Professor Peter S. Menell
Director, Berkeley Center for Law & Technology
University of California at Berkeley School of Law
December 14, 2010

When the Supreme Court granted certiorari in Bilski v. Kappos 18 months ago, the patent community was galvanized.  In view of the murky and conflicting reasoning of the Court’s software patent cases from the 1970s and early 1980s, it appeared that the Court was poised to clarify one of the most confounding and potentially critical areas of patent law at a critical juncture in the information age.  Why else, in this era of parsimonious certiorari grants, would the Court review the Federal Circuit’s rejection of a patent that nearly everyone considered unworthy of protection?  The Federal Circuit’s fractured en banc resolution of patentable subject matter in Bilski presented an opportunity for the Supreme Court to re-engage and bring coherence to the boundaries of patentable subject matter … or so many hoped.

Unfortunately, the Supreme Court’s majority opinion obfuscated the contours of patentable subject matter and applied an interpretive framework that threatens to undermine patent and copyright law.

Bilski addressed whether methods for hedging energy-market risk were eligible for patent protection.  Writing for the slim and fractured majority,  Justice Kennedy viewed the case through a textualist lens: (1) “[C]ourts should not read into the patent laws limitations and conditions which the legislature has not expressed”;  and (2) “[i]n patent law, as in all statutory construction, [u]nless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning.”  The Bilski majority treated the language in Section 101 as though it were enacted in 1952.   Yet nearly every word of Section 101 traces back to the 1790s.

Congress did not intend to supplant more than a century of jurisprudence with the “ordinary, contemporary, common meaning” of the word “process.”   Rather, it intended to perpetuate the existing contours of patentable subject matter as expressed in the statute and recognized in patent jurisprudence.  By skating over the historical context of the 1952 Patent Act and 150 years of jurisprudence that preceded it, the Bilski majority overlooked the long-standing interpretive canon presuming that codification statutes do not alter prior law.   Congress clearly understood the terms “art” and “process” to have special meanings, not the broadest meaning contained in Webster’s 1954 edition.

What the patent community needed was a coherent manual for navigating the boundaries of patentable subject matter.  What it got was non-committal, hypertextual, incoherent rambling.  I explore this decision further in “Forty Years of Wondering in the Wilderness and No Closer to the Promised Land: Bilski’s Superficial Textualism and the Missed Opportunity to Ground Patent Law Interpretation and Return Patent Law to its Technology Mooring” (Stanford Law Review, forthcoming 2011), available at:

Such superficial textualism could similarly undermine copyright law.  Like patent law, critical copyright provisions and doctrines trace their lineage back over 200 years.  Throughout the 19th and 20th centuries, courts fleshed out the skeletal, inchoate early copyright statutes by filling in statutory gaps, integrating constitutional limitations, and drawing upon tort principles to guide enforcement.  Reflecting the jurisprudential style of those eras and the influence of their common-law roots, character, and responsibilities, the most influential copyright jurists – including Justice Joseph Story, Justice Benjamin Cardozo, and Judge Learned Hand – operated in a less formal, common-law-oriented mode.  As a consequence, they did not typically tie their interpretation tightly to statutory text where the text was not illuminating.  By drawing upon statutory, constitutional, common sense, and experiential sources and insights, they evolved copyright law into a workable, dynamic system.  When Congress codified and updated copyright law in 1976, it intended to perpetuate that jurisprudential tradition, in conjunction with adding some more detailed modern provisions.

The Supreme Court’s textualist turn threatens to overrun the copyright system’s context – its rich jurisprudential tradition, illuminating legislative history, and dynamic doctrines – with ambiguous, static text and dictionary definitions, and simplistic analysis.  We can already see some of this confusion in the interpretation of copyright law’s distribution right.  Compare Peter S. Menell, Exhuming Copyright’s Lost Ark to Interpret the Distribution Right (Oct. 20, 2010),, with James Gibson, Reproduction, Distribution, and “Making Available” (Nov. 23, 2010),

