transferable, non-exclusive shop-rights n313 to exploit the employee-inventor's preinvention. This would to some extent represent a return to the common law allocation scheme; however, the restrictions on alienability would preclude, at least for employee inventions, the patent licensing and transfer agreements that allow inventions to realize their optimal utility. Many firms might reduce expenditures on innovation under such a scheme. Thus, it would seem that a regime of complete inalienability is not a desirable solution to the problem of the employee-inventor, even where schemes of gift-giving, corporate inventorship, and employer shop-rights are available to soften its impact. This conclusion, however, does not totally devalue the contribution personhood theory can make to solving the preinvention problem, if approaches can be developed that protect personhood interests without imposing complete inalienability. 2. A Cancelling or Balancing Approach One alternative to the non-appropriability approach is a cancelling or balancing approach. This approach requires recognition that the corporation may have a justifiable personhood (or, analogously, proprietary) interest in the preinventions of employee-inventors. This interest would then either cancel the employee-inventor's personhood interest or be balanced against it. n314 A cancelling or balancing approach would juxtapose the individual personhood interests against corporate interests of a similar nature, and either the corporate interest could cancel the individual interest n315 or the two interests could somehow be balanced against each other. n316 Unfortunately, a cancelling or balancing approach that compares the personhood interests of humans and corporations has serious flaws. The assignment of a personhood interest to a corporate entity is incongruous with Professor Radin's conception of personhood, notwithstanding the status of legal personhood enjoyed by corporations. n317 Corporate personhood is generally acknowledged to be a mere legal fiction, utilized for reasons of economic efficiency n318 or convenient terminology. n319 Personhood [*660] theories of property seek to protect the moral status or dignity of personhood, n320 rather than mere legal status. Legal corporate personhood is thus insufficient to bring corporate property into a regime of market-inalienability. As noted earlier, n321 one indicium of a personhood interest in property is that its owner places a greater-than-market value on the property. While this is often a reliable indicium when applied to natural persons, it is entirely unreliable when applied to corporations. Corporate willingness to pay more than market value is simply an indication that the corporation is able to realize greater than market returns from the property. Such willingness is not a measure of the corporation's personhood or proprietary interest in the property, but rather an indication that market pricing may be flawed by such factors as imperfect information. In the kingdom of corporate ends, everything has a price and nothing has a dignity. n322 Unlike some personhood interests of natural persons, it is difficult to come up with any examples of interests that are inalienable to corporations. n323 A person cannot sell her body parts, but a corporation can sell its divisions, or even the entire corporation. Corporations can even sell what might be argued is analogous to personality - the corporate "good will" - though in practice this might require the sale of the entire corporation. In the end, the concept of protecting the inalienable or noncommodifiable interests of firms is not supportable. Thus, the cancelling or balancing approach is unsatisfactory as a means of allocating rights in employee inventions. 3. A Disaggregation Approach a. The Fungible/Personal Dichotomy If corporations cannot have protectable personhood interests in property, can personhood theory provide a means of resolving preinvention disputes? I believe that it can - precisely because it distinguishes [*661] between corporations and individuals. The traditional property theories, discussed in Section III.B., failed to resolve preinvention assignment disputes because they could not distinguish between the employee-inventor and employer. The first approach discussed in this Section, the non-appropriability approach and its several variations, distinguishes employee-inventor from employer but seems to protect too much. The cancelling or balancing approach, like traditional property models, fails because it equates corporate and individual interests and does so imperfectly. The solution proposed here is to disaggregate the rights attaching to an invention, identifying and protecting those rights that have the most important personality consequences, while treating the others as alienable. Disaggregation is a familiar - if not essential - concept in any scheme of intellectual property. In copyright, for example, books are conceptually disaggregated into the physical thing and the idea. The buyer gets the physical object when she purchases the book, but the author keeps the form of expression which embodies her personality. This aspect of the work - the author's expression - is protected by copyright. n324 The idea/expression dichotomy is codified in the Copyright Code. n325 Similar idea/embodiment and idea/layout dichotomies are familiar to patent law n326 and mask work protection, n327 respectively. The key to allocating rights in employee preinventions under a personhood theory, then, is the establishment of a "fungible/personal" dichotomy. n328 This is both consistent with personhood theory, which accommodates partially commodifiable goods, n329 and with intellectual property theory, which accommodates disaggregation of property rights in things. In fact, patent law already recognizes a fungible/personal dichotomy: credit for inventorship is seen as personal and therefore inalienable, while all other rights attaching to inventions are seen as fungible and therefore alienable. Why aren't rights other than inventorship credit treated as personal? [*662] One possibility is that the rights are viewed from an external rather than internal perspective. At times, society identifies an inventor with her creation. Thus, creative credit is noncommodifiable. But as was stressed previously, n330 it is how the inventor identifies herself that is more significant. n331 For an inventor, this self-identification is done largely through the inventive process - through her work with the invention. b. The Personhood or Inventor's Defense Professor Radin's treatment of work provides guidance as to which of the inventor's interests should be protected: those that contribute to the inventor's self-conception in ways inseparable from the inventive process, those that contribute to her continuity in the inventive process, and those that contribute to her control over the inventive process. n332 Each of these interests can be protected by granting the inventor continued access to her invention independent of her employment relationship with the assignee. "Access" is used here in a fairly broad sense: the continuing ability to make use of the invention. If an employee created an invention during the course of employment that was patented in the employee's name and assigned to the employer under a preinvention assignment agreement, the inventor could enjoy continuing access to the invention through the availability of an affirmative "personhood" or "inventor's" defense to patent infringement actions. The defense would be personal to the inventor and would protect only uses that were justifiably bound up with personhood. The personhood defense would have the effect of granting inventors a personal "reverse shop-right" in their inventions. n333 This reverse shop-right would permit employee-inventors to make, use, and sell their invention outside the employment relationship. This right would be inalienable. Thus, if an employee-inventor found that her employment relationship was not constitutive of personality vis-a-vis her invention, she would be free to leave the employer while continuing to exploit the invention on her own. [*663] The employer, for its part, would also be free to exploit the invention. Furthermore, the employer would be free to treat its interest in the invention as fungible - that is, it could assign, transfer, or license the invention to another - while the employee-inventor could not. Thus, the employer would not "lose" its investment in research under this proposal. Rather, the employer would get nearly the same rights as under current preinvention assignment agreement schemes, the only distinction being that the formerly exclusive rights would now not exclude the inventor herself. Two additional elements would be needed to support the personhood defense. First, there must be some means of protecting ex-employee-inventors from the threat of vexatious litigation on the part of employers. By their very nature, personhood defense cases will tend to pit individuals and small entrepreneurial corporations against large established corporations. The threat of costly litigation would deter many individuals and small corporations, even those confident that their use was protected, from exploiting personal inventions. A rebuttable presumption of personal use, combined with a reduced threshold for imposing sanctions for frivolous or vexatious litigation on the part of employers, may help to reduce these potential problems. n334 Second, employers might try to contract around the personhood defense by requiring technical employees to sign long-term employment contracts or by utilizing noncompetition clauses in employment contracts. The personhood defense should be applied to breach-of-contract actions that attempt to prevent employee-inventors from using their inventions in ways that are constitutive of personhood, or that attempt to recover employee-inventor profits or employer losses from such uses. c. Some Applications of the Personhood Defense and Comparisons to Current Doctrines There are, of course, many uses for inventions. These cover the spectrum from the fully commodified to the fully personal. In order to be sufficiently protective of personhood, the defense would apply to those uses that contained a significant element of personality. The following examples indicate some of the activities to which the defense might apply. Each is compared with a current patent doctrine that does not adequately protect the personhood interests of inventors. i. Private Personal Use An inventor's private personal use of her invention for experimental purposes would be a protected use under the scheme outlined above. [*664] Such a use clearly contributes to the inventor's continuity and control over the inventive process and thus is constitutive of personhood. Thus, for example, the inventor would be free to use the invention for the purposes of developing a new invention. The inventor would be free to make any commercial use of the new invention and be immune to infringement charges for her commercially motivated use of the assigned invention. The use of the assigned invention can be deemed personal because it contributed to the continuity of the inventive process. ii. As Compared to the Experimental Use Doctrine Current patent law provides for an experimental use defense to infringement actions. n335 This judicially created defense is not limited to inventors and is unavailable if the experimental use is related to business or commercial purposes. n336 The experimental use defense is an overbroad form of personhood protection because even non-inventors may invoke it. n337 It is underprotective of personhood interests because it does not protect commercial uses that may be constitutive of an inventor's personhood. The personhood defense would expand the experimental use doctrine to allow any experimental use of the invention by the former employee-inventor, even if commercially motivated. iii. Personal or Professional Commercial Exploitation Even the inventor's direct commercial exploitation of the invention could be sufficiently personal to be immune from infringement under the personhood defense. n338 A direct commercial exploitation would be sufficiently personal if it were justifiably constitutive of the inventor's personhood, either personally or professionally. An example of a protected personal use would be the creation of a new invention dependent upon the original invention. An example of a protected professional use would be the commercial development of the invention. Thus, if the inventor were to found and manage a company for the purpose of exploiting the invention, this activity might be immune from charges of infringement. The founding of a company based upon one's inventive product can be justifiably constitutive of personhood. n339 However, not every professional [*665] involvement with the invention would be protected. For example, the mere subsequent employment of an inventor by someone other than the patentee would not ordinarily immunize the subsequent employer from liability for infringement. iv. As Compared to the Assignor Estoppel Doctrine The protection of personal or professional commercial exploitation as described above would help the courts resolve the particularly difficult problems they have had over the years with the doctrine of assignor estoppel. The judicially created doctrine of assignor estoppel precludes patent assignors, typically employee-inventors, from contesting the validity of patents that they have assigned, typically in infringement actions brought by their former employers. n340 Assignor estoppel has proved particularly problematic for the courts n341 because it represents a clash between the principles of contract and patent law. Justice Harlan expressed this conflict as follows: On the one hand, the law of contracts forbids a purchaser to repudiate his promises simply because he later becomes dissatisfied with the bargain he has made. On the other hand, federal law requires that all ideas in general circulation be dedicated to the common good unless they are protected by a valid patent. n342 [*666] Proponents of assignor estoppel feel that the doctrine is necessary to protect employers' investment in research and development. n343 Opponents counter that the realities inherent in the bargaining process and the patent application procedure belie the assumption, implicit in the doctrine, that the employee-inventor has previously attested to the validity of the patent. n344 The debate over the question of assignor estoppel has been so heated because the stakes are so high and the options so poor. The employee-inventor has no good alternatives, particularly when her personhood interests are considered. Under assignor estoppel, she cannot develop her freedom, identity, and contextuality through continued access to her invention. Even if assignor estoppel is held inapplicable, she must either relinquish access (and thus, development of personhood) or diminish her personhood by asserting that her invention was not patentable. If the employee-inventor chooses the latter route and prevails, the invention enters the public domain and anyone, not just employer and employee-inventor, may practice it. In this case the employer indeed has little to show for its research and development investment. Courts are asking the wrong questions in these cases. Rather than inquiring whether employee-inventors ought to be allowed to attack the patentability of their inventions, courts should consider whether employee-inventors can be divested of all interests in an invention through a preinvention assignment agreement. The personhood defense answers this question through a careful examination of the employee-inventor's relationship to the invention, rather than divorcing the invention from the creator by precluding the employee-inventor from even addressing the work's patentability. The personhood defense approach is preferable to the assignor estoppel approach because it is constitutive rather than destructive of an employee-inventor's personality. n345 V Conclusion This Comment has attempted to resolve a problem recognized for years but resistant to reform efforts: the allocation of rights to future [*667] inventions between employee-inventors and their corporate employers. It suggests the basis for a workable solution to this age-old problem: to treat the justifiable personhood interests of employee-inventors as market-inalienable and to make all other interests fully commodifiable. This proposed framework focuses on the nature of the property in dispute rather than on the relationship between the parties. It is based on a "hybrid" conception of invention that recognizes the contributions of both individuals and firms, rather than only the "hero-inventor" or "team-as-hero." It thus provides a more flexible means of protecting the interests of both employee-inventors and their corporate employers. The proposed personhood approach has two primary policy implications. First, it recognizes the contributions of corporate employers where appropriate by allowing corporations to claim inventorship under the Patent Code when an invention is the anticipated result of corporate direction. Second, this approach protects the justifiable personality interests of employee-inventors in their inventions by providing a personhood defense to infringement actions. These two recommendations are complementary: some employee-inventors will reap increased rights in their inventions, but many inventions will remain in the corporate name, beyond exploitation by employee-inventors. The personhood approach suggested here is consistent with the distinctive nature of intellectual property discussed earlier. Intellectual property has both "free good" and "public good" attributes. n346 The "free good" attribute allows the employee-inventor and employer to exploit the invention simultaneously without depriving either party of its use or enjoyment; the "public good" attribute necessitates that the personhood defense be personal to the inventor and non-transferable. This circumscribed exception to the employer-inventor's exclusive patent rights will continue to exclude free-riders who do not contribute significantly to the production of the invention. Intellectual property rights are also of limited scope and duration. n347 They protect only certain of the "bundle of rights" associated with tangible property. Consequently, the disaggregation of interests in inventions and the reduction in the scope of the employer's right to exclude personal and commercial uses by the employee-inventor do not undercut the integrity of the intellectual property protection. Finally, intellectual property has traditionally been thought of as a "democratic" form of property. n348 The retention of residual rights by individual employee-inventors will tend to be wealth-redistributive. It will cause some - though, in all likelihood, relatively little - shift of [*668] wealth from corporations to individuals. It will to some extent empower individual employee-inventors to compete against large corporations. The personhood approach supplements the traditional theoretical property justifications discussed earlier in Section III.B. Under traditional theories, both employee-inventors and employers can articulate persuasive arguments for intellectual property protection. These theories cannot, however, adequately distinguish between the claims of employee-inventors and employers, and personhood theory provides a useful tool for allocating rights in a reasoned, justifiable manner. Ultimately, of course, employee-inventors are perfectly capable of acting to protect their personhood interests themselves, either by becoming independent inventors or by becoming non-inventors. They may move to other fields of work where their personhood interests are less likely to be appropriated by firms or where individual activity is more practicable. n349 However, their departure can turn into a serious resource allocation problem for society. In a perverse way, then, current patent and contract doctrine may be reducing rather than enhancing social welfare. Because the control of ideas confers substantial benefits on inventors, intellectual property structures are likely to arise in any social system containing self-interested actors. Even without governmental assistance, individual innovators will do their utmost to create a regime that rewards creativity; the only question is whether the results will be better or worse than the governmental alternative. n350 Although this Comment has emphasized normative rather than instrumental concerns, the normative problems with preinvention assignments do not exist in an instrumental vacuum. America's declining productivity growth, n351 rate of innovation, n352 and supply of engineers and scientists n353 have been the cause of great concern in recent years. n354 [*669] Perhaps the alienation (in every sense) of the American technologist is, in some part, to blame. FOOTNOTES: n1. Ralph W. Emerson, lecture, quoted in The Penguin Dictionary of Quotations 155 (J.M. Cohen & M.J. Cohen eds., 1977). n2. A preinvention assignment agreement is a clause of an employment contract that obligates the employee to assign to the employer all interests in any future inventions conceived during (and in some cases, before and after) the employment term. n3. Unless otherwise stated, "invention" is used in this Comment as shorthand for patentable invention or discovery. n4. The phrase "employee-inventors" is used in this Comment to indicate that the individual is employed (by another individual, a corporation, a government, or others), not to indicate the type of employment (that is, employed as an inventor). n5. 