Studying IP Law in a World Media Capital

Intellectual Property at Columbia Law School: New York City is our Laboratory
By Barbara Kancelbaum, Contributing Editor

Columbia Law School has hired three new professors of intellectual property law in the past two years, a clear signal that the school will play a significant role in the theory and development of laws and regulations that govern the world's marketplace of creativity. While Columbia's IP faculty would be considered first rate at any school in the nation, their teaching and scholarship are greatly enhanced by the School's location in New York.

"In New York, you realize the effect the law has or doesn't have on creation," says Professor Timothy Wu, who joined the faculty last year from the University of Virginia. A key factor that drew him to Columbia was its Manhattan location. "Scholars are more useful the closer they are to the facts of the world, and a lot of the IP facts are in New York."

The benefit of studying law in New York - and IP, in particular - is emphasized as soon as 1Ls walk through the door.

"At Columbia Law School, New York is our laboratory, and our curriculum is as deep and diverse as our dynamic city," Dean David Schizer told this year's 1Ls. "New York is a global media capital, and we have one of the strongest intellectual property programs in the world. You should be sure to take advantage of this while you are here, since intellectual property is of critical importance in the knowledge-based global economy of the twenty-first century."

The newcomers, who include Professors Wu, Scott Hemphill, and Clarisa Long, join Professors Jane Ginsburg, Hal Edgar '67, Tom Merrill, Michael Heller, and Eben Moglen. They belong to an institution whose roots in IP law go back well before the concept was familiar to most people - to Professor John Kernochan '48. His 1966-67 seminar looked at the nature and operation of copyright law in the context of recent technological advances (such as the photocopying machine) affecting exploitation of music, literature, and other art forms.

Things have changed exponentially since Prof. Kernochan's day. The advent of the Internet and personal computers has produced an explosion of IP battles. Many commentators call IP's terrain untamed and unclaimed, though it appears that law has begun to civilize the frontier.

"The Internet is less Wild West than it was, and little by little, the most obvious actors in pirating schemes are being successfully pursued," says Prof. Ginsburg. "However, that doesn't mean there won't be another crop."

In a variety of ways, legal decisions have begun to transform the Internet to a place that works and is regulated like an old-fashioned marketplace. From 2003, when the courts closed the books on Napster, an Internet site that allowed the illegal downloading of copyrighted music, to the recent U.S. Supreme Court victory scored by Donald Verrilli '83 in MGM v. Grokster, the law is mitigating what was becoming a free-for-all. This bridling of the Internet is not solely a U.S. phenomenon. Cases similar to those of Grokster have found copyright infringers liable in Australia, South Korea, Germany, and Taiwan.

Still, while concerns are being addressed, changing technology continues to challenge regulatory frameworks. Plenty of hard work remains to make the IP marketplace a fair and lucrative site to do business and exchange information, especially in the fast-growing area of international regulation. And this is where Columbia Law School comes into play, with its programs and talented scholars.

A Variety of Views

The IP faculty is characterized by a diversity of views on many issues, and this is one of the Law School's strengths, according to Dean Schizer.

"Our class discussions are in some ways as uncharted as the Internet itself," he says. "A law school is the place to exchange ideas on different notions of fairness, ownership, and state control, and it happens here every day."

Jane Ginsburg

Prof. Jane Ginsburg is one of the world's best known copyright and trademark experts, evidenced by her casebooks, as well as invitations to lecture at prestigious conferences and universities. A staunch defender of the rights of artistic and literary creators, she notes that the public's demand for greater access to more works of authorship as quickly as possible has pressured the legal system to deal swiftly with issues of copyright.

"Five years ago, music downloading was the issue," says the Morton L. Janklow Professor of Literary and Artistic Property Law. "Now movies are a concern." The strategy for ensuring respect for copyright, says Prof. Ginsburg, is a "double-edged one." First, unlawful copying must be discouraged.

"There will be less unauthorized activity if it becomes complicated enough to download works illegally, and if there is some risk of getting caught," she adds. Second, business models must be developed that encourage new and legitimate ways of licensing.

