Comment
Derivation, the Inventor’s Moral
Right, and the Patent Reform Act
of 2011
MICHAEL O’BRIEN
In a broad sense, the law finds its normative direction by respecting a constant duality of principles. First, the law advocates outcomes that society chooses for the sake of their value in helping people to reach a state of fulfillment or attain wealth.1 Second, there are
universal moral principles that provide a necessary constraint in lawmaking—the law creates an order of respect for the dignity and equality of persons.2 The law should respect both kinds of
principles, advancing the first within limits ordained by the second.3
Intellectual property law, for example, may give incentives to inventors and authors to create with the purpose of adding to the betterment and wealth of society, but it must take care to do so always in a manner that respects a baseline of right guaranteeing the dignity of inventors and authors.4
Society’s choice, without more, to enact copyright protection as a means to better society by producing wealth is legitimate. However, at a certain point, society’s failure in the process adequately to acknowledge an inherent moral interest on the part of authors and inventors in the assets they have created would be to compromise that legitimacy as a matter of the moral integrity of law. The constraint in question resides at the heart of the concept of moral entitlement giving the United States patent recognition
J.D., Columbus School of Law, The Catholic University of America, 2010. 1Utilitarianism stresses this principle. See J
EREMY BENTHAM, THE RATIONALEOF REWARD 237-40 (1830)
(stating individuals ought to pursue wealth and society ought to limit this pursuit as little as possible).
2 Kantian ethics stresses this second principle. See I
MMANUEL KANT, THE METAPHYSICSOF
ETHICS 50 (Henry Calderwood ed., J.W. Semple trans., T. & T. Clark 3d ed. 1886) (1796)
[hereinafter METAPHYSICSOF ETHICS] (defining dignity as an “unconditioned, incomparable worth” to which reverence can be the only response).
3Compare M
ETAPHYSICSOF ETHICS, supra note 2, at 50 (placing the dignity of the individual as the
greater end) with JEREMY BENTHAM, THEORYOF LEGISLATION 102-03 (Etienne Dumont ed., Richard Hildreth trans., Trubner & Co. 4th ed. 1882) (1789) [hereinafter THEORYOF LEGISLATION] (arguing that the first purpose is merely “medicine for the soul” and an excuse to accomplish a social goal).
4
scheme its cogency and integrity as law. A legal system may pursue the enhancement of societal wealth by reallocating wealth to which some already have moral claims, but it may not do so to such an extent or in such a manner violating the inherent dignity and equality of those individuals. To suppose that the legal system can seek to advance the maximization of wealth through Hobbesian-style conferrals of legal entitlement, entirely without regard for the moral rights of the mind creating the resources to which the entitlement runs, contradicts the normative integrity of law. Currently, the patent code in the United States generally passes this test, for it respects the constraint in question and thereby retains its moral integrity as law. However, the legislative proposal known as the Patent Reform Act of 2011 (Patent Reform Act)5 contains
elements that do not respect this framework. Correspondingly, it should be modified or rejected.
The one who creates an invention acquires, thereby, a moral right to recognition on the part of others, of a claim of ownership over the asset created. The moral entitlement in question is, moreover, amenable to legal recognition.6 Where it does not receive such
recognition, the consequence is that the subject of a moral right is exposed to invasions of his or her interests in a manner that offends principle. The laborer thereby loses the incentive to invest him or herself further in the task of creation.7 The resulting loss is not
merely of utilitarian concern. If the inventor receives nothing, or as bad or perhaps even worse, if he or she is given an inadequate opportunity to secure his or her claim which is just as easily stolen, then his or her dignity is harmed and the experience becomes one from which he or she is likely to withdraw by reason of a natural moral objection. That society thereby loses a useful service is, in the first instance, merely incidental.8 While the law may provide a
system of incentives to spur creative activity, the law must, if it is to retain its integrity as an order of mutual respect, retain as its fixed starting point, the intrinsic human meaning of the creative inventive act.
Existing law rewards the inventor through the conferral of the
5The Patent Reform Act of 2011 is a set of proposals introduced in the 112th Congress. S. 23, 112th Cong. (2011). The Senate Judiciary Committee had approved bringing Senate Bill 23 before the full Senate without a report. The bill closely resembles the Patent Reform Act of 2009, H.R. 1260, 111th Cong. (2009), which in turn is similar to the Patent Reform Act of 2007, S. 1145, 110th Cong. (2007), and the Patent Reform Act of 2005, H.R. 2795, 109th Cong. (2005). 6Hegel gives a philosophical account of the recognition of this moral right in law. See G
EORG
WILHELM FRIEDRICH HEGEL, PHILOSOPHYOF RIGHT ¶¶59-63, 67-70 (S. W. Dyde trans., Dover Pub’n 2005)
(1821) [hereinafter PHILOSOPHYOF RIGHT] (stating the inventor has obtained a moral right to his invention by his efforts).
