Created facts and the flawed ontology of copyright law

Notre Dame Law Review

Volumn 83, Issue 1, 2007, Pages 43-108

  Hughes, Justin ^a  

^a YESHIVA UNIVERSITY   (United States)

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EID: 38449086758     PISSN: 07453515     EISSN: None     Source Type: Journal    
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References (332)

1. 499 U.S. 340 (1991).
2. Id. at 347.
3. Id.
4. Lawrence A. Cunningham, Private Standards in Public Law: Copyright, Lawmaking and the Case of Accounting, 104 MICH L. REV. 291, 296-307 (2005).
5. Dennis S. Karjala, Distinguishing Patent, and Copyright Subject Matter, 35 CONN. L. REV. 439, 495-500 (2003).
6. Pamela Samuelson, Questioning Copyright in Standards, 48 B.C. L. REV. 193, 196-203 (2007).
7. Justin Hughes, Size Matters (or Should) in Copyright Law, 74 FORDHAM L. REV. 575, 576-82, 591-616 (2005).
8. Feist, 499 U.S. at 340.
9. Id. at 343.
10. Id.
11. Id. at 343-44.
12. Id. at 345.
13. Id. at 347 (citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)).
14. Id. Because "[f]acts are never original," id. at 358, the Feist Court concluded that "[t]he only conceivable expression is the manner in which the compiler has selected and arranged the facts," id. at 349.
15. Id. at 347-48.
16. See, e.g., Marci A. Hamilton, Copyright at the Supreme Court: A Jurisprudence of Deference, 47 J. COPYRIGHT SOC'Y U.S.A. 317, 321 (2000) (discussing the rarity of unanimous decisions in copyright).
17. The Court could have achieved the same result at the statutory level, and much of Justice O'Connor's opinion is devoted to the conclusion that purely factual works are not "original works" under the statute. Feist, 499 U.S. at 354-59. Some scholars identify 17 U.S.C. § 102(b)'s prohibition on copyright in "discoveries" as the prohibition on copyright in facts. See 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 2.11[A], at 2-178.9 (2007) ("The current Act has codified the rule precluding copyright in facts by providing that its protection does not extend to any 'discovery.'"). But § 102(b) 's preclusion of any "discovery" from copyright protection may refer to patentable inventions, not facts. Justice O'Connor does not pin her statutory interpretation on the word "discovery," but rather says only that "[s]ection 102(b) is universally understood to prohibit any copyright in facts." Feist, 499 U.S. at 356.
18. Simon Blackburn describes realism as holding the view that statements describe the world; they answer to or represent (independent) facts of a particular kind . . . . These facts are discovered, not created, and they have their own 'ontological' and 'metaphysical' natures, about which reflection can inform us. . . . The facts or aspects of the world that make commitments true or false [are] 'mind independent,' or not of our own making. SIMON BLACKBURN, TRUTH 117-18 (2005).
19. M. & MARY L. REV. 127, 145 (2000) ("Questions of fact describe the state of affairs in the world, such as the time of day when an event occurred or the temperature at a particular time in a particular place.").
20. WILLARD VAN ORMAN QUINF., WORD AND OBJECT 247 (1960). In this common understanding of facts, "facts . . . make sentences true." Id. Simon Blackburn characterizes this as the "absolutist" view of truth - which seems a good characterization of that for which law aims. BLACKBURN, supra note 18 at xv. Of it, he says, "We like plain, unvarnished objective fact, and we like it open, transparent, and unfiltered." Id.
21. Dragnet (NBC television broadcast 1951-59, 1967-70).
22. Feist, 499 U.S. at 345.
23. MARY POOVEY, THE HISTORY OF THE MODERN FACT xiii (1998); see also PETER DEAR, DISCIPLINE AND EXPERIENCE 1 (1995) ("The cultural and intellectual prerequisites for the nineteenth-century explosion of organized science were the operational ideal, which made the world into something to be mastered, and a quantitative epistemology, which held that such an ideal exhausted everything accessible to human knowing."); Lorraine Daston, Baconian Facts, Academic Civility, and the Prehistory of Objectivity, 8 ANNALS OF SCHOLARSHIP 337, 338 (1991) [hereinafter, Daston, Baconian Facts] ("Facts came to be detached from the context of theory and observation because of anomalies of all sorts preoccupied late Renaissance natural philosophers."); Lorraine Daston, Objectivity and the Escape from Perspective, 22 SOC. STUD. SCI. 597, 600 (1992) ("[A]perspectival objectivity first made its appearance . . . in the moral and aesthetic philosophy of the latter half of the eighteenth century."). Poovey refers to this scholarship as "historical epistemology," supra, at 7.
24. Mary Poovey argues that in the seventeenth and early eighteenth centuries, there were different "epistemological units called 'a fact'" and that "natural historians . . . did collect deracinated particulars . . . for whom factum retained its old connotations of 'event or occurrence,' 'a particular truth known by actual observation' . . . ." POOVEY, supra note 23, at 9 (quoting 5 THE OXFORD ENGLISH DICTIONARY 651 (2d ed. 1989)).
25. Id. at 111 (noting that seventeenth and eighteenth century English writers and scholars argued that facts were separable "from both theory and method in order to decrease the likelihood of civil dispute"); see also HANNAH ARENDT, BETWEEN PAST AND FUTURE 259-60 (1968) (describing how the "fact-finder" - witness or reporter - needs to be outside the community debating issues and differing in opinions).
26. Tim van Gelder, Remarks at the Graphic and Visual Representations of Evidence and Inference in Legal Settings Conference, Cardozo School of Law (Jan. 28, 2007).
27. Daston, Baconian Facts, supra note 23, at 345. The struggle between pure theorists and the new, empirically-based science epitomized by Bacon and the Royal Society, was a powerful intellectual theme of the seventeenth century. See generally MARGARET GULLAN- WHUR, WITHIN REASON 115-18 (2000) (detailing controversies among Bacon, the Royal Society, mechanical philosophers, Henry Oldenburg, and Spinoza on scientific work and debate).
28. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 D.S. 340, 347 (1991).
29. The first edition of the book appeared in 1798 and was substantially revised with extensive empirical information for later editions. See THOMAS ROBERT MALTHUS, Essay on Population: Godwin on Malthus (1821), reprinted in 4 THE WORKS OF THOMAS ROBERT MALTHUS, at 165-69 (E.A. Wrigley & David Souden eds., William Pickering 1986). The American statistical material in the later edition included Adam Seybert's Statistical Annals of the United States, John Bristed's America and Her Resources, and the American National Calendar. POOVEY, supra note 23, at 290. The Seybert material was the U.S. Census. ADAM SEYBERT, STATISTICAL ANNALS 15-53 (Philadelphia, Thomas Dobson & Son 1818). Seybert, a Pennsylvania Congressman, looked at the 120 official volumes of census data published by Congress and concluded that the data was "too much diffused to be made the subjects of immediate reference." SEYBERT, supra, at vi. In a civic-minded, albeit private, capacity, Seybert then published Statistical Annals. In comparison to America's focus on statistically understanding its New World, the British did not conduct their first national census until 1801. POOVEY, supra note 23, at 291.
30. Hilary Putnam, Are Moral and Legal Values Made or Discovered?, in 1 LEGAL THEORY 5, 12 (1995); see also, e.g., Max Weber, Science as a Vocation, in THE VOCATION LECTURES 1, 21 (David Owen & Tracy B. Strong eds., Rodney Livingstone trans., 2004) ("I am willing to demonstrate from the writings of our historians that whenever an academic introduces his own value judgment, a complete understanding of the facts comes to an end.").
31. Robert C. Post, The Constitutional Concept of Public Discourse: Outrageous Opinion, Democratic Deliberations and Hustler Magazine v. Falwell, 103 HARV. L. REV. 603, 635 (1990) (quoting WALTER LIPPMANN, LIBERTY AND THE NEWS 38 (1920); WALTER LIPPMANN, PUBLIC OPINIONS 263-75 (1922)).
32. Id.
33. AL GORE, THE ASSAULT ON REASON 56 (2007). Former Vice President Gore argues that "[t]he Bush administration has demonstrated contempt for the basic tenets of a rational decision-making process, defined as one in which an honest emphasis is placed on getting good facts and then letting good facts drive decisions." Id. at 62.
34. See, e.g., HILARY PUTNAM, THE COLLAPSE OF THE FACT/VALUE DICHOTOMY AND OTHER ESSAYS 15 (2002).
35. For Rudolph Carnap a "fact" could be established by observation of the physical world only. RUDOLF CARNAP, THE LOGICAL CONSTRUCTION OF THE WORLD (Rolf A. George trans., 2d ed. 1967); see also Rudolf Carnap, Testability and Meaning, in THEORIES AND OBSERVATION IN SCIENCE 27, 43 (Richard E. Grandy ed., 1973) ("As empiricists . . . we require that descriptive predicates and hence synthetic sentences are not to be admitted unless they have some connection with possible observations . . . ."). This position had to be modified quickly to account for atomic theory and modern (pre-quantum) physics. See CARNAP, THE LOGICAL CONSTRUCTION OF THE WORLD, supra, at viii-ix.
36. For example, Michael Devitt defines "scientific realism" as holding that "[m]ost of the essential unobservables of well-established current scientific theories exist mind-independently and mostly have the properties attributed to them by science." Michael Devitt, Scientific Realism, in THE OXFORD HANDBOOK OF CONTEMPORARY PHILOSOPHY 767, 769 (Frank Jackson & Michael Smith eds., 2005).
37. See, e.g., ROBERT NOZICK, THE NATURE OF RATIONALITY 107-14 (1993);JOHN R. SEARLE, THE CONSTRUCTION OF SOCIAL REALITY 199-226 (1995); see also BLACKBURN, supra note 18, at 56 ("This is the idea that truth can be understood and explained in terms of correspondence with the facts. It is not merely the idea that 'true' means 'corresponds with the facts'; this may be a harmless synonym. . . . But for the phrase to work as a philosophical explanation of truth, more is needed. It is needed that 'corresponds' means something on its own, and 'facts' are identifiable in some special way, and then we can put them together and see correspondence with the facts as a special kinds of success."); E.J. Lowe, Fact, in THE OXFORD COMPANION TO PHILOSOPHY 287 (Ted Honderich ed., 2d ed. 2005) ("A fact is, traditionally, the worldly correlate of a true proposition, a state of affairs whose obtaining makes that proposition true.").