6 Donald S. Chisum, Patents: A Treatise on the Law of Patentability, Validity, and Infringement 22.03, at 22-8.1 (1992). n6. For examples of judicial decisions concerning the allocation of rights between employee-inventors and employers, see infra notes 93-124 and accompanying text. A partial list of commentary on the subject includes Robert L. Gullette, Fact or Fiction: Legislative Control of Employer-Employee Ownership Rights in Inventions and Other Intellectual Property, 1985 Pat. L. Ann. 7-1; Christopher M. Mislow, Necessity May Be the Mother of Invention, but Who Gets Custody? The Ownership of Intellectual Property Created by an Employed Inventor, 1 Computer & High-Tech. L.J. 59 (1985); Arthur Nobile, Experiences with Industrial Patent Policy, in Patent Policy: Government, Academic, and Industry Concepts 156 (Willard Marcy ed., 1978) hereinafter Patent Policy; John P. Sutton, The Inventor's Interest, in Patent Policy, supra, at 150; Paul C. Van Slyke & Mark M. Friedman, Employer's Rights to Inventions and Patents of Its Officers, Directors and Employees, 18 Am. Intell. Prop. L. Ass'n Q.J. 127 (1990); Richard C. Witte & Eric W. Guttag, Employee Inventions, 71 J. Pat. & Trademark Off. Soc'y 467 (1989); Arvid V. Zuber, Impact of Patent Policies on Creativity in Industrial Research Laboratories, in Patent Policy, supra, at 145; Jay Dratler, Jr., Note, Incentives for People: The Forgotten Purpose of the Patent System, 16 Harv. J. on Legis. 129 (1979); Lucy Gamon, Note, Patent Law in the Context of Corporate Research, 8 J. Corp. L. 497 (1983); William P. Hovell, Note, Patent Ownership: An Employer's Rights to His Employee's Invention, 58 Notre Dame L. Rev. 863 (1983); Henrik D. Parker, Note, Reform for Rights of Employed Inventors, 57 S. Cal. L. Rev. 603 (1984); Thomas C. Siekman, Comment, Employer's and Employee's Rights in Patents Arising from the Employment, 11 Vill. L. Rev. 823 (1966). For a discussion of legislative treatment of this area, see infra Section II.D. n7. The employee typically receives a token payment in exchange for the assignment. Some firms may make more than a token payment, however, perhaps even a percentage of the value of the invention or of the royalties accruing from the invention. It will generally be assumed here that any consideration received by the employee in return for her promise to assign future inventions to her employer is either nominal or substantially less than the value of the inventions. Thus, the arguments put forward here are independent of consideration. For a discussion of consideration in the context of preinvention assignment agreements, see infra notes 124-30 and accompanying text. n8. See infra notes 106-07 and accompanying text. Some states do impose statutory limits on the scope of such agreements, however. See infra notes note 136-37 and accompanying text. n9. 35 U.S.C. 1-376 (1988 & Supp. II 1990). n10. The phrase "inventor-entity" is used in this Comment to refer to the combination of employee-inventor and employer. n11. The very nature of bargaining for nonexistent inventions tends to favor the employer. See infra note 126 and accompanying text. n12. The positive law of preinvention assignment agreements is fairly well settled; such agreements are valid and enforceable. See infra note 106 and accompanying text. n13. This is how Judge Harry Edwards defines a "hard" case. See Harry T. Edwards, The Growing Disjunction Between Legal Education and the Legal Profession, 91 Mich. L. Rev. 34, 44 (1992). n14. The employer will generally be assumed to be a corporation. At some points in this Comment, the corporate status of the employer is an explicit and important part of the discussion. For the most part, however, terms such as "employer," "corporation," and "firm" will be used interchangeably. n15. By most estimates, 80% to 90% of all patentable inventions are the product of employee-inventors. See, e.g., Ingersoll Rand Co. v. Ciavatta, 542 A.2d 879, 886 (N.J. 1988); A. Samuel Oddi, Beyond Obviousness: Invention Protection in the Twenty-First Century, 38 Am. U. L. Rev. 1097, 1136 n.219 (1989); Parker, supra note 6, at 604. n16. U.S. Const. art. I, 8, cl. 8. n17. See, e.g., Goldstein v. California, 412 U.S. 546, 561 (1973) (describing the constitutional meaning of "author" as " "originator,' "he to whom anything owes its origin' " and of "writings" as "any physical rendering of the fruits of creative intellectual or aesthetic labor") (quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)); see also Feist Publications, Inc. v. Rural Tel. Serv. Co., 111 S. Ct. 1282, 1288 (1991) (discussing the constitutional meanings of "author" and "writings"); Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989) ("As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection."). n18. See Donald S. Chisum, The Patentability of Algorithms, 47 U. Pitt. L. Rev. 959, 1013 (1986) (noting paucity of Supreme Court rulings on meaning of inventorship). n19. See, e.g., Whitely v. Swayne, 74 U.S. (7 Wall.) 685, 687 (1868) ("He is the first inventor, and entitled to the patent, who, being an original discoverer, has first perfected and adapted the invention to actual use."). n20. William B. Bennett, The American Patent System: An Economic Interpretation 27 (1943). n21. 35 U.S.C. 101 (1988). n22. Id. n23. Id. 102. n24. Id. 103. n25. See, e.g., Jay Dratler, Jr., Intellectual Property Law: Commercial, Creative, and Industrial Property 2.02 (1991). n26. Id. n27. 35 U.S.C. 154 (1988). n28. Fourteen years for a design patent, id. 173, and 17 years for a utility or process patent, id. 154. n29. As will be discussed infra Section III.B, the right of an inventor to practice her own invention is based on common law rather than statute. n30. For example, inventor A's valid patent for a self-cleaning bathtub may be blocked by inventor B's basic bathtub patent. n31. See 35 U.S.C. 115 (1988) (requiring that the "applicant shall make oath that he believes himself to be the original and first inventor of the invention for which he solicits a patent," a requirement that no corporate person could fulfill); 6 Chisum, supra note 5, 22.01; Van Slyke & Friedman, supra note 6, at 128 n.2; Dratler, supra note 6, at 141. Despite the common designation of the corporate entity as a "legal person," the rights accorded to corporations are limited in areas of the law beyond property. For example, a corporation is not a citizen, is not protected by the liberty provision of the Fourteenth Amendment, may not assert a right against self-incrimination, and is not protected by the Privileges and Immunities Clause of the Constitution. See Note, Constitutional Rights of the Corporate Person, 91 Yale L.J. 1641, 1644 (1982). n32. This is especially surprising in light of the fact that patent law may be unique among forms of American intellectual property in this preclusion of "creatorship" by the corporate entity. The Copyright Code, for example, provides that the "employer or other person for whom a work was prepared is considered the author" of such work. 17 U.S.C. 101, 201(b) (1988 & Supp. III 1991). But the scope of copyright protection for corporate authors is not precisely the same in all respects as for human authors. For example, due to the theoretically infinite lifetime of corporations, copyright protection for works made for hire "endures for a term of seventy-five years from the year of its first publication, or a term of one hundred years from the year of its creation, whichever expires first" rather than the "life of the author and fifty years" duration of protection for works of human authorship. Id. 302(a), (c). Similarly, the Semiconductor Chip Protection Act of 1984 SCPA, a sui generis form of intellectual property protection for mask works fixed in semiconductor chip products provides authorship rights to financing entities. See id. 901(6), 902. The "human inventor" requirement in the Patent Code may be explained by the higher threshold of originality and novelty needed for protection under this Code than under the Copyright Code or the SCPA. Note that while the Patent Code does not recognize corporate inventors, it does recognize that an invention may be the result of a collaborative effort among several humans. See 35 U.S.C. 116 (1988) (providing for joint inventorship). The question of corporate inventorship is explored further infra Section IV.B. n33. The procedural requirements of a patent application include the identification of the inventor and the performance of certain acts by the inventor. See, e.g., 35 U.S.C. 115 (1988) (requiring the oath of the inventor); id. 111 (requiring a written application). n34. "Power" is used in the Hohfeldian sense that the holder of a power can alter the legal position of either herself or another. In Hohfeldian terms, non-inventors have a "liability" with respect to inventions: they are susceptible to having their legal position altered. See Wesley N. Hohfeld, Fundamental Legal Conceptions as Applied in Judicial Reasoning 7, 50-60 (Walter W. Cook ed., 1923); see also Stephen R. Munzer, A Theory of Property 18-19 (1990) (discussing Hohfeld's "power/liability" legal conception). n35. See James O. Grunebaum, Private Ownership 4 (1987) ("Ownership in general is a right constituted relationship, or set of relationships, between persons with respect to things."). Again, "right" is used in the Hohfeldian sense of entailing a duty in others, here the duty to refrain from making, using, or selling the subject matter of the patent for a period of 17 years after the patent issues. See Hohfeld, supra note 34, at 6-7, 36-38; see also Munzer, supra note 34, at 18 (discussing Hohfeld's "right/duty" correlative relationship). n36. 35 U.S.C. 261 (1988). n37. Id. n38. Id. 152. n39. See Dorsey Harvester Revolving-Rake Co. v. Marsh, 7 F. Cas. 939, 942 (C.C.E.D. Pa. 1873) (No. 4,014) ("The right to acquire and hold patents is here clearly given to corporations ...."). n40. The phrase is borrowed from Robert B. Reich, Entrepreneurship Reconsidered: The Team as Hero, Harv. Bus. Rev., May-June 1987, at 77 (arguing that American industry must strive for a model of collective entrepreneurship, as portrayed in Tracy Kidder's portrayal of the computer industry, The Soul of a New Machine, rather than the old model of "heroes and drones"). n41. Interesting biographies of these hero-inventors include: Robert V. Bruce, Bell: Alexander Graham Bell and the Conquest of Solitude (1973); Constance McL. Green, Eli Whitney and the Birth of American Technology (1956); and Working at Inventing: Thomas A. Edison and the Menlo Park Experience (William S. Pretzer ed., 1989) hereinafter Working at Inventing. For a description of hero-inventors generally, see Roger Burlingame, Inventors Behind the Inventor 3 (1947): When you say the word inventor to most Americans, a lot of pictures jump suddenly into their minds. They see Samuel Morse with his great white beard and his chest covered with medals standing by a telegraph key, ticking off the message "What Hath God Wrought." They see Robert Fulton watching his awkward little steamboat with great clouds of black smoke pouring out of it, crawling up the Hudson. They see Eli Whitney grinding away at his cotton gin and they see Edison standing stiffly by a large incandescent bulb, considerably bored by the crowd of admirers round him. Some Americans even see Henry Ford watching his cars roll twenty seconds apart off his assembly line at River Rouge. These are all pictures of popular Americans heroes. There is a regular parade of them before your mind's eye whenever anyone says the word inventor. This "regular parade" of familiar images does not accurately reflect the diversity of early American or, for that matter, contemporary American inventors. For a discussion of the contributions of women inventors, see Anne L. Macdonald, Feminine Ingenuity: Women and Invention in America (1992). For a discussion of the contributions of African-American inventors, see Portia P. James, The Real McCoy: African-American Invention and Innovation, 1619-1930 (1989). n42. See Burlingame, supra note 41, at 4 ("The old-time inventor hero is no longer there when you go to look for him."); Macdonald, supra note 41, at 333 (noting that during the course of the 20th century, "women inventors had apparently ceased to be the heroines they once had been to their sisters."). There are well-known technologists, to be sure, but to a large extent the "hero-inventor" has been supplanted in popular folklore by the "hero-entrepreneur." Individuals such as Steven Jobs (Apple Computer and Next, Inc.), Bill Gates (Microsoft), and other well-known "technologists" are really famous for their business exploits rather than for any personal technological achievements. See, e.g., Kenneth A. Brown, Inventors at Work 219 (1988). Brown notes, in an introduction his to interview with Steven Wozniak, designer of the Apple II personal computer, that "Wozniak was the thinker behind Apple Computer; Jobs was the driver. While Wozniak designed computers, Jobs set about marketing them." Id. n43. For example, technological "advances" are more often seen as a mixed blessing today than in the past. See, e.g., Samuel C. Florman, The Existential Pleasures of Engineering 45 (1976) (describing the anti-technology movement of the 1960s and '70s that held "technology to be the root of all evil"). n44. This Section relies in large part on John Jewkes et al., The Sources of Invention (1958). Written in 1958 and revised and enlarged in 1969, this thoughtful essay remains a fruitful starting point for any study on the nature of invention and innovation. n45. The term "inventorship paradigm" here refers to the nature of the inventor-entity and has nothing to do with the subject matter, theory, technology, or techniques of the underlying invention. The term is used to refer to typical or representative descriptions of who or what invents, both individually and within organizations. Thus, inventorship paradigms describe inventor-entity organizational structures and interactions, or invention environments. Inventorship paradigms are to be distinguished from scientific paradigms as that term is used by Thomas S. Kuhn in his influential essay, The Structure of Scientific Revolutions. Kuhn uses the term "scientific paradigm" to refer to an unprecedented achievement that establishes a school of scientific thought. Thus, Newtonian dynamics and Copernican astronomy are examples of scientific paradigms. Thomas S. Kuhn, The Structure of Scientific Revolutions 10 (2d ed. enlarged 1970). Inventorship paradigms can be used both as an attempt to describe and catalog inventor-entities (and thus have the attributes of "model") and as a description of the public (or judicial or legislative) perception of inventor-entities (and thus have the attributes of "metaphor"). n46. George E. Folk, Patents and Industrial Progress 144 (1942); see also Sutton, supra note 6, at 150 ("In 1790, when the first patent act was passed, there was no middle man between Government and Inventors. The inventor disclosed his invention in return for the right to exclude others for limited times."). n47. See supra text accompanying note 1. n48. See E. Burke Inlow, The Patent Grant 37 (1950) (describing the 18th century in America as the "age of home industry"). n49. For a detailed discussion of Eli Whitney and his invention of the cotton gin, see Green, supra note 41. n50. In fact, Whitney studied at Yale with the eventual goal of practicing law: In the late eighteenth century ... Yale was still primarily a training school for the pulpit, for the teacher's rostrum, for the bar and thence for posts of public responsibility. To attend college as preparation for an inventor's or manufacturer's career would have seemed a bizarre notion to the men of the time. Whitney himself had no such thought. Id. at 29. n51. Id. at 45-46. For a quite different account of the invention of the cotton gin, attributing significant inventive credit to Whitney's South Carolina hostess, Catherine Greene, see Macdonald, supra note 41, at xx-xxiv. Macdonald relates several versions of the invention, including the following: When the cotton clogged the wooden teeth of Whitney's model, Greene remarked laughingly, "What! Allow such a trifle as that worry you? Trust to a woman's wit to find the cure," seized the wire hearth-brush, and suggested to Whitney that he use it to comb through the cotton. Whitney gallantly replied, "Thank you for the hint. I think I have it now," and repaired to his workshop where he eventually developed the machine he patented - the one with wire teeth. Id. at xxi. But see Green, supra note 41, at 48 (discounting the contribution of Catherine Greene). n52. Green, supra note 41, at 48. n53. There were, for example, only seven joint-stock companies and corporations in existence in 1780. Inlow, supra note 48, at 37. n54. See, e.g., Brown, supra note 42 (containing interviews with several prolific independent inventors); Edmund L. Andrews, Rich in the 90's on Ideas Hatched in the 50's, N.Y. Times, Nov. 13, 1992, at A1 (describing Jerome Lemelson, an independent inventor who has obtained nearly 500 patents); Carlos V. Greth, Technical Tinkerers, Chi. Trib., Nov. 18, 1990, at C6 (describing the work of independent inventors); Robert Kanigel, One Man's Mousetraps, N.Y. Times, May 17, 1987, 6 (Magazine), at 48 (same). n55. This trend reflects the transformation of American society during the same period from individualist to organizational. See, e.g., Meir Dan-Cohen, Rights, Persons, and Organizations: A Legal Theory for Bureaucratic Society 13 (1986) ("In the early nineteenth century, four out of five Americans were self-employed; the number is now less than one in ten." Id. at 212 n.3) (quoting Charles Lindblom, Politics and Markets 28 (1977)); Paul Israel, From Machine Shop to Industrial Laboratory: Telegraphy and the Changing Context of American Invention, 1870-1920, at 151 (1992) (noting that changes in the post-Civil War telegraph industry "reflected a general transformation taking place in American society, as economic and political power began to shift from individuals to large-scale bureaucratic organizations"). n56. See, e.g., Israel, supra note 55, at 121-51. n57. Id. n58. Id. at 130. n59. See, e.g., Thomas P. Hughes, Thomas Alva Edison and the Rise of Electricity, in Technology in America: A History of Individuals and Ideas 117, 119 (Carroll W. Pursell, Jr. ed., 1990) hereinafter Technology in America; David A. Hounshell, The Modernity of Menlo Park, in Working at Inventing, supra note 41, at 116 (characterizing Edison's laboratory as the model for 20th-century research and development facilities). Edison was a "hero-inventor" who fully understood the value of the "team-as-hero" and thus embodied both paradigms. See, e.g., Paul Israel, Telegraphy and Edison's Invention Factory, in Working at Inventing, supra note 41, at 66. In many ways, Edison's story is the story of a change in America; the story of how all work and effort from being separate, free, individual, disjointed, became organized and coordinated until finally, the team replaced the lone wolf in almost every department of life and work including technological invention. Perhaps the most curious aspect of the whole story is Edison's part in this change. For, after his wandering career as one of the most rugged individuals in the history of invention, he became the pioneer of its collectivization; the first American to apply teamwork to a pursuit which, above all others, was traditionally the property of lonely investigators living in garrets and carrying on their researches by the light of a candle shining dimly through cobwebs. Burlingame, supra note 41, at 178. n60. Reese V. Jenkins, George Eastman and the Coming of Industrial Research in America, in Technology in America, supra note 59, at 129. n61. Id. n62. Some of the reasons include: the growth of monopolies and conglomerates which collected the capital and human resources necessary for the establishment of corporate laboratories, see, e.g., Burlingame, supra note 41, at 193-94; William S. Pretzer, Introduction: The Meanings of the Two Menlo Parks, in Working at Inventing, supra note 41, at 12, 17 (noting that Edison received funding for the Menlo Park laboratory from Western Union, "one of the great American monopolies"); the great need for invention created by the growth of the country and the development of new technologies, see, e.g., Burlingame, supra note 41, at 194-95; the parallel development of corporate and academic research in Europe, see, e.g., Israel, supra note 59, at 83; Jenkins, supra note 60, at 136-38; and the growing availability of academically trained scientists and engineers, see, e.g., Jenkins, supra note 60, at 141. n63. Jewkes et al., supra note 44, at 182. The combination of these functions within the firm was intended to further the following goals: First, to gather together more of the resources incidental to research, to provide the research worker with the best aids, devices and working conditions; second, to encourage co-operation between different minds, and third, to try to give some guidance about the kind of inventions which would be most useful to the firm. Id. at 132. As Jewkes points out, while the first goal is attainable in industrial laboratories, the latter two are far more elusive. Id. at 133-34. Perhaps more to the point, the latter two goals are really aimed at innovation rather than invention. n64. Thomas M. Jorde & David J. Teece, Innovation, Cooperation and Antitrust, 4 High Tech. L.J. 1, 5 (1989). n65. Not all discoveries are inventions, of course. For a definition of "invention," see supra notes 3, 21-26 and accompanying text. n66. Jorde & Teece, supra note 64, at 5. n67. Id. n68. Michael Schrage, Innovation and Applied Failure, Harv. Bus. Rev., Nov.