Intellectual Property Textualism, Where Art Thou?
The Curious Case of Less Politically Charged Corpora Iuri
In addition to teaching the Classical Legal Tradition and Federal Courts, I teach the humdrum topic of Intellectual Property, having been an IP litigator (among other things) during my career in private practice. So I am happy to contribute another entry in The New Digest and Ius & Iustitium’s tradition of classical thinking in intellectual property law. One of my IP students recently made an insightful comment. The student said something to this effect: “We get most of our exposure to textualism and originalism in heady courses like Con Law I & II, Fed Courts, Admin, etc. And we get a distinct impression about a certain fidelity to textualism and originalism by certain Justices in those courses. But here in IP, I have a hard time telling the difference between an opinion by, say, Justice Thomas on the one hand, and Justice Breyer, on the other.”
He may be on to something. When we start to look at particular corpora iuri that are, shall we say, more lawyerly and less prone to grammarian navel-gazing, the role of Textualism™ fades appreciably. Text matters (it always matters), but it matters in a way that is more integrated to the nature of law and the legal enterprise. Intellectual property is governed by statutes: the Patent Act, the Copyright Act, the Digital Millennium Copyright Act, the Lanham Act, &c. But the ratio of these statutes sometimes plays a much more significant role in how the Supreme Court adjudicates them. A brief trip through some intellectual property law can disabuse us of the illusion that principles of political morality are always outside the law, even for judges typically thought of as textualists or originalists, like Justices Scalia, Thomas, and Alito. Some examples can illustrate the point, though I am by no means being exhaustive. I have chosen three cases covered in my intellectual property class where students, and I, noticed the thin role of Textualism™ and a significant role of broader principles of political morality (although principles particularly internal to the ratio of intellectual property).
Justice Scalia and Trade Dress Protection
Under the Lanham Act, a “trademark” is “any word, name, symbol, or device, or combination thereof …. to identify and distinguish … goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. 1127. The sine qua non of trademark protection is source identification. A mark, to be protected, must tell you who, not what. This is, we might say, part of the fundamental ratio of trademark protection. This species of property protects the goodwill a business builds in its brand, and simultaneously lowers the transaction costs the public would otherwise have to engage in to gauge quality, safety, and the like. “This is a Coca-Cola®, I know what I’m getting.” Trademark is rooted in the common law of unfair competition. It is substantively unfair for someone to pass off his product or service by leveraging the goodwill of someone else’s product product or service, and it can be confusing (bordering on a species of fraud) to the purchasing public. In order to serve this purpose of source identification with its attendant benefits to the public, the law requires that a mark be “distinct” from the good or service itself. The most famous test for distinctiveness was crystalized by Judge Henry Friendly in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), and seeks to sort marks into the following categories: “arbitrary,” “fanciful,” “suggestive,” “descriptive,” and “generic.” The first three are considered “inherently distinctive,” that is, they automatically communicate source identification to the public; the last category “generic” can never be a source identifier (for broad public policy reasons). “Descriptive” marks describe a feature of the service or product, and while not generic, border on it to a degree that in order to qualify for trademark protection, the putative markholder must establish “secondary meaning,” a term of art signifying that the public primarily1 understands the term as a source identifier. So while inherently distinctive marks automatically get protection if used in commerce in good faith, merely descriptive marks require the tough work of establishing source identification in fact among the consuming public.
Enter Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000). Samara produced spring/summer seersucker children’s outfits with various appliques on them. Wal-Mart copied the outfits and sold them at a lower price. Samar sued for trademark infringement under the theory of trade dress. Trade dress is the overall visual presentation of a product or service, traditionally associated with the packaging that a product comes in, but over time extending to broader concepts.2 In Wal-Mart, Justice Scalia, writing for a unanimous Court, had a subtle conundrum on his hands. Eight years prior, the Court granted cert (imprudently, in my view) in a case in which a jury had found as a factual matter that a garish Mexican-themed restaurant vibe was an inherently distinctive trade dress. But the question presented was limited to whether an inherently distinctive trade dress required secondary meaning to obtain trademark protection. The jury’s very strange fact finding was not before the Court, and it “assume[d], without deciding,” that this finding was “correct.” See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 770 (1992). But given that assumed fact, the answer was an easy no. Secondary meaning is only for things that do not inherently and automatically communicate source identification. Yet, Two Pesos is a bit uncomfortable because it is premised on a somewhat suspicious jury finding (if you read Two Pesos, the way the restaurant is themed is hardly distinguishable from any typical Mexican restaurant chain). Garish Mexican decor seems hardly capable of inherently and automatically communicating source without secondary meaning, much the same way that a single color, green-gold, seems incapable of inherently communicating source identification without secondary meaning. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995) (so holding for green-gold color of dry-cleaning press pads that had established secondary meaning).