Students now attending Columbia grew up with computers and might be categorized as the youth that took advantage of downloading music from Napster. While these students are not uncritical of copyright, many tend to identify with creators (a fair number, in fact, have previously worked in the arts as writers, actors, dancers, and record producers). While Prof. Ginsburg discusses up-to-the-minute cases in class, the details of individual controversies can be less important than the larger framework of copyright.

"We prepare students by giving them an overall legal training that teaches them to go out and find and evaluate facts," says Prof. Ginsburg, who next spring is teaching basic Copyright and an Advanced Copyright seminar, as well as a colloquium on international intellectual property for both Columbia and NYU students with NYU Law Professor Rochelle Dreyfuss '81. "The facts will change, but the underlying analytical ability is what they need to learn."

Prof. Ginsburg's recent scholarly work examines the "consumer-wielded" digital media that allows the illegal sharing of copyrighted material. An example of such media is Grokster, which allowed users to exchange material without a centralized intermediary like its predecessor, Napster, also a web site that facilitated file-sharing. Grokster (and other companies such as KaZaa) provided peer-to-peer software for users to upload and download files of all kinds. Prof. Ginsburg's article, "Inducers and Authorisers: A Comparison of the U.S. Supreme Court's Grokster Decision and the Australian Federal Court's KaZaa Ruling," analyzes the legal questions that arise with companies that do not commit infringement but whose product or service offers few, if any, uses except those that involve breaking laws. The article, which appeared in The Media & Arts Law Review this year, also considers another growing area of law: whether there exist international norms governing the liability of "infringement facilitators."

A project with a parallel theme is her work as a co-reporter for the prestigious American Law Institute. For the past several years, Prof. Ginsburg, her co-reporters (Prof. Dreyfuss and Professor François Dessemontet of the Lausanne University Law School), and 25 advisers from the United States and other countries, have been working on Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes. It is a document that sets out proposed rules and comments regarding the competence of national courts to hear IP-related claims arising in several national jurisdictions, as well as the law(s) to apply to those claims and the enforcement by other national courts of the resulting judgment.

Eben Moglen

A different viewpoint on IP ownership is taken by Prof. Eben Moglen. He is a well-known figure in the open software movement, which seeks to eliminate the proprietary nature of computer code. He is spending the 2006-07 academic year on leave at the Software Freedom Law Center (SFLC), where he serves as chairman. The New York-based SFLC provides free legal services to people who make and distribute free and open source software.

"We are trying to change not just how software is made, but what it is and how it works in relation to all the other aspects of human intellectual production," he says. "In the 21st century, software is becoming a public utility, not a product."

The idea of ownership is a "fundamental question of morality," but chasing copyright violators is a waste of time and energy, he contends. "We're all connected. You'll spend more putting barbed wire around the thing you're protecting than it is worth."

In fact, Prof. Moglen, who writes on the topic and speaks to groups around the country, strongly disagrees with the premise of the law of copyright based on the idea that important products will not be made without incentives. Instead, he argues that for certain kinds of products, information-sharing will produce higher-quality material.

The Internet in China

Tim Wu

Prof. Tim Wu possesses a vast inside knowledge of the software and telecom industries. A self-described computer geek, he was once a computer programmer and worked as a marketing director for Riverstone Networks, a telecommunications manufacturer in Silicon Valley, after attending law school and clerking for 7th Circuit Appeals Court Judge Richard Posner and U.S. Supreme Court Justice Stephen Breyer in the 1990s.

"Here are the questions I was dealing with then and now: What is the Internet going to become? What will that mean for our culture and the kind of country we live in, which is defined by how we communicate?" he says.

At the most basic level, Prof. Wu sees copyright as the ground rules that help determine which information flourishes in our society. Like Prof. Ginsburg, he plays down the "Wild West" reputation of the Internet, saying that e-businesses - even the giants such as Yahoo, Google, and eBay - need governmental support to function well and stay safe from fraud. Still, he calls himself a moderate on IP issues, recognizing that the current rules of copyright are sometimes a poor match for changing technologies.

Prof. Wu is also well known in the wired world for popularizing the phrase "network neutrality," the principle that information carriers should carry all Internet content equally and not discriminate in favor of one site or another. To describe it, he uses the analogy of the nation's electric grid, whose "neutrality" makes it extremely useful.