-Dec. 1989, at 42, 43. n69. These distractions include the provision of "atmosphere, background information, direction and resources in terms of space, heat, light, equipment, time, supporting services, salary and in many cases the identification of the problem to be solved." H. Fredrick Hamann, Invention in the Corporate Environment, 1 Am. Pat. L. Ann. Q.J. 102, 106 (1972). n70. Edison himself was one of the first "professional inventors." See Burlingame, supra note 41, at 190-91. n71. It would be overly simplistic to characterize 18th-century invention as "empirical" (that is, somewhat accidental or not based on prior scientific knowledge) and 20th-century invention as "scientific." There is some truth, however, in Jewkes' characterization of "an earlier heroic age of clumsy individual pioneering and a modern age in which highly trained, closely organised teams of technologists, fortified by an easily accessible and constantly expanding body of scientific knowledge, move forward with deliberation to results which can largely be predetermined." Jewkes et al., supra note 44, at 32; see also Newton H. Copp & Andrew W. Zanella, Discovery, Innovation, and Risk 5-9 (1993) (contrasting the trial-and-error approach to technology taken in the 18th and early 19th centuries to the more systematic and scientific approach taken in the late 19th and 20th centuries). n72. See, e.g., Copp & Zanella, supra note 71, at 5 (noting how the relationship between engineering and the natural sciences has grown notably closer over the past 100 to 150 years); Edwin T. Layton, Jr., The Revolt of the Engineers: Social Responsibility and the American Engineering Profession 38 (1986) ("The professionalization of engineering was everywhere associated with the shift from a craft to a scientific base for the underlying technology ...."); Bruce Sinclair, Thomas P. Jones and the Evolution of Technical Education, in Technology in America, supra note 59, at 62-70 (describing the development of scientifically oriented technical education in America). The difference between science and engineering has been expressed in the following terms: "Scientists seek general patterns in nature that can be summarized in models and theories. ... Engineers have come to use much of the methodology of science, but the nature of the questions differ from science as engineers seek better machines, structures, systems, chemicals, or processes." Copp & Zanella, supra note 71, at 5. n73. S.C. Hollister, The Inventor's Contribution to Engineering Progress, in United States Patent Law Sesquicentennial Celebration 5, 7 (U.S. Patent Office, Dep't of Commerce ed., 1941). n74. Routinized invention may have a certain attraction to firms seeking specific results or maintenance of the status quo. But routinized invention may not be in the best interests of society, which benefits most from revolutionary inventions. One commentator has described routinized invention thus: Unfortunately, there is a trade-off involved in industrial laboratories.... The director of ... a leading German chemical manufacturer, decided that industrial laboratories routinized invention. He characterized the inventions of industrial research laboratories as establishment or institutional inventions that had von Gedankenblitz keine Spur (no trace of a flash of genius). Schrage, supra note 68, at 43 (third alteration in original). In the terminology of Thomas Kuhn, industrial laboratories do not produce invention paradigms, but rather "normal invention" (that is, they work within established paradigms). See Kuhn, supra note 45, at 10-34; see also Floyd L. Vaughan, The United States Patent System: Legal and Economic Conflicts in American Patent History 276 (1956) ("In spite of, and partly because of, these alleged advantages of industrial laboratories, the employed inventor seldom brings forth a great invention, although he and his fellow-employees are very effective in developing and improving the inventions of others ...."). n75. It is also debatable whether technical training (or current levels of technical training) is even desirable as a means of fostering invention. See, e.g., Burlingame, supra note 41, at 182 (noting that the famous radio inventor Edward Howard Armstrong believed that too much scientific schooling may hinder an inventor). n76. There are, of course, exceptions to this rule. For example, some corporations with hierarchical technician (non-degreed) and engineer (degreed) job classifications occasionally permit exceptionally talented or experienced technicians to jump to the engineer classification. n77. For example, formally trained engineers tend to be theoretical inventors rather than experimental inventors. See, e.g., Burlingame, supra note 41, at 180-83. n78. Professionalization has made it more difficult for those who do not meet the preconceived corporate profile of "inventor" to obtain access to and positions of responsibility in research facilities. In 1957, for example, then-director of RCA Patent Operations, Clarence Tuska, an "admittedly "old-fashioned' man," pointed out that the "Lord intended women to be mothers rather than inventors." Macdonald, supra note 41, at 334. Many lab directors today doubtless share Mr. Tuska's sentiments. For a discussion of the historical and continuing structural barriers faced by women in engineering and the physical sciences, see Shirley M. Tilghman, Science vs. the Female Scientist, N.Y. Times, Jan. 25, 1993, at A11 (noting that women earn just seven percent of new engineering doctorates and that little progress has been made on this front in the last 50 years). See also Deborah L. Rhode, Perspectives on Professional Women, 40 Stan. L. Rev. 1163 (1988) (discussing women in the professions generally, including engineering). n79. See, e.g., James, supra note 41, at 15: As technology became more complicated, inventors in emerging fields began to have more formal education. Advanced degrees in engineering and the sciences were necessary to participate in these new technologies. Blacks found it difficult to get access to higher education and also found it difficult to obtain research staff positions. See also id. at 95-96 (describing how African-American men and women have historically found it difficult to obtain the requisite degrees for corporate technical employment and to overcome the reluctance of corporations to employ them). n80. Jewkes et al., supra note 44, at 126. The professionalization of invention may thus have brought about an ironic result: fewer people enter the profession, resulting in fewer inventors and hence, fewer inventions. Prospective inventors are all but required to invest human and financial capital in technical education, driving most to careers in industrial laboratories. But careers as corporate inventors have limited upside potential because the corporation has appropriated most of the upside. This limited potential in turn deters potential inventors from investing in technical education (or at least eliminates the incentive for investing in technical education which the patent system should in theory provide). Worse yet, those who have already invested in the education and have worked in the industrial laboratories may decide to leave the profession because of the inability to realize significant gain on their inventions. n81. Smith admiringly described the mass production of pins as follows: One man draws out the wire, another straights it, a third cuts it, a fourth points it, a fifth grinds it at the top for receiving the head, to make the head requires two or three distinct operations; to put it on is a peculiar business, to whiten the pins is another; it is even a trade by itself to put them into the paper; and the important business of making a pin is, in this manner, divided into about eighteen distinct operations, which, in some manufactories, are all performed by distinct hands .... 1 Adam Smith, An Inquiry into the Nature and Causes of the Wealth of Nations 6 (James E.T. Rogers ed., 2d ed., Oxford, Clarendon Press 1880) (1776). n82. See Jewkes et al., supra note 44, at 238 ("The underlying principle, rarely formulated precisely but ever present, has been that originality can be organized ... that mass production will produce originality just as it can produce sausages."). Jewkes relates the story of a corporate executive who, upon hearing an estimate that a certain piece of research would require six men for two years, instructed the director of research to put 12 men on the job for one year. Id. at 137 n.1. n83. Id. at 132 (noting that "the industrial laboratory does not appear to be a favorable environment for inducing invention"); id. at 185 (asserting that "the large research organizations of industrial corporations have not been responsible in the past fifty years for the greater part of the significant inventions"). n84. See, e.g., Oliver E. Williamson, The Economic Institutions of Capitalism 258-59 (1985). Williamson downplays the importance of this effect, however, by noting that employees can choose between general purpose and firm-specific skills, and that highly skilled workers can usually obtain alternative employment, albeit at reduced productivity levels. Williamson fails to note that many firm- and technology-specific skills are required as a condition of continued employment and that reduced compensation often accompanies the reduced productivity. n85. Jewkes et al., supra note 44, at 184-86. n86. This might, in part, explain the general hostility of courts toward patents throughout much of the 20th century (that is, courts themselves may have devalued invention). See, e.g., Robert P. Merges, Commercial Success and Patent Standards: Economic Perspectives on Innovation, 76 Calif. L. Rev. 803, 821 n.65 (1988) (noting that the various federal circuit courts found two-thirds of patents adjudicated between 1921 and 1973 to be invalid). Some circuits (namely, the Second, Third, Eighth, and D.C. Circuits) were considerably worse. See Robert L. Risberg, Jr., Comment, Five Years Without Infringement Litigation Under the Semiconductor Chip Protection Act: Unmasking the Spectre of Chip Piracy in an Era of Diverse and Incompatible Process Technologies, 1990 Wis. L. Rev. 241, 267 n.130. The Supreme Court has been notoriously hostile to patents, at one point prompting Justice Jackson to declare that "the only patent that is valid is one which this court has not been able to get its hands on." Jungersen v. Ostby & Barton Co., 335 U.S. 560, 572 (1949) (Jackson, J., dissenting). The Court of Appeals for the Federal Circuit, formed in 1982 to have jurisdiction over patent appeals (among other duties), has been distinctly more "pro-patent" than its predecessor circuits and the Supreme Court. See Merges, supra, at 822 (noting that during its first four years, the Federal Circuit invalidated only 44% of the patents it adjudicated); Eric Schmitt, Judicial Shift in Patent Cases, N.Y. Times, Jan. 21, 1986, at D2 (noting the increasingly pro-patent sentiment of the Federal Circuit). But see Edmund L. Andrews, Rolling Back the Power of Inventors, N.Y. Times, Jan. 4, 1993, at C2 (noting a possible reversal of this trend). n87. Jewkes et al., supra note 44, at 162 n.1 (quoting S.C. Harland, Recent Progress in the Breeding of Cotton for Quality, J. Textile Inst., Conference Issue, Feb. 1955). n88. See Folk, supra note 46, at 166 ("The inventor, whether he be a lone worker or a group worker, is as important as he ever was."). n89. See, e.g., Mary H. Sears, The Corporate Patent: Reform or Retrogression, 22 Vill. L. Rev. 1085, 1120-21 nn.158-59 (1977) and sources cited therein. n90. Comments of Paul Cook, CEO of Raychem Corporation, in William Taylor, The Business of Innovation: An Interview with Paul Cook, Harv. Bus. Rev., Mar.-Apr. 1990, at 96, 98-99; see also Schrage, supra note 68, at 44 ("The most successful corporate innovation systems aren't "systems' at all. They are environments hospitable to interesting people with innovative ideas."). n91. But see infra 293-300 and accompanying text (discussing changes in the Patent Code and related case law). n92. See Melvin A. Eisenberg, The Nature of the Common Law 159-60 (1988) (discussing the court's role as gap-filler for the common law). n93. The common law allocation of property rights between employee and employer was developed over 90 years in a series of 19th- and early 20th-century Supreme Court cases culminating in the landmark case of United States v. Dubilier Condenser Corp. See McClurg v. Kingsland, 42 U.S. (1 How.) 202 (1843) (holding that the employment relationship justified the presumption of a license from employee to employer); United States v. Burns, 79 U.S. (12 Wall.) 246 (1871) (holding that employers had a right to inventions of "specifically employed" inventors); Hapgood v. Hewitt, 119 U.S. 226 (1886) (holding that an employer's implied license is personal and non-transferable); Solomons v. United States, 137 U.S. 342 (1890) (discussing the "employed to invent" doctrine); McAleer v. United States, 150 U.S. 424 (1893) (finding an express agreement to assign); Gill v. United States, 160 U.S. 426 (1896) (holding that an implied license estopped an employee from bringing an action against her employer); Standard Parts Co. v. Peck, 264 U.S. 52 (1924) (establishing the implied shop-right of an employer); United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933) (concluding that an employee not hired to invent is not obligated to assign a patent absent an express agreement). Many of the cases, including Dubilier, involved inventions of employees of the federal government. The common law concerning the allocation of rights to inventions of federal government employees have been modified by executive order and by statute, thus largely superseding Dubilier on its specific facts. See, e.g., Exec. Order No. 10,096, 3 C.F.R. 292 (1949-1953), reprinted as amended in 35 U.S.C. 266 (1988) (establishing basic policy with respect to domestic rights in inventions made by federal employees); 37 C.F.R. 501.1-.10 (1991) (regulations implementing Exec. Order 10,096); Heinemann v. United States, 796 F.2d 451 (Fed. Cir. 1986) (upholding Exec. Order 10,096), cert. denied, 490 U.S. 930 (1987); infra note 142 (discussing 15 U.S.C. 3710c-3710d (1988), which provides for mandatory compensation for inventors employed by the federal government). Nevertheless, Dubilier continues to state the general common law as to non-governmental employees. n94. Dubilier, 289 U.S. at 188 ("Employment merely to design or to construct or to devise methods of manufacture is not the same as employment to invent."). n95. Id. at 187. n96. Id. at 187-89. This shop-right extends for the duration of the patent term and does not expire with termination of the employment relationship. A derivative of the shop-right doctrine, the "reverse shop-right," is discussed infra note 333 and accompanying text. n97. Dubilier, 289 U.S. at 187-88. Interestingly, this common law allocation appears to have been based on the existence of an implied preinvention assignment agreement for inventive employees: The reason that an inventive employee is bound to assign his patents to the employer is that he has only produced that which he was employed to invent. His invention is the precise subject of the contract of employment. A term of the employment agreement necessarily is that what he is paid to produce belongs to his paymaster. On the other hand, if the employment be general, albeit it cover a field of labor and effort in the performance of which the employee conceived the invention for which he obtained the patent, the employment contract is not so broadly construed as to require an assignment of the patent. Id. at 187 (citations omitted). n98. See Eisenberg, supra note 92, at 14-42 (1988) (discussing ways in which social propositions figure into judicial reasoning). n99. For example, it can be difficult to distinguish specifically inventive from generally inventive employees on a legal basis. See, e.g., Mislow, supra note 6, at 63-67 and cases noted therein. n100. Implicit in the common law formulation is the belief that generally inventive employees should, as a matter of fairness, be entitled to patent rights in their inventions. Employers, however, undoubtedly view the common law formulation as inequitable. n101. In 1973, 84% of U.S. patents went to corporate assignees. See Parker, supra note 6, at 604 n.12. Additionally, a study of California inventors issued chemical patents during the last quarter of 1973 indicated that 90% had signed preinvention assignment agreements. Id. at 604 n.15; see also Dratler, supra note 6, at 155 (stating that "nearly all of the ... American scientists and engineers who work in industry have executed some sort of assignment agreement"). n102. The inalienable interest and the extent to which preinvention assignment agreements ought not to be enforced will be discussed infra Part IV. n103. For example, we would not analyze whether the terms of a contract for the inter vivos transfer of a vital bodily organ were enforceable on contract grounds. The property concept prohibiting alienability of such essential organs supersedes any contractual consideration. See Munzer, supra note 34, at 43. n104. Typical preinvention assignment agreements provide: The undersigned agrees that he will disclose to the Company all inventions, improvements, software, processes, ideas, and innovations (hereinafter referred to, for convenience only, as "Discoveries"), made or conceived by him, whether or not patentable or copyrightable, either solely or in concert with others, and whether or not made or conceived during working hours, during the period of his employment, which (a) relate to the existing or contemplated business or research activities of the Company; (b) result from the use of the Company's proprietary information, facilities, or resources; or (c) arise out of or result from work performed for the Company. The undersigned acknowledges that he is employed to engage in research, design, and development. The undersigned further agrees to keep full and complete records concerning the development of discoveries as above defined and to tender such records to the company upon request. Robert A. Spanner, Who Owns Innovation? The Rights and Obligations of Employers and Employees 120 (1984). The author of this Comment has signed several preinvention assignment agreements, the latest of which provided, in pertinent part: 2. I hereby agree to disclose promptly to Company, the employer, a California corporation and hereby, without further compensations, assign and agree to assign to Company or its designee, my entire right, title and interest in, and to all designs, trademarks, discoveries, formula, processes, manufacturing techniques, trade secrets, inventions, improvements, ideas or copyrightable works (the "Proprietary Interests"), including all rights to obtain, register, perfect and enforce these Proprietary Interests (i) which relate to any of my work during the period of my employment with Company, whether or not during normal working hours; or (ii) which pertain to any line of current or anticipated business activity of Company; or (iii) which are aided by the use of time, material or facilities of Company. (agreement on file with author). For limitations on the reach of such agreements required by California statute, see infra note 137. For other forms of such agreements, see Cubic Corp. v. Marty, 229 Cal. Rptr. 828, 830 (Ct. App. 1986); Fletcher-Terry Co. v. Grzeika, 473 A.2d 1227, 1228 (Conn. App. Ct. 1984); Ingersoll-Rand Co. v. Ciavatta, 542 A.2d 879, 882, (N.J. 1988); Andreaggi v. Relis, 408 A.2d 455, 458 (N.J. Super. Ct. Ch. Div. 1979). n105. See David Stipp, Lab Legacy: Inventors Are Seeking Bigger Share of Gains from Their Successes, Wall St. J., Sept. 9, 1982, at 1 ("At one company, for example, says a spokesman for the ... concern, most employees must sign an agreement specifying, in effect, that "even if they invent something in their sleep, it belongs to the company.' "). n106. See, e.g., United States v. Dubilier Condenser Corp., 289 U.S. 178, 187 (1933) ("A patent is property and title to it can pass only by assignment. If not yet issued an agreement to assign when issued, if valid as a contract, will be specifically enforced."); see also Hovell, supra note 6, at 876-77. n107. See Mislow, supra note 6, at 103; Dratler, supra note 6, at 142. For examples of overreaching, see Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 385 (7th Cir. 1934) (holding the portion of an agreement that was limitless in time and subject matter contrary to public policy and hence void); Aspinwall Mfg. Co. v. Gill, 32 F. 697 (C.C.D.N.J. 1887) (invalidating an agreement to assign all the products of one's future labors as an inventor). n108. Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979). n109. See University Patents, Inc. v. Kligman, 762 F. Supp. 1212, 1219 (E.D. Pa. 1991) ("A patent is a creature of federal statutory law and may be transferred only in the manner provided by such law."). n110. 35 U.S.C. 261 (1988) provides for assignment of "applications for patent, patents, or any interest therein." A preinvention is a mere expectancy and thus cannot be assigned under this section. n111. Kligman, 762 F. Supp. at 1219 (holding that "contracts to assign patent rights do not have a statutory basis"). Preinvention assignment agreements are agreements to assign expectancies that ripen into transferable property. This concept has parallels in other areas of the law. See, e.g., Eugene F. Scoles & Edward C. Halbach, Jr., Problems and Materials on Decedents' Estates and Trusts 83 (4th ed. 1987): An expectancy, being but a hope of succeeding to the property of another living person, is not treated as an existing property interest and therefore cannot be assigned gratuitously. Thus, in a true sense no present transfer of an expectancy is possible. Statutes in some states expressly codify these common law principles. Consequently releases and "assignments" of expectancies can be made binding only under some theory other than that of a present transfer. In appropriate transactions, ... a court of equity may label the purported assignment an equitable assignment or a specifically enforceable contract to assign. Similarly, current tort law forbids trading in unmatured tort claims, that is, claims for accidents that may occur in the future. See Robert Cooter, Towards a Market in Unmatured Tort Claims, 75 Va. L. Rev. 383, 383 (1989). n112. Kligman, 762 F. Supp. at 1219 n.8; see also Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979) ("Commercial agreements traditionally are the domain of state law. State law is not displaced merely because the contract relates to intellectual property which may or may not be patentable; the states are free to regulate the use of such intellectual property in any manner not inconsistent with federal law."); Donald S. Chisum, The Allocation of Jurisdiction Between State and Federal Courts in Patent Litigation, 46 Wash. L. Rev. 633 (1971); Hovell, supra note 6, at 865 n.13 ("The patent laws do not create a federal common law concerning the pre-invention title to patents."). Perhaps this is an area where Congress ought to "make a federal case out of it." The analytical distinctions between preinvention and postinvention agreements which justify the application of state law to the former and federal law to the latter are subtle, at best. Furthermore, this is an area where uniformity among the states is desirable. n113. The sentiment of the courts is echoed by one commentator as follows: A basic policy of contract law is that persons should be able to structure consensual transactions as they see fit and obtain the benefit of any bargains reached. A likely assumption between parties to an employment relationship is that when inventive behavior is part of the agreed relationship, such behavior has already been fully compensated by wages. In a sense, the products of the employee's mind have already been bought. Having given consideration for inventive services and having assumed the risk that such services might not be successful, the employer should receive as the benefit of the bargain any resulting intellectual property rights. 6 Chisum, supra note 5, 22.032, at 22-25. Although preinvention assignment agreements are generally enforced, courts have refused to uphold them under certain factual circumstances. Assignment clauses may not be enforced (depending in some cases on the jurisdiction), for example, if they: (1) are unartfully drafted, see, e.g., Ferroline Corp. v. General Aniline & Film Corp., 207 F.2d 912, 926 (7th Cir. 1953) (narrowly construing a poorly drafted agreement), cert. denied, 347 U.S. 953 (1954); Motorola, Inc. v. Fairchild Camera and Instrument Corp., 366 F. Supp. 1173, 1179 (D. Ariz. 1973) (finding an agreement impermissibly vague); (2) are oral or implied (for example, through an employee handbook), see, e.g., Kligman, 762 F. Supp. at 1220-29 (questioning the enforceability of assignment agreements implied through employee handbooks); (3) unreasonably attempt to bind employees for a period of time following the termination of the employment relationship (so-called "holdover clauses"), see, e.g., Ingersoll-Rand Co. v. Ciavatta, 542 A.2d 879, 895 (N.J. 1988); (4) are applied to inventions conceived but not reduced to practice during the term of employment, see, e.g., Jamesbury Corp. v. Worcester Valve Co., 443 F.2d 205, 213 (1st Cir. 1971); (5) are "afterthought" agreements, see generally Jordan Leibman & Richard Nathan, The Enforceability of Post-Employment Noncompetition Agreements Formed After at-Will Employment Has Commenced: The "Afterthought" Agreement, 60 S. Cal. L. Rev. 1465 (1987); (6) are applicable to inventions that do not relate to the employer's present or anticipated business and that were developed on the employee's own time with the employee's own resources, see infra notes 136-43 and accompanying text (discussing state legislative responses); or (7) are unsupported by consideration other than the continued at-will employment of the employee or otherwise insufficient consideration, see, e.g., Kadis v. Britt, 29 S.E.2d 543, 548 (N.C. 1944) (noting that "consideration cannot be constituted out of something that is given and taken in the same breath - of an employment which need not last longer than the ink is dry upon the signature of the employee"). The position of the Kadis court is distinctly a minority one. n114. See, e.g., John D. Calamari & Joseph M. Perillo, Contracts 1-3, at 6 (3d ed. 1987) ("Most of contract law is premised upon a model consisting of two alert individuals, mindful of their self-interest, hammering out an agreement by a process of hard bargaining."). n115. Modern contract law has significantly eroded the 19th-century model of unrestricted freedom of contract, particularly in the employment area. Id. Furthermore, employment contracts deserve a higher level of judicial scrutiny than, say, contracts for the sale of commodities, because "after all, what is being purchased and sold in the labor market is control over the time and activities of a human being." Paul C. Weiler, Governing the Workplace: The Future of Labor and Employment Law 21 (1990). n116. Arthur A. Leff, Contract as Thing, 19 Am. U. L. Rev. 131, 143 (1970). n117. See e.g., John P. Sutton, Employment Contracts, in Legal Rights of Chemists and Engineers 45, 58, 62 (Warren D. Niederhauser & E. Gerald Meyer eds., 1977): A contract of adhesion occurs when the terms are prepared entirely for the benefit of one of the parties, and the other party does not have sufficient bargaining power to alter the terms. Today the employment contract is a contract of adhesion. Whether it is enforceable or not depends on whether it is unconscionable.... .... ... The problem is that unless you are a Nobel Laureate you are not going to get fair provisions into the contract. It's bargaining power that gets fair contract provisions.... Those in demand, like corporation presidents, can write their own tickets. Most employees cannot. See also Franklin D. Ubell, Assignor Estoppel: A Wrong Turn from Lear, J. Pat. & Trademark Off. Soc'y, Jan. 1989, at 26, 27 ("The new employee is compelled to accept such assignment provisions because of the far greater bargaining power of the employer and lack of access to patent counsel. The employee's salary at this point would appear to be dictated by supply and demand in the teeming marketplace for technical talent, rather than by any expectation that the employee will develop valuable patentable inventions."). n118. Cubic Corp. v. Marty, 229 Cal. Rptr. 828, 834 (Ct. App. 1986) (quoting Chretian v. Donald L. Bren Co., 198 Cal. Rptr. 523 (Ct. App. 1984)). n119. See, e.g., Calamari & Perillo, supra note 114, 9-40 (distinguishing "substantive" or "oppressive" unconscionability from "procedural" or "unfair surprise" unconscionability); Melvin A. Eisenberg, The Bargain Principle and Its Limits, 95 Harv. L. Rev. 741, 752-53 (1982) (same). n120. Calamari & Perillo, supra note 114, 9-40. n121. Id. The Marty court is referring, of course, to substantive rather than procedural unconscionability. n122. See, e.g., Marty, 229 Cal. Rptr. at 834 (noting that the agreements at issue "are required on an industry-wide basis because the government requires defense contractors to give it title or license in any patents conceived or reduced to practice during the course of performance of government contracts"). n123. Thus, the preinvention assignment agreement is in some ways analogous to a liquidated damages provision, where one or both parties are unable (or unlikely) to estimate reasonably the likelihood of breach. Such provisions are often struck down by the courts. For further discussion of the import of the low probability of invention, see infra note 126 and accompanying text. n124. Although courts have historically been reluctant to review the reasonableness of contract terms, this reluctance has been softening in recent years. See, e.g., Eisenberg, supra note 119, at 752 ("Over the last fifteen years, however, there have been strong indications that the principle of unconscionability authorizes a review of elements well beyond unfair surprise ...."). n125. See Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science in Biotechnology Research, 97 Yale L.J. 177, 217 (1987) ("The serendipitous nature of research discoveries may make it difficult to place a value on the right to use a patented invention before the outcome of a research project is known."). n126. Commentators note that contracting parties systematically tend to underestimate the likelihood of low-probability events, and that this tendency makes judicial intervention appropriate for long-term contracts. See, e.g., Melvin A. Eisenberg, The Structure of Corporation Law, 89 Colum. L. Rev. 1461, 1464-65 (1989). While the likelihood of a significant invention is a low-probability event for the employee-inventor, it is a high-probability event for the typical employer who has a diversified inventor portfolio. n127. See generally Alan Schwartz & Louis L. Wilde, Imperfect Information in Markets for Contract Terms: The Examples of Warranties and Security Interests, 69 Va. L. Rev. 1387 (1983) (discussing contracts between firms and consumers and the role of imperfect information). n128. See Vaughan, supra note 74, at 34 ("The hired inventors and technicians of business corporations generally receive only salaries for compensation ...."). This Comment assumes that the agreement is of the no-additional-consideration type. Of course, some, if not most, corporations will offer some additional compensation for patents applied for and/or granted. However, this additional compensation is often part of a separate "invention incentive" plan rather than part of the preinvention assignment agreement, and rarely bares any relationship to the actual value of the invention. n129. Mislow, supra note 6, at 100. The continuation of the at-will employment, therefore, constitutes consideration for the patent assignment. n130. Id. at 102. n131. I am unaware of any cases where an employee's failure to create valuable, patentable inventions was asserted as a breach of an employment contract or used as evidence of cause for termination. n132. See supra notes 23-24 and accompanying text. n133. See, e.g., Richard A. Posner, Economic Analysis of Law 299-300 (3d ed. 1986) (describing labor monopsony as a form of market failure, though Judge Posner does not believe labor monopsony is a serious problem today in this country). Employers can typically exercise considerably more power over employees than they can over, say, consumers because jobs, especially jobs for employees with highly specialized skills, are less fungible than most products. See, e.g., Weiler, supra note 115, at 21-22; Parker, supra note 6, at 608-09. n134. Contractual evisceration of governmental policies is not unique to the preinvention assignment agreement context. For example, corporate subsidized insurance and routine indemnification of directors and managers have collapsed the dual liability regime of corporate law whereby firms and their agents are jointly and severally liable for crimes and torts committed within the scope of the agent's employment. See, e.g., Reinier H. Kraakman, Corporate Liability Strategies and the Costs of Legal Controls, 93 Yale L.J. 857, 859 (1984). n135. See Posner, supra note 133, at 343. n136. These states are California, Illinois, Minnesota, North Carolina, and Washington. See Cal. Lab. Code 2870-2872 (West Supp. 1992); Ill. Rev. Stat. ch. 140, para. 302 (1991); Minn. Stat. 181.78 (Supp. 1991); N.C. Gen. Stat. 66-57.1, .2 (1991); Wash. Rev. Code Ann. 49.44.140, .150 (West Supp. 1991). n137. For example, the California statute makes inoperative any preinvention assignment agreement as applied to inventions made on the employee-inventor's own time and with the employee-inventor's own resources unless, at the time of conception or reduction to practice, the invention relates to the employer's business or anticipated research or development, or unless the invention resulted from work performed by the employee for the employer. Cal. Lab. Code 2870(a). The second preinvention assignment agreement set forth supra note 104, which was controlled by California law, contained the following provision: 3.I understand and agree that the foregoing does not apply to an invention for which no equipment, supplies, facility or trade secret information of Company was used and which was developed entirely on my own time, and which does not relate (1) to the business of Company, or (2) to the actual or demonstrably anticipated research or development of Company, or (3) which does not result from any work performed by me for Company, or (4) any invention which qualifies fully under the provision of California Labor Code Section 2870, a copy of which has been provided to me as an attachment to my copy of this agreement. n138. By "important" inventions, I refer both to inventions that are of economic significance as well as to inventions that are of the greatest personal importance to the employee. The latter concept will be addressed infra Part IV, in the discussion of "personhood" interests in inventions. n139. See Parker, supra note 6, at 617-19. For a discussion of the history of the proposed federal reforms, see id. See also Witte & Guttag, supra note 6, at 467-81. n140. See, e.g., H.R. 4392, 88th Cong., 1st Sess. (1963). n141. See, e.g., H.R. 3285, 98th Cong., 1st Sess. (1983); S. 1321, 93d Cong., 1st Sess. 263, 119 Cong. Rec. 9102, 9113 (1973); H.R. 15,512, 91st Cong., 1st Sess. (1970). n142. See, e.g., Innovation and Patent Law Reform: Hearings Before the Subcomm. on Courts, Civil Liberties, and the Administration of Justice of the House Comm. on the Judiciary, 98th Cong., 2d Sess. (1984) hereinafter Invention and Patent Law Reform (containing the testimony and statements of many industry representatives opposing legislation establishing a mandatory compensation scheme for employee-inventors). Interestingly, however, the Technology Transfer Act of 1986 enacted, among other provisions, mandatory compensation for inventors employed by the federal government, including a forced minimum 15% share for inventors of any royalties or income received by the government for the inventions of its employee-inventors. 15 U.S.C. 3710c (1988). The legislative history of the Act, however, specifically provides: "Some representatives of businesses that employ scientists fear that establishing royalty sharing for Federal employees will set a precedent for legislation mandating royalty sharing for private inventors.... The Committee does not intend for this provision affecting Government employees to set a precedent for private employees." S. Rep. No. 283, 99th Cong., 2d Sess. 13 (1986), reprinted in 1986 U.S.C.C.A.N. 3442, 3455. n143. But see Innovation and Patent Law Reform, supra note 142 (testimony of several representatives of professional technical employees supporting proposed legislation establishing a mandatory compensation scheme for employee-inventors); Rights of Employed Inventors: Hearing Before the Subcomm. on Courts, Civil Liberties, and the Administration of Justice of the House Comm. on the Judiciary, 97th Cong., 2d Sess. 21-53 (1982) (same). n144. See, e.g., supra notes 142-43 and accompanying text. n145. See, e.g., Frank H. Easterbrook, Intellectual Property Is Still Property, 13 Harv. J.L. & Pub. Pol'y 108, 112-13 (1990). n146. 35 U.S.C. 261 (1988). n147. An idea can be used and enjoyed by many people at any given time without depriving other people of use or enjoyment of the idea, and thus has the attributes of an inexhaustible resource, or, in economic terms, a "free good." See Dratler, supra note 25, 1.011. Ideas are inexhaustible in another sense: the potential number of ideas is unlimited. At the same time, it is difficult to prevent others from using an idea once it is divulged and thus, like clean air or national defense, ideas have the attributes of a "public good." Therefore, ideas may be utilized by "free riders" who did not share in the cost of producing the information. Because ideas can be public goods, intellectual property protection is necessary to prevent an informational "tragedy of the commons." As one commentator has noted, "Assuming rational investors, absolute freedom to use information, i.e. an informational commons, could only result in there being no information worth using. Valuable information, i.e. information that is the result of purposive investment in learning, therefore depends upon the existence of private property rights." William Kingston, Innovation, Creativity and Law 83 (1990). n148. Intellectual property rights are more limited in scope than are many tangible property rights. Intellectual property rights are of limited duration; tangible property rights, particularly in real property, are of unlimited duration. Even though some interests in tangible property may be of limited duration, the property vests in somebody indefinitely. The rights of ownership of intellectual property are more circumscribed than are those in other forms of property. For example, while a landowner has the right to possess the land, to exclude others, to dispose of the land, to use the land, to enjoy the fruits of the land, and to destroy, harm, or alter the land, a patent owner has only the right to exclude others from making, using, and selling the subject matter of the patent, and, in most cases (though not all), the right to dispose of the patent. n149. Traditionally, tangible property, particularly real property, has been a device for concentrating wealth within families and for the maintenance of the status quo. Tangible property tends to perpetuate social stratification through primogeniture. Justin Hughes, The Philosophy of Intellectual Property, 77 Geo. L.J. 287, 290-91 (1988). Intellectual property, on the other hand, due to its means of creation and its limited duration is in theory wealth-redistributive or at least more wealth-neutral. Id. at 291. Intellectual property, then, is a "democratic" form of property; that is, it is a form of property obtainable by all citizens. See Hugo A. Meier, Thomas Jefferson and a Democratic Technology, in Technology in America, supra note 59, at 17, 28-30 (discussing Jefferson's belief that inventions should not be monopolized). Consider, too, the following remarks, made on the 150th anniversary of the patent system: The success of our patent system is due to the fact that it is essentially democratic. Patents are granted as a matter of right and a good patent makes the little man an effective competitor of the big man. Our patents are, unlike others, not used for tariff purposes and are not burdened by taxes; nor are the exclusive rights granted for a limited period diluted by requirements for compulsory licenses or compulsory workings. These considerations have made us a nation of inventors, for even the least of us has the opportunity by creative thought to take his place among the great. The perpetuation of that system and the maintenance of the standard of living that we enjoy require that research and invention must continue to be encouraged and protected. William B. Kerkam, Some Historical and Current Reflections on the American Patent System, in United States Patent Law Sesquicentennial Celebration, supra note 73, at 8, 9. n150. Although the differences between intellectual property and tangible property were understood at the time the first Patent Act was drafted, they were not of great significance because most valuable property was tangible property. This is no longer the case today. Intellectual property is becoming increasingly valuable relative to tangible property. As one commentator recently noted: A profound reallocation of wealth has been under way during the past thirty years. Increasingly, wealth is being defined in terms of intangible property: information and things done with information. ... The traditional forms of intangible property, patents and copyrights, do have their own statutory schemes for ownership and transfer, but these eighteenth century mechanisms hardly provide an ideal model for the future .... They were enacted as analogs to the rules which regulate real and personal property and as such they fail to account for the essential difference between tangible and intangible property; namely, that one loses value when it is divided while the other does not. Samuel J. Sutton, Book Review, 31 Jurimetrics J. 357, 357-58 (1991). n151. These theories include first occupancy or discovery, labor theory, personality theory, utilitarian theory, and critical legal studies. See Jesse Dukeminier & James E. Krier, Property 132-41 (2d ed. 1988). n152. See Alan Ryan, Property 70 (1987). n153. See, e.g., Phillip E. Johnson, Some Thoughts About Natural Law, 75 Calif. L. Rev. 217, 217 (1987) ("Anyone who attempts to found concepts of justice upon reason and human nature engages in natural law philosophy."). For various formulations of natural rights, see John Christman, Can Ownership Be Justified by Natural Rights?, 15 Phil. & Pub. Aff. 156 (1986). Christman identifies a "strong sense" of natural right as a "right if and only if persons would have this right in a state of nature, prior to, and independent of, the establishment of any civil or political institution." Id. at 157. He identifies a "weak sense" of natural right as a right " "not created or conferred by men's voluntary action,' that is, it is not a right which is derived from positive law or social institutions." Id. at 158 (quoting H.L.A. Hart, Are There Any Natural Rights?, in Rights 15 (David Lyons ed., 1979)). These are all contemporary secularized formulations of natural law. Historically, natural law had been conceptualized as the law of God (the "author" of both man and justice). See, e.g., Alan Ryan, Property and Political Theory 14-48 (1984) (discussing the relationship between Locke's labor theories of property and the purposes of God). n154. "We hold these truths to be self-evident; that all men are created equal; that they are endowed by their creator with certain inalienable rights; that among these are life, liberty, and the pursuit of happiness ...." The Declaration of Independence para. 2 (U.S. 1776). n155. William E. Simonds, Natural Right of Property in Intellectual Production, 1 Yale L.J. 16, 17 (1891). n156. See, e.g., The Federalist No. 43, at 309 (James Madison) (Benjamin F. Wright ed., 1961) ("The utility of the Patent and Copyright Clause will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors."). n157. See, e.g., Arachnid, Inc. v. Merit Indus., 939 F.2d 1574, 1578 (Fed. Cir. 1991) ("The act of invention itself vests an inventor with a common law or "natural' right to make, use and sell his or her invention ...."). n158. See id. n159. See William C. Robinson, Patents 24 (1890), quoted in Robert A. Choate et al., Patent Law 2 (3d ed. 1987) ("An idea once communicated can no longer be exclusively appropriated and enjoyed.... Under the laws of nature the exclusive public use of an invention is thus impossible, and hence there is no natural right to such a use."); see also Robinson, supra, 25, quoted in Choate et al., supra, at 3 ("The natural right of the public to appropriate all new ideas that may be voluntarily disclosed is no less evident than that of the inventor to conceal them. It is a law of nature that men should profit by the discoveries and inventions of each other."). n160. See Arachnid, 939 F.2d at 1578-79 ("A patent in effect enlarges the natural right, adding to it the right to exclude others from making, using or selling the patented invention.... Ownership only of the invention gives no right to exclude, which is obtained only from the patent grant.") (citation omitted); see also Gayler v. Wilder, 51 U.S. (10 How.) 477, 493 (1850) ("The inventor of a new and useful improvement certainly has no exclusive right to it, until he obtains a patent. This right is created by the patent, and no suit can be maintained by the inventor against any one for using it before the patent is issued."). n161. See Simonds, supra note 155, at 23-25. n162. 