Justice Scalia smoothed over this problem with a deft move. He identified a distinction within trade dress between product packaging on the one hand, and product design on the other. He likened Two Pesos to be more like the packaging of a product (which might be capable of being inherently distinct), and the children’s clothing at issue as the design of the product. But where did this distinction arise? What in the text of the Lanham Act created that distinction internal to the non-textual category of trade dress? Nothing, really. Justice Scalia’s approach was more holistic. Relying primarily on first principles of trademark law—its broader purposes and policies—Justice Scalia reasoned: “It seems to us that design, like color, is not inherently distinctive. The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product.” Product design, on the other hand, “almost invariably serves purposes other than source identification.” And permitting product design to be inherently distinctive would prove “harmful to …consumer interests.” Litigation over the inherent distinctiveness of a product design would greatly deter competition, making “the game of allowing suit based upon alleged inherent distinctiveness … not worth the candle.” If any such inherently distinct product design did exist, it could presumably be protected by a “design patent” or “copyright.” Hence, “the availability of these other protections greatly reduces any harm to the producer that might ensue from our conclusion that a product design cannot be protected … without a showing of secondary meaning.” An odd form of textualism, to be sure.
But he was not done. Admittedly, the concepts of product packaging and product design (much like the categories of distinctiveness themselves) exist on a continuum. And at the margins, things get blurry. As he commented, “a classic glass Coca–Cola bottle, for instance, may constitute packaging for those consumers who drink the Coke and then discard the bottle, but may constitute the product itself for those consumers who are bottle collectors, or part of the product itself for those consumers who buy Coke in the classic glass bottle, rather than a can, because they think it more stylish to drink from the former.” So how should this problem be resolved? Without citation, Justice Scalia held: “To the extent there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning. The very closeness will suggest the existence of relatively small utility in adopting an inherent-distinctiveness principle, and relatively great consumer benefit in requiring a demonstration of secondary meaning.”
Thus, the Lanham Act, which Justice Scalia admitted at the outset “provides little guidance as to the circumstances under which unregistered trade dress may be protected,” yielded: (1) the protection of trade dress itself, including that some forms of trade dress but not others are inherently distinctive as source identifiers; (2) the distinction within trade dress of both product packaging and product design; (3) the determination that product packaging may be inherently distinctive, but product design cannot be; and (4) a close-case-settling rule that when there is ambiguity as to whether to classify something as product packaging or product design, courts must find it to be the latter and thus require secondary meaning, because this will protect the consumer interests that underlie the Lanham Act’s protection of trademarks.3 On my read, text certainly mattered to Justice Scalia, but the reasoning of the opinion strays far from textualist orthodoxy in its use of substantive principles and policies to work out a significant regime for testing trade dress distinctiveness that, while certainly consistent with the Lanham Act’s text, reaches far beyond mere text to get there.
Justice Thomas and the Doctrine of Equivalents
Patent infringement can happen directly4 in one of two ways: (1) “literal” infringement; or (2) via the doctrine of equivalents. Literal infringement is, well, literal, and thus, can be somewhat harsh and inequitable to patent holders if not bounded by some kind of countervailing doctrine. Literal infringement exists, if and only if, the accused invention practices all of the limitations in the patented claim, exactly. See, e.g., Larami Corp. v. Amron, No. CIV. A. 91-6145, 1995 WL 128022, at *1 (E.D. Pa. Mar. 23, 1995), aff’d, 91 F.3d 166 (Fed. Cir. 1996) (Super Soaker® water gun did not literally infringe patent where patented claim was limited to internal housing for holding water, and the Super Soaker® had an external tank).5 The “doctrine of equivalents” moderates the rather obvious problem literal infringement presents, i.e., that people could pirate patented inventions by making insubstantial modifications so as to not literally practice each limitation. And it does so by saying that one can infringe by replacing an element of a patented claim even where that replaced element is not taught, disclosed, or enabled by the patent specification. In effect, this doctrine broadens the patent claim beyond what the claim actually says (beyond its text, certainly) to even include things never disclosed in the application. This doctrine, while old, has never been without controversy.