38. PUTNAM, supra note 34, at 102.
39. JOSE ORTEGA Y GASSET, MAN AND CRISIS 13 (Mildred Adams trans., 1958).
40. FRANCIS BACON, THE NEW ORGANON, bk. I, aphorism XLI, at 41 (Lisa Jardine & Michael Silverthorne eds., 2000) ("The human understanding is like an uneven mirror receiving rays from things and merging its own nature with the nature of things, which thus distorts and corrupts it.").
41. Just a small sample of thinkers along these lines include WILLIAM JAMES, The Will to Believe and Other Essays in Popular Philosophy, in WRITINGS 445, 466 (Gerald E. Myers ed., Library of America 1992) (1987) ("Objective evidence and certitude are doubtless very fine ideals to play with, but where on this moonlit and dream-visited planet are they found?"); 1 RICHARD RORTY, OBJECTIVITY, RELATIVISM, AND TRUTH 141 (1991) ("If the truth itself is to be an explanation of something, that explanadum must be of something which can be caused by truth, but not caused by the content of true beliefs."); RICHARD RORTY, PHILOSOPHY AND THE MIRROR OF NATURE 364 (1979) (noting that the distinction between facts and values is "disastrous" because it "forces us to pretend that we can split ourselves up into knowers of true sentences on the one hand and choosers of lives or actions or works of art on the other") [hereinafter RORTY, PHILOSOPHY]; R.W. SLEEPER, THE NECESSITY OF PRAGMATISM 141 (1986) (arguing that John Dewey followed William James to seek "to demonstrate that there is no conceptually valid basis for the disjunction between factual judgment and value judgment"). Other attacks on the fact/value distinction have come from MARTIN HEIDEGGER, BEING AND TIME 133 (Joan Stambaugh trans., State University of New York Press 1996) (1953) and JEAN-PAUL SARTRE, BEING AND NOTHINGNESS 71-78, 147-55 (Hazel E. Barnes trans., 1956). Wittgenstein's own views were so subtle or ambiguous that he can sometimes be claimed by realists and sometimes by truth relativists. See BLACKBURN, supra note 18, at xix, 129-33.
42. THOMAS S. KUHN, THE STRUCTURE OF SCIENTIFIC REVOLUTIONS 53 (3d ed. 1996) ("Assimilating a new sort of fact demands a more than additive adjustment of theory, and until that adjustment is completed - until the scientist has learned to see nature in a different way - the new fact is not quite a scientific fact at all."). To be fair, Kuhn is giving an example where the observation of X occurs and we have to make adjustments to conclude X is a fact, KUHN, supra, at 53-58, while Rorty, Putnam, and others describe the observation occurring or not occurring because of the perceptual tools with which we have equipped ourselves, RORTY, PHILOSOPHY, supra, note 41, at 306-11; Putnam, supra note 30, at 12-16.
43. Over the history of the census, it has offered at least twenty-six different racial or ethnic characterizations for respondents. In recent times, the process left many people feeling that they were pigeonholed, i.e., that their racial status (the actual reality about their race) was not accurately captured. See Agustin Gurza, In Search of a Census Pigeonhole, L.A. TIMES, July 6, 1999, at B10; Orlando Patterson, America's Worst Idea, N.Y. TIMES BOOK REV., Oct. 22, 2000, at 15 (reviewing SCOTT MALCOMSON, ONE DROP OF BLOOD (2000) and noting that "the nation's Census Bureau has had such a thoroughly bizarre history of racial categorization that recently, out of sheer conceptual and political exhaustion, it gave up and asked people to classify themselves in any and as many racial ways as the spirit moved them"); see also Steven A. Holmes, The Confusion over Who We Are, N.Y. TIMES, June 3, 2001, § 4, at 1 (describing issues surrounding racial categories on census).
44. Helen B. Shaffer, Population Profile of the United States, in EDITORIAL RESEARCH REPORTS ON THE URBAN ENVIRONMENT 1, 12 (Richard M. Boeckel & William B. Dickinson eds., Congressional Quarterly, Inc. 1969) ("The 1920 census was first to tip the balance with 51.2 per cent counted as city dwellers.").
45. MARGO J. ANDERSON, THE AMERICAN CENSUS 134 (1988).
46. For example, in the 1950s, P.F. Strawson advanced the view that "facts" were linguistic elements. Strawson thought that in order to specify a fact - in order to answer the question "which fact?" - one would have to have a true statement already. P.F. Strawson, Truth, 34 PROC. ARISTOTELIAN SOC'Y 129, 134 (1950). Strawson believed that facts were linguistic in that "[f]acts are what statements (when true) state; they are not what statements are about." Id. at 136.
47. QUINE, supra note 20, at 247. Of course, for many philosophers a "true sentence" and a "true proposition" differ in that propositions are nonlinguistic entities expressed by sentences. See, e.g., Michael Dummett, Truth, in PHILOSOPHICAL LOGIC 49, 50 (P.F. Strawson ed., 1967). In that view, "it rains" and "il pleut" express the same proposition. Frege held to a view of this sort, defining a fact as "a thought [gedanke] that is true." Gottlob Frege, The Thought: A Logical Inquiry, in PHILOSOPHICAL LOGIC, supra, at 17, 35. Here gedanke seems to mean proposition, not a mental state - a point that Frege clarifies later on the page. Id. My thanks to David Dolinko for this clarification.
48. See, e.g., LAURENCE BONJOUR, THE STRUCTURE OF EMPIRICAL KNOWLEDGE 87-89 (1985) (dealing very little with "facts" in its analysis of knowledge); QUINE, supra note 20, passim; see also WILLARD VAN ORMAN QUINE, QUIDDITIES 3-5, 213 (1987) [hereinafter QUINE, QUIDDITIES] ("The world is full of things, variously related, but what, in addition to all that, are facts? . . . The sentence 'Snow is white' is true if and only if it is a fact that snow is white. Now we have worked the fact, factitious fiction that it is, into a corner where we can deal it the coup de grace. The combination 'it is a fact that' is vacuous and can be dropped; 'It is a fact that snow is white' reduces to 'Snow is white.'").
49. COLIN MCGINN, THE MAKING OF A PHILOSOPHER 93 (2003).
50. Defamation and negligent misrepresentation are bodies of law that also run on a fact/opinion distinction. As limited by our First Amendment jurisprudence, there is no defamation liability if one makes "a general statement of opinion, not a positive assertion of fact." Gentry v. eBay, Inc., 121 Cal. Rptr. 2d 703, 718 (Cal. Ct. App. 2002); see also Ollman v. Evans, 750 F.2d 970, 979 (D.C. Cir. 1984) (establishing a four-part test for distinguishing factual assertions from statements of opinion in defamation cases). Under the common law, statements of opinion could be grounds for defamation, but over time a "fair comment" privilege arose to protect public debate. See RESTATEMENT (SECOND) OF TORTS § 566 cmt. a (1977).
51. Felix S. Cohen, Dialogue on Private Property, 9 RUTGERS L. REV. 357, 361 (1954).
52. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344 (1991).
53. Id.
54. Id. at 345 (quoting Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556 (1985)).
55. 17 U.S.C. § 102(a) (2000).
56. ELLA FITZGERALD, MACK THE KNIFE - THE COMPLETE ELLA IN BERLIN (Verve Records 1960).
57. Boeing, 767 Family: Technical Characteristics, Boeing 767-400ER, http:// www.boeing.com/commercial/767family/pf/pf_400prod.html (last visited Oct. 22, 2007).
58. See, e.g., BETH REIBER & JANIE SPENCER, FROMMER'S JAPAN 6 (8th ed. 2006).
59. Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1368 (5th Cir. 1981) (emphasis added); see also Feist, 499 U.S. at 348 ("Others may copy the underlying facts from [al publication, but not the precise words used to present them.").
60. Am. Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977, 979 (7th Cir. 1997) (emphasis added).
61. Skinder-Strauss Assocs. v. Mass. Continuing Legal Educ., Inc., 914 F. Supp. 665, 672-73 (D. Mass. 1995).
62. At least not in this time and culture. See ALFRED W. CROSBY, THE MEASURE OF REALITY 115 (1997) (describing the gradual triumph of Hindu-Arabic numbers over Roman numbers as western European societies became increasingly sophisticated in mathematics and commerce); CHARLES SEIFE, ZERO 67-81 (2000) (same). Of course, as discussed above, in a few cases the idea and its expression in Hindu-Arabic numbers seem less merged, i.e., where a temperature can be expressed in Fahrenheit or Centigrade (or Kelvin); where the Super Bowl designation is common in either Roman or Hindu-Arabic numbers. In the musical The Hidden Sky, in a future society the few allowed to learn mathematics at all are forced to use Roman numbers but secretly learn and practice the dark art of Hindu-Arabic numbers. Videotape: The Hidden Sky (Prince Music Theater 2000) (based on URSULA K. LEGUIN, The Masters, in THE WIND'S TWELVE QUARTERS 41 (1975)).
63. Feist, 499 U.S. at 348-49.
64. SEARLE, supra note 37, at 219.
65. For discussions of the fossil record, see generally STEPHEN JAY GOULD, WONDERFUL LIFE 64-79 (1989) (describing the setting of the Burgess Shale); SIMON CONWAY MORRIS, THE CRUCIBLE OF CREATION 53-56 (1998) (discussing the development of a hypothesis for the evolution of ancient worms from the fossil record in Burgess Shale).