35 U.S.C. 102 (1988). n163. See, e.g., Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 24, 30 (1923): The most common case of the separation of the patent and natural rights is where the structure of the patent in suit is dominated by some other and broader patent. The broader patent may be older or younger or of the same date with the narrower patent. In either case, for the whole life of the broader patent, and this may be the whole life of the narrower patent as well, the patentee of the narrower patent has no natural right to make, use or sell the structure of his own patent.... The exclusive right and the natural right flow from different sources, are of different kinds and need not co-exist. It is impossible to maintain any clean-cut line of patent law unless we totally divorce the two rights, and, in discussing the patent right, assume that the natural right is immaterial. The separation between natural law and patent law property rights was further elaborated in Graham v. John Deere Co., 383 U.S. 1, 9 (1966): The patent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge. The grant of an exclusive right to an invention was the creation of society - at odds with the inherent free nature of disclosed ideas - and was not to be freely given. Note that since copyright protects the form of expression rather than the idea itself, natural law can be used as a justification for copyright protection. See Simonds, supra note 155, at 24. n164. Graham, 383 U.S. at 9. n165. From the beginning of history, ideas have been shared, particularly in the realm of common defense, gathering food, building shelters, and clothing man. Thus, it is "natural" both that persons with ideas and skills use them to their own advantage, and that other persons copy what they observe.... .... Regardless of any "natural" rights that artisans or tradesmen had in their own ideas, skills and inventions, these rights could not be profitably utilized without some means of protection and enforcement due to the "natural" right of others to copy what they observed. Choate et al., supra note 159, at 1-3. n166. Letter from Thomas Jefferson to Isaac McPherson, The Invention of Elevators, (Aug. 13, 1813), in The Writings of Thomas Jefferson 329, 335 (Saul K. Padover ed., 1967). n167. Lawrence C. Becker, Property Rights 22-23 (1977); see also Munzer, supra note 34, at 1-12. n168. See, e.g., 2 William Blackstone, Commentaries *400-07 (including patents and copyrights with goods captured from alien enemies, things found, and animals wild by nature as having title by occupancy). n169. See infra Section III. B.1.b. n170. See Becker, supra note 167, at 24-26. n171. See, e.g., id. at 24-31 (arguing that "being there first" is not a sound basis for claims to ownership); Dukeminier & Krier, supra note 151, at 133 (noting that first occupancy provides a weak normative justification for private property, though it fares somewhat better as a descriptive or explanatory theory of the origins of private property). n172. Becker, supra note 167, at 24. Becker lists two other requirements for first occupancy to be a supportable justification of private property: "(3) the concept of actual occupation defines with reasonable clarity how much one can occupy; and (4) the occupier claims no more than a share as defined by (3)." Id. The latter two requirements do not preclude first occupancy as a justification when applied to preinvention disputes. n173. The assumption here is that, for natural rights purposes, the employer (if a corporation) would not be limited to the statutory definition of inventor contained within the Patent Code which precludes corporate inventorship. In other words, it is assumed that it is possible for a corporation to have a natural right in an invention. n174. It should be noted that some commentators continue to find natural rights support for intellectual property. For example, it has been asserted that the constitutional language of "securing" patent and copyright rights may imply a recognition of a natural rights basis in intellectual property. See Dratler, supra note 6, at 140 n.46 (citing Ramsey, The Historical Background of Patents, 18 J. Pat. Off. Soc'y 6, 14-20 (1936)); see also Sutton, supra note 117, at 50 (" "Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary, or artistic production of which he is the author.' ") (quoting Universal Declaration of Human Rights, art. 27(2), adopted by U.N. General Assembly, Dec. 10, 1948); Amber L. Hatfield, Note, Life After Death for Assignor Estoppel: Per Se Application to Protect Incentives to Innovate, 68 Tex. L. Rev. 251, 256 (1989) (discussing constitutional language in support of natural rights arguments). This support of natural rights in inventions, however, must be recognized as a justification of property rights of inventor-entities as against society and not as a justification for exclusive rights of either the employee-inventor or the employer. n175. See, e.g., Becker, supra note 167, at 32; Grunebaum, supra note 35, at 52. n176. John Locke, The Second Treatise of Government 16-30 (Thomas P. Peardon ed., 1952) (1690). n177. Labor theories of property are sometimes divided into "avoidance" theories and "labor-desert" categories, each with normative and instrumental aspects. See Hughes, supra note 149, at 302-10. I feel that it is more helpful to divide labor theories into normative and instrumental categories. n178. Hughes, supra note 149, at 296. n179. Id. n180. Few Supreme Court cases have clearly articulated the distinction between the normative and instrumental purposes underlying patent law. Some cases, particularly the earlier ones, expressly adopted the normative argument. See, e.g., Brown v. Duchesne, 60 U.S. (19 How.) 183, 195 (1857) (stating that patent laws "secure to the inventor a just remuneration from those who derive a profit or advantage, within the United States, from his genius and mental labors"); Scott Paper Co. v. Marcalus Co., 326 U.S. 249, 255 (1945) (stating that "by the patent laws Congress has given to the inventor opportunity to secure the material rewards for his invention"); see also Brenner v. Manson, 383 U.S. 519, 536 (1966) ("A patent is not a reward for the search, but compensation for its successful conclusion."). Others offered normative arguments as important, though secondary to instrumental arguments. See, e.g., Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 577 (1977) (although " "reward to the inventor may be a secondary consideration,' ... patent protection was "intended definitely to grant valuable, enforceable rights.' ") (citations omitted). Still others clearly favored the instrumental theory over the normative. See, e.g., Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 511 (1917) (emphasizing that the Supreme Court "has consistently held that the primary purpose of our patent laws is not the creation of private fortunes for the owners of patents but is "to promote the progress of science and useful arts,' " (quoting U.S. Const. art. I, 8, cl. 8), while noting that inventors are to be "fairly, even liberally, treated"). In some cases, it appeared that the court offered both justifications without preference. For example, in Grant v. Raymond, 31 U.S. (6 Pet.) 218, 242-43 (1832), Chief Justice Marshall stated that a patent is the reward stipulated for the advantages derived by the public for the exertions of the individual, and is intended as a stimulus to those exertions.... .... ... The great object and intention of the patent act is to secure to the public the advantages to be derived from the discoveries of individuals, and the means it employs are the compensation made to those individuals for the time and labour devoted to these discoveries. The imprecise manner in which courts and commentators invoke labor justifications for intellectual property provides little theoretical guidance for the resolution of preinvention assignment disputes. n181. Locke, supra note 176, at 17-24. The description of Locke's normative labor theories draws heavily upon Becker, supra note 167, at 32-43. n182. Or in Locke's own words: Every man has a property in his own person; this nobody has any right to but himself. The labor of his body and the work of his hands, we may say, are properly his. Whatsoever then he removes out of the state that nature has provided and left it in, he has mixed his labor with, and joined to it something that is his own, and thereby makes it his property. It being by him removed from the common state nature has placed it in, it has by this labor something annexed to it that excludes the common right of other men. For this labor being the unquestionable property of the laborer, no man but he can have a right to what that is once joined to, at least where there is enough and as good left in common for others. Locke, supra note 176, at 17. n183. Id. at 18. Note that the "value-added" justification is a variant of the basic labor justification. n184. Id. at 20-21. The "labor-desert" justification is also a variant of the basic labor justification. n185. Robert Nozick, for example, asks why one should expect that mixing one's labor with a thing results in ownership of the thing rather than in loss of one's labor. Robert Nozick, Anarchy, State, and Utopia 174-75 (1974). n186. Such arguments are based on four basic propositions: (1) inventions require labor; (2) inventions generally have some value to society; (3) one invention does not deplete the "commons" of potential future inventions; and (4) intellectual property rights are necessary to prevent appropriation of the "public good" aspect of the invention. Few would dispute the verity of the first and second propositions, and the third and fourth propositions were identified earlier as general characteristics of intellectual property. See supra note 147 and accompanying text. Some commentators do question, however, the application of labor theory as a justification for intellectual property rights. See, e.g., Becker, supra note 167, at 47 (raising some concerns regarding the application of normative labor justifications to intellectual property, such as why certain classes of ideas are protected while others are unprotected, and why patents and copyrights expire after a term of years when rights in other property acquired by labor do not expire). n187. Instrumental justifications are similar to, but distinguishable from, utilitarian justifications. Utilitarian justifications for private property are based on the assumption that private property is necessary in order to achieve utility, or "human happiness." See, e.g., Becker, supra note 167, at 57. Traditionally, this definition included a broad range of human social welfare concerns, but due to the difficulty of measuring most forms of human satisfaction, a narrower form of utilitarianism has developed based on the premise that private property is necessary to increase human economic welfare. Id. The former form of utilitarianism is referred to here as traditional utilitarianism, while the latter is referred to as instrumentalism. n188. See, e.g., The Federalist, supra note 156, at 309 (noting utilitarian basis of constitutional Patent Clause). n189. See, e.g., Hughes, supra note 149, at 303-04. n190. Justice Stone's dissent in United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933), describes scientists who are either irrational or from a nobler era: "It has been said that many scientists in the employ of the government regard the acceptance of patent rights leading to commercial rewards in any case as an abasement of their work." Id. at 218 n.9 (Stone, J., dissenting) (citing Hearings on Exploitation of Inventions by Government Employees Before the Senate Comm. on Patents, 65th Cong., 3d Sess. 16-17 (1919)). n191. Hughes, supra note 149, at 303. This instrumental argument should be distinguished from the normative argument, discussed supra Section III.B.1.b. Both arguments are based on two ideas: (1) labor is unpleasant, and (2) labor is necessary. The instrumental argument concludes that property must be used to motivate people to do unpleasant but necessary work. The normative argument, in contrast, concludes that people ought to receive property for doing unpleasant but necessary work. n192. See Hughes, supra note 149, at 300. n193. See id. at 302. n194. But see Bennett, supra note 20, at 31 (showing "Love of Inventing" as the most frequently mentioned motive or incentive in survey of inventors). n195. For a discussion of "public good," see supra note 147 and accompanying text. n196. One economic commentator, for example, has parodied the economic literature on patents as follows: "What does the patent system give us, and at what cost? ... Bentham claims something for nothing; Taussig responds nothing for nothing, Plant rejoins nothing for something; Arrow replies something (but not enough) for something ...." George L. Priest, What Economists Can Tell Lawyers About Intellectual Property: Comment on Cheung, in 8 Res. in L. & Econ. 19 (John Palmer & Richard O. Zerbe, Jr. eds., 1986). In United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933), the Supreme Court described the quid pro quo in the following terms: An inventor deprives the public of nothing which it enjoyed before his discovery, but gives something of value to the community by adding to the sum of human knowledge. He may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but upon the expiration of that period, the knowledge of the invention enures to the people, who are thus enabled without restriction to practice it and profit by its use. Id. at 186-87 (citations omitted). n197. See, e.g., Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 576 (1977) (stating that the desire to provide "an economic incentive for the inventor to make the investment required to produce" an invention underlies the patent law); Goldstein v. California, 412 U.S. 546, 555 (1973) ("The objective of the Copyright and Patent Clause is to promote the progress of science and the arts. As employed, the terms "to promote' are synonymous with the words "to stimulate,' "to encourage,' or "to induce.' "). This view, is, of course, consistent with the constitutional grant of authority to 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." U.S. Const. art. I, 8, cl. 8. n198. See, e.g., Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S. 176, 221 (1980) ("The policy of stimulating invention that underlies the entire patent system runs deep in our law."); Dr. Miles Medical Co. v. John D. Park & Sons Co., 220 U.S. 373, 401 (1911) ("The purpose of the patent law is to stimulate invention ...."). n199. The Court in Aronson v. Quick Point Pencil Co., 440 U.S. 247 (1979), listed the following purposes of the patent system: First, patent law seeks to foster and reward invention; second, it promotes disclosure of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the stringent requirements for patent protection seek to assure that ideas in the public domain remain there for the free use of the public. Id. at 262. n200. Edwin Mansfield, Intellectual Property, Technology and Economic Growth, in Intellectual Property Rights in Science, Technology, and Economic Performance: International Comparisons 17, 23 (Francis W. Rushing & Carole G. Brown eds., 1990) hereinafter International Comparisons; see also Louis Kaplow, The Patent-Antitrust Intersection: A Reappraisal, 97 Harv. L. Rev. 1813, 1823-24 (1984) (listing reward to patentee, stimulation of inventive activity, and improvement of social welfare as goals of the patent system); Yusing Ko, Note, An Economic Analysis of Biotechnology Patent Protection, 102 Yale L.J. 777, 791-800 (1992) (discussing incentive to invent and incentive to disclose theories). n201. See, e.g., Senate Subcomm. on Patents, Trademarks, and Copyrights, Senate Comm. on the Judiciary, 85th Cong., 2d Sess., An Economic Review of the Patent System (Study No. 15, Comm. Print 1958): No economist, on the basis of present knowledge, could possibly state with certainty that the patent system, as it now operates, confers a net benefit or a net loss upon society. The best he can do is to state assumptions and make guesses about the extent to which reality corresponds to these assumptions. See also Ward S. Bowman, Patent and Antitrust Law: A Legal and Economic Appraisal 15-32 (1973) (summarizing conflicting economic appraisals of the patent system); Kaplow, supra note 200, at 1833-34 ("Yet our knowledge is inadequate to inspire great confidence even in the desirability of having a patent system at all, much less in the ability to make the subtle measurements of marginal effects that determine the ratio implicit in the optimal patent life."); Oddi, supra note 15, at 1101 (noting that while there is insufficient economic evidence to abolish the existing patent system, there would be insufficient economic evidence to justifying establishing a patent system in a society that did not already have one); Priest, supra note 196, at 21 ("Economists know almost nothing about the effect on social welfare of the patent system or of other systems of intellectual property."). A recent study has concluded that investors are indifferent to the knowledge that a firm's patent has been found invalid. See Page M. Kaufman, An Empirical Study of the Effect of Patent Invalidity Judgments on the Abnormal Returns of Publicly Traded Securities, 19 Am. Intell. Prop. L. Ass'n Q.J. 282 (1991). n202. This corresponds to Mansfield's first justification. See supra text accompanying note 200. For examples of commentary supporting this view, see Sutton, supra note 6, at 152-53: The incentive for a reward as drafted in the Constitution goes to the inventor, not his sponsor, employer, banker or spouse. It is the inventor who is to be encouraged, not the investor of mere money. Money cannot buy inventions, which do not exist until created. Individual people must create them.... An incentive, by definition, is an inducement to action. If the employee has nothing more than a salary, which he will get whether he invents or just performs the research assigned to him, then what is the inducement to create something which is not obvious to one of ordinary skill in the art? ... Some people will create without economic incentives, a pat on the back being sufficient for a long time. However, economic incentive - money - is a powerful force that can induce the extraordinary creativity that produces inventions. The founding fathers recognized it and wrote the incentive concept into the Constitution. Present-day employers have neutralized this incentive by requiring all inventions to be turned over to the employer even before they are conceived. See also Ubell, supra note 117. Ubell notes that the Constitution ... contemplates promoting the progress of science and the useful arts by securing to inventors for a limited time exclusive rights to their inventions. The Constitution does not suggest promoting the progress of science and the useful arts by "securing to capitalists exclusive rights to the creations of inventors." Id. at 30 (citation omitted). n203. This corresponds to Mansfield's second justification. See supra text accompanying note 200. For examples of commentary supporting this view, see Alden F. Abbott, Developing a Framework for Intellectual Property Protection to Advance Innovation, in International Comparisons, supra note 200, at 311, 320-21: Risk-averse firms will be reluctant to hire research staffs and establish research facilities if there is no assurance that profits can be earned on that small portion of innovative projects. Intellectual property protection provides that necessary assurance. Without such protection firms would run the risk that, because of free-riding, their innovations would earn insufficient profits to offset the losses stemming from failed research efforts. For the same reason, capital markets would be far less willing to provide funds for independent research efforts in a world without intellectual property protection. In short, without intellectual property protection, talented scientists and engineers would find it much harder to obtain the backing needed to explore new avenues of research, and innovation would proceed at a far slower pace to the detriment of society. See also Bowman, supra note 201, at 23-28 (summarizing arguments, principally those of Arrow, that markets tend to under-reward invention, and that patent protection is thus needed to correct for this market failure). Commentators adopting this view tend to downplay the role of individuals. See, e.g., Zuber, supra note 6, at 146, 148: Let us look for a moment at the effects of patent policy on the inventor, the repository of the creativity that we are discussing.... There is an increased tendency to assert individual rights to ideas which may properly be ascribed to a group effort.... .... In speaking of recognition, direct monetary awards to inventors