7R
ICHARD A. POSNER, ECONOMIC ANALYSISOF LAW 28 (2d ed. 1977) [hereinafter ECONOMIC ANALYSISOF
LAW] (stating legal protections create incentives to efficiently use limited resources). 8
JOHN FINNIS, NATURAL LAWAND NATURAL RIGHTS 231-39, 272-73 (1980) [hereinafter NATURAL LAWAND
exclusive rights to make and use the invention for a limited period of time in an act of respect for his or her moral right.9 To be deemed
worthy of this recognition, an applicant must demonstrate that he or she has “invented” something new, raising the state of the art in the relevant field at the time of the application by a meaningful step.10
The recognition accorded takes the form of conferral on the inventor of an enforcement right for infringement in federal courts.11 Even in
the absence of an application, the inventor is further protected by the patent code, which bars others from acquiring rights in the invention. In this scheme, if another seeks to file a patent application with respect to work before the inventor of that work does, the inventor may thwart the rival claim by a law suit or administrative petition that seeks to show by clear and convincing evidence that he or she is the true inventor. Without question, then, the existing system of patent law, for its part, starts from an inherent moral meaning of invention in its construction of a statutory scheme of protective rights.12
On the other hand, the current scheme of patent law balances the recognition it gives the inventor with a countervailing concern for the free exchange of information. It provides that an inventor automatically loses his or her right to legal recognition where a preponderance of the evidence shows that he or she has released the information into the public domain by voluntary disclosure to other inventors.13 Thus, the existing system assumes that the
“ownership” of information belongs either to the creative inventor or the equivalent, on the one hand, or to the public at large, on the other. The state has a role in defining the boundary in this allocation of ownership, but it does not possess, as a third pole, its own Hobbesian font of power to fabricate and distribute entitlements at will.14
The proposal for the reform of patent law embodied in the Patent Reform Act effectively severs the scheme of right embodied in the patent law from the foundational reference to the moral rights underlying existing law. It eliminates as a requirement of
935 U.S.C. § 271 (2010). 10
35 U.S.C. §§ 101-103 (2010). For the remainder of this comment, the relevant field for an invention will be called an “art.” The U.S. Patent and Trademark Office [hereinafter PTO] examines patents in divisions called “art groups.”
1135 U.S.C. § 281 (2000) (providing that a patentee “shall have remedy by civil action for infringement of his patent”).
12
35 U.S.C. § 102(f) (2000) (stating that one must have actually invented the subject matter themselves in order to get a patent).
13OddzOn Products v. Just Toys, 122 F.3d 1396 (Fed. Cir. 1997). 14
“In this distribution [of property], the first law is for division of the land itself: wherein the sovereign assigneth to every man a portion, according as he, and not according as any subject, or any number of them, shall judge agreeable to equity and the common good.” THOMAS HOBBES,
patentability a showing by the applicant that the proffered invention is not the invention of another, shifting the burden to the third-party true inventor to come forward actively to contest the application by someone else for ownership over his or her invention, within a brief procedural window. At the very time that it uncouples eligibility for patent from the natural right of the true inventor, the Patent Reform Act simultaneously scales back the claim of the public domain to be the residual category of all information over which the state does not accord individual entitlement by some reference to moral right, thereby foreclosing public access to information in favor of anyone who merely exploit the new “first inventor to file” rule.
This comment does not contest the legitimacy of Congress’s power legislatively to define property entitlements over the results of invention in a manner that maximizes the social good as Congress envisions it, i.e. for the sake of incentivizing the production of wealth. It concedes that it belongs to the legislature to decide the more precise balance of benefits to be conferred on original inventor, rival claimants, and the general public. This note argues, however, that the integrity of law requires that the moral right of the inventor be given meaningful recognition as an essential normative reference in Congress’s construction of its overall patent scheme. From this perspective, this note argues that the balance proposed in the Patent Reform Act fails to satisfy the applicable normative standard, and, except as appropriately modified, ought to be rejected.
Part I of this note sets out existing patent registration procedures and then analyzes the changes to the Patent Statute proposed in the Patent Reform Act. Part II offers an understanding of universal moral principles that provide the minimal underpinnings of American law and indeed of law qua law. Part III applies such principles in order to frame and evaluate the general issues arising in property Law, including the law of intellectual property. Part IV states specific normative objections to the Patent Reform Act and proposes revision to the proposal for the sake of satisfying them.