"The electric grid doesn't care if you plug in a toaster, an iron, or a computer. Consequently, it has survived and supported giant waves of innovation in the appliance market," he explains. "What worked for the radios of the 1930s works for the flat screen TVs of the 21st century. It's a model of a neutral, innovation-driving network."

Prof. Wu has written about network neutrality, which is broadly contested by the cable and telecom industry, in the Journal of Telecommunications and High Technology Law. He's also testified about it before the House Judiciary Committee.

Among his other writings are his newly published book Who Controls the Internet? (Oxford University Press, 2006) and his regular contributions to Slate magazine. Over the summer, he lived in China "to see what a society is like without copyright law," he says. With his fluent Mandarin, he is researching a paper with Professor Benjamin Liebman on Chinese judges and their use of the Internet. Some of their uses are innovative and surprising; Prof. Wu discovered, for example, that many Chinese judges keep blogs.

This year, he is teaching Copyright and Communications Law and is co-teaching the IP Colloquium with Prof. Long. Like Prof. Ginsburg, Prof. Wu says that the experience of many students in traditional media or creative industries like publishing or advertising enriches class discussions.

Regulation: a taming force in a sea of change

Harold Edgar

Patent law was once perceived as a slow-paced, technical specialty of geeky lawyers in dusty offices who determined whether an inventor's "revolutionary" kitchen gadget differed from others before it. Whether or not the stereotype was accurate, it certainly doesn't fit now.

"Patent law was once isolated from the general development of law - both by virtue of the technical specialization that was required to practice it, and the sense that patents did not matter much - to one that's become increasingly important," says Prof. Hal Edgar, a patent expert who's been on the faculty since 1968. Among the classes he is teaching this year are Patents and Advanced Patents.

"Patent law is the quintessential legal institution that seeks to give people property rights on information, and its expansion has made it an enormously interesting area of legal practice."

Like his colleagues, Prof. Edgar is not an ivory-tower professor. Among the roles he fills outside the Law School is chairmanship of the Hastings Center, a research institute whose focus is health care and biotechnology. His particular interest is in the intersection of patents and bioethics. He has been asking important questions for decades, and he taught what may have been the first bioethics class in any American law school, with Dr. Willard Gaylin in the 1970s. One issue he raised back then was about a "futuristic" technology now known as in vitro fertilization. Today, he is still exploring the legal aspects and morality of patenting biology, such as stem cells.

Although reticent to say that patents and bioethics are on a collision course, Prof. Edgar, the Julius Silver Professor of Law, Science, and Technology, does concede that many bioethicists view such patents as deeply troubling. The patenting of medical technology - and particularly the relationship between the patent system and the pricing of drugs for the U.S. and the developing world - is a central question in bioethics, he says.

Still, he defends patents as a crucial factor in promoting the development of new ideas and products, and he argues that the problems of bringing drugs to the developing world are less related to patents than to problems of policing mechanisms to ensure against diversion of goods. He currently delves into this topic in a project on alternatives to patents in pharmaceutical development.

A liaison between attorneys and scientists

Clarisa Long

Tying together the many strands of IP law is Prof. Clarisa Long, who brings an interdisciplinary approach to the subject. Prior to becoming a lawyer, Prof. Long, who has graduate training in biology, worked for a biotech company that was patenting its research. She soon became the liaison between the scientists and patent lawyers - an experience that piqued her interest in the links between the scientific, legal, and regulatory communities. Later, while in law school at Stanford, she wrote and filed patents with the Patent and Trademark Office.

One of her current projects involves looking at the political economy of intellectual property in patent, copyright, and trademark law. She explores the legislative dimension of why these three areas of law have evolved in different ways and at different speeds over the past century. Her approach begins with asking the questions, "What legal changes are occurring? What interest groups are involved? What groups are effective at getting what they want? What tactics are they using?" Part of the work explores how international treaties add an entirely different and complex dimension to the politics of IP.

"The international dimension is one of the most exciting areas within IP law, and we have a wonderful faculty addressing this topic," says Prof. Long, hired last year from the University of Virginia as the Max Mendel Shaye Professor of Intellectual Property Law. She notes, for example, Prof. Ginsburg's book The Berne Convention and Beyond: International Copyright and Neighboring Rights Agreements from 1886 to the Present (Oxford University Press, 2006), which covers the major international agreements affecting copyright and related rights, as well as her own study of treaties such as TRIPs, in which the United States offered favorable trade rules to countries in exchange for agreeing to increase the strength of intellectual property protection.