The Supreme Court affirmed the doctrine in 1853 in Winans v. Denmead, 56 U.S. 330, and did so despite the fact that under the 1793 Patent Act, a doctrine of equivalents appeared to exist, but “was not reenacted in the Patent Act of 1836” which governed the case and purported to wholly repeal and replace the earlier act.6 The Court seemed to think this fact mattered very little (and rejected the dissent’s arguments) because it understand that a doctrine-of-equivalents was “a principle which necessarily makes part of every system of law granting patents for new inventions.” The Supreme Court again addressed the doctrine in 1950 in Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (authored by the august Justice Jackson), reaffirming the doctrine as a matter of “wholesome realism” despite, to put it mildly, its awkward fit with the statutory scheme then in existence. As Justices Black and Douglas emphasized in vigorous dissents, the statutory text required that the patentee “shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.” This gives notice to the public of what is and is not his invention. “Claiming” is an extremely important feature of the statutory scheme, and the claim, and only the claim, is what the PTO—who is the only body with authority to grant patents—approved. The Court may have come very close to overruling the doctrine of equivalents when, in 1970, it was presented with the chance to do so, including with solid support from the Solicitor General’s Office as amicus curiae, which argued bluntly: “The judicially-created doctrine of equivalents runs counter to the statutory requirement that the subject of a patent be precisely defined in the patent claims,” “urg[ing] the Court … to reject the doctrine of equivalents.” Br. for the United States as Amicus Curiae, Standard Industries, Inc. v. Tigrett Industries, Inc., 1970 WL 136280, at *10–11 (U.S. 1970). The court of appeals’ judgment, however, was “affirmed by an equally divided Court.” Standard Indus., Inc. v. Tigrett Indus., Inc., 397 U.S. 586 (1970).
In Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997), the Supreme Court once again had occasion to take up the doctrine of equivalents, ultimately reaffirming the doctrine in a unanimous opinion by Justice Thomas.7 The patent claim taught an “ultrafiltration” process for certain dyes whereby the dye, in solution, was forced through a membrane with particular diameter holes under a specified pressure, and “at a pH from approximately 6.0 to 9.0.” The patentee sued for infringement under the doctrine of equivalents, and prevailed, where the defendant practiced an ultrafiltration process for dyes that had the same membrane pore diameters, very similar pressures, and a pH of 5.0. As Justice Thomas notes, the “[p]etitioner’s primary argument in this Court is that the doctrine of equivalents … did not survive the 1952 revision of the Patent Act,” being inconsistent with “several aspects of the Act,” including: (1) the fact that Section 112 both mandates the practice of setting forth claims as the means of determining the scope of the patent rights (rather than merely what is disclosed in the specification), and (2) Congress amended the Patent Act in 1952 (in response to an earlier Supreme Court decision that limited a patentee’s ability to use “functional” language in claims) to permit patentee’s to expressly claim certain “equivalents” (15 U.S.C. 112(f)) and even seek amendment to the patent to cover them in some circumstances. The Solicitor General, as amicus curiae, reiterated its past position that it had “opposed use of the doctrine of equivalents,” but took a more conciliatory approach for how the doctrine might survive if transformed into an equitable doctrine in application. See Br. of the United States as Amicus Curiae, Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 1996 WL 172221, at *1 (U.S. 1996).
Justice Thomas briskly brushed the textual arguments, while frankly acknowledging that “[t]here can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory claiming requirement” of the 1952 Patent Act. (To be fair, one could say that the doctrine of equivalents always conflicts with the definitional and public-notice functions of the statutory claiming requirement, whether applied broadly or narrowly—in all cases it extends the claim beyond its plain language). The opinion briefly calls Congressional amendments to the 1952 Act a “dubious negative inference,” instead relying on “the lengthy history of the doctrine of equivalents” in the courts and the fact that Congress could, at any time, get rid of it but hadn’t, as the basis of decision. Of course, that begs the question. The conclusion of multiple Justices over many decades, multiple federal appellate judges on the Federal Circuit, the Solicitor General’s Office for some substantial period of time, and parties coming to the Court was that Congress did get rid of the doctrine (perhaps earlier, but most likely by 1952). At no point does Justice Thomas argue that the doctrine of equivalents is contained anywhere in the text of the Patent Act. He presents no attempt to locate it in any positive provision whatsoever. That is because it is simply not there in the ordinary textualist sense. The genesis of the doctrine is, as the Supreme Court held in 1853, the fact that the principle would simply be necessary to any scheme of granting patents, even if the text does not provide for it (whether or not you agree with that is another question).