needs mentioning. Proponents of this type of reward believe that creativity would be fostered. Direct monetary rewards certainly could be part of any patent policy, but, personally, I have great difficulty with this concept stemming from the fact that projects are assigned and are not selected by those doing the research. The truly creative people are a precious few. Good management is apt to reserve them for projects where immediate results are required. I have known cases where scientists of little more than average ability have made inventions of considerable economic importance because management could afford to assign them to long-term projects. Providing high rewards for such efforts is akin to a lottery. Such rewards are not apt to foster a climate in which individuals feel rewards stem from excellence rather than from the luck of the draw. Consequently, I have very deep and profound doubts that direct monetary awards are apt to make a positive contribution to a creative environment. n204. See Dratler, supra note 6. Actually, this is really a normative labor argument rather than an instrumental one. It is mentioned here, however, because Dratler frames his argument in instrumental terms. n205. See supra note 201 and accompanying text. n206. Dratler, supra note 6, at 173. n207. Id. at 172-75. Corporate technical workplaces, like most workplaces, are hierarchical environments: technicians report to engineers, who report to project leaders, who report to managers, and so on. Each has different priorities. The support of an engineering manager may be critical to an invention's success (such as in assigning resources) but may not rise to the level recognized by the patent law for "reward." In fact, the manager understandably may have a disincentive for the engineer to invent (and expend time and resources) when the invention is unrelated to an area for which the manager has responsibility or in which the corporation has a bona fide business interest. Yet the invention may be very valuable to society. The point is that there is an agency cost associated with allowing corporations to provide their own incentive structures for inventors in place of those provided by the patent law. That is, there is at least a potential divergence between the interests of society and those of corporations in the fostering of inventions. n208. This argument is based on a variation of the Coase Theorem. See Ronald H. Coase, The Problem of Social Cost, 3 J.L. & Econ. 1 (1960). n209. See supra notes 125-26 and accompanying text for discussion of the difficulties of ex ante and ex post bargaining. n210. See supra notes 113-17 and accompanying text for discussion of adhesion contracts. n211. The invention may be deemed non-novel, obvious, or anticipated by the Patent Office. n212. Professor Kitch, for example, has proposed a "prospect" theory of patents, analogizing the patent system to the property system protecting mineral rights. Kitch posits that patents essentially grant exclusive rights to develop a prospect - the prospect of future inventions. See Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & Econ. 265, 266 (1977) (first proposing the prospect theory). But see Roger L. Beck, The Prospect Theory of the Patent System and Unproductive Competition, in 5 Res. in L. & Econ. 193, 199-206 (Richard O. Zerbe, Jr., ed., 1983) (arguing that empirical evidence undermines the prospect theory). Grady and Alexander have proposed a rent dissipation theory of patents whereby patents are rewarded to maximize the difference between the value of an invention to society and its development cost by discouraging copying and redundant development costs and preserving such rents for successful inventors. Mark F. Grady & Jay I. Alexander, Patent Law and Rent Dissipation, 78 Va. L. Rev. 305, 316-21 (1992). Neither the prospect theory nor the rent dissipation theory adequately accounts for the firm/employee dichotomy of the inventor-entity. n213. Munzer, supra note 34, at 81. n214. Id. at 82. n215. Id. at 84. n216. See id. at 125-29. n217. See Ryan, supra note 153, at 73-90 (discussing Kant and personhood theory). Personhood theory today places property that is constitutive of personality outside the market. This is perhaps first alluded to in a oft-quoted passage by Kant: In the kingdom of ends everything has either a price or a dignity. If it has a price, something else can be put in its place as an equivalent; if it is exalted above all price and so admits of no equivalent, then it has a dignity. .... ... Morality, and humanity so far as it is capable of morality, is the only thing which has dignity. Immanuel Kant, Groundwork of the Metaphysic of Morals 102 (H.J. Paton trans., 1964). n218. See Steven B. Smith, Hegel's Critique of Liberalism 70-80 (1989). n219. Another 18th-century natural-rights-based property justification with elements of personhood is the concept of artists' moral rights. See generally Dratler, supra note 25, 6.016; Karen M. Corr, Comment, Protection of Art Work Through Artists' Rights: An Analysis of State Law and Proposal for Change, 38 Am. U. L. Rev. 855 (1989); Craig A. Wagner, Comment, Motion Picture Colorization, Authenticity, and the Elusive Moral Right, 64 N.Y.U. L. Rev. 628 (1989). The moral rights of artists and authors have been especially important in French jurisprudence, where rights in works of art and literature have been divided into economic rights (droits patrimoniaux) and creative rights (droit moral). Corr, supra, at 863; Wagner, supra, at 687. The concept of personal, inalienable, moral rights of artists has much in common with the personhood interests of inventors discussed in this Comment. Personhood, as described here, however, seeks to protect different interests and is based on a different philosophic foundation than moral rights. n220. G.W.F. Hegel, Elements of the Philosophy of Right (Allen W. Wood ed. & H.B. Nisbet trans., 1991). The editor of this edition cautions that "Hegel is cited much more frequently than he is read, and discussed far oftener than he is understood." Id. at xxvii. I have quoted liberally from Hegel in these notes so as to address the former concern, if not the latter. n221. "As the immediate concept and hence also as essentially individual, a person has a natural existence Existenz partly within himself and partly as something to which he relates as to an external world." Id. 43 (alterations in translation). n222. The person must give himself an external sphere of freedom in order to have being as Idea. The person is the infinite will, the will which has being in and for itself, in this first and as yet wholly abstract determination. Consequently, this sphere distinct from the will, which may constitute the sphere of its freedom, is likewise determined as immediately different and separable from it. Id. 41. n223. "Only in this freedom is the will completely with itself bei sich, because it has reference to nothing but itself, so that every relationship of dependence on something other than itself is thereby eliminated." Id. 23 (alteration in translation). The universality of this will which is free for itself is formal universality, i.e. the will's self-conscious (but otherwise contentless) and simple reference to itself in its individuality Einzelheit; to this extent, the subject is a person. It is inherent in personality that, as this person, I am completely determined in all respects (in my inner arbitrary will, drive, and desire, as well as in relation to my immediate external existence Dasein), and that I am finite, yet totally pure self-reference, and thus know myself in my finitude as infinite, universal, and free. Id. 35 (alteration in translation). n224. G.W.F. Hegel, Hegel's Philosophy of Mind 382 (William Wallace & A.V. Miller trans., 1971). n225. See supra notes 221, 223. n226. To have even external power over something constitutes possession, just as the particular circumstance that I make something my own out of natural need, drive, and arbitrary will is the particular interest of possession. But the circumstance that I, as free will, am an object gegenstandlich to myself in what I possess and only become an actual will by this means constitutes the genuine and rightful element in possession, the determination of property. Hegel, supra note 220, 45 (alteration in translation). n227. Or, in Hegel's terms, the "existence" Dasein of personality. See id. 51 ("property ... is the existence Dasein of personality") (alteration in translation); id. 50 ("personality must have existence Dasein in property.") (alteration in translation). This concept has also been translated as saying that "property is the embodiment of personality." G.W.F. Hegel, Hegel's Philosophy of Right 51 (T.M. Knox trans., 1952) (alteration in translation). n228. That a thing Sache belongs to the person who happens to be the first to take possession of it is an immediately self-evident and superfluous determination, because a second party cannot take possession of what is already the property of someone else. ... The first is not the rightful owner because he is the first, but because he is a free will, for it is only the fact that another comes after him which makes him the first. Hegel, supra note 220, 50 (alteration in translation). n229. "My inner idea Vorstellung and will that something should be mine is not enough to constitute property ... on the contrary, this requires that I should take possession of it. The existence which my willing thereby attains includes its ability to be recognized by others." Id. 51 (alteration in translation). n230. That mode of taking possession which is not actual in itself but merely represents my will occurs when I mark a thing Sache with a sign to indicate that I have placed my will in it .... Taking possession by designation is the most complete mode of all .... If I seize a thing or give form to it, the ultimate significance is likewise a sign, a sign given to others in order to exclude them and to show that I have placed my will in the thing. Id. 58 (alteration in translation). n231. It is possible for me to alienate my property, for it is mine only in so far as I embody my will in it. Thus, I may abandon (derelinquiere) as ownerless anything belonging to me or make it over to the will of someone else as his possession - but only in so far as the thing Sache is external in nature. Id. 65 (alteration in translation). n232. "Those goods, or rather substantial determinations, which constitute my own distinct personality and the universal essence of my self-consciousness are therefore inalienable, and my right to them is imprescriptible. They include my personality in general, my universal freedom of will, ethical life, and religion." Id. 66. n233. See Margaret J. Radin, The Liberal Conception of Property: Cross Currents in the Jurisprudence of Takings, 88 Colum. L. Rev. 1667 (1988); Margaret J. Radin, Market-Inalienability, 100 Harv. L. Rev. 1849 (1987) hereinafter Radin, Market-Inalienability; Margaret J. Radin, Property and Personhood, 34 Stan. L. Rev. 957 (1982) hereinafter Radin, Property and Personhood; Margaret J. Radin, Residential Rent Control, 15 Phil. & Pub. Aff. 350 (1986) hereinafter Radin, Residential Rent Control. It should be noted that personhood has been investigated as a basis for the Lockean labor justification of property as well. See Becker, supra note 167, at 48-49. Compare the Hegelian justification (set forth supra Section IV.A.1), the Radinian justification (set forth infra notes 234-47 and accompanying text), and Becker's proposed (but ultimately rejected) explanation for a labor justification of property (set forth here): Labor is (in some circumstances) psychological appropriation - appropriation in the sense of a "felt incorporation" of the thing labored on "into' one's person. If it is true than I "am' (psychologically) what I want to become as well as what I have become, then one can say with similar validity that I am what I have made. I am what I was, what I do, what I want to do, and what I produce. These are all greatly abbreviated locutions for complex facts about personality .... Becker, supra note 167, at 49. n234. Radin, Property and Personhood, supra note 233, at 959-61. n235. Id. at 959. n236. Id. at 987. n237. For judicial support of Radin's theory of a personhood interest in one's home, see Silverman v. Barry, 845 F.2d 1072, 1081 (D.C. Cir.) (noting that "the law has long shown a special solicitude for the interest of a person in being secure in his or her home" (citing Radin, Property and Personhood, supra note 233), cert. denied, 488 U.S. 956 (1988). n238. Radin, Property and Personhood, supra note 233, at 959. n239. Id. at 959-60. n240. This is an awkward linguistic construct, but the obvious alternative, "personal property," carries too much legal baggage to use in this context. n241. Radin, Property and Personhood, supra note 233, at 960. n242. Radin, Residential Rent Control, supra note 233, at 362. n243. "When something is noncommodifiable, market trading is a disallowed form of social organization and allocation. We place that thing beyond supply and demand pricing, brokerage and arbitrage, advertising and marketing, stockpiling, speculation, and valuation in terms of the opportunity cost of production." Radin, Market-Inalienability, supra note 233, at 1855. n244. Radin, Property and Personhood, supra note 233, at 986. n245. Radin, Market-Inalienability, supra note 233, at 1857. n246. Id. at 1955. n247. Id. at 1856. n248. United States v. Dubilier Condenser Corp., 289 U.S. 178, 188 (1933). n249. For example, in tracing the history of patents, William Kingston remarks that the "legal protection of disembodied information thenceforward reflected the view that the work of writers and inventors is an extension of their personalities, and consequently in some sense, "theirs.' " Kingston, supra note 147, at 104. n250. See Brown, supra note 42, at 236 (interviewing inventor Steven Wozniak: "I recognized that with every little key I had hit upon, I had done something in so few parts that it was outstanding in an artistic sense. To me, an artistic design meant very few components doing the maximum job."). n251. See, e.g., Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250 (1903) (Holmes, J.) ("The copy a lithograph is the personal reaction of an individual upon nature. Personality always contains something unique.... That something he may copyright ...."). For a psychological examination of the relationship between art and artist, see generally Otto Rank, Art and Artist: Creative Urge and Personality Development (Charles F. Atkinson trans., 1932). n252. Radin, Market-Inalienability, supra note 233, at 1908. These terms are defined infra text accompanying notes 257, 258, and 259, respectively. n253. Radin, Market-Inalienability, supra note 233, at 1908. n254. Id. at 1909. Although Professor Radin does not address the question of whether inventions represent justifiable personal property, her treatment of a person's identification with her work as a justifiable personhood interest provides a useful insight: The view that personhood is involved with continuity of context need not be limited to the property or object relations heirlooms, wedding rings, homes, and so on I am discussing here. It could generate other categories of human interactions where continuity is involved with personhood, perhaps most notably in connection with work and the workplace. Radin, Residential Rent Control, supra note 233, at 363. n255. See Radin, Market-Inalienability, supra note 233, at 1918. Highly routinized work will tend to be more commodified than creative work because it is reasonable to expect greater non-monetary returns from the latter than the former. Work is partially decommodified through such mechanisms as minimum wage requirements, health and safety requirements, and anti-discrimination requirements. Id. at 1919. Consider the following description of work on an automobile assembly line, work that is highly commodified (though highly regulated): The only meaning of the job is in the pay check, not in anything connected with the work or the product. Work appears as something unnatural, a disagreeable, meaningless and stultifying condition of getting the pay check, devoid of dignity as well as of importance.... No wonder that this results in an unhappy and discontented worker - because a pay check is not enough to base one's self-respect on. Peter F. Drucker, Concept of the Corporation 179 (1946). On the other hand, Professor Williamson would reject the notion that highly commodified work is an "inferior" form of employment since some workers will actually prefer such jobs. See Williamson, supra note 84, at 268-69 (asserting that automobile assembly workers, for example, choose highly commodified work because they voluntarily sacrifice work satisfaction for greater pay). Professor Williamson acknowledges, however, that "capitalism is prone to undervalue dignity and that institutional safeguards can sometimes be forged that help to correct the condition." Id. at 271. n256. Radin, Market-Inalienability, supra note 233, at 1920. n257. Id. at 1904. n258. Id. n259. Id. "Contextuality implies that self-development in accordance with one's own will requires one to will certain interactions with the physical and social context because context can be integral to self-development." Id. at 1905. n260. See id. at 1920 (equating control over work with the freedom aspect of personhood). n261. See id. (equating continuity of work with the identity aspect of personhood). n262. See id. (equating "self-conception inseparable from one's work" with the contextuality aspect of personhood). n263. See id. at 1905-06. n264. Among the "particulars" integral to the self are "politics, work, religion, family, love, sexuality, friendship, altruism, experiences, wisdom, moral commitments, character, and personal attributes." Id. at 1906. n265. James Boyle, A Theory of Law and Information: Copyright, Spleens, Blackmail, and Insider Trading, 80 Calif. L. Rev. 1416, 1463 (1992) (questioning the special status of authorship generally). n266. Letter from Thomas Jefferson to Isaac McPherson, supra note 166, at 334. n267. See Drucker, supra note 255, at 179 (noting the lack of personhood associated with the product of an autoworker). n268. 35 U.S.C. 111 (1988). For exceptions to this rule, see id. 117-118 (dealing with the death or incapacity of an inventor or her refusal to assign). n269. Id. 115. n270. For example, although damages are by no means unheard of, injunctive relief is virtually automatic upon a finding of patent infringement. Injunctive relief is authorized by 35 U.S.C. 283 (1988). Once final judgment has been entered as to validity and infringement, the general rule is that an injunction will issue, absent a sufficient reason for denying it. See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1247 (Fed. Cir.), cert. denied, 493 U.S. 853 (1989); see also Paul Goldstein, Copyright, Patent, Trademark and Related State Doctrines 503 (3d ed. 1990) ("Courts will grant a prevailing patent owner an injunction for the remainder of the patent's life almost as a matter of course . ..."). The injunctive remedy is thought to be required in order to achieve the goals sought by the patent system. See, e.g., Smith Int'l, Inc. v. Hughes Tool Co., 718 F.2d 1573, 1578, (Fed. Cir.) (noting that "without the right to obtain an injunction, the right to exclude granted to the patentee would have only a fraction of the value it was intended to have, and would no longer be as great an incentive to engage in the toils of scientific and technological research."), cert. denied 464 U.S. 996 (1983). n271. Comment 2 to U.C.C. 2-716 speaks of contracts for the sale of "heirlooms or priceless works of art" as those which have been specifically enforced, though the comment goes on to state that "uniqueness is not the sole basis" of remedy under the section. U.C.C. 2-716 cmt. 2 (1990). The examples sound remarkably like those Radin says exemplify personhood property. Professor Dan-Cohen has noted the relationship between personhood property and specific enforcement: The view that "property is but the periphery of my person extended to things" endows our property (or in any event, some parts of it) with the special worth that calls for specific enforcement. This, of course, does not deny our right to alienate our property for a price, if we so choose. But as long as we have not freely elected to do so, our property (or whatever part of it that is thought to fit the perspective under consideration) remains infused with our will and bound up, through it, with our moral personality. As such, it should not be forcefully priced away from us. Dan-Cohen, supra note 55, at 97 (quoting Rudolph von Jhering, The Struggle for Law 59 (1915)). n272. Hughes, supra note 149, at 339-54. Hughes notes that "poems, stories, novels, and musical works are clearly receptacles for personality"; in contrast, Hughes argues that patents are not thought of "as manifesting the personality of an individual, but rather as manifesting a raw, almost generic insight." Id. at 340-41. n273. See id. at 339. n274. See id. at 339-44. n275. See id. at 339, 344-50. n276. It should be noted as a threshold matter that personhood will ultimately be used in this Comment not as a justification for patent rights, but, to the contrary, as a trump of patent rights, as the basis of a defense to patent infringement. See infra Sections IV.C.3.b-c. Nevertheless, it is useful to examine Hughes' objections to personhood theory as a justification for patent protection, as these objections are relevant to the discussion that follows. See, e.g., infra Section IV.C.1. (discussing non-appropriability of invention rights); infra Section IV.C.2. (discussing a cancelling or balancing approach to invention rights). n277. See, e.g., Burlingame, supra note 41, at 6 (noting that "inventor-heroes had valuable assistants who, sometimes, were greater inventors than they"). n278. For a discussion of personhood interests in rental housing, see generally Radin, Market-Inalienability, supra note 233, at 1918-21; Radin, Residential