Another issue in Prof. Long's current portfolio is trademark dilution law, which aims to strengthen protection of trademarks. The Lanham Act, which governs trademarks, stipulates that the use of a famous trademarked name - such as Tiffany's or McDonald's - can be disallowed even if the use by an entity other than the jeweler Tiffany & Company or the McDonald's Corporation does not sow confusion among consumers. Prof. Long recently published a comprehensive empirical study titled "Dilution" in the June issue of the Columbia Law Review showing that, in the past nine years, the rate at which judges sided with plaintiffs who brought these cases has fallen sharply. In the process, courts found ways to limit the effectiveness of the statute, a rare instance of the shrinkage of the scope of intellectual property rights in recent years.

This year, Prof. Long is teaching an IP Colloquium with Prof. Wu, as well as a basic Contracts course. In the spring, she will teach Principles of Intellectual Property with Professor Tom Merrill. The new course, one of many for 1L students that focuses on a specific area of law, examines how notions of ordinary property rights change when applied to intellectual property. It also looks at the source and evolution of IP rights, how the various forms of protection can be strategically used and the boundaries between intellectual property, contracts, and social norms.

From property to IP

Michael Heller

For most of his career, Lawrence A. Wien Professor of Real Estate Law Michael Heller has focused in the area of real property; in recent years, however, he has turned his attention to property of the intellectual sort. His IP focus is very much an extension of his earlier work, which examined the "the tragedy of the anticommons," a phenomenon in which too many individuals have rights of exclusion to a limited resource, such as a much desired piece of Manhattan real estate.

The problem of anticommons manifests itself in the world of IP when, for example, people hold competing rights in the form of patents for biomedical research. In his upcoming book (tentatively titled) Dealbreakers: When More Property Means Less Prosperity Prof. Heller will examine how laws related to biomedical research and other sectors of business are likely to produce an anticommons. He also suggests solutions for alleviating the problem.

In his earlier research, Prof. Heller explored the negative effects of privatization in post-socialist Russia. With a glut of partial claims on the same commercial property, businesses could not function, and storefronts remained empty in this classic anticommons tragedy. (The mirror image - the tragedy of the commons - occurs when resources held in common, such as the air and oceans, are squandered or destroyed recklessly.)

In the growing field of biomedical research, too many upstream (or early) patent holders serve as obstacles to downstream researchers, thus thwarting innovation. As a result, pharmacy shelves will be devoid of treatments that "could have, and should have, been invented," but which never come to fruition because of the difficulty of assembling the underlying rights, he says.

"Fragmented ownership of basic research tools can be especially crippling for research on diseases where there is not a big market for the final product," Prof. Heller adds.

An anticommons can also result in the very areas that promise the biggest payoffs, such as with drugs for cancer and Alzheimer's.

"In these cases, the upstream IP owners may be especially reluctant to license their patents on reasonable terms. Each may hold out for a non-pro-rata share of the hoped-for windfall," he explains. "So, paradoxically, it may be even more difficult to overcome a biomedical anticommons where there is a large payoff than where there is none."

One of the ways Prof. Heller hopes to familiarize a lay audience with the idea of the anticommons is through real-world examples, for the tragedy extends well beyond the biomedical community. He points to the telecommunications industry and recent efforts to shut down Verizon's national wireless broadband service.

"Wireless broadband exists in an IP environment rich with thousands of cross-cutting patents. Owners of any one of those patents, including the most trivial or obscure, can potentially wreck the downstream investment that actually fuels economic activity in the U.S. - an example of a tragedy of the ‘telecommons,'" he says.

Tom Merrill

Professor Tom Merrill is also interested in the intersection of property theory and intellectual property. Together with Henry Smith of Yale Law School, he has written a series of articles about optimal standardization in property law, which has a number of applications to intellectual property rights. One article on the topic, "Optimal Standardization in the Law of Property: the Numerus Clausus Principle," appeared in the Yale Law Journal.