66. SEARLE, supra note 37, at 9.
67. LAWRENCE FRIEDMAN, THE HORIZONTAL SOCIETY 82-83 (1999).
68. Wendy J. Gordon, On Owning Information: Intellectual Property and the Restitutionary Impulse, 78 VA. L. REV. 149, 154 n.21 (1992). The mini-taxonomy of facts in these paragraphs does not correspond to the classic distinctions that have been developed in philosophy, such as the concept of a "brute fact" or a "social fact." For the classic formulation of the former, see generally G.E.M. Anscombe, On Brute Facts, 18 ANALYSIS 69 (1958). A "brute fact" is also used more generally to describe "the terminus of a series of explanations" that is itself not further reducible. John Haldane, Brute Fact, in THE OXFORD COMPANION TO PHILOSOPHY, supra note 37, at 111, 111. For a classic theory of social facts separate from Searle, see EMILE DURKHEIM, THE RULES OF SOCIOLOGICAL METHOD 50-60 (Steven Lukes ed., W.D. Halls trans., 1982).
69. At least for those local service customers whose telephone companies print their own telephone books. The process of creating the number may, of course, still lack originality. See David Nimmer, Copyright in the Dead Sea Scrolls: Authorship and Originality, 38 HOUS. L. REV. 1, 97-98 (2001) (noting that the telephone numbers were not antecedent facts, but still can lack originality).
70. Pullman-Standard v. Swint, 456 U.S. 273, 289 n.19 (1982).
71. Thus, this is a much narrower idea than Wendy Gordon's use of the phrase "created fact" to refer to facts related to human-created artifacts. See Wendy J. Gordon, Reality as Artifact: From Feist to Fair Use, 55 LAW & CONTEMP. PROBS. 93, 98-100 (Spring 1992).
72. An example of this is the "Transportation Analysis Simulation System" (TRANSIMS) developed at Los Alamos National Laboratory. TRANSIMS "extrapolates US Census data to create a synthetic population, which is assigned activities - such as driving to work - based on diaries kept by selected residents of the studied area. TRANSIMS then factors in transit-system constraints and simulates traffic flow . . . ." Verge, WIRED, Jan. 2001, at 236, 236; see also Gina Kolata, Why Some Numbers Are Only Very Good Guesses, N.Y. TIMES, Mar. 11, 2001, § 4, at WK5 (describing the reason for the estimating process in rensus).
73. Poovey makes a similar observation and calls such datapoints "a post-modern variant of the fact." POOVEY, supra note 23, at 2-3.
74. SEARLE, supra note 37, at 1-6; JOHN R. SEARLE, SPEECH ACTS, 50-53 (1969) [hereinafter SEARLE, SPEECH ACTS].
75. SEARLE, supra note 37, at 1 (emphasis added).
76. Id. at 26, 122.
77. Id. at 190. For Searle, "a fact is language independent if that very fact requires no linguistic elements for its existence." Id. at 61.
78. See id. at 111 (describing the "primitive logical operation" by which institutional reality is created).
79. This connects nicely with Robert Post's argument that a public discourse of the kind protected by the First Amendment is characterized by discourse across ethnic, religious, and social communities which requires agreement on certain things, but not all things. "The conduct of public discourse," Post wrote, "requires persons to share standards, but not the kind of standards that fuse them into a [single] community." Post, supra note 31, at 636. Post further makes a persuasive argument that "facts" as the Court has described them in defamation law are things on which we can expect agreement or "convergence." Id. at 657-58.
80. Id. at 649-50.
81. See, e.g., JOSEPH J. ELLIS, HIS EXCELLENCY 7-8 (2005).
82. See Sagan v. Apple Computer, Inc., 874 F. Supp. 1072, 1074 (C.D. Cal. 1994) (describing how Apple had allegedly given a development project the internal name "Carl Sagan," but when this fact was publicized Sagan demanded his name not be used; Apple technicians changed the project's code name to "Butt-Head Astronomer").
83. Or as experienced by the character in Johnny Cash's 1968 classic "A Boy Named Sue." JOHNNY CASH, AT FOLSOM PRISON (Columbia Records 1968).
84. 37 C.F.R. § 202.1 (a) (2007) (indicating that " [w]ords and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents" are not copyrightable).
85. Hughes, supra note 7, at 610-19.
86. So, it is no wonder that in Genesis Adam names all the animals even before Eve is created. Genesis 2:19 (King James) ("And out of the ground the LORD God formed every beast of the field, and every fowl of the air; and brought them unto Adam to see what he would call them: and whatsoever Adam called every living creature, that was the name thereof."). My thanks to David Nimmer for this interesting point.
87. Naming as establishment of a social fact has the same structure as government declarations. Searle gives the example of money: "When the Treasury says it is legal tender, they are declaring it to be legal tender, not announcing an empirical fact that it already is legal tender." SEARLE, supra note 37, at 55. Naming one's child, one's pet, or one's new car part has the same structure; by convention, we agree that you are entitled to declare the name of this thing.
88. The "discovery" notion of creativity pops up repeatedly, particularly in regard to great art. For example, Einstein is said to have characterized Mozart's music as "so pure that it seemed to have been ever-present in the universe, waiting to be discovered by the master." Arthur I. Miller, A Genius Finds Inspiration in the Music of Another, N.Y. TIMES, Jan. 31, 2006, at F3. In Orhan Pamuk's novel Snow, the main character believes that the better poems he is writing "always seem[ ] to come from outside, from far away.'" ORHAN PAMUK, SNOW 122 (2004); see also QUINE, QUIDDITIES, supra note 48, at 39 ("Creation and discovery, here as in theoretical science, are all of one piece.") ; Justin Hughes, The Personality Interest of Artists and Inventors in Intellectual Property, 16 CARDOZO ARTS & ENT. L.J. 81, 142-46 (1998) (criticizing the artistic notions of "capture," "the muses," and "creativity-as-discovery" as paradigms).
89. For George Lucas' 1971 feature film directorial debut, see THX-1138 (Warner Bros. Pictures 1971).
90. DAVID BOWIE, STATION TO STATION (RCA Records 1976).
91. Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 517 (9th Cir. 1997), amended by 133 F.3d 1140 (9th Cir. 1998).
92. Id.
93. AM. MED. ASS'N CURRENT PROCEDURAL TERMINOLOGY 299, 311 (2007).
94. Practice Mgmt., 121 F.3d at 517.
95. Id. at 518; see also CAL. CODE REGS. tit. 22, § 51050 (2007) ("HCPCS [Health Care Financing Administration's Common Procedure Coding System] consists of the Physicians' Current Procedural Terminology (CPT) . . . . To the extent not elsewhere adopted in these regulations, HCPCS, and each of its subsequent updates, is herein incorporated by reference into these regulations.")
96. Practice Mgmt., 121 F.3d at 518.
97. Id. The court pointed out the increasing trend of governments, on cost savings grounds, to rely on "model" codes and statutes written by nongovernmental entities, which would lend a note of irony to any holding that such privately-created works should lose their copyright protection on adoption. See id. at 518-19 nn.4-5.
98. Id. at 519. Such tools included fair use, due process defenses for infringers on a case-by-case basis, mandatory licensing, the federal government adopting a different code if the AMA became too restrictive in its distribution practices (de-lawing the work, as it were), and the federal government "by regulation or contract requir[ing] the AMA to provide greater access." Id. at 519 n.7.
99. Id. at 520.
100. This conclusion may be suspect because there was apparently no evidence that the AMA had insisted upon this contractual term. In its appellate brief to the Ninth Circuit, Practice Management argued that "[t]he AMA purposely sought and obtained the government's promise to mandate the CPT as the only way to collect federal health care money" but did not cite to any evidence adduced at trial supporting this point. Brief of Appellant, Practice Management Information Corp. at 5, Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516 (9th Cir. 1995) (No. 94-56774). Practice Management recognized that the district court determined "that 'the AMA did not coerce' [the government] to adopt the CPT," id. at 6, and that, at trial, Practice Management had "never argued the AMA coerced HCFA," id. at 33. Just because a term is in a contract, it does not follow that the copyright holder "conditioned" entering into the contract on that term; the federal government might have made the original offer to use the CPT designations exclusively - since it would be inefficient to have two code systems.
101. 126 F.3d 977 (7th Cir. 1997).
102. Id. at 977.
103. Id.
104. Id. at 978.
105. Id. at 978-79.
106. Id. at 979.
107. Id.
108. Id. This statement, implying individual "work" status for each number, actually appears in the opinion before the more general and less worrisome conclusion that "all three elements of the [ADA] Code - numbers, short descriptions, and long descriptions, are copyrightable subject matter." Id.
109. Id.
110. Although this passage of the opinion expressly says that each short description and each number is an original work of authorship, the opinion then throws some doubt on the statement that short descriptions and numbers are original works of authorship by stating that it was not finding that the ADA Code was a compilation work under 17 U.S.C. § 103. Id. at 980. Judge Easterbrook also reasons that the § 102(b) bar on copyright in ideas, systems, and processes would "permit[ ] Delta to disseminate forms inviting dentists to use the ADA's Code when submitting bills to insurers" and also "precludes the ADA from suing, for copyright infringement, a dentist whose office files record treatments using the Code's nomenclature." Id. at 981. But if each number were an independent "work," it makes less sense that a dentist copying just a few number designations (each a separate "work") would be protected by § 102(b)'s bar on copyrighting methods of operation. For further criticism, see Hughes, supra note 7, at 577 (contending that the quantity of protected material should factor into its copyrightability).
111. Southco, Inc. v. Kanebridge Corp., No. 99-4337, 2000 U.S. Dist. LEXIS 112, at *1 (E.D. Pa. Jan. 12, 2000), rev'd, 258 F.3d 148 (3d Cir. 2001).
112. Id. at *2.
113. Id. at *9; see Southco, Inc. v. Kanebridge Corp., 258 F.3d 148, 150 (3d Cir. 2001).
114. Southco, 258 F.3d at 152.
115. Id. at 150.
116. Southco, 2000 U.S. Dist. LEXIS 112, at *3, *13. The "copied" Southco numbers came either from a Southco "Handbook" or a supplement to one of the company Handbooks. Id. at *3.
