I am grateful to the Ontario Center for Innovation Law and Policy and to the University of Western Ontario Faculty of Law for the invitation to participate in a panel discussion, held on February 10, 2003, Intellectual Property: Theoretical Underpinnings or Pure Pragmatism?, and to Richard Owens, and Professors Margaret Ann Wilkinson, Mark Perry, Brian Fitzgerald, Adam Moore for a day of stimulating discussion on intellectual property law, and for their insightful comments on earlier versions of this paper. Thanks also to Dean Toni Massaro, Professor Jane C. Ginsburg, and Richard Bronaugh and his superb editorial staff.

1. See generally, Dinwoodie, Graeme B., “The Integration of International and Domestic Lawmaking” (2000) 23 Colum.-VLA J. L. & Arts 307 Google Scholar (discussing the interrelationship between domestic and international lawmaking in the intellectual property field); Nimmer, David, “The End of Copyright” (1995) 48 Vand. L. Rev. 1385 Google Scholar (claiming that international law constraints on U.S. domestic lawmaking significantly constrain domestic law freedoms in the copyright field); Ginsburg, Jane C., “International Copyright: From a Bundle of National Copyright Laws to a Supranational Code” (2000) 47 J. Copyright Soc’y USA 265 Google Scholar (arguing that the public international law copyright framework is increasingly challenging the veracity of the claim that international copyrights are a bundle of domestically confined, territorial rights).

2. I discuss the relevance of ambiguities and exceptions in the public international law regime in detail in Austin, Graeme W., “Valuing ‘Domestic Self-Determination’ in International Intellectual Property Jurisprudence” (2002) 77 Chi.-Kent L. Rev. 1155.Google Scholar

3. These are discussed in detail in the article by Professor Fitzgerald in this Symposium (Brian Fitzgerald, ‘Theoretical Underpinnings of Intellectual Property: “I am a Pragmatist—But Theory is my Rhetoric”‘) and outlined in detail by Professor Fisher, William, “Theories of Intellectual Property” in Munzer, Stephen, ed., New Essays in the Legal and Political Theory of Property (New York: Cambridge University Press, 2001 Google Scholar). Professor Fisher identifies four dominant “theory” traditions in intellectual property law: economic utilitarianism, Lockean natural rights theory, Kantian/personhood theory, and a social planning approach that understands intellectual property as a tool to culturally and technologically enrich particular societies.

4. Professor Fisher outlines a few instances where intellectual property theory can influence debates. For example, a concern for theory can open up new ways of discussing some of the many policy questions that arise in intellectual property law from time to time. See further Fisher, ibid

5. See Moore, Adam D., “Intellectual Property: Theory Privilege, and Pragmatism” (2003) XVI Can. J. L. & Juris. 191.CrossRefGoogle Scholar

6. “The Framers, who envisioned a limited Federal Government, could not have anticipated the vast growth of the administrative state.” Federal Maritime Com’nv. South Carolina State Ports Authority, 535 U.S. 743, 755 (2002)Google Scholar. The notion of “limited federal government,” derived in part from analysis of the “structure” of the U.S. Constitution has become a persistent theme in recent U.S. “federalist” jurisprudence. For a detailed analysis of these developments in their theoretical and historical contexts, see, e.g., Merico-Stevens, Ana Maria, “Of Maine’s Sovereignty, Alden’s Federalism, and the Myth of Absolute Principles” (2000) 33 U.C. Davis L. Rev. 325 Google Scholar.

7. Eldredv. Ashcroft, 537 U.S. 186 (2003), 123 S.Ct. 769 [cited to S.Ct].

8. The statute adding 20 years to U.S. copyright terms was enacted as Pub. L. No 105-298, 112 Stat. 2827 (codified as amended at 17 U.S.C. ss. 301-403 (1998)).

9. The Court’s deferential posture is consistent with its earlier copyright jurisprudence. See generally, Hamilton, Marci A., “Copyright Duration and the Dark Heart of Copyright” (1996) 14 Cardozo Arts & Ent. L. J. 655 Google Scholar at 658-59.