Profs. Merrill and Smith are also finishing a new property casebook that seeks to introduce students to the basic concepts of intellectual property prevasively, along with more traditional illustrations of similar concepts from real and personal property. The book, Property: Principles and Policies, will be published next year by Foundation Press.

Prof. Merrill's other projects include a study that compares first possession and accession as principles of original acquisition of property, which has signicant relevance to intellectual property, for example in determining rights to derivative works. He is also preparing materials for the IP course he and Prof. Long will teach to 1Ls this spring.

It's in the details

Scott Hemphill

Prof. Scott Hemphill, trained as both a lawyer and an economist, adds a critical dimension to the Law School's faculty, which he joined this fall. His main area of current research is in the regulation of innovative monopolists - companies that create pioneering products, but pose some risk of restricting competition. Achieving a proper balance between innovation and competition, he says, requires the use of multiple legal instruments, including antitrust law, intellectual property law, and industry-specific regulation.

"My current research is at the intersection of the different ways that law can regulate monopolies," says Prof. Hemphill, who is working toward a Ph.D. in economics at Stanford, where he previously earned his J.D. "You have these three bodies of law, and I'm trying to make sense of their interaction."

Prof. Hemphill clerked for Judge Posner and Justice Antonin Scalia before coming to the Law School as an Olin Fellow. During the two-year fellowship, he relied on the counsel of future colleagues Profs. Edgar and Long to make sense of interactions between the U.S. Patent Act and traditional regulation, particularly the pharmaceutical regulatory regime. He believes that a lawyer's understanding of institutions adds a critical dimension to the economist's way of looking at things. This fall, he is teaching a class on antitrust, and over time he expects to teach a mix of IP and regulation courses as well.

Prof. Hemphill enjoys seeing what used to be considered "esoteric legal issues" about copyright and patents entering the popular consciousness. As a clerk for Justice Scalia three years ago, he almost never saw an intellectual property case making it to the court's docket. By contrast, the court has scheduled several for argument this coming term.

"We're at a real crossroads, and it's an unusually exciting time to teach and do research in these fields. Even non-lawyers want to know how we go about regulating innovation and competition - how easy should it be to get a patent, or to access copyrighted material online," he says. "It signals a recognition of the importance of IP in the world we live in."

Kernochan Center

John Kernochan

At the core of the Law School's strength in IP education is the Kernochan Center for Law, Media, and the Arts, whose programs have trained IP professionals for almost two decades. Named for John Kernochan '48, the Nash Professor Emeritus of Law, the center offers courses, lectures, internships, a clinic, fellowships, and publications.

The center's location in New York - amid the renowned cultural institutions and major media and entertainment headquarters - is ideal for attracting speakers to various events. The center also sponsors the Clinical Seminar in Law and the Arts, and advises the students who publish the Columbia Journal of Law & the Arts, which covers legal issues related to entertainment, media, and new technologies.

Recently, the Kernochan Center has gained visibility for its work on two projects involving libraries and archives. The first, with the Library of Congress, explores how libraries' use of digital technologies is affected by Section 108 of the Copyright Act, which grants them special privileges to make a limited number of copies for certain reasons. Material in digital form is routinely duplicated in accessing it and in creating backup copies, making Section 108 's limitations unworkable. June Besek, executive director of the center, and James Neal, are two of 19 experts serving on a committee making recommendations on revisions to Section 108 .

The second project, funded by the Andrew W. Mellon Foundation, concerns the integrity of electronic archives, looking at how defamation, fraud, and errors are treated differently on the Internet than they are in print, where it is more difficult to make information "disappear."

"There are many journals that libraries no longer get in hard copy," says Ms. Besek. "Instead, they subscribe to databases maintained by the publisher or by aggregators under contract to publishers. When a publisher withdraws or changes an article, the original article often is no longer available. We may be losing material that scholars need, so the question is how can we make sure these materials are preserved for scholarly research?"

The center held an all-day symposium on October 27 moderated by Profs. Jane Ginsburg, Clarisa Long, and Tim Wu, and Ms. Besek, on constitutional challenges to copyright. The event featured Marybeth Peters, U.S. register of copyrights, as the keynote speaker, as well as panels of distinguished academics.