117. Id. at *13 (emphasis added). In prior part number cases, courts had concluded that the taxonomies lacked originality because of randomness. Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1373-74 (10th Cir. 1997) ("Mitel's arbitrary selection of a combination of three or four numbers required de minimis creative effort. Mitel's own witnesses testified to the arbitrariness of the command codes . . . . We agree with the district court that the random and arbitrary use of numbers in the public domain does not evince enough originality to distinguish authorship."); Toro Co. v. R & R Prods. Co., 787 F.2d 1208, 1213 (8th Cir. 1986) (holding that there was no copyright in part numbers because the numbering system was "arbitrary and random," as opposed to a system that used symbols according to a meaningful pattern).
118. Southco, 258 F. 3d at 151.
119. Id. (acknowledging the same distinction drawn in the amicus brief from the U.S. Government). The author participated in the drafting of that brief. After drawing the distinction above, the U.S. amicus brief also raised the issue whether any use of Southco's "system" could infringe a protectable copyright interest given the bar to the protection of methods of operation in 17 U.S.C. § 102(b). Brief Amicus Curiae of the United States of America Urging Reversal in Support of Appellant Kanebridge Corp. at 14 & n.12, Southco, Inc. v. Kanebridge Corp., 258 F.3d 148 (3d Cir. 2001) (No. 00-1102) [hereinafter Brief Amicus Curiae].
120. Southco, 258 F.3d at 153. The U.S. had argued that the Southco numbers lacked creativity because each number was the result of the "mechanical application of a set of rules to well-defined physical characteristics of a retractable captive-screw assembly," Brief Amicus Curiae, supra note 119, at 12, such that, as the trial court found, once a third party was familiar with Southco's rules for numbering, that person would know the part's "size, finish, and utility" based "on the content and arrangement of its product number." Southco, 2000 U.S. Dist. LEXIS 112 at *11, *13.
121. Southco, Inc. v. Kanebridge Corp. (Southco II), 324 F.3d 190, 194 (3d Cir. 2003), rev'd en banc, 390 F.3d 276 (3d Cir. 2004).
122. Id. at 196.
123. Southco, Inc. v. Kanebridge Corp. (Southco III), 390 F.3d 276 (3d Cir. 2004) (en banc).
124. Id. at 282.
125. Id. at 285. Interestingly, three Third Circuit judges (Becker, McKee, and Smith) did not join this portion of the en bane decision. See id. at 277 n.*.
126. Id. at 285.
127. Complex labeling systems, particularly of technical or technological matters, tend toward the evaluative. But there are no hard and fast rules. Technical equipment can be given names that are evaluative (BMW's automobiles - 325Ci, 540i, 740iL) or very evocative (Chevrolet's "Impala," "Corvair," and "Malibu"). Newly discovered comets and planetoids receive a numeric designation from the International Astronomical Union's Committee on Small Bodies Names; the object can later have a more evocative name chosen by the discoverer and approved by the committee. See, e.g., Livia Giacomini, From 2000WR106 to Varuna: How are Asteriods Named?, TUMBLING STONE, Mar. 15, 2001, http://spaceguard.esa.int/tumblingstone/issues/nom2/varuna.htm.
128. CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Int., 44 F.3d 61, 63 (2d Cir. 1994).
129. Id.
130. Id. at 64 (discussing the National Automobile Dealers Association's "Bluebook" and noting that "the laws of certain states use th[e] average figure [from the two books] as a minimum for insurance payments upon the 'total loss' of a vehicle").
131. Id.
132. Id.
133. Id.
134. Id. at 64-73.
135. Id. at 67.
136. Id. Judge Leval also considered that "the adjustment of mileage by 5,000 mile increments (as opposed to using some other breakpoint and interval)" was a creative choice, id. at 67-68, but this seems wrong. Five thousand and/or ten thousand mile increments seems like an unoriginal, pedestrian choice.
137. The same reasoning can be seen in two pre-Feist decisions recognizing copyright in nonfiction database products. In Dow Jones & Co. v. Board of Trade, 546 F. Supp. 113 (S.D.N.Y. 1982), the court recognized copyright in Dow Jones' list of what companies produce the Dow Jones average because "Dow's lists evidence a high degree of selectivity and subjective judgment." Id. at 116. Similarly, in Eckes v. Card Price Update, 736 F.2d 859 (2d Cir. 1984), the defendant was accused of copying plaintiff's selection of which cards counted as "premium" cards in the world of collecting baseball cards. Id. at 862. The court found that there was "no doubt that appellants exercised selection, creativity and judgment in choosing among the 18,000 or so different baseball cards in order to determine which were the 5,000 premium cards." Id. at 863. See generally Hughes, supra note 88, at 111-19 (reasoning that "[s]omething will be considered 'creative' only when it appears to come from neither a purely mechanical process, nor a purely random one").
138. The trial court also called them "interpretations of facts." Maclean Hunter, 44 F.3d at 64.
139. Id. at 67.
140. Id.
141. Id.
142. Id. at 68.
143. Id.
144. Id. at 73.
145. Id. at 72.
146. Id.
147. Id.
148. Id.
149. Id.
150. 197 F.3d 1256 (9th Cir. 1999).
151. Id. at 1258.
152. Id. at 1257.
153. For example, a twenty-five percent markup means that a CDN wholesale value of $10.00 would become Kapes' retail price of $12.50, and a CDN $300.00 value would become Kapes' retail price of $375.00.
154. Id. at 1258.
155. Id. at 1259 (emphasis added).
156. Id. at 1261.
157. Id. at 1260.
158. See Hughes, supra note 7, at 592-95.
159. Kapes, 197 F.3d at 1261.
160. Id. at 1262 (emphasis added).
161. See, e.g., Karjala, supra note 5, at 480 ("It is evident that CDN simply uses anti-misappropriation notions to force the defendant to do its own work in determining the value estimates rather than to protect the creative selection or arrangement of compiled data, paying only lip service to Feist's elimination of the 'sweat of the brow' basis for copyright originality.").
162. N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., 389 F. Supp. 2d 527, 533 (S.D.N.Y. 2005), aff'd, 497 F.3d 109 (2d Cir. 2007).
163. Id.
164. Id. at 530.
165. Id. at 530-31.
166. Id. at 533 ("According to ICE, an OTC swap is generally defined as an agreement whereby a floating price is exchanged for a fixed price over a specified period, thus allowing a buyer or seller of energy products to 'lock in' a specific price and avoid the risk of floating prices. The financial purpose of an OTC transaction, therefore, is usually the same as the financial purpose of a NYMEX transaction.").
167. Id. In March 2002, NYMEX sought copyright registration for its settlement prices, expressly comparing the settlement prices to the valuations in Maclean Hunterand Kapes. When it became clear that the Copyright Office would not grant registration over the "prices" expressly mentioned as such, NYMEX obtained registration over publications that include the prices. Id.
168. Id. at 541.
169. See supra Parts IV.A, III.A.
170. N.Y Mercantile Exch., 389 F. Supp. 2d at 533.
171. Id. at 541.
172. Id. ("The argument that NYMEX settlement prices do not embody facts is without merit.").
173. Id. at 542 ("NYMEX's settlement prices are the actual prices and are the only way to express the idea of a settlement price stated in numbers.").
174. Id. at 542; see also id. at 543 ("NYMEX settlement prices are a matter of basic market fact, and therefore, they are not copyrightable.").
175. See id. at 541. Interestingly, Koeltl makes no citation to the Veeck decision, although that majority en banc decision concluding that the model code had become "fact" was over two years old by the time of Koeltl's decision. See infra Part V.B.
176. Public Version of Brief for Plaintiff-Counter-Defendant-Appellant at 7, N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., No. 05-5585 (2d Cir. 2007) [hereinafter NYMEX Appeal Brief]. NYMEX's argument acknowledged that the settlement prices are generated pursuant to elaborate rules (a reason used in the Southco litigation to deny originality to the parts numbers), id. at 10, but continued to claim that each settlement price was set "virtually entirely in the discretion, judgment and opinion by the Settlement Price Committee," id. at 12.
177. NYMEX argued that because the opinions used in arriving at the settlement price can vary from person to person "the idea can result in several different expressions." Id. at 33. The U.S. Government brief savaged this NYMEX argument: "NYMEX's claim that a settlement price is just one possible expression of a broad, all-embracing concept is a transparent effort to avoid the merger doctrine." Brief Amicus Curiae of the United States of America in Support of Defendant-Appellee IntercontinentalExchange, Inc. at 29, N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., No. 05-5585 (2d Cir. 2007) [hereinafter USG Brief]. Adopting Judge Leval's distinction, NYMEX also argued that it does not seek to protect "building block ideas" but rather ideas in the category of " 'approximative statements of opinion.'" NYMEX Appeal Brief, supra note 176, at 35 (quoting CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 72 (2d Cir. 1994)).
178. The brief emphasizes idea/expression merger: NYMEX has avowed that its settlement prices are the "cornerstone of the clearing process" and are the basis for calculating whether its customers made or lost money on a particular day. Given this reality, it is simply not credible for NYMEX to argue that its settlement prices reflect only one expression (among many) of the sweeping idea that market values can be derived from market transactions. To the contrary, as the district court correctly ruled, a NYMEX settlement price is the expression of a much more specific idea . . . . USG Brief, supra note 177, at 28-29. On the other hand, the USG Brief emphasizes that some "judgment" going into a number does not undermine its basic factual nature: "All measurement involves some amount of judgment and estimation" and "NYMEX is therefore wrong to suggest that applying judgment to a measurement destroys the factual nature of the result." Id. at 9-10.
179. N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., 497 F.3d 109, 116-18 (2d Cir. 2007).
180. Id. at 114.
181. Id. at 115 n.6 ("While NYMEX now argues that settlement prices are merely opinions, we note that NYMEX itself treats the prices as news of the day. . . . NYMEX also provides the prices to newspapers which publish them alongside other market facts.").
182. Id. at 115 n.6 ("[I]n CCCa subscriber could not rely solely on the Red Book in valuing any particular used car. . . . Similarly, CDN Inc. v. Kapes . . . is distinguishable because the prices for collectible coins in that case were estimates, not discovered market facts." (citations omitted)).
183. Justin Hughes, The Flawed Ontology of Copyright Law 38 (July 27, 2007) (unpublished manuscript, on file with the Notre Dame Law Review).
184. This is a theme in David Nimmer's exploration of the reconstruction of the Dead Sea Scrolls. In a sense, the NYMEX numbers are like a conservator trying to restore art, judging what was there. See generally Miles Unger, A Mysterious St. John, Found in the Attic, N.Y. TIMES, Feb. 18, 2007, § 2 (Arts & Leisure), at 31.
185. See N.Y. Mercantile Exch., 83 U.S.P.Q.2d (BNA) at 1613.
186. See, e.g., MICHAEL LOCKWOOD, THE LABYRINTH OF TIME 10, 53, 64 (2005) (contrasting the "tensed conception" of reality against the "tenseless conception," in which there is no significant difference between the past, present, and future).
187. N.Y. Mercantile Exch., 83 U.S.P.Q.2d (BNA) at 1615.
188. After discussing the incentive function of copyright, particularly in respect of Maclean Hunter, the court noted "NYMEX needs no such incentives here." Id.
189. 33 U.S. (8 Pet.) 591 (1834).
190. 128 U.S. 244 (1888).
191. As the majority noted in Wheaton, "It may be proper to remark that the court are unanimously of opinion, that no reporter has or can have any copyright in the written opinions delivered by this court; and that the judges thereof cannot confer on any reporter any such right." Wheaton, 33 U.S. (8 Pet.) at 668.
192. See e.g., Veeck v. S. Bldg. Code Cong. Int'l, Inc. (Veeck II), 293 F.3d 791, 794 (5th Cir. 2002) (en banc).
193. Banks, 128 U.S. at 253.
194. See, e.g., Veeck II, 293 F.3d at 793-94 (describing Southern Building Code Congress International's code promulgation and copyrighting).
195. See, e.g., id.; Bldg. Officials & Code Adm'rs v. Code Tech., Inc., 628 F.2d 730, 734-35 (1st Cir. 1980).
196. Veeck v. S. Bldg. Code Cong. Int'l, Inc. (Veeck I), 241 F.3d 398, 408 n.49 (5th Cir. 2001), rev'd en banc, 293 F.3d 791 (5th Cir. 2002) ("The global enactment of a code does make that code the law of the enacting municipality and hence, in one sense, a 'fact.'").
197. Veeck II, 293 F.3d at 801.
198. 628 F.2d 730 (1st Cir. 1980).
199. Id. at 732.
200. Id.
201. Id.
202. Id. at 731.
203. Id. at 732-36.
204. Id. at 735.
205. Id. at 732. The First Circuit left open the possibility that BOCA could persuade the trial court that its copyright in the model code should lead to damages. Id. at 736 ("Since the rule denying copyright protection to judicial opinions and statutes grew out of a much different set of circumstances than do these technical regulatory codes, we think BOCA should at least be allowed to argue its position fully on the basis of an evidentiary record, into which testimony and materials shedding light on the policy issues discussed herein may be placed.").
206. 241 F.3d 398 (5th Cir. 2001), rev'd en banc, 293 F.3d 791 (5th Cir. 2002).
207. Id. at 408 n.49.
208. Veeck v. S. Bldg. Code Cong. Int'l, Inc. (Veeck II), 293 F.3d 791, 793 (5th Cir. 2002) (en banc).
209. Veeck I, 241 F.3d at 401.
210. Id.
211. Id. at 402, 411.
212. Id. at 402-03.
213. Id. at 403-04 n.17 (noting that "had Veeck in tact been unable to obtain a copy of the enacted building codes because of SBCCT's copyright, we would likely conclude that due process provides grounds to invalidate such copyright").
214. Id. at 407.
215. Veeck v. S. Bldg. Code Cong. Int'l, Inc. (Veeck II), 293 F.3d 791, 799-800 (5th Cir. 2002) (en banc). The majority disagreed that Wheaton and Banks embodied the pecuniary/incentives argument that judges "do not need the 'incentives' that copyright affords in order to write opinions." Id. at 797. Instead the majority viewed the Banks holding as based on a " 'metaphorical concept of citizen authorship'" together with the need for citizens to have free access to the laws. Id. at 799 (quoting Bldg. Officials & Code Adm'rs v. Code Tech., Inc., 628 F.2d 730. 734 (1st Cir. 1980)).
216. Id. at 801.
217. Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 519 (9th Cir. 1997), amended by 133 F.3d 1140 (9th Cir. 1998). The court added that the AMA "has no incentive to limit or forgo publication" and that the federal government had ample remedies if the AMA did, including "terminat[ing] its agreement with AMA." Id.
218. Banks v. Manchester, 128 U.S. 244, 253 (1888). The Practice Management court cited similar reasoning from the Fifth Circuit. In Texas v. West Publishing Co., 882 F.2d 171 (5th Cir. 1989), the court turned back Texas' argument against West's claim of copyright over its own arrangement of Texas laws. Id. at 175-76. After finding that Texans had access to Texas' arrangement of its own state statutes, the court reasoned that, as to West's "Vernon's Annotated Texas Statutes," there was "no evidence that anyone is being denied access to Vernon's or that West intends to deny access in the future. Accordingly, Texas residents are not being deprived of any due process right they could conceivably have to access Texas laws." Id. at 177.
219. Practice Mgmt., 121 F.3d at 518.
220. BOCA, 628 F.2d at 732.
221. Veeck II, 293 F.3d at 801. This gave a ringing endorsement to Judge Little's dissent in Veeck I. Judge Little had recognized that "there is merit to Veeck's argument that once enacted, the codes do become a fact or idea, in that there is only one accurate way to express an enacted law. . . . By its very nature, an enacted law enters the public realm as a concrete, definite fact/idea." Veeck v. S. Bldg. Code Cong. Int'l, Inc. (Veeck I), 241 F.3d 398, 415 (5th Cir. 2001) (Little, J., dissenting), rev'd en banc, 293 F.3d 791 (5th Cir. 2002).
222. Veeck II, 293 F.3d at 804-05.
223. See Cunningham, supra note 4, at 293.
224. See infra Part VI.
225. Veeck I, 241 F.3d at 407. As the Veeck I panel feared, "the adoption of SBCCI's code into law was a transformative event that instantly denuded the work of copyright protection." Id.
226. Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516. 520 (9th Cir. 1997) (quoting (ICC Info. Serv., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 74 (2d Cir. 1994)), amended, by 183 F.3d 1140 (9th Cir. 1998). The government would have to compensate the private party for the full value of the copyright, an ironic twist for sure, since governments adopt such privately created works to save costs. See Revision of OMB Circular No. A-119, Notice of Implementation, 58 Fed. Reg. 57,643, 57,644-45 (Oct. 26, 1993) (directing federal agencies to adopt private standards "whenever practicable" to "eliminate [ ] the costs to the Government of developing its own standards"). See generally Thomas F. Cotter, Do Federal Uses of Intellectual Property Implicate the Fifth Amendment?, 50 FLA. L. REV. 529, 558-65 (1998) (illustrating the difficulty of defining what constitutes a "taking" in merging expression and fact in intellectual property law).
227. Maclean Hunter, 44 F.3d at 72-73.
228. Jon O. Newman, New Lyrics for an Old Melody: The Idea/Expression Dichotomy in the Computer Age, 17 CARDOZO ARTS & ENT. L.J. 691, 698 (1999) (footnote omitted).
229. Id.
230. N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., 497 F.3d 109, 117 (2d Cir. 2007).
231. SEARLE, supra note 37, at 45.
232. Id. at 45-46.
233. As Searle observes, "When the Treasury says [this piece of paper] is legal tender, they arc declaring it to be legal tender, not announcing an empirical fact that it already is legal tender." Id. at 55.
234. See id. at 112 ("We have nothing but the ability to impose a status, and with it a function, by collective agreement or acceptance.").
235. Born Roy Scherer. See KEITH BOYKIN, BEYOND THE DOWN LOW 71 (2006).
236. For example, there has never been any doubt that credit ratings are "customer information of a financial institution" under 15 U.S.C. § 6827(2) (2000), defined as "any information maintained by or for a financial institution which is derived from the relationship between the financial institution and a customer of the financial institution and is identified with the customer," id.
237. CDN Inc. v. Kapes, 197 F.3d 1256, 1262 (9th Cir. 1999).
238. N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., 497 F.3d 109. 115 n.6 (2d Cir. 2007).
239. SEARLE, supra note 37, at 125.
240. Veeck v. S. Bldg. Code Cong. Int'l, Inc. (Veeck II), 293 F.3d 791, 799 (5th Cir. 2002) (en banc).
241. Simon Blackburn also observes this point when he writes of facts arising from law: "In the case of human law," it "ought to be the command of a properly constituted authority - but then, what kind of fact is it that some group of people makes up such an authority?" BLACKBURN, supra note 18, at 110-11. Of course, a statement becomes law - and a fact - through a "performative" speech utterance. See generally J.L. AUSTIN, HOW TO DO THINGS WITH WORDS 53-66 (J.O. Urmson & Marina Sbisa eds., 2d ed. 1975) (distinguishing the performative from the constative utterance); SEARLE, SPEECH ACTS, supra note 74, at 37-39 (discussing "performative" verbs); Justin Hughes, Group Speech Acts, 7 LINGUISTICS & PHIL. 379, 380 (1984) (describing court decisions as speech acts from groups). If the "performative" is accepted - that Jane and Peter are now married, that Charles is now coronated King, etc. - then it is "felicitious"; only then does it become a social fact. And as Derrida noted, "There are cases in which it is not known for generations if the performative of the violent founding of a state is 'felicitous' or not." Jacques Derrida, Force of Law: The "Mystical Foundation of Authority," 11 CARDOZO L. REV. 919, 993 (Mary Quaintance trans., 1990).
242. See Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 139 (2d Cir. 1998) (recognizing that the "original, protected expression" at issue - character and event details from the television series Seinfeld - were "created facts"). Scholars who have used the phrase "created facts" are few too, but include Karjala, supra note 5, at 477.
243. HERMAN MELVILLE, MOBY DICK (Arion Press 1979) (1851).
244. DAVID BOWIE, Space Oddity, on SPACE ODDITY (Philips 1969).
245. One could cite literally thousands of sources for this, but although Bob Kane created Batman in 1939, see MARK S. REINHART, THE BATMAN FILMOGRAPHY 5 (2005), my favorite is FRANK MILLER ET AL., THE DARK KNIGHT RETURNS (10th anniversary ed. 1996).
246. Spider-Man first appeared in 15 AMAZING FANTASY (Aug. 1962), see EDWARD GROSS, SPIDER-MAN CONFIDENTIAL 8 (2002), and is the subject of three blockbuster films creatively titled, SPIDER-MAN (Columbia Pictures 2002), SPIDER-MAN 2 (Columbia Pictures 2004), and SPIDER-MAN 3 (Columbia Pictures 2007).
247. See, e.g., CHRIS TURNER, PLANET SIMPSON 77 (2004).
248. The Flintstones (ABC television broadcast 1960-66). Although there were only 166 episodes in the original cartoon series, see Internet Movie Database, The Flintstones, http://wwv.imdb.com/title/tt0053502 (last visited Oct. 22, 2007), it has enjoyed wildly successful and continuous syndication - plus network specials, spin-off series like The Pebbles and Bamm-Bamm Show (Hanna-Barbera Productions television broadcast 1971-76), and two feature films starring John Goodman and, in one film or the other, a bunch of actors who should have known better (including Rosie O'Donnell, Kyle MacLachlan, Halle Berry, Elizabeth Taylor, Stephen Baldwin, Joan Collins, and Alan Gumming), see, e.g., THE FLINSTONES IN VIVA ROCK VEGAS (Universal Pictures & Amblin Entertainment 2000).
249. JEANETTE WINTERSON, ART OBJECTS 54 (1995).
250. See, e.g., Keith Aoki, Adrift in the Intertext: Authorship and Audience "Recoding" Rights - Comment on Robert. H. Rotslein, "Beyond Metaphor: Copyright Infringement and the Fiction of the Work," 68 CHI.-KENT L. REV. 805, 811-16 (1993); James Boyle, A Theory of Law and Information: Copyright, Spleens, Blackmail and Insider Trading, 80 CAL. L. REV. 1413, 1426-27 (1992); Rosemary J. Coombe, Author/izing the Celebrity: Publicity Rights, Postmodern Politics, and Unauthorized Genders, 10 CARDOZO ARTS & ENT. L.J. 365, 387 (1992); Justin Hughes, "Recoding" Intellectual Property and Overlooked Audiences, 77 TEX. L. REV. 923, 926 (1999); Peter Jaszi, On the Author Effect: Contemporary Copyright and Collective Creativity, 10 CARDOZO ARTS & ENT. L.J. 293, 294 (1992); Jessica Litman, The Public Domain, 39 EMORY L.J. 965, 1007 (1990); Rebecca Tushnet, Legal Fictions: Copyright, Fan Fiction, and a New Common Law, 17 LOY. L.A. ENT. L. REV. 651, 659-64 (1997).
251. See MARGARET JANE RADIN, CONTESTED COMMODITIES 79-102 (1996) (discussing market rhetoric and its effect on "human flourishing").
252. WILLIAM SHATNER WITH CHRIS KRESKI, GET A LIFE! (1999). The title comes, as Amazon.com says, from Shatner "[p]oking fun at Star Trek's gung-ho fans and conventions in a now infamous Saturday Night Live sketch." Amazon.com, Book Review of Get a Life!, http://www.amazon.com/Life-Star-Trek-William-Shatner/dp/ 0671021311 (last visited Oct. 22, 2007).
253. My thanks to David McGowan for this observation.
254. BLACKBURN, supra note 18, at 9.
255. Id. at 105 (discussing Nietzsche).
256. Although, as one scholar notes, "[f]ans seemingly blur the boundaries between fact and fiction, speaking of characters as if they had an existence apart from their textual manifestations." HENRY JENKINS, TEXTUAL POACHERS 18 (1992).
257. As Blackburn writes about believing something to be true: A belief is given its identity by what it excludes. A fiction is not. We can happily read one story about a fictional character, and then a different story, without finding it necessary to reconcile them. True, aficionados can get very shirty if in one story it is said that the hero has fair hair and in the next story he is said to have black hair, but that is because they are trying to join the two stories together, which they don't have to do. Whereas if the stories were histories of one actual man, they would have to be reconciled. BLACKBURN, supra note 18, at 192.
258. Defining what is "functional" or "utilitarian" has plagued jurists - as well as scholars - for some time. For example, in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), in trying to identify the "functional," Judge Walker compared the Humpty Duppty story to a recipe for scrambled eggs by saying the latter is "a more process oriented text." Id. at 704. A recipe, of course, is aimed at a nonexpressive human activity.
259. Professor Cunningham distinguishes between "weak," "semi-strong," and "strong" adoption of private expression into public law. Cunningham, supra note 4, at 293. His paradigmatic examples are "ex ante government designation of the standard setter as an officially recognized body (strong form)," id.; standards "incorporate [ed] into law after creation" by a private entity (semi-strong form), id.; and adoption through "passing reference in legal materials (weak form)," id. He posits that access to the expression is most needed in cases of "strong" adoption, less with "semi-strong," and even less with "weak." Id. 1 do not find that this tripartite division adequately captures the important differences and similarities among the ways private expression is adopted into law. For example, he says that with "strong form" adoption the "distinguishing feature" is that the privately generated expressions "constitute the fabric of that law," id. at 299, but that is apparently true of the semi-strong too. Cunningham posits an inverse relationship between how much people need access to these codes and how much copyright incentive is needed to produce, i.e., the more access is needed, the less copyright incentive is needed. Id. at 299-300. This might be generally right, but this appears to be an empirical question that deserves careful attention.
260. See Plains Cotton Coop. Ass'n v. Goodpasture Computer Serv., Inc., 807 F.2d 1256, 1260-61 (5th Cir. 1987) (denying plaintiffs request for a preliminary injunction in a copyright suit in light of evidence showing that software was created based on personal skills and knowledge of the industry).
261. See Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 815 (1st Cir. 1995) (finding that a computer command hierarchy was an unprotectable method of operation); Peter Menell, An Epitaph for Traditional Copyright Protection of Network Features of Computer Software, 43 ANTITRUST BULL. 651, 684-703 (1998).
262. See Batesman v. Mnemonics, Inc., 79 F.3d 1532, 1542 (11th Cir. 1996) ("[E]xternal considerations such as compatibility may negate a finding of infringement."); Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 714-15 (2d Cir. 1992) (holding that functional elements are not protected). See generally Peter Menell, An Analysis of the Scope of Copyright Protection for Application Programs, 41 STAN. L. REV. 1045, 1101-03 (1989) (arguing that a careful application of the merger doctrine can create incentives for the development of better computer application programs); Peter Menell, Tailoring Legal Protection for Computer Software, 39 STAN. L. REV. 1329, 1353-71 (1987) (analyzing the economic effects of using copyright doctrine to provide legal protection for computer software).
263. 17 U.S.C. § 102 (2000).
264. It is for this reason that "nominative uses" of words and short phrases are shielded from liability under Lanham Act analysis. See New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992) ("[N]ominative use of a mark - where the only word reasonably available to describe a particular thing is pressed into service - lies outside the strictures of trademark law." (emphasis omitted)); Chambers v. Time-Warner, Inc., 123 F. Supp. 2d 198, 202 (S.D.N.Y. 2000) (dismissing, on summary judgment, a Lanham Act claim for use of musicians' names to identify musicians' works in online service because "the above-described [use] is simply a permissible 'nominative use,' i.e., a fair use of the artist's name as a necessary means of accurately identifying the inventory in question offered by MP3.com") (second emphasis added),'vacated, 282 F.3d 147 (2d Cir. 2002).
265. This vertical metaphor of ideas on top of expressions should be intuitive for most people thinking about this issue, i.e., in Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977), the court describes liability as occurring only when the defendant's own expression of ideas shared with the plaintiff's work " descends so far into what is concrete in a work as to invade its expression," id. at 1163 (emphasis added), a description which has appealed to other courts, see Hartman v. Hallmark Cards, Inc., 639 F. Supp. 816, 819 (W.D. Mo. 1986); Perma Greetings, Inc. v. Russ Berrie & Co., 598 F. Supp. 445, 447 (E.D. Mo. 1984). And, of course, the discussion of "levels" of abstraction related to an expression also implies this vertical metaphor. See, e.g., Feder v. Videotrip Corp., 697 F. Supp. 1165, 1173 (D. Colo. 1988). On other occasions, courts have employed the vertical metaphor in the other direction, finding the idea underneath the expression. See, e.g., Cont'l Cas. Co. v. Beardsley, 253 F.2d 702, 706 (2d Cir. 1958) (discussing the need for "free use of the thought beneath the [copyrighted] language" and the "use of the underlying idea") (emphasis added).
266. Cf. John Shephard Wiley Jr., Copyright at the School of Patent, 58 U. CHI. L. REV. 119, 123 (1991) (suggesting that if copyright law protected only the literal expression of an idea, then every admitted copier would have a defense).
267. See Douglas Martin, Curt Siodmak Dies at 98; Created Modern "Wolf Man", N.Y. TIMES, Nov. 19, 2000, § 1, at 56.
268. Id.
269. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936).
270. CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 71 (2d Cir. 1994).
271. And, similarly, this is what seems so irrelevant about the Veeck I court telling us that "there are at least two other sets of building codes that currently compete with SBCCI's." Veeck v. S. Bldg. Code Cong. Int'l, Inc. (Veeck I), 241 F.3d 398, 407 (5th Cir. 2001), rev'd en banc, 293 F.3d 791 (5th Cir. 2002).
272. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 363 (1991).
273. See 17 C.F.R. § 16.01 (2007).
274. See N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., 497 F.3d 109, 110 (2d Cir. 2007).
275. CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports Inc., 44 F.3d 61, 64 (2d Cir. 1994).
276. N.Y. Mercantile Exch., 497 F.3d at 118 (quoting Maclean Hunter, 44 F.3d at 66 (2d Cir. 1994)).
277. See Am. Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977, 981 (7th Cir. 1997); Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 518-19 (9th Cir. 1997), amended by 133 F.3d 1140 (9th Cir. 1998).
278. The finances are often hard to figure out. For example, roughly eighteen percent of the revenues of the American Institute of Certified Public Accountants (AICPA) come from sales of accounting standards. AM. INST. OF CERTIFIED PUB. ACCOUNTANTS, 2002-2003 ANNUAL REPORT 17 (2003). But Professor Cunningham discusses how the AICPA sales operation sustained deficits in the early 2000s. Cunningham, supra note 4, at 320.
279. In Veeck II, the majority characterized the evidence that copyright revenues were needed as "self-serving affidavits from [SBCCI] officers and employees and proof that it earns perhaps 40% of its revenue" from selling copies of its model codes. Veeck v. S. Bldg. Code Cong. Int'l, Inc. (Veeck II), 293 F.3d 791, 805 n.21 (5th Cir. 2002) (en banc).
280. See id. at 805; see also Cunningham, supra note 4, at 304 (analyzing the Veeck II majority's emphasis on the inherent incentive industry experts have to get codes enacted in law).
281. New Era Publ'ns, Int'l v. Carol Publ'g Group, 904 F.2d 152, 157 (2d Cir. 1990); see also Stewart v. Abend, 495 U.S. 207, 237 (1990) ("In general, fair use is more likely to be found in factual works than in fictional works."); Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 925 (2d Cir. 1994) (adopting the same reasoning).
282. See 17 U.S.C. § 107(2) (2000). The first factor, "the purpose and character of the [defendant's] use," see id. at § 107(1), is sufficiently open-ended that we could include "for compliance with the law" as a characteristic of the circumstances that should weigh in the defendant's favor. But this effect on the fair use analysis is not directly related to understanding the expressive works as producing facts.
283. 471 U.S. 539 (1985).
284. Id. at 563.
285. Id. (quoting Robert A. German, Fact or Fancy? The Implications for Copyright, 29 J. COPYRIGHT SOC'Y U.S.A. 560, 563 (1982)).
286. Id.
287. See 17 U.S.C. § 107(4) (2000).
288. Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions, 1978-2005, 156 U. PA. L. REV. (forthcoming 2007) (manuscript at 55-59), available at http://ssrn. com/abstract=998421 (concluding that the fourth factor of § 107 is dispositive in most cases).
289. The Nimmer treatise reasons that adoption of a private work into law may enlarge the range of private copying which is protected by the fair use doctrine, but should not immunize a commercial publisher who wants to compete with the copyright owner, since this would "prove destructive of the copyright interest in encouraging creativity in connection with the increasing trend toward state and federal adoptions of model codes." 1 NIMMER & NIMMER, supranole 17, § 5.12[A], at 5-92 to - 93.
290. 3 NIMMER & NIMMER, supra note 17, § 10.03[A] [7], at 10-49 ("[N]onexclusive licenses may . . . be granted orally, or may even be implied from conduct.").
291. See, e.g., Effects Assocs. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990) ("Effects created a work at defendant's request and handed it over, intending that defendant copy and distribute it."); see also I.A.E., Inc. v. Shaver, 74 F.3d 768, 776 (7th Cir. 1996) ("In the case before us, as in Effects, Mr. Shaver created a work at Joint Venture's request and handed it over, intending Joint Venture to copy and distribute it for the Airport Project.").
292. Effects, 908 F.2d at 559 n.6. When an association has "encourage[d], through a licensing program, public authorities such as states to adopt" its model code, Bldg. Officials & Code Adm'rs v. Code Tech., Inc., 628 F.2d 730, 732 (1st Cir. 1980), the only alternative to the association anticipating the widespread reproduction of the adopted law would be the unsavory scenario in which the association would plan to charge monopoly rents after state adoption, see id. at 732-35. In other words, the state adoption was like the state awarding a supply contract, except that the citizens, instead of the state coffers, pay directly for the state's supply of "law."
293. Gracen v. Bradford Exch., 698 F.2d 300, 303 (7th Cir. 1983) (indicating that a contest to prepare derivative works was the basis for an implied nonexclusive license to contestants).
294. 211 F.3d 21 (2d Cir. 2000).
295. Id. at 23. Although there was some back and forth between Watson and the FDA, "the FDA 'determined that Watson had to copy verbatim substantially all of the text used in the SmithKline user's guide.'" Id. at 24 (quoting SmithKline Beecham Consumer Healthcare, L.P. v. Watson Pharms., Inc., No. 99 Civ. 9214, 1999 WL 1243894, at *4 (S.D.N.Y. Dec. 22, 1999)).
296. SmithKline, 211 F.3d at 25 ("The Hatch-Waxman amendments to the FFDCA not only permit but require producers of generic drugs to use the same labeling as was approved for, and is used in, the sale of the pioneer drug . . . . [T]he PDA's requirement that Watson use much of SmithKline's label precludes
297. Id. at 28-29.
298. On the theory that "there is ample support for the proposition that implied license scope in general is determined by considering the reasonable expectations of the parties in view of all of the circumstances, including the parties' conduct." Mark D. Janis, A Tale of the Apocryphal Axe: Repair, Reconstruction, and the Implied License in Intellectual Property Law, 58 MD. L. REV. 423, 502 (1999).
299. Although it is fair to ask what would happen if a professional association then tried to withdraw its implied license. See Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749, 753 (11th Cir. 1997) (withdrawing an implied license after several months' use of a song).
300. See Jessica Litman, Breakfast with Batman: The Public Interest in the Advertising Age, 108 YALE L.J. 1717, 1730 (1999) (arguing that advertisers and consumers engage in an "active collaboration" to increase the value of certain trade symbols). One might also interpret Rochelle Dreyfuss' argument about expressive genericity along these lines. See Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 NOTRE DAME L. REV. 397, 407 (1990) (suggesting that when consumers increase the value of a trademark by finding a use for the trademark other than for signaling, the consumers, and not trademark owners, should reap any economic benefit).
301. One of the best-known efforts might be Judge Boudin's concurrence in Lotus Development Corp. v. Borland International, Inc., 49 F.3d 807, 821 (1st Cir. 1995) (Boudin, J., concurring) ("But if a better spreadsheet comes along, it is hard to see why customers who have learned the Lotus menu and devised macros for it should remain captives of Lotus because of an investment in learning made by the users and not by Lotus."), aff'd by an equally divided court, 516 U.S. 233 (1996).
302. See JOHN LOCKE, Second Treatise of Government, in TWO TREATISES OF GOVERNMENT 265, 291 (Peter Laslett ed., Cambridge Univ. Press 1988) (1690). Locke establishes this condition in describing how people convert pre-society land (and immovables) into private property. Id. at 287-91; see also C.B. MACPHERSON, THE POLITICAL THEORY OF POSSESSIVE INDIVIDUALISM 201 (1962) (arguing that Locke's "enough and as good" limit is justified by the fact that "each man has a right to his preservation and hence to appropriating the necessities of his life"); GERAINT PARRY, JOHN LOCKE 64-73, 153-60 (1978) (analyzing Locke's conception of property).
303. JAMES TULLY, A DISCOURSE ON PROPERTY 47 (1980); see also RUTH W. GRANT, JOHN LOCKE'S LIBERALISM 67-71, 91 (1987) (discussing Locke's views on self-preservation and slavery).
304. Robert Nozick interprets the "enough and as good requirement" as a principle meant "to ensure that the situation of others is not worsened" by the appropriation of property from the commons. ROBERT NOZICK, ANARCHY, STATE, AND UTOPIA 175 (1974). Peter Singer sees the "enough and as good" proviso playing a key role in the just distribution of the world's natural resources. See PETER SINGER, ONE WORLD 27-30 (2d ed. 2002); see also MICHAEL OTSUKA, LIBERTARIANISM WITHOUT INEQUALITY 22-29 (2003) (endorsing the "enough and as good" principle); David Schmidtz, The Institution of Property, 11 SOC. PHIL. & POL'Y 42, 44-50 (Summer 1994). Many believe that Locke's proviso, stricto senso, is a sufficient condition, while a more general, harm-based version of the proviso is a necessary condition. See Jeremy Waldron, Enough and as Good Left for Others, 29 PHIL. Q. 319, 320 (1979); Clark Wolf, Contemporary Property Rights, Lockean Provisos, and the Interests of Future Generations, 104 ETHICS 791, 795-99 (1995). Nozick's reinterpretation can be taken this way. I think that I have fortunately dodged the bullet on this point in prior writings. See Justin Hughes, The Philosophy of Intellectual Property, 77 GEO. L.J. 287, 297-98 (1988) [hereinafter Hughes, Philosophy]; Hughes, supra note 250, at 966-67.
305. This assumes that broadly permitted propertization of ideas would produce an "enough and as good" problem. See Hughes, Philosophy, supra note 304, at 314 ("Stated simply, some ideas and facts cannot be removed from the common because there would not be the slightest chance of there being 'enough and as good' afterwards."). Even recognizing that patent law permits propertization of ideas, there are good reasons to think that copyright - a system with a very low threshold for the receipt of exclusive rights and no ex ante examination before creation of the rights - is a different issue.
306. See supra Part I.C.
307. John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 43 (1st Cir. 2003) ("The [merger] doctrine aims to prevent the monopolization of facts or ideas that are present in nature; where ownership of the expression would remove such facts or ideas from the public domain, the doctrine disallows copyright.").
308. See, e.g., Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975) ("The immediate effect of our copyright law is to secure a fair return for an 'author's' creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.").
309. The doctrine was first applied to a railway bridge over the Mississippi, access to which was needed by the plaintiffs in order to compete with the defendant in the provision of rail services in the St. Louis area. See United States v. Terminal R.R. Ass'n, 224 U.S. 383, 394-413 (1912). Note, however, that Areeda and Hovenkamp point out that the Court did not actually use the phrase "essential facility" and that the case holding could arise from more traditional combination grounds. See 3A PHILLIP E. AREEDA & HERBERT HOVENKAMP, ANTITRUST LAW, ¶ 772b1, at 176-78 (2d ed. 2002). Since then, the doctrine has been applied most cleanly to expensive infrastructure which is not utilized to one hundred percent capacity by the defendant, i.e., electric transmission lines, natural gas pipelines, and sports stadiums. See Otter Tail Power Co. v. United States, 410 U.S. 366, 374-79 (1973) (electric transmission lines); Fishman v. Wirtz, 807 F.2d 520, 539-40 (7th Cir. 1986) (professional sports arena); Hecht v. Pro-Football, Inc., 570 F.2d 982, 992-93 (D.C. Cir. 1977) (professional football stadium); Woods Exploration & Producing Co. v. Aluminum Co. of Am., 438 F.2d 1286, 1302-10 (5th Cir. 1971) (natural gas pipelines).
310. See, e.g., 3A AREEDA & HOVENCAMP, supra note 309, ¶ 771b, at 174 (viewing the doctrine as "inconsistent with antitrust['s] . . . goals"); Gordon Downie & Laura MacGregor, Essential Facilities and Utility Networks, in REGULATION AND MARKETS BEYOND 2000, at 19, 38 (Laura MacGregor et al. eds., 2000) ("The essential facilities doctrine takes competition law to the very limits of its legitimate scope, and possibly across the border into regulation."); David Reiffen & Andrew N. Kleit, Terminal Railroad Revisited: Foreclosure of an Essential Facility or Simple Horizontal Monopoly?, 33 J.L. & ECON. 419, 420-21 (1990) ("[E]conomic theory suggest[s] that there is no need for an essential facilities doctrine . . . .").
311. In Verizon Communications, Inc. v. Law Offices of Curtis V. Trinko, LLP, 540 U.S. 398 (2004), the Court held that its judgment "would be unchanged even if we considered to be established law the 'essential facilities' doctrine crafted by some lower courts . . . . We have never recognized such a doctrine and we find no need either to recognize it or to repudiate it here." Id. at 410-11 (citations omitted). Not surprisingly, the Court also stated that any "essential facilities" claim could not be distinct from a section 2 Sherman Act claim. Id. at 411 ("To the extent respondent's 'essential facilities' argument is distinct from its general § 2 argument, we reject it."); see also Michael A. Carrier, Of Trinko, Tea Leaves, and Intellectual Property, 31 J. CORP. L. 357, 361 (2006) (discussing the Supreme Court's refusal to recognize the essential facilities doctrine as established law).
312. One case, Alaska Airlines, Inc. v. United Airlines, Inc., 948 F.2d 536 (9th Cir. 1991), arguably comes close because the computerized reservation systems at issue - United's "Apollo" and American's "SABRE" systems - were, in part, elaborate, constantly updated databases. Id. at 538. Those databases, however, probably fell outside post-Feist American copyright law. Id. at 542-46; see also Intergraph Corp. v. Intel Corp., 3 F. Supp. 2d 1255, 1278 (N.D. Ala. 1998) (finding that "[reasonable and timely access to critical business information . . . is an essential facility"), vacated, 195 F.3d 1346 (Fed. Cir. 1999). In the United Kingdom, the case of Radio Telefis Eireann (RTE) & Independent Television Publications Ltd (ITP) v. (Commission of the European Communities (Magill), Joined Cases G-241/91 P & C-242/91 P, 1995 E.C.R. I-743, concerned an information product. Id. at 1-811. Commonly called the Magill case, the dispute concerned the provision of television programming information by the BBC, RTE, and ITP networks to daily newspapers under a license arrangement and their subsequent refusal to provide the information to Magill, a small independent publisher, who wanted to publish a comprehensive weekly television guide. Id. at I-812. The court reasoned that the television companies were the only source of this information, and their refusal to provide it prevented the introduction of a new product that would be advantageous to consumers. Id. at I-824; see also Downic & MacGregor, supra note 310, at 25 (discussing Magill).
313. See, e.g., Dana R. Wagner, The Keepers of the Gates: Intellectual Property, Antitrust, and Regulatory Implications of Systems Technology, 51 HASTINGS L.J. 1073, 1122-24 (2000) (identifying the two doctrines as two distinct "possible doctrinal foundations" for creating liability for systems technology industries that fail to license or open their technology, but not identifying the similarity/sameness of the two doctrines).
314. Exceptions are Carrier, supra note 311, at 361; Michael A. Carrier, Refusals to License Intellectual Property After Trinko, 55 DEPAUL L. REV. 1191, 1207-08 (2006); David McGowan, Regulating Competition in the Information Age: Computer Software as an Essential Facility Under the Sherman Act, 18 HASTINGS COMM. & ENT. L.J. 771, 841-49 (1996) (discussing the essential facilities doctrine in the context of network effects); Peter S. Menell, Tailoring Legal Protection for Computer Software, 39 STAN. L. REV. 1329, 1366-67 (1987) (applying an essential facilities approach to compulsory licensing for innovative operating system features that become widely established); Melanie J. Reichenberger, Note, The Role of Compulsory Licensing in Unilateral Refusals to Deal: Have the United States and European Approaches Grown Further Apart After IMS?, 31 J. CORP. L. 549, 558-65 (2006).
315. 15 U.S.C.A. § 2 (West 1997 & Supp. 2007).
316. 3A AREEDA & HOVENCAMP, supra note 309, ¶ 771 a, at 169-71.
317. 708 F.2d 1081 (7th Cir. 1983).
318. Id. at 1132-33. The Ninth Circuit embraced the four elements. Ferguson v. Greater Pocatello Chamber of Commerce, 848 F.2d 976, 983 (9th Cir. 1988) ("[T] he plaintiffs must establish (1) that the defendant is a monopolist in control of the essential facility, (2) that competitors of the monopolist are unable to duplicate the facility, (3) that the monopolist has refused to provide the competitors access to the facility, and (4) that it is feasible for the monopolist to do so."); accord City of Maiden v. Union Elec. Co., 887 F.2d 157, 160 (8th Cir. 1989) (listing the same factors); see also Alaska Airlines, Inc. v. United Airlines, Inc., 948 F.2d 536, 542-45 (9th Cir. 1991) (discussing criteria for liability under "essential facilities" doctrine); Aspen Highlands Skiing Corp. v. Aspen Skiing Co., 738 F.2d 1509, 1520-21 (10th Cir. 1984), aff'd, 472 U.S. 585, 611 (1985) (noting that affirmance on traditional monopolization theory made it "unnecessary" to analyze the essential facilities holding of the appellate court).
319. See, e.g., Christopher S. Yoo, Copyright and the Public Good Economics: A Misunderstood Relation, 155 U. PA. L. REV. 635, 659 (2007) ("The absence of any independent copyright protection in derivative works leaves initial authors free to appropriate them without the follow-on authors' consent . . . .").
320. Ferguson, 848 F.2d at 983.
321. 3A AREEDA & HOVENCAMP, supra note 309, ¶ 771a, at 171; see also Phillip Areeda, The "Essential Facilities" Doctrine: An Epithet in Need of Limiting Principles, 58 ANTITRUST L.J. 841, 847-53 (1989) (discussing the implications of the legality of monopoly pricing on the essential facilities doctrine).
322. 3A AREEDA & HOVENCAMP, supra note 309, ¶ 773a, at 196. But the Areeda treatise also notes that "when duplication is prohibited by law, forced sharing may be as well," citing patent law. Id. at 196 n.2. While the federal government's adoption of the CPT codes for Medicaid payments did not "forbid" the development of alternative codes, it does make such development pointless or, more strongly, it makes it impossible to develop a competitor facility.
323. See MCI, 708 F.2d at 1081, 1133.
324. CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61, 66 (2d Cir. 1994).
325. Cf. Areeda, supra note 321, at 850, where Areeda points out that in the context of MCI, no court would order interconnection if it would harm the incumbent's facilities. Some uses might do that to a work.
326. 863 F.2d 1465 (9th Cir. 1988). The compulsory license nature of the court's decision is made clear by the remand instructions that, in calculating the plaintiffs portion of the defendant's profits, "the district court must recognize" that "the tremendous success" of the film was "attributable in significant measure to . . . Grace Kelly and James Stewart - and the brilliant directing of Alfred Hitchcock." Id. at 1478. The court was clearly of the mind that the plaintiff would take far less than one hundred percent of the studio's profit from the film. Id. at 1480.
327. 510 U.S. 569, 578 n.10 (1994) ("[T]he goals of the copyright law . . . are not always best served by automatically granting injunctive relief when [defendants] are found to have gone beyond the bounds of fair use.").
328. 126 S. Ct. 1837, 1838-41 (2006) (concluding that injunctive relief in patent law is not automatic, but follows equitable consideration).
329. Wendy J. Gordon, Assertive Modesty: An Economics of Intangibles, 94 COLUM. L. REV. 2579, 2588 n.41 (1994) (noting that "[t]oday, judges are more open to exploring liability-rule avenues in copyright litigation" (citing Campbell, 510 U.S. at 578 n.10)); Alice Haemmerli, Take It, It's Mine: Illicil Transfers of Copyright by Operation of Law, 63 WASH. & LEE L. REV. 1011, 1020 (2006) ("In these cases, one could say that the court's refusal to grant injunctive relief for copyright infringement effectively results in a compulsory license in favor of the defendant."); Karjala, supra note 5, at 462 n.88 ("If fair use were a reliable form of compulsory license, it could be an important counterweight to a copyright in functional works. Its use in this fashion, however, has little foundation other than a footnote in the Supreme Court's decision in Campbell."); Timothy J. McClimon, Denial of Preliminary Injunction in Copyright Infringement Cases: An Emerging Judicially Crafted Compulsory License, 10 COLUM.-VLA J.L. & ARTS 277, 303 (1986) ("This type of implicit compulsory license is emerging in the courts on an increasing basis . . . .").
330. See Verizon Commc'ns, Inc. v. Law Offices of Curtis V. Trinko, LLP, 540 U.S. 398, 408 (2004) ("Enforced sharing also requires antitrust courts to act as central planners, identifying the proper price, quantity, and other terms of dealing - a role for which they are ill-suited.").
331. DICTIONARY OF THE MIDDLE AGES 56 (Joseph R. Strayer ed., 11th ed. 1988).
332. Cunningham, supra note 4, at 330.