Due to the rapid pace of technological change in distribution platforms and the obstacles to legislative reform, the efficacy of copyright law depends critically on the perpetuation of copyright’s jurisprudential tradition and understanding the purposes and concerns of the Copyright Act’s drafters. For example, the 1965 Supplementary Report recognized the need to guard against “confining the scope of an author’s rights on the basis of the present technology so that, as the years go by, his copyright loses much of its value because of unforeseen technical advances.”  The Report then cites “these reasons” for stating the exclusive rights in “broad terms.”  Then, with extraordinary prescience, the drafters noted that

it is becoming increasingly apparent that the transmission of works by nonprofit broadcasting, linked computers, and other new media of communication, may soon be among the most important means of disseminating them, and will be capable of reaching vast audiences.  Even when these new media are not operated for profit, they may be expected to displace the demand for authors’ works by other users from whom copyright owners derive compensation.  Reasonable adjustments between the legitimate interests of copyright owners and those of certain nonprofit users are no doubt necessary, but we believe the day is past when any particular use of works should be exempted for the sole reason that it is “not for profit.”

Thus, Congress conceived of the exclusive rights broadly, encouraged courts to interpret them so as to avoid their erosion as a result of unforeseen technological changes, and did not see the lack of financial motivation of those who would interfere with such rights to be a basis for narrowing the scope of the exclusive rights.  That gloss is critical to effectuating legislative intent.

Thus, in interpreting copyright law, courts should carefully examine the context of statutory provisions and doctrines.  Assuming constitutional limitations do not constrain legislative or judicial power, courts should determine the provenance of legislative text and doctrines: (a) carryover of statutory text without substantive change; (b) substantive revision or augmentation of statutory text; (c) codification of judicial doctrine without substantive change; (d) codification of judicial doctrine with substantive change; or (e) entirely new provision.

Where Congress did not evince an intent to change the prior law (scenarios (a) and (c), or was silent with regard to non-statutory judicial doctrines (i.e., no inconsistent textual provision)), then courts should perpetuate the common-law-type jurisprudential tradition.  Where Congress changed a pre-existing statutory provision (scenario (b)) or added an entirely new statutory provision (scenario (e)), then courts should use modern tools of statutory interpretation.  Where Congress codified, but altered, a pre-existing jurisprudential doctrine (scenario (d)), then courts should integrate modern statutory interpretation with common-law jurisprudence to the extent appropriate to effectuate Congress’s guidance.

This framework captures Congress’s approach in enacting the 1976 Act.  The Act was the product of nearly two decades of studies and analysis.  Much of the Act was set in place early in that process without controversy and the legislative history provides critical guidance in understanding the drafters’ intent.  Some of the text – modeled after earlier terse formulations – provides sparse details regarding many critical aspects of the copyright regime, including direct and indirect infringement as well as the scope of the exclusive rights.  The studies and reports clearly intended to perpetuate the rich jurisprudential doctrines and foresaw the courts playing an ongoing role in the evolution of many aspects of the copyright regime.  Rather than codify all of the many jurisprudential embellishments, Congress carried over much of the prior law through acquiescence.

Hence, modern courts have a responsibility to perpetuate those doctrinal embellishments as well as the interpretive approach underlying them.  There is no indication that Congress intended to freeze those doctrines in place.  Congress would certainly have no basis for anticipating that the Supreme Court would, beginning in the 1990s, gravitate toward strict textualism; hence, it would undermine fidelity to the legislative schema to interpret the statute through that lens.

Judge Frank Easterbrook, among the intellectual founders of the textualist movement, recognized that “[t]he statute books are full of laws, of which the Sherman Act is a good example, that effectively authorize courts to create new lines of common law.”  See Frank H. Easterbrook, Statutes’ Domains, 50 U. Chi. L. Rev. 533, 544 (1983).  Due to the long historical traditions, terse formulations of key provisions, and need for interpretation in light of unforeseeable technological advances, copyright and patent law fit comfortably within the class of “common-law statutes.”  Of course, some detailed provisions of the 1976 Act (such as the compulsory licenses) and more recent amendments are fully specified and should be interpreted through a narrow textual lens.  But as the Viacom v. YouTube litigation reveals, even relatively recent statutory enactments can become difficult to decipher when technology evolves rapidly.  A healthy copyright law requires courts to fill gaps and ambiguities as technology advances.

Comments From Our Readers

Bob Weiss: For a practical experience with the DMCA , go to my little piece in the Oregon State Bar Bulletin or August/Sept at: