Author: Gerard Magliocca


Viewpoint Discrimination in IP

Here’s a question that came up in a panel that I was on last week on some intellectual property issues. Suppose somebody makes a movie that contains completely loathsome content.  Let’s say the film seeks to justify racism, sexism, or you-name-it ism.  I would venture to say that nobody would argue that the creators of such a movie could be denied a copyright in their work.  That’s true even for child pornography, though there the copyright would be of little or no value because distribution or possession is a crime.

Why, then, does federal trademark law permit the PTO or a court to refuse or invalidate a registration on the grounds that the mark is equally offensive?  The Federal Circuit en banc recently held in In re Tam that this authority was unconstitutional, and I suspect that the Supreme Court will take this case and affirm.  But I’m curious to hear what the counterargument is? Are marks different from copyrights for purposes of First Amendment analysis?


Federal Trade Secret Protection

Yesterday the Senate unanimously passed a statute creating a federal cause of action for the violation of trade secret.  I do not know what the prospects are for this legislation in the House, but I want to express my opposition to the bill.

In general, I take a dim view of federal statutes that seek to take over regulation traditionally handled by the state common law.  There are situations where that is warranted, but this is not one of them.  Trade secret protection is in place in every state, and there is no reason to think that this system is inadequate.

Naturally, companies often prefer one national standard to many state standards, but in my view that does not justify federal action.  An article from Reuters commenting on the bill stated that trade secret cases are currently “relegated to state courts,” which is not the way I would describe federalism but does accurately describe the attitude behind the statute from Republicans and Democrats.

I hope the House decides not to take up this legislation.



Patent Pending

Here’s a question that occurred to me when I was browsing the other day. What is the point of putting “patent pending” on an item for consumers? This gives notice that if a patent is granted then infringement liability may relate back to the use of the item in question, but that is irrelevant to the average consumer.  Is the point of “patent pending” to mislead some consumers into thinking this means “a patent will be granted?”  Does patent pending just sound better than not saying anything about that?  It seems like a fact that only investors would care about.


“Hamilton” As A Derivative Work

240px-Hamilton_Alexander_Portrait_10_dollar_banknoteHere’s a question I was batting around with someone the other day:  Should the musical “Hamilton” be considered a derivative work of Ron Chernow’s biography of Hamilton?  Just to be clear, Chernow is not making this claim. But the creator of the musical, Lin-Manuel Miranda, says that he was inspired by reading Chernow’s book, and the musical makes free use of Chernow’s research.

I can think of a few reasons why you could say no.  One is that the musical is based on facts about Hamilton’s life that are in the public domain (except when Miranda uses poetic license).  This is different from a musical about a work of fiction or one that uses an author’s expression.  Second, the musical is transformative to such an extent that you might consider the production (or a subsequent movie) to not be a derivative work.

On the other hand, if you look at my contract for the Bingham biography, it refers to derivative works including “presentation in dramatic form or recitation for stage, motion pictures, film, radio, television . . .” and so on.  Maybe a musical isn’t a “dramatic form or recitation,” and of course contractual language does not control the meaning of a derivative work in the absence of contract, but this does seem to contemplate stage productions of a non-fiction book.

And if Mr. Miranda is reading CoOp, Bingham would be a great subject for a Broadway show.  Failing ticket, can you get me a ticket to “Hamilton?”  I’m dying to see it live.


Upcoming Event in Philadelphia

In May, I’ll be participating in a panel at the National Constitution Center to mark the 150th Anniversary of the adoption of the Fourteenth Amendment by Congress.  This event is open to the public and will include several notable names.  If you’re interested in attending, here is the link.


The End of the Swing Justice

240px-IngamozgasThis is an idea that I’m going to do a series of posts on because I’m thinking about the topic for an article.  Let’s start with this question:  Suppose Judge Garland is confirmed to the Supreme Court.  Who would then be the swing justice in ideological cases?  The answer, I submit, is nobody.  In any given case it could be Garland, Breyer, Ginsburg, Kagan, or Sotomayor.  And I think this will be a good thing.