Rent Control, supra note 233. For a criticism of the view that personhood interests in rental property should be recognized, see Timothy J. Brennan, Rights, Market Failure, and Rent Control: A Comment on Radin, 17 Phil. & Pub. Aff. 66 (1988). n279. Reliable indicia identify those personhood interests most likely to be essential to freedom, identity, and contextuality; less reliable indicia are likely to identify nonessential (though potentially justifiably constitutive) interests. Professor Radin's market-inalienability approach adopts the pluralist approach referred to earlier, see supra text accompanying note 245, by recognizing only the reliable indicia. n280. But see Oddi, supra note 15 (proposing greater patent protection for "revolutionary" inventions). n281. See supra note 272. n282. A particularly striking example can be found in Edward J. Pershey, Drawing as a Means to Inventing: Edison and the Invention of the Phonograph, in Working at Inventing, supra note 41, at 101 (showing some of Edison's Matisse-like engineering line drawings and discussing the relationship between the drawings, the creative process of invention, and the invention itself). n283. See, e.g., id. n284. For examples of how the inventive process can be constitutive of personhood, see Vaughan, supra note 74, at 4 (" "The biographies of inventors give abundant illustrations of the state of inward happiness which comes from the exercise of the contriving bent.' ") (quoting Frank W. Taussig, Inventors and Money-Makers 15 (1930)). See also Bennett, supra note 20, at 26 (paraphrasing Thorstein Veblen: inventors create as a means of self-expression). n285. Hughes approaches this point but, I think, misses it. He does note the popular identification of the inventor with the invention - Edison with the light bulb and Bell with the telephone - but fails to elaborate on the internal identification of inventor with invention. See Hughes, supra note 149, at 344. This popular identification is, in fact, an inalienable interest. The original inventor remains identified on the patent even when the patent is assigned or transferred. In addition, this popular identification of an individual is typically lacking under the team-as-hero paradigm. Today, inventions are identified with firms, not with inventors: Who invented the dial on your telephone and the machine switching behind it? Who invented the fluid drive or cellophane or Flit or the oil burner or florescent lights or nylon? ... The best you can say is that General Motors invented this, or that another came out of the Bell Laboratories, but where is the hero? Burlingame, supra note 41, at 4. n286. See Radin, Market Inalienability, supra note 233, at 1855 ("We may decide that some things should be market-inalienable only to a degree, or only in some aspects."). n287. By "employee inventions," I refer to those inventions that are not controlled by preinvention assignment agreements. This might include inventions conceived and reduced to practice during the employment relationship but before the preinvention assignment agreement became operative. Such inventions are increasingly rare, since most employees must now sign preinvention assignment agreements at the onset of the employment relationship. "Employee inventions" does not refer here to assigned preinventions that mature into inventions - that is, inventions that were conceived and reduced to practice during an employment relationship that was controlled by a preinvention assignment agreement. I refer here to such inventions as "preinventions," since I believe that the conditions under which they come into existence - preassigned to the employer - continue to characterize their nature after conception and reduction to practice. n288. There are reasons for distinguishing preinventions from inventions other than the suspect nature of the decision to alienate. First, the preinvention could be conceived as still within the personality of the inventor while the invention is fully externalized in the patent claims and the embodiment. One is tempted to make comparisons to arguments calling for inalienability of gestational services (that is, payments for surrogate mothers). See, e.g., Radin, Market-Inalienability, supra note 233, at 1928-36. However, this comparison fails since the embodiment - the resulting baby - would normally be thought of as even more inalienable than the surrogacy. Second, it might be the inventive process that is personal rather than the invention itself. If so, preinvention assignment agreements can be thought of as commodifying the process by usurping control from the employee-inventor in exchange for her wages. See, e.g., supra note 255 (describing the highly commodified work on an automobile assembly line). n289. See Radin, Market-Inalienability, supra note 233, at 1909-10. A prophylactic ban on total alienation of inventors' interests in their future invention is then the "best possible coercion-avoidance mechanism under conditions of uncertainty." Id. at 1910. n290. Agreements to assign non-employee inventions not only are non-coercive for the same reasons that non-employee preinventions are, but are also knowingly made, for the inventor can identify precisely what it is that she is assigning. Assignment of employee inventions are made knowingly for the same reasons that non-employee assignment of inventions are made knowingly. It is debatable whether employee assignment of inventions is coercive. The employee, of course, is free to end the employment relationship if the employer demands assignment; however, there is a coercive element to such a demand. On the other hand, the employee has the invention which the employer presumably wants, and thus may have some leverage to retain some personhood interest in the invention. n291. Non-employee preinventions are rarely alienated, but presumably could be; that is, an independent inventor could agree with a firm that in return for specified consideration, any inventions conceived during a specified period would be assigned to the firm. Such "pre-creation" assignment is more familiar in other areas of intellectual property than in the area of inventions. For example, interests in books, films, and records are frequently assigned prior to creation. These types of deals differ from preinvention assignment in numerous respects. First, authors, film-makers, actors, and recording artists usually make such agreements as independent artists rather than as employees. Second, such artists typically retain significant interests in their creations. Third, such artists typically have the leverage to craft individualized agreements and thus the resulting contracts are not adhesive. Fourth, unlike with inventors, the artists' works are strongly identified with the artists. A "pre-creation" assignment agreement would not be as suspect outside the employment context as it would be within, because the element of adhesion is lacking. This would be the case even if the inventor was under some form of general economic duress. The agreement likely would be crafted individually, and the inventor presumably would be able to negotiate the retention of some interest in the inventions with a prospective assignee. Moreover, in such a case, the personhood of the independent inventor would not have been diminished during the inventive process. n292. See, e.g., Goldstein, supra note 270, at 359 ("To the chagrin of many observers today, the 1836 Act continues to provide the basic structure and principles of United States patent law."). n293. Cuno Eng'g Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941). n294. 35 U.S.C. 101-103 (1988). n295. See Gamon, supra note 6, at 499-500. n296. Pub. L. No. 98-622, 98 Stat. 3383. n297. Section 116 provides in pertinent part: Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. 35 U.S.C. 116 (1988). The legislative history of the amendment "recognizes the realities of modern team research. A research project may include many inventions. Some inventions may have contributions made by individuals who are not involved in other, related inventions." 1984 U.S.C.C.A.N. 5827, 5834. n298. The amendment added the last sentence to 35 U.S.C. 103 (1988): Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. Pub. L. No. 98-622, 103, 98 Stat. 3383, 3384 (1984). n299. See Dratler, supra note 25, 2.043, at 2-103 to 2-104 (discussing the purpose of the 1984 amendments). n300. See Gamon, supra note 6, at 502-10 and cases cited therein (discussing case developments in patent law). n301. It is important to note that corporate patents have been advocated before. See, e.g., id. at 512-13. n302. The wisdom of a corporate patent has been debated in the literature. See Sears, supra note 89 (arguing against corporate patents, largely on constitutional grounds); Gamon, supra note 6, at 512-13, 519-21 (advocating corporate patents). Sears' usage of the term "corporate patents" differs from that advocated here. She refers to a series of proposed reforms favoring team invention. Since Sears' article was written, some of the proposed reforms have been enacted. See supra notes 296-98 and accompanying text. n303. The 1976 Copyright Act recognizes an economic basis of authorship that defines an author as the entity that finances the creation of the work. This basis is embodied in the Copyright Act as the "work made for hire" doctrine. According to the Act, A "work made for hire" is - (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work ... if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. 17 U.S.C. 101 (1988). The Act proceeds to state that in the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for the purposes of his title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in a copyright. Id. 201 (b). Thus, copyright law recognizes by statute that corporations may be considered the authors of the works they finance. However, the scope of copyright protection is not precisely the same in all respects as for human authors. For example, due to the theoretically infinite corporate lifetime, copyright protection for works made for hire "endures for a term of seventy-five years from the year of its first publication, or a term of one hundred years from the year of its creation, whichever expires first," as opposed to the "life of the author and fifty years" duration of protection for works of human authorship. Id. 302(a), (c). n304. The Semiconductor Chip Protection Act of 1984 (SCPA), id. 901-914, is a sui generis form of intellectual property protection for mask works fixed in semiconductor chip products. Under the SCPA, mask works created by employed designers are the property of the employer: The "owner" of a mask work is the person who created the mask work, the legal representative of that person if that person is deceased or under a legal incapacity, or a party to whom all rights under this chapter of such person or representative are transferred in accordance with section 903(b); except that, in the case of a work made within the scope of a person's employment, the owner is the employer for whom the person created the mask work or a party to whom all the rights under this chapter of the employer are transferred in accordance with section 903(b). Id. 901(a)(6). n305. See Gamon, supra note 6, at 522-23. n306. Though, admittedly, courts appear unlikely to do this sua sponte, without legislative prodding. n307. 17 U.S.C. 101 (1988). This section is reproduced in pertinent part supra note 303. n308. See Cal. Lab. Code 2870 (West 1992). n309. By "anticipated result of corporate direction," I refer to specific management supervision of the inventive process. For example, if a manager (or any corporate agent) tells an engineer that a component is needed with specified characteristics and the engineer proceeds to develop such a component, and that component turns out to be a patentable device or employs a patentable process, and the engineer would qualify as an "inventor" under the present Patent Code, then I would designate such an invention a corporate invention. On the other hand, if while fulfilling the manager's request, the engineer conceives of an idea for an unrelated or peripherally related patentable invention, the invention would not be the anticipated result of corporate direction and would not qualify as a corporate invention. Note that "anticipated" as used here would not present a bar to patentability under the novelty or non-obviousness requirements of 35 U.S.C. 102-103 (1988). n310. See id. 135 (section authorizing interference actions). Interferences are ordinarily initiated to determine priority of invention, see id., but could be used or easily adapted to determine questions of corporate versus individual inventorship. The presumption of individual inventorship would be analogous to the current rebuttable presumption that the chronological order of filing dates is the order of actual invention. See 37 C.F.R. 1.657 (1991). n311. See Radin, Market-Inalienability, supra note 233, at 1854-55 (noting that inalienability can co-exist with encouragement of gift-giving). n312. Patent pools are a means of linking the rights to use the patents issued to more than one patentee. See, e.g., United States v. Line Material Co., 333 U.S. 287, 313 n.24 (1948). n313. See supra note 96 and accompanying text for a discussion of common law shop-rights. n314. Professor Radin uses the example of certain noncommercial claims of landlords, such as those of landlords who live on the premises, that can offset or defeat a tenant's personhood interest in continuing to live in an apartment that she has made her home. See Radin, Residential Rent Control, supra note 233, at 359-60. n315. In this case some other interest would have to be asserted by either the individual, the corporation, or both in order to justify the awarding of the property right. n316. In this case the entity offering the more compelling interest would prevail. n317. See Robert C. Clark, Corporate Law 675-76 (1986) (discussing the "meaning of corporate personality"). n318. See id. at 15-21 (discussing the economic efficiency of legal personhood). n319. See Lon L. Fuller, Legal Fictions 12-14 (1967) (discussing the possibility that legal personhood is merely a convenient metaphor). Furthermore, Professor Dan-Cohen argues that corporations are merely "intelligent machines" that cannot enjoy the moral status and privileges of human persons. Dan-Cohen, supra note 55, at 49-51. For discussions on the personhood of another type of "intelligent machine," see Pamela Samuelson, Allocating Ownership Rights in Computer-Generated Works, 47 U. Pitt. L. Rev. 1185, 1199-200 (1986) (arguing computers should not be treated as the authors of computer-generated code). See generally Lawrence B. Solum, Legal Personhood for Artificial Intelligences, 70 N.C. L. Rev. 1231 (1992) (discussing the issues surrounding the possible treatment of an artificial intelligence as a legal person). n320. See Dan-Cohen, supra note 55, at 96. n321. See supra text accompanying note 239. n322. See supra note 217. n323. Courts sometimes confuse the legal fiction of the corporate person with personhood in the Hegelian sense. For example, early ecclesiastical courts sometimes punished corporate misbehavior with excommunication; the practice was banned by Pope Innocent IV in the 13th century on the grounds that a corporation, having no soul, could not lose one. See John C. Coffee, Jr., "No Soul to Damn: No Body to Kick": An Unscandalized Inquiry into the Problem of Corporate Punishment, 79 Mich. L. Rev. 386, 386 n.2 (1981). n324. See, e.g., Boyle, supra note 265, at 1466. n325. 17 U.S.C. 102(b) (1988) provides as follows: "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." For a general discussion of the idea/expression dichotomy, see Dratler, supra note 25, 5.012. For the common law origin of the doctrine, see Baker v. Selden, 101 U.S. 99 (1880). n326. The scientific principles and mathematical formulas and algorithms that underlie an invention are not patentable, even if newly "discovered" by the inventor. See generally Dratler, supra note 25, 2.022 ("These things may be discovered by man, but they are not made by man."). n327. 17 U.S.C. 902(c) (1988) provides as follows: "In no case does protection under this chapter for a mask work extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." For a general discussion of the idea/layout dichotomy, see Dratler, supra note 25, 8.034. n328. See Radin, Property and Personhood, supra note 233, at 986-88 & n.102, 1005-06. n329. See supra notes 246-47 and accompanying text. n330. See supra notes 284-85 and accompanying text. n331. Again, a purely subjective approach is not suggested here. Reliable indicia of reasonable, justifiable personhood interests must be present for the personhood interest to be protected. n332. See supra notes 256-59 and accompanying text. n333. The reverse shop-right has been proposed before, but as an instrumental tool rather than a normative protection of personal interests. See Hovell, supra note 6, at 887-88. At least one court has refused to award an employee a reverse shop-right in an employer-owned invention. See Mainland Indus., Inc. v. Timberland Mach. and Eng'g Corp., 649 P.2d 613 (Or. Ct. App.), review denied, 653 P.2d 999 (Or. 1982), cert. denied, 460 U.S. 1051 (1983). The Mainland court reasoned that while equity favored awarding employers a shop-right in employee-owned inventions, there were no such arguments in favor of the employee, as the employer rather than the employee had made the investment. This view has been disputed throughout this Comment, see, e.g., supra notes 72-80 and accompanying text, and elsewhere, see, e.g., Dratler, supra note 6, at 132-33. For commentary supporting the Mainland reasoning, see Mislow, supra note 6, at 76-77. n334. The sanctions might have to be quite large and be imposed on the parties as well as their attorneys, since corporations could otherwise find it very profitable to squelch potential competitors through expensive litigation. n335. See Roche Prods. v. Bolar Pharmaceutical Co., 733 F.2d 858, 863 (Fed. Cir.), cert. denied, 469 U.S. 856 (1984). This defense is narrowly construed and limited to philosophical inquiry, satisfaction of curiosity, or amusement. Id. n336. Id. n337. Of course, there may be valid policy rationales for extending experimental use protection to non-inventors. n338. See, e.g., Radin, Property and Personhood, supra note 233, at 987 ("Perhaps the entrepreneur factory owner has ownership of a particular factory and its machines bound up with her being to some degree."). n339. One commentator has discussed how such firms can be constitutive of personhood, even though commercial in nature, and why, in fact, the personhood interests contribute to their commercial success: Inventor-entrepreneurs can foresee tangible personal rewards if they are successful. Individuals often want to achieve a technical contribution, recognition, power, or sheer independence, as much as money. For the original, driven personalities who create significant innovations, few other paths offer such clear opportunities to fulfill all their economic, psychological, and career goals at once. Consequently, they do not panic or quit when others with solely monetary goals might. James B. Quinn, Managing Innovation: Controlled Chaos, Harv. Bus. Rev., May-June 1985, at 73. n340. See generally Ubell, supra note 117; Hatfield, supra note 174. n341. Judicial support of the doctrine has waxed and waned over the years. Assignor estoppel and the related doctrine of licensee estoppel were established in American patent jurisprudence in the mid-19th century. See Kinsman v. Parkhurst, 59 U.S. (18 How.) 289 (1855); see also Lear v. Adkins, 395 U.S. 653, 663-64 (1969) (discussing early applications of licensee estoppel); Rochelle C. Dreyfuss, Dethroning Lear: Licensee Estoppel and the Incentive to Innovate, 72 Va. L. Rev. 677, 684-85 (1986) (same); Hatfield, supra note 174, at 260 (discussing early applications of assignor estoppel). The doctrine was still alive in the mid-20th century, see Scott Paper Co. v. Marcalus Co., 326 U.S. 249 (1945), though by that time numerous exceptions had nearly swallowed the rule. See, e.g., Lear, 395 U.S. at 664-68 (discussing exceptions to rule); Hatfield, supra note 174, at 264-67 (same). The Court in Scott Paper, for example, declined to estop the defendant from claiming that the patent he had allegedly infringed was invalid as it was anticipated by prior art. Scott Paper, 326 U.S. at 257. The decision was not uncontroversial, however. Justice Frankfurter wrote a vigorous dissent, noting that assingor estoppel "has been part of the fabric of our law throughout the life of this nation. It has been undeviatingly enforced by English speaking courts in this country, in England, in Canada, and Australia." Id. at 260 (Frankfurter, J., dissenting). Assignor estoppel was generally thought to have been abolished soon thereafter in Lear, 395 U.S. at 653 (abolishing licensee estoppel and criticizing "patent estoppel" generally), but was resurrected by the Federal Circuit in two recent cases: Diamond Scientific C. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir.), cert. dismissed, 487 U.S. 1265 (1988) and Shamrock Technologies v. Medical Sterlization, 903 F.2d 789 (Fed. Cir. 1990). n342. Lear, 395 U.S. at 668. n343. See, e.g., Hatfield, supra note 174, at 273. n344. See, e.g., Ubell, supra note 117, at 27-30. Ubell emphasizes that the employee-inventor is in no position to vouch for the patentability of any inventions she assigns to her employer - this is a question of law to be determined by the employer's patent attorney. Thus, the employee-inventor's oath and signature ought not to preclude her from later asserting that the patent is invalid. Id. n345. Furthermore, even employers are arguably better off under the personhood defense. The assignor estoppel doctrine is subject to numerous exceptions. See supra note 341. If an exception applies to the facts of a particular case, the employer's patent may be found invalid. The employer has less to lose under the personhood defense approach. Even in those cases where the defense is operative, employer-patentees retain the right to exclude all but the employee-inventor from making, using, and selling the invention in question. n346. See supra note 147 and accompanying text. n347. See supra note 148 and accompanying text. n348. See supra note 149 and accompanying text. n349. Law, for example. n350. Mark C. Suchman, Invention and Ritual: Notes on the Interrelation of Magic and Intellectual Property in Preliterate Societies, 89 Colum. L. Rev. 1264, 1290-91 (1989). n351. See Steven Greenhouse, Attention America! Snap out of It!, N.Y. Times, Feb. 9, 1992, 3, at 1 (detailing America's lack of productivity growth relative to that of Japan and Germany). n352. See, e.g., Hatfield, supra note 174, at 251-55. n353. See, e.g., William R. Greer, Foreign Students: Boon or a Threat?, N.Y. Times, Mar. 27, 1983, 12, at 72; Barbara Vobejda, Foreign Students Proliferate in Graduate Science Programs: Shortage of American Expertise Foreseen, Wash. Post, Sept. 2, 1987, at A1; Amy S. Wells, More Foreigners Are Seeking Ph.D.'s in U.S., N.Y. Times, July 20, 1988, at B6. n354. The rate of private investment in research and development has also been of increasing concern. See, e.g., Stuart Auerbach, U.S. Firms Lag Japanese in Spending: Study Fuels Debate on Competitiveness, Wash. Post, June 29, 1990, at G2; William J. Broad, Japan Seen Passing U.S. in Research by Industry, N.Y. Times, Feb. 25, 1992, at B5. If, as has been discussed earlier, see supra note 201 and accompanying text, the efficacy of patent law generally in stimulating investment is debatable, then the effect of the retention of a non-exclusive, non-transferable right of an inventor to exploit her own invention would be minuscule. As has been noted in another context, "acceptance of a patent system by no means compels the conclusion that any subtraction from the bundle of patentee's rights is necessarily bad public policy." Donald F. Turner, The Patent System and Competitive Policy, 44 N.Y.U. L. Rev. 450, 458 (1969) (arguing for antitrust limitations on a patentee's licensing rights). From lawrenceliang at vsnl.net Fri May 17 13:15:34 2002 From: lawrenceliang at vsnl.net (Lawrence Liang) Date: Fri, 17 May 2002 13:15:34 +0530 Subject: [Commons-law] New initiative on commons Message-ID: <4.3.0.20020517131301.00bc6d80@mail.vsnl.net> An HTML attachment was scrubbed... URL: http://mail.sarai.net/pipermail/commons-law/attachments/20020517/0f1a35f4/attachment.html From ravis at sarai.net Sat May 18 15:26:38 2002 From: ravis at sarai.net (Ravi Sundaram) Date: Sat, 18 May 2002 15:26:38 +0530 Subject: [Commons-law] Creative commons announcement Message-ID: <5.0.2.1.2.20020518152500.00a903c0@mail.sarai.net> This is an important event in open initiatives - so I am posting it in full. Ravi May 16, 2002 SANTA CLARA, CALIFORNIA - Representatives from the new nonprofit Creative Commons (http://creativecommons.org) today outlined the company's plans to help lower the legal barriers to creativity through an innovative coupling of law and technology. The Creative Commons will provide a free set of tools to enable creators to share aspects of their copyrighted works with the public. "Our tools will make it easier for artists and authors to make some or all of their rights available to the public for free," Stanford Professor and Creative Commons Chairman Lawrence Lessig explained at the O'Reilly Emerging Technologies Conference. "If, for example, an artist wants to make her music available for non-commercial use, or with just attribution, our tools will help her express those intentions in a 'machine-readable' form. Computers will then be able to identify and understand the terms of an author's license, making it easier for people to search for and share creative works." Creative Commons was formed by a coalition of academics from a broad range of institutions, including Duke, Harvard, MIT, Stanford, and Villanova. Its aim is to use the flexibility of copyright law to help support a rich public domain alongside traditional copyrights. In a separate Creative Commons presentation, Molly Van Houweling, Executive Director, and Lisa Rein, Technical Architect, previewed the web-based application that will help scholars, artists, and others make their works available for copying, modification, and redistribution. Authors and artists who use the tool may choose to dedicate their works to the public domain or choose to retain their copyright while allowing creative reuses subject to custom combinations of conditions. An illustrator seeking exposure, for example, might choose to let anyone freely copy and distribute her work, provided that they give her proper credit. An academic eager to build a public audience could permit unlimited noncommercial copying of his writings. "The aim," Ms. Van Houweling explained, "is not only to increase the sum of raw source material online, but also to make access to that material cheaper and easier." To do this, Creative Commons will translate authors' intentions into "metadata" associated with their creative works. This will enable people to use the Internet to find, for example, photographs that are free to be altered or reused, or texts that may be copied, distributed, or sampled with no restrictions whatsoever - all by their authors' permission, expressed in code as well as plain, straightforward language. Creative Commons expects to launch these applications for general public use this fall. In the meantime, Creative Commons is inviting feedback on its prototype and its mission. Creative Commons also announced its longer-term plans to create an intellectual property conservancy. Like a land trust or nature preserve, the conservancy will protect works of special public value from exclusionary private ownership and from obsolescence due to neglect or technological change. The conservancy will house a rich repository of high-quality works in a variety of media, and help foster an ethos of sharing, public education, and creative interactivity. More about Creative Commons: Creative Commons was founded upon the idea that creativity and innovation rely on a rich heritage of prior intellectual endeavor. We stand on the shoulders of giants by revisiting, reusing, and transforming the ideas and works of our peers and predecessors. Digital communications and personal computing promise a new explosion of this kind of collaborative creative activity. At the same time, expanding intellectual property protection leaves fewer and fewer creative works in the "public domain" - the body of creative material unfettered by law and, to quote Justice Brandeis, "free as the air to common use" - while the growing complexity of copyright makes it more and more difficult to know when it is legal to copy or alter a work. Creative Commons will work within the copyright system to help reduce these barriers to creativity. Creative Commons was founded in 2001 with the generous support of the Center for the Public Domain. It is now based at and receives generous support from Stanford Law School, where Creative Commons shares space, staff, and inspiration with the Stanford Law School Center for Internet and Society. It is led by a Board of Directors that includes law professors Lawrence Lessig, James Boyle, and Michael Carroll, MIT computer science professor Hal Abelson, lawyer-turned-documentary filmmaker-turned-cyberlaw expert Eric Saltzman, and public domain web publisher Eric Eldred. The organization is also advised by a technical advisory board that includes boardmember Hal Abelson, Barbara Fox (Senior Architect, Cryptography and Digital Rights Management, Microsoft WebTV), Don McGovern (Senior Fellow at the Berkman Center for Internet and Society at Harvard Law School), and Eric Miller (Activity Lead for the World Wide Web Consortium's Semantic Web Initiative). Please direct press inquiries to Molly Van Houweling, Executive Director, or Glenn Otis Brown, Assistant Director, at press at creativecommons.org. From lawrenceliang at vsnl.net Fri May 24 15:18:34 2002 From: lawrenceliang at vsnl.net (Lawrence Liang) Date: Fri, 24 May 2002 15:18:34 +0530 Subject: [Commons-law] Conceptualising law and culture together Message-ID: <001801c20308$2c2e9ff0$0201a8c0@MINGDOM> Hi everyone, firstly shuddha, i am still thinking of a lot of what you said in your last mail. I will defintely respond in time to your mail. Till then I hope a beer promise will compromise for the delay For all those already on the list, you must have noticed that the list page has the sub title a cultural interrogation of law; I guess it is like one of those self evident movie sub titles which are neverexplained, teh latest one being "some times you just have to leave it to god" in Na Tum Jaano Na Hum...but as with the catch phrases in the movies where you end up not knowing what the movie had to do with the catch phrase , I think it is important to spell out what we mean by a cultural interrogation of law. Out here in Bangalore we at the Alternative Law Forum along with the Center for studies in Culture and society are trying to tie up a year long seminar (consisting of public lectures, reading groups and sessions with practioners) on this entire question of what law and culture in India means? We are also hoping that people at Sarai ands elsewhere will join in as and when possible , either through virtual connections or coming down for a workshop or whatever else. Anyway i am sending a small concept note that I have written and would like to invite feedback, suggestions opn what you guys think should ,or should not be the approach etc. Also including a small response that Mathew had sent me as well. lawrence ============== LAW AND CULTURE- EXPLORING CERTAIN THEMATICS While it may have arrived a little late, interdisciplinary methodology has certainly arrived for good as far as legal studies is concerned. Beginning with the sociological school of jurisprudence there has been a concerted interest in the idea of the role that law plays in society, and its relationship to the various contested processes which we call culture. One of the limitations that the law and society school had in conceptualizing this relationship between law and culture was the fact that it saw law and culture as being two autonomous disciplines which were nonetheless linked to each other. Thus we had the popular theory of law being a reflection of the prevailing cultural and moral norms in society. Implicit in this understanding of law and culture was the assumption of stability made about these two discourses. Thus when law and culture were thought of together, they were conceptualized as distinct realms of action which were only marginally related to one another. For example, we would tend to think of watching a film as a cultural act with little or no significant legal implication. We would also assume that assume that a lawsuit challenging certain scenes in a film is largely a legal problem with few cultural implications. In India for instance, the works of Upendra Baxi and Rajeev Dhawan have emerged from bedrock of the law and society movement. The limitations of their work lies in their reliance upon the high culture of the law, in the form of appellate judgments, the rule of law, alternate legalities etc where they recognize the instrumental role relationship that law has with society and social change itself. Cultural analysis has since then moved beyond its stable accounts and has come to include a wide array of activities and strategies which people deploy in the process of meaning making. Developments in legal studies have also come to recognize that law and the idea of legality may be just one of the various processes through which people make sense of themselves and their role in society. If there is one common concern that clearly articulates the desire for studying law and culture, it is a recognition that the traditional boundaries drawn by disciplines do not necessarily offer the most intelligible accounts of society. What then is the role of an inter disciplinary enquiry? A mere recognition of the importance of inter-disciplinarity by itself does not really say anything interesting. We have to be clear about the role that such an enquiry has. What does it mean for legal studies to adopt cultural analysis and/or cultural studies? In what way will a cultural study of law enlarge and alter our conception of the way law operates in our identities, interpretations, and imaginings? Is it useful to use the intellectual strategies and methodology of cultural analysis for the analysis of legal phenomena? Rosemary Coombe says that "an exploration of the nexus of law and culture will not be fruitful unless it can transcend and transform its initial categories. A continuous mutual disruption--the undoing of one term by the other--may be a more productive figuration than the image of relationship or joinder". It is therefore important to see the goal of this interdisciplinary project as one which attempts to understand law not in relationship to culture, as if they were two discrete realms of action and discourse, but to make sense of law as culture and culture as law, and to begin to think about how to talk about and interpret law in cultural terms. Thus to go back to our previous example, our understandings of the film and the lawsuit are impoverished when we fail to account for the ways in which the film is a product of law and the lawsuit a product of culture, and how the meaning of each is bound up in the other, and in the complex entanglement of law and culture. What then are some of the ways in which we see the relationship between legality and the idea of culture? a.. Constitutive theories of law, for instance have been important in revealing the close relation that law has to power, within the linguistic field in which law functions. That is, law does not merely describe or reflect a set of circumstances in society but through such description actually creates or constitutes that sphere which we call the cultural. A clear instance of this is Sec. 377 of the Indian Penal Code which criminalizes "unnatural sexual offences". The figure of the homosexual as a deviant of the law therefore gets constituted by the operation of Sec. 377 b.. If culture can be broadly defined as various practices of signification, then a cultural analysis of law is crucial in helping us understand "the signifying power of law and law's power over signification." It forces us to recognize that legal meaning may be found and invented in the variety of locations and practices that constitute culture. Furthermore these locations and practices may themselves be encapsulated, though always incompletely, in legal forms, regulations, and symbols. (Rosemary Coombe). There may therefore be a rich project in uncovering the cultural and narrative life of the law as it were, in the various day to day situations in which people encounter and deal with notions of law and legality. c.. Law continues to play a large role in regulating the terms and conditions of cultural production and cultural practices. Cultural artifacts on the other hand have reveled in representing issues of law and legality. While there have been attempts at studying these instances of the relationship between law and legality, they have largely concentrated on the cultural representations as metaphors of legality. It is important however to move beyond the metaphor of legality analysis into understanding how the conditions for the circulation of such cultural practices are themselves instances of legality. A prominent example in this instance is the idea of authorship and originality itself as legally mediated categories. d.. Austin Sarat locates the emergence of the cultural as the privileged site of politics alongside the decline of the social as the site of governance. If the social marked the introduction of modes of governance and knowledge creation (social sciences etc) it also marked the emergence of certain dominant modes of legal analysis (legal realism, sociological jurisprudence) which relied on a very particular account of the social. He believes that if sociologists, political scientists, and lawyers find themselves invoking "culture" at the expense of, or in response to, an emerging crisis within their own master references, such as "the social," "public opinion," and "law." , it is because the cultural, has become a stand-in for interpretive grids that can no longer be utilized effectively. These are a few random suggestions on the ways in which we can begin to explore the idea of law and culture. It is however more important for us in the context of an attempt at understanding the contemporary reality of Indian society to highlight some of the key areas which can be collectively explored in determining the idea of law as culture and culture as law. TOPICS AND AREAS 1.. Critical interrogation of law by culture- theoretical debates 2.. The formation of legal consciousness 3.. Ideas of culture and cultural boundaries established by law 4.. Notions of rights and legal claims for rights 5.. Ideas of public culture or the public sphere 6.. The idea of cultural rights exploring the different careers of the phrase 7.. Idea of communities for law and culture 8.. Problems Challenges and Responses to inter-community life in India. 9.. Religious communities/ ethnic minorities/ indigenous people 10.. Law and popular culture 11.. Violence and the law 12.. software as culture 13.. Indian legal thought and jurisprudence- Is there such a category and does it enable us to understand law and culture better 14.. Feminist engagement with idea of law and culture- An examination of the devadasis or similar case study 15.. Reading a case- different methodologies and strategies 16.. Freedom of speech and expression 17.. Law and the construction of sexuality and sexual identities 18.. Legal theory and reception theory 19.. Formal legal systems and alternatives etc 20.. Public interest litigation 21.. Social history of law in India 22.. Legal concept of art 23.. Cultural spaces and public sphere 24.. IPR and the regulation of cultural expression 25.. Legal developments as spectacle and performance - arundhati contempt of court 26.. Developing a curricula for law students on law and culture 27.. What does one do with academic interventions made by law and culture 28.. The idea of people's justice in India 29.. Business practices in India. 30.. Property practices in India -------------- next part -------------- An HTML attachment was scrubbed... URL: http://mail.sarai.net/pipermail/commons-law/attachments/20020524/44bd8e0d/attachment.html From lawrenceliang at vsnl.net Fri May 24 15:18:43 2002 From: lawrenceliang at vsnl.net (Lawrence Liang) Date: Fri, 24 May 2002 15:18:43 +0530 Subject: [Commons-law] Mathew's response to law and culture Message-ID: <001c01c20308$31ba2660$0201a8c0@MINGDOM> Law and Culture Why do we want to do a law and culture seminar? For large part the motivations behind a project of this nature are disciplinary in nature. We intuitively feel and to some extent know that there is much to be gained in associating our own disciplines with others. It allows for better and more adequate explanations to the realities that we attempt to put to study. As students of law we know that there are various ways of understanding law, thereby opening out the possibility of looking at the 'cultures of law'. Similarly as students of culture it is evident that the idea of law and legality could constitute the frames within which ideas of culture can be interrogated. It seems reasonably evident therefore that there is much to be learned from the dialoguing of disciplines. When we make a case for interdisciplinarity we are pointing to a gap between experiences of the world and theories of the world. Thus we are in effect saying that existing theoretical frames are inadequate and that we need better explanatory frames to understand what we seek to describe. Thus, in speaking of 'law and culture' we are saying that existing theoretical fields of law and culture are separately inadequate and that the realities that they seek to describe could be understood better by resorting to new and cross -fertilized methodologies. Our problem therefore is with the ways in which disciplines cut up the world. We experience the world compositely therefore our argument for inter-disciplinary study is tied to the notion that theoretical description of the world should also in some sense be open to composite methodology. It is this perceived resistance in our disciplines that probably forces our articulation of the need for a law and culture approach. I am not sure if I personally agree with Coombe's position of permanent disruption of categories. Theoretical description has to be grounded in positive descriptions of the world and these descriptions will hold until we have better. The project as I see it is therefore one that attempts to produce a theoretical field out our common concerns and in the process concretely demonstrate the need to move beyond our disciplines to explain whatever it is that we seek to put to study. How then can this project to bring law and culture together proceed? I personally feel that a mere statement that we need to dialogue our disciplines would leave us with nothing but an omnibus idea cloaked in noble sentiment. The 'Law and culture' seminar would therefore have to be an attempt at evolving out of our often-differing disciplinary methodologies and our common concerns a newly unified way of looking at the world. The distinctiveness and importance of the effort will arise primarily out the commonness of our concerns and the new theoretical insights we hope to generate out of them. The common ground of our project is what we need to work through as a group. Lawrence's list of possible areas is suggestive of where this initiative can move towards. My own interests (1) Problems Challenges and Responses to inter-community life in India. (2) The idea of people's justice in India -------------- next part -------------- An HTML attachment was scrubbed... URL: http://mail.sarai.net/pipermail/commons-law/attachments/20020524/cba3e8c0/attachment.html