Professor Barry McDonald, Congress’s Mistaken IP Power and Our Hybrid Constitutionalism -- Kentucky Law Journal (forthcoming)

Professor Barry P. McDonald's article, Congress’s Mistaken IP Power and Our Hybrid Constitutionalism, (SSRN) will be published in the Kentucky Law Journal. The article comprehensively traces how Congress came to exceed its textual authority in intellectual property areas. 

Abstract of Congress’s Mistaken IP Power and Our Hybrid Constitutionalism

The Intellectual Property or IP Clause of the Constitution gives Congress power to promote “Science” or fields of knowledge by awarding copyrights to “Authors” for their “Writings,” and to promote “useful Arts” or technological innovation by awarding patents to “Inventors” for their “Discoveries.”

With respect to the copyright provisions, the Framers’ narrow focus on promoting organized or scholarly knowledge by protecting an author’s writings was not accidental, even though it did not encompass artistic or related types of cultural or entertainment works.  The main goal of the IP Clause was to nationalize existing state copyright laws and make them uniform.  Those laws, in turn, had focused almost exclusively on promoting educational writings.  Moreover, the Founding generation—with its emphasis on the republican virtues of self-education and improvement—was skeptical of the value of cultural works like painting and theater which, in their eyes, frequently reflected the luxury and decadence of the Old World.

Yet today Congress routinely passes copyright laws pursuant to the IP Clause that protect artistic, cultural and other works that frequently do not promote organized knowledge, or that can be characterized as the writings of authors—things such as paintings, statues, movies, music recordings, video games, decorative product design, computer code, physical building designs, and even “soft sculptures” like the designs of Beanie Babies. 

On the patent side of things, Congress was given the power to confer monopolies for useful mechanical or technological inventions that promote the progress of trades and manufactures—today what we call “utility patents.”  Yet in the mid-19th century, Congress relied on the IP Clause to add protection for aesthetic or ornamental product design to the patent laws—what we call design patents—that by definition cannot be useful or functional in nature like utility patents.  But such patents do not promote technological innovation, nor can they reasonably be said to be the “discovery” of an inventor.  Instead, aesthetic design is “created” like other artistic type works.       

So it is clear that with respect to a broad swath of copyright laws, as well as design patent laws, that Congress is exceeding the textual limits on its powers under the IP Clause in enacting them.  This is particularly troubling given the cardinal tenet of our federal system that the national government is theoretically one of limited and enumerated powers.  

So how did all this happen? This Article makes an original contribution to the literature by comprehensively tracing how Congress came to exceed its textual authority in these areas.  In the copyright area, it will demonstrate that Congress likely misunderstood the scope of its powers under the ambiguous structure of the IP Clause when it started on the path of broadening copyright to artistic and related works, a mistake that the Supreme Court reinforced years later when it made similar mistakes in a pair of key decisions essentially ratifying these developments.  As to design patents, it will demonstrate that Congress likely extended its initial misreading of the IP Clause in the copyright area to add protection for aesthetic designs to the patent laws.

Yet this Article does not contend that all of these laws are unconstitutional.  Instead, it makes another important contribution by using this history of the IP Clause as a case study in how we have developed and accepted many constitutional conventions which permits federal actors to exceed the textual limits on their authority.  These conventions, however, only acquire legitimacy as constitutional law by maintaining a sufficient connection to the Constitution’s text and design—a connection often articulated by courts to justify the gap between text and convention.  In this way, our hybrid system of text and convention serve to mutually reinforce each other—the convention allowing the text to remain relevant and meaningful where formal amendments are notoriously difficult to achieve, and the text continuing to provide articulable boundaries and stability when constitutional conventions are anchored in them.