10. See e.g., “In re Trade-Mark Cases”, 100 U.S. 82, 89 (1879) (holding that trademarks are not proper subjects for copyright protection on the basis that they are not products of “fancy”, “imagination,” “genius,” or “laborious thought”); Burrow-Giles Lithographic v. Sarony, 111 U.S. 53, 58 (1884), (holding that artistic photograph were proper subjects for copyright protection, to the extent that such photographs are “representatives of original intellectual conceptions of the author.”). See further, infra Part IV.

11. Posner, Richard, The Problems of Jurisprudence 454–69 (Cambridge, MA: Harvard University Press,1990 Google Scholar).

12. Unger, Roberto, The Critical Legal Studies Movement (Cambridge, MA: Harvard University Press,1986 Google Scholar) at 1.

13. Rorty, Richard, “The Banality of Pragmatism and the Poetry of Justice: (1990) 63 S. Cal. L. Rev. 1811 at 1819Google Scholar.

14. Commission on Intellectual Property Rights>, Final Report: Integrating Intellectual Property Rights and Development Policy (London: 2003), available at Commission on Intellectual Property Rights Homepage http://www.iprcommission.org/papers/pdfs/final_report/CIPRfullfinal.pdf (hereinafter “Report”).

15. Universal Declaration of Human Rights, art. 27(2), G.A. Res. 217A (III), U.N. GAOR, 3d Sess., at 71, U.N. Doc. A/810 (1948) (“Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.”).

16. “Report”, supra note 14, “Overview”, available at http://www.iprcommission.org/papers/text/finalreport/overviewhtmfinal.htm

17. There is a significant literature on this issue. See, e.g., Okediji, Ruth L., “The Myth of Development, The Progress of Rights: Human Rights to Intellectual Property and Development” (1996) 18 Law & Pol’y 315 at 315;Google Scholar Gana, Ruth L., “Prospects for Developing Countries Under the TRIPS Agreement” (1996) 29 Vand. J. Transnat’l L. 735 Google Scholar.

18. One of the problems with any debate about the tension between “theory” and “pragmatism” in the law, and in other social practices, is that it is very difficult to discuss or advocate “pragmatism” without one’s characterization collapsing into consequentialism. This general point is consistent with Professor Moore’s contribution to this symposium. See Moore, supra note 5. I’m not sure this criticism takes us very far, however. Had this University of Western Ontario Symposium been about the tension between, say, consequentialism and natural rights theory, the content of the debate would likely have been very much the same.

19. See, e.g., Fay, Brian, Contemporary Philosophy of Social Science at 73–76 (Oxford: Blackwell Publishers,1996)Google Scholar (discussing the dependency of description on theory, and of theory on higher-level conceptual structures).

20. See, e.g., the House Committee Report accompanying the passage of the 1909 Copyright Act: “[t]he enactment of copyright legislation ... is not based upon the ground that the welfare of the public will be served ... by securing to authors for limited periods the exclusive rights to their writings.... The Constitution does not establish copyright, but provides that Congress shall have the power to grant such rights as it thinks best. Not primarily for the benefit of the author, such rights are given. Nor that any particular class of citizens, however worthy, would benefit, but because the policy is believed to be for the benefit of the great body of the people, in that it will stimulate writing and invention to give some bonus to authors and inventors.” H.R. Rep. No. 60-222, at 7 (1909).

21. See Litman, Jessica, Digital Copyright (New York: Prometheus, 2000)Google Scholar (meticulously tracing the legislative history of U.S. copyright statutes).

22. See Bell, Tom, “Escape from Copyright: Market Success vs. Statutory Failure in the Protection of Ex Pressive Works” (2001) 69 U. Cin. L. Rev. 741 Google Scholar.

23. Waldron, Jeremy, The Dignity of Legislation (Cambridge: Cambridge University Press, 1999) at 63.CrossRefGoogle Scholar

24. The implicit paradox is nicely captured by Professor Thomas Grey, articulated by the question: “[A]re pragmatists trying to call off the theory game, or to win it?” Grey, Thomas C., ‘“Hear the Other Side”: Wallace Stevens and Pragmatist Legal Theory’ (1992) 63 S. Cal. L. Rev. 1569 at 1570.Google Scholar

25. See Moore, supra note 5 at 197. This point is discussed in detail in Williams, Bernard, “Consequentialism and Integrity” in Scheffler, Samuel, ed., Consequentialism and its Critics (Oxford: Oxford University Press, 1988).Google Scholar

26. Moore, supra note 5 at 191. For further analysis of this point, adopting a Hohfeldian analysis of the framework delineating the relationships between authors’ rights and (coercive) citizen duties in the copyright context, see Waldron, Jeremy, “From Authors to Copiers: Individual Rights and Social Values in Intellectual Property” (1993) 68 Chi.-Kent L. Rev. 841.Google Scholar See further Hohfeld, Wesley N., Fundamental Legal Conceptions (New Haven, CT: Yale University Press, 1923)Google Scholar.

27. Moore, supra note 5 at 209f

28. See Litman, Jessica, “Breakfast with Batman: The Public Interest in the Advertising Age” (1999) 108 Yale L.J. 1717 CrossRefGoogle Scholar.

29. This distinction can be overplayed, however. The authors of an influential Report during the Administration, Clinton, Information Infrastructure Task Force, Intellectual Property and the National Information Infrastructure: The Report of the Working Group on Intellectual Property Rights (Washington, DC: 1995)Google Scholar online: United States Patent and Trademark Office http://www.uspto.gov/web/offices/com/doc/ipnii/ipnii.txt claimed that because children “can relate to the underlying notions of property—what is ‘mine’ versus what is ‘not mine’, just as they do for a jacket, a ball, or a pencil,” notions of intellectual property should be introduced into school curricula.

30. In the context of an analysis concerned in part with the “coercive” character of intellectual property rights, it is interesting that Professor Moore cites, apparently approvingly, a recent article by Professor Shih Ray Ku, questioning the necessity of copyright for musical works in a digital environment. Ku, Raymond Shih Ray, “The Creative Destruction of Copyright; Napster and the New Economics of Digital Technology” (2002) 69 U. Chi. L. Rev. 263 CrossRefGoogle Scholar. Ku argues inter alia that given the prevailing economics of musical distribution, whereby many composers currently receive little compensation from sales of their compositions (much of the revenue is absorbed by record companies), copyright is unnecessary. Without copyright composers would necessarily be required to distribute their works for free; but, the argument goes, composers would be adequately compensated by touring, exhibitions and the like. Professor Moore claims that “if Ku is correct the incentives based argument would lead us away, not toward, copyright protection for digital intellectual works.” Supra note 5 at 207.

This general proposition bears some further analysis. It does not explain, for instance, why composers who seek to make a living from their work should be required to derive income from from non copy-based forms of exploitation (e.g. touring) and not from others based on reproduction of the work and/or distribution of copies. Because digital technologies offer authors the possibility of greater control over publishing and distribution (see Ginsburg, Jane C., “Copyright and Control over New Technologies of Dissemination” (2001) 101 Colum. L. Rev. 1613 CrossRefGoogle Scholar), authors are increasingly freed from having to make this choice. Singer/songwriter Natalie Merchant for example, recently announced that she would market her next major recording through her own website rather than through a major record label. See Merchant, Natalie, “No Strings Attached” New York Times (13 March 2003) E1Google Scholar. A copyright system that tells Ms Merchant that she must tour because she cannot effectively sell records seems coercive, to say the least.

One might wonder why Ms. Merchant would bother to make recordings of her performances. The typical answer is that the recordings publicize the concerts and render more desirable the associated merchandizing properties, such as t-shirts, which would serve as her source of income. The prospect of larger live audiences would furnish the incentive to create recordings. Some incentive is presumably required because even if distribution costs of the recordings are significantly reduced by digital forms of dissemination, production costs still need to be recouped. In addition to raising the problem of “artist-coercion,” this analysis does not explain why consumers who enjoy their music recorded should be subsidized by those who enjoy their music live. Perhaps the answer to this is that in the kind of world envisaged by those who pursue this line of argument the two groups of consumers are the same. To the extent this is a normative—rather than empirical—proposition, we may have here something resembling “audience coercion.”

31. Brian Fitzgerald, supra note 3.

32. For a thoroughgoing critique of the predictive value of moral theory in law, see Posner, Richard, “The Problematics of Moral and Legal Theory” (1998) 111 Harv. L. Rev. 1637 CrossRefGoogle Scholar. Tellingly, Professor Moore offers a trenchant critique of the ideas that Judge Posner pursues in this and other work, describing Posner’s critique of the role of moral theory in legal analysis as “laughable.” See Moore, supranote 5 at197 n. 31.

33. Recent work by Martha Minow, which focuses recognizing ways that legal systems recognize the reality and aspiration of “co-existence.” See Minow, Martha, “Education for Coexistence” (2002) 44 Az. L. Rev. 1 Google Scholar.

34. See e.g. Massaro, Toni M., “History Unbecoming, Becoming History” (2000) 98 Google Scholar Mich. L. Rev. 1564 at 1584 (reviewing Eskridge, Jr., William N., “Gaylaw: Challenging the Apartheid of the Closet” (Cambridge, MA: Harvard University Press, 1999))Google Scholar (advocating, in the judicial review context, a context-specific inquiry that might identify “non-controversial harms” caused by governmental action as a more useful option to engaging with the “morass” of political theory).

35. Moore, supra note 5 at 193.

36. Professor Toni Massaro adumbrates a “pragmatic,” context-based approach to constitutional law in Massaro, supra note 34.

37. See supra Part I and the references cited there.

38. Professor Terry Eagleton elaborates on this theme in Eagleton, Terry, Ideology (New York: Verso, 1991)Google Scholar, characterizing ideology in terms of the connection between discourse and power.

39. 534 U.S. 1126 and 1160 (2002).

40. U.S. Constitution, art. I.8.8.

41. “Congress shall make no law … abridging the freedom of speech, or of the Press.” U.S. Constitution, 1st Amt.

42. I discuss the relevance of the “bargain theory” to constitutional challenges to U.S. copyright law in detail in Austin, Graeme W., “Does the Copyright Clause Mandate Isolationism?” (2002) 26 Colum. J. L. & Arts 17 Google Scholar. (hereinafter Isolationism?) The following section of the analysis draws on arguments more fully elaborated in this article.

43. See Waldron, “Authors to Copiers”, supra note 26.

44. Supra note 7.

45. Ibid.

46. Litman, supra note 21 at 78.

47. Copyright Act 1790 (U.S.)

48. Professor Jane C. Ginsburg elaborates on this point in Ginsburg, Jane C., Gordon, Wendy J., Miller, Arthur R., Patry, William F., “The Constitutionality of Copyright Term Extension: How Long is Too Long?” (2000) 18 Cardozo Arts & Ent. L. J. 651 Google Scholar at 696 (identifying “a definite cultural policy behind the 1790 Copyright Act”) (hereinafter Cardozo Symposium).

49. Isolationism?‘, supra note 42.

50. See, e.g., Gordon, Wendy J., “A Property Right in Self-Ex Pression: Equality and Individualism in the Natural Law of Intellectual Property” (1993) 102 Yale L. J. 1533 CrossRefGoogle Scholar; “An Inquiry into the Merits of Copyright: The Challenges of Consistency, Consent and Encouragement Theory” (1989) 41 Stan. L. Rev. 1343.CrossRefGoogle Scholar

51. Cardozo Symposium>, supra note 48 at 683.

52. Isolationism?, supra note 42 at 50-51.

53. Ibid. at 50.

54. Supra note 7 at 782.

55. The Court cites extensively from an important article by Shira Perlmutter, a vice president at AOL Time Warner. Perlmutter, Shira, “Participation in the International Copyright System as a Means to Promote the Progress of Science and Useful Arts” (2002) 36 Loyola (LA) L. Rev. 323 Google Scholar at 330.

56. Importantly, the Court reasoned that the “bargain” theory is more important in the patent context than in the copyright context. Principally, this is because in copyright disclosure of works of authorship by authors is already in the authors’ interests. With patents, however, disclosure of the invention is one of the things extracted from innovators in exchange for the reward of patent rights. See Eldred, supra note 7.

57. Supra note 7 at 786.

58. Ibid.

59. Ibid. at 790-815.

60. “Rather than subjecting Congress’ legislative choices in the copyright area to heightened judicial scrutiny, we have stressed that ‘it is not our role to alter the delicate balance Congress has labored to achieve.’” Eldredv. Ashcroft, ibid. at 781, at note 10 (quoting Stewart v. Abend, 495 U.S. 207, 230 (1990) and Sony Corp. of America v. Universal Studios, Inc., 464 U.S. 417, 429 (1984)).

61. Professor Tom Bell provides a particularly compelling analysis of this point in Bell, supra note 22. Professor Bell marshals this point to support an argument in favor of greater choice by authors in the legal vehicles for protecting their works. They might chose either the public law vehicle of copyright or they might chose to rely on private protections—contract and technological self-help. An alternative possibility is available, however: better copyright lawmaking in the legislative arena.

62. Supra note 7 at 787.

63. Ibid at 781, footnote 10, quoting Stewart v. Abend, 495 U.S., at 230; and Sony Corp. of America v. Universal Studios City, Inc., 464 U.S. 417, 429 (1984).

64. Ibid at 785, footnote 18 (internal citation omitted).

65. Ibid at 784, citing Graham, 383 U.S. 1, at 6; footnote omitted.

66. See, e.g., Mazer‘v. Stein, 347 US 201, at 219 (1954): ‘The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in “Science and Useful Arts.”‘

67. Eldredv. Reno, 239 F. 3d, at 375 (2001).

68. Supra note 7 at 789 (added emphasis).

69. The Court referred to other aspects of the challenged statutes that protect free speech values, such as the provision for libraries to reproduce and distribute works for scholarly purposes and the exemptions for small businesses to pay certain performance royalties on broadcasted music. Supra note 7.

70. Supra note 7 at 789. The Court’s most famous and important articulation of this principle was in Harper & Row v. The Nation, 471 U.S. 539, 558: “In our haste to disseminate news, it should not be forgotten that the Framers intended copyright itself to the engine of free ex Pression.”

71. Ibid. at 790.

72. Ibid. at 789.

73. Ibid.

74. Professor Jane Ginsburg elaborates on this theme in Cardozo Symposium, supra note 48 at 701-02.

75. It might be anticipated that some of the terrain for the battles over the scope of this principle will include the Digital Millennium Copyright Act’s (codified at 17 U.S.C. 1201 et seq.) protections of anti-circumvention provisions. Some aspects of access control, to the extent that they facilitate “exclusive” author control of copyright works, and authors’ ability to derive income from their works are more obviously consistent with copyright’s “traditional contours” than the use of access controls to prevent access to data or the use of computer software to impose technological “must match” conditions and impede consumers’ ability to substitute cheaper spare parts.

76. Supra note 7 at 784.

77. In re Trade-Mark Cases 100 U.S. 82 (1879).

78. Ibid. at 94: “The ordinary trade-mark has no necessary relation to invention or discovery. The trade-mark recognized by the common law is generally the growth of a considerable period of use, rather than a sudden invention. It is often the result of accident rather than design … neither originality, invention, discovery, science, nor art is in any way essential to the right ….”

79. 111 U.S. 53, 58 (1884).

80. See Massaro, supra note 34.

81. Ginsburg, Jane C., “The Concept of the Author in Comparative Copyright Law” (2003) 52 DePaul L. Rev. 1063 Google Scholar.

82. See generally, Restatement (Third) on Unfair Competition § 1; and Comment a: “... The Freedom to engage in business and to compete for the patronage of prospective customers is a fundamental premise of the free enterprise system.” See also, J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (and supplement) (West Group, 2002): § 1.2: “Public domain is the rule: intellectual property is the exception;” and § 23.122 : “The first principle of unfair competition law is that everything that is not protected by an intellectual property right is free to copy.”