We have lived for a generation in a world where there was clearly a swing justice. For the past ten years it’s been Justice Kennedy.  Before that it was Justice O’Connor and sometimes Justice Kennedy.  Before that it was Justice Powell.  You’d have to go back to the mid-1970s to find a time where there wasn’t a single person who played this pivotal.

The rise of the swing Justice did considerable damage to constitutional law.  First, it gave too much power to that one person. Second, briefs and opinions were unduly influenced by the idiosyncratic views of that person rather than by the doctrine.  (Obergefell is a good example.) Both of these effects undermined the rule of law within the Court.

Moreover, the notion of a swing Justice is a distinctly modern one.  Until the 1930s, nobody would have understood that idea because the Court operated much more by consensus.  Indeed, my research suggests that the term was even used until the 1960s.  More on that another time.


Pro Forma Senate Sessions

I have a question for people who know Senate procedures better than I do.  Is a quorum presumed when the Senate convenes?  Here’s why I’m asking.

Suppose the Senate meets in one of its pro forma sessions to block recess appointments by the President.  Typically this sort of session involves two Senators-one sits in the Chair and the other is on the floor. They usually do nothing other than (1) approve an order to meet again in three days, and then (2) adjourn.  But what if the Senator on the floor said “I ask for unanimous consent that ‘The Everything Republicans Want to Enact Omnibus Act’ be passed.” The Chair responds:  “Is there objection?  Hearing none, the bill is passed.”

Can this be done?  One reason the answer could be no is that a quorum must be established first.  My sense from watching the Senate, though, is that they do not typically begin their day by initiating a quorum call and establishing one.  But am I wrong about that?


Time For More Certiorari Grants

Though it may be impolitic to say, one result of Justice Scalia’s death is that the Justices will have much less work.  Today they issued their second one-sentence “affirmed by an equally divided Court” decision, and more are sure to follow.  Thus, I would guess that this Term will have the fewest number of opinions in many years.

This creates an opportunity.  Lawyers have long complained that the Justices take far too few cases in the less glamorous areas of law.  (bankruptcy, tax, ERISA, IP, administrative law, securities regulation etc.).  One explanation for that is that the Court has to reserve its docket for important constitutional cases.  For now, though, it’s fair to say that the Court will be unable to resolve most of those. While they may split in other sorts of cases (the first tie after Justice Scalia’s death involved a bankruptcy issue), that sort of deadlock is less likely.  I would therefore suggest that they lean forward in stocking their docket with these sorts of meat-and-potatoes matters for next Term, where there is high likelihood they will be without a ninth member for a significant period of time.


One Way to Force a Senate Hearing on Judge Garland

Apologies for the light blogging of late.  I’m on sabbatical next semester, which means that in a few weeks I expect to be posting much more frequently (you decide whether that is exciting news or not).

With respect to the nomination of Judge Garland, I don’t expect much to happen until November.  I’m surprised, though, that the focus has been on how to bring public pressure on Senate Republicans (or just some of them) to hold a confirmation hearing.  I would think that the more effective strategy would be for Senate Democrats to start filibustering things that Republicans want until a hearing is granted.  Then again, these days Senate Democrats are probably feeling good about their chances of taking the Senate after Trump gets wiped out in the Fall, so why do anything that gets in the way of that?


The Citizenship Oath

When new American citizens are naturalized, they take the following oath:

I hereby declare, on oath, that I absolutely and entirely renounce and abjure all allegiance and fidelity to any foreign prince, potentate, state, or sovereignty, of whom or which I have heretofore been a subject or citizen; that I will support and defend the Constitution and laws of the United States of America against all enemies, foreign and domestic; that I will bear true faith and allegiance to the same; that I will bear arms on behalf of the United States when required by the law; that I will perform noncombatant service in the Armed Forces of the United States when required by the law; that I will perform work of national importance under civilian direction when required by the law; and that I take this obligation freely, without any mental reservation or purpose of evasion; so help me God.

The first part of the oath strikes me as odd.  Someone who becomes a citizen is not, in fact, required to renounce their prior citizenship–there are lots of dual nationals who are naturalized American citizens.  The second part (about subjecting yourself to the draft or to a noncombatant role) is rather outdated.  And nothing in the oath refers to the actual duties of citizens (serving on juries, paying taxes, etc.)  Perhaps it’s time for a new oath.