Justice Alito and Inducing Infringement
Last, we can turn to Justice Alito’s opinion in Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011), which set out to clarify what kind of knowledge a party must possess to be liable for inducing patent infringement under 35 U.S.C. 271(b). The facts are straightforward. The patentee held a patent over a very popular home deep fryer, the external surfaces of which did not get hot (i.e., the antithesis of the Bluth family “Cornballer”). A competitor contracted with a foreign-based manufacturer to make a home deep fryer. The competitor bought a foreign version of the patented deep fryer that (because it was foreign sold) lacked the U.S. patent number on it and gave it to the manufacturer. The manufacturer in turn reversed engineered it, changed the cosmetic outer shell, gave it to a patent attorney, purposefully failed to tell the attorney it was directly constructed from a patented invention, and asked the attorney to determine whether it infringed anyone’s patents. The attorney issued the patent letter concluding it did not infringe any patents he could find, and the manufacturer started selling the product. The manufacturer was owned by Global-Tech Appliances, who the patentee then sued on a theory of inducing infringement.
The issue before the Supreme Court was whether inducing patent infringement under 35 U.S.C. 271(b) requires more than deliberate indifference to a known risk that the induced acts may violate an existing patent. Now, Global-Tech presents itself in a much more familiar textualist style, at least in some points, but it may well present the archetypical “hard case” of ambiguity. Justice Alito’s analysis “begin[s] with the text,” which states, “Whoever actively induces infringement of a patent shall be liable as an infringer,” quickly concluding that the statute “makes no mention of intent,” and is ultimately “ambiguous”: “[T]his provision may require merely that the inducer lead another to engage in conduct that happens to amount to infringement [or,] [o]n the other hand, the reference to a party that ‘induces infringement’ may also be read to mean that the inducer must persuade another to engage in conduct that the inducer knows is infringement. Both readings are possible.” Justice Alito then turns to “case law” predating Section 271, but “[u]nfortunately” finds it “less clear than one might hope with respect to the question presented,” finding support for both readings in the case law. A previous Supreme Court decision related to Section 271(c) which governs contributory infringement (of which inducement was a species in earlier law, but was later statutorily separated) did, however, stake out the controversial position that knowledge that the conduct is infringing is what the statute is about. Justice Alito acknowledged that “both views” expressed in the sharply divided precedent had some merit, but the “knowledge of infringement” view had become a fixture and for stare decisis reasons would remain and would be carried over to Section 271(b). At this point, things seem at least plausibly textualist (although the reading of knowledge as an inference from “induce” is by no means obvious).
But this is not the end of the case by any stretch. What does knowledge mean? The court of appeals had held that “deliberate indifference to a known risk of infringement” counted as knowledge, but the Supreme Court rejected that test. Instead, Justice Alito nonetheless affirmed the judgment “under the doctrine of willful blindness” which would now be the relevant test. Why? Because “the doctrine of willful blindness is well established in criminal law.” Yes, you read that right. Justice Alito imports a “willful blindness” concept as the baseline of civil patent infringement inducement knowledge. He did so based on the following sources: (1) an 1899 Supreme Court case that “endorsed a similar concept” as to “willfully certifying a check drawn against insufficient funds”; (2) the fact that, following that case, “several federal prosecutions in the first half of the 20th century invoked the doctrine of willful blindness”; (3) the existence of the “1962 proposed draft of the Model Penal Code” later adopted by states for criminal law purposes; (4) the Supreme Court’s reliance on the Model Penal Code “as a guide in analyzing whether certain statutory presumptions of knowledge comported with due process”; and (5) the acceptance of that standard by “every Court of Appeals” but one for interpreting “a wide range of criminal statutes.” As he put it, “[g]iven the long history of willful blindness and its wide acceptance in the Federal Judiciary, we can see no reason why the doctrine should not apply in civil lawsuits for induced patent infringement under 35 U.S.C. 271(b).” (Note the high level of generality in that analysis). But Justice Alito explained, at the outset of cataloguing these touchpoints, why this mattered to the Court: the doctrine holds that “defendants cannot escape the reach of these statutes by deliberately shielding themselves from clear evidence of critical facts that are strongly suggested by the circumstances. The traditional rationale for this doctrine is that defendants who behave in this manner are just as culpable as those who have actual knowledge.” Textualism, where art thou?
What to Make of All This
I am not in disagreement with the substantive holdings of any of these decisions. I think they are, with maybe some minor reservations here and there, correct, sensible, and rational. But what they are not is any species (beyond a Pickwickian one) of textualism. At root, these decisions embrace substantive principles of political morality in the realm of intellectual property to make judgment calls in the rational interpretation of our intellectual property law, writ large. They are not (just) interpreting statutes—they are interpreting our law, and there is a difference between the two concepts. As I have argued at length elsewhere, our legal tradition exhibits a robust distinction between lex and ius, even if not using those terms, but often conceives of law as consisting in more than bare text.
Justice Scalia’s opinion takes first principles and policies of trademark law, and reasons from them to build out a rather extensive legal framework for dividing up trade dress claims into product packaging and product design for purposes of requiring secondary meaning prior to trademark protection, including instantiating a tie-breaker rule. None of this is found in the “plain language” of the Lanham Act. But his opinion rationally coheres with the broader aims of the Act, including certain public-oriented goals related to source identification and competition, that are internal (not external) to the law of trademarks.
I similarly find no fault in Justice Thomas’s opinion declining to revisit the doctrine of equivalents, despite some strong textual arguments that call it into question. Nor do I think the doctrine is “judge-made law.” It advances the ratio of patent law to promote the common good, as well as substantive justice, by making sure that pirates cannot easily evade a patent. As Justice Jackson masterfully explained in Graver Tank:
“[C]ourts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for—indeed encourage—the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism and would be subordinating substance to form. It would deprive him of the benefit of his invention and would foster concealment rather than disclosure of inventions, which is one of the primary purposes of the patent system.”
None of this is located in the text of the Patent Act, and Justice Thomas (rightly) never tries to argue that it is. But the Patent Act’s text is not exhaustive of the law of patents in the United States. And the broader principles, the ius and ratio of patent law, is a perfectly acceptable and internal legal source for understanding the Patent Act’s text.
Similarly, at each turn in Justice Alito’s analysis, he determines that relevant statutory text, and even the Court’s own precedents, are in something of equipoise and confusion. That is an unenviable position to be in as a judge. Yet he does not twist himself in knots searching for some “more text” for him to ground a judgement that clearly is not answered by the bare text of the Patent Act’s section on inducing infringement. Rather, he reaches for principles, not external, but internal to the law broadly speaking—the ius civile of the United States, as it were—to render a decision that is rational and coherent (indeed, Justice Alito’s opinion is somewhat of a masterpiece in this regard and is worthy of praise.) The underlying principle of culpability—that willful blindness is rightly treated as equivalent to knowledge—is a broader part of the law on which Justice Alito rightly draws to interpret the phrase “induces infringement of a patent.”
Our constant reference to constitutional law cases and con-law adjacent matters can sometimes blind us, as my thoughtful student pointed out, to the role that ratio and principles of political morality are playing in the jurisprudence of even the most celebrated textualist Justices. Perhaps because the public is unlikely to be very interested about, for instance, the general direction of patent law, the Justices are more free to judge in the best of our tradition in such cases, without incessant struggle about which “ism” they are adhering to. They are free to be judges rather than theorists.
I recognize the irony that the term “secondary” meaning requires that the primary meaning of the mark be source identifying among the consuming public. But I didn’t come up with these terms, I just have to live with them and teach them.
The fact that trade dress and product design are protectable at all is itself something worthy of its own discussion. But for our purposes I will observe only that trade dress long received protection under the Lanham Act being assumed to be a “symbol” or “device” (despite the Act seemingly distinguishing between the mark, on the one hand, and the “goods” or “services” on the other), before Congress, in 1994, added a remedial provision recognizing suits for trade dress infringement without changing the definition of a trademark. Wal-Mart Stores, 529 U.S. at 209.
All of this is quite apart from the fact that, unlike Patent and Copyright, federal trademark law is not created by a particular clause of the Constitution, but is merely a product a Congress’s power to “regulate interstate commerce” under Article I, Section 8, and the entire edifice of federal trademark law is constructed on the post-New Deal Commerce Clause jurisprudence.
Indirect infringement, or “secondary” liability attaches not to the one who infringes directly, but to one who contributes to or induces infringement by another.
A patent consists of a “specification” which is a detailed written description that must “teach” “enable” and “embody” the invention, while the claim is what the patentee actually asserts as his invention and is thus the demarcation of what his monopoly actually consists of. Generally, a patent that enables (in the specification) more than what a patentee claims is not a ground for the patentee to assert and enforce rights as to anything more than what is claimed. What is more broadly enabled lapses into the public domain when unclaimed.
Compare Patent Act of 1793, Ch. 11, 1 Stat. 318-323, § 2 (Feb. 21, 1793) (“[A]ny person, who shall have discovered an improvement in the principle of any machine, or in the process of any composition of matter, which shall have been patented, and shall have obtained a patent for such improvement, he shall not be at liberty to make, use or vend the original discovery, nor shall the first inventor be at liberty to use the improvement: And it is hereby enacted and declared, that simply changing the form or the proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery.”), with Patent Act of 1836, Ch. 357, 5 Stat. 117 (July 4, 1836) (“An Act to promote the progress of useful arts, and to repeal all acts and parts of acts heretofore made for that purpose.”).
Justices Ginsburg and Kennedy joined the opinion, but briefly concurred to provide some practical and equitable guidance on remand.