I. Existing Patent Law and Change Proposed Under the
Patent Reform Act
A. Existing Law
1. The Author’s Moral Right as Historic Premise of
Patentability
It has been a constant under American constitutional law over time that the requirements of obtaining a patent, generally speaking, are to serve the following purpose: patents “are meant to encourage invention by rewarding the inventor with the right, limited to a term of years fixed by the patent, to exclude others from the use of his invention.”15 The United States Constitution, under the Copyright
Clause, gives Congress the authority, “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries . . . .”16 But just how the specific statutory requirements
for such recognition are to be formulated has been a matter of gradual change and development in the law. Congress’s original Patent Act of 1790 set up a scheme for the federal enforcement of inventor’s rights; though, it left out of account details as to requirements of patentability.17 The Patent Act of 1836 reformed the
Patent Act of 1792 to exclude the patenting of material already in the public domain, putting in place what was in effect a precursor to the modern “novelty” requirement for patentability.18
Before then, the law had allowed a person to patent an invention without having to establish that the idea did not already exist in the public domain in a manner undermining the possibility of the claim of an invention. As a practical matter, anyone who availed him or herself of information apparently in the public domain was under, in this early period, under a heavy burden in any infringement action by someone who had obtained a subsequent patent on it to locate the source predating the patent and thereby to prove that the plaintiff had not originated the idea and so did not merit patent protection.19 At that time, it was quite easy, therefore, for one
15
Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229 (1964). 16U.S. C
ONST. art. I, § 8. See also THE FEDERALIST NO. 43 (James Madison) (“The utility of this power will scarcely be questioned . . . . The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals.”). 17
Act of 1790 (stating the only requirement was that the invention have not been “before known or used”); Frank D. Prager, A History of Intellectual Property from 1545 to 1787, 26 J. PAT. OFF. SOC’Y 711 (1944).
18Patent Act of 1836, ch. 357, 5 Stat. 117 (1836) (ordering that the device could not be “not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer . . .”). See 1 J. THOMAS MCCARTHY, MCCARTHYON TRADEMARKSAND UNFAIR COMPETITION § 1.01[2] 1-3 (3d ed. 1996) (explaining that the public domain refers to materials that do not have intellectual property protection, and may be used by anyone, and that “[p]ublic domain is the rule: intellectual property is the exception”).
19
person to patent the invention of another and to seek royalties for it.20 Gradually, Congress intervened to make patent applications
more onerous by way of a required showing that the applicant was indeed the inventor and so entitled to a bundle of legal rights. Congress raised the standard of patentability.21 By 1851, it was
generally recognized that for a claimant to receive a patent, he or she had to prove that the putative invention: 1) offered some useful benefit to society, 2) was non-obvious compared to works in the public domain, and 3) included an inventive step above anything presupposed by works currently in the public domain.22 The
author’s moral right was thus at that point the cornerstone of patentability.23
2. Inventor’s Rights and the Public Domain:
Reciprocally
Co-Dependent Definitions
Ever since the formulation of law that was complete by the mid-nineteenth century, the conferral of the inventor’s entitlement due to the addition of an “inventive step” was matched by a corresponding recognition that all remaining information, outside of such conferral, remained freely accessible to all as within the “public domain.” Information not arising through the inventive step has remained open to all. The presence or absence of the inventive step and therewith the allocation of the information to the public or the inventor respectively hinged on whether the putative invention is obvious or non-obvious over and against what was previously knowable by reference to everything in the public domain. The Supreme Court formulated this term as early as 1850 in the case of Hotchkiss v. Greenwood.24 The test for patentability, by this
measure, was the presence or absence of an objectively demonstrable difference between the invention and the scope, content, and skill level of prior art.25 What is of key importance in
this traditional analysis for the normative underpinnings of patent law is that Congress and the Courts have always assumed that the
20Id.
21
Gayler v. Wilder, 51 U.S. 477, 496 (1851); see Patent Act of 1952, ch. 950, 66 Stat. 792 (This standard was not codified until the amendment of the Patent Act in 1952.).
22Id.
23See B
RUCE W. BUGBEE, GENESISOF AMERICAN PATENTAND COPYRIGHT LAW (1967); but see Kenneth J. Burchfiel, Revising the "Original" Patent Clause: Pseudohistory in Constitutional Construction, 2 HARV. J.L. & TECH. 155, 180-82 (1989) (explaining that the patent and copyright clause has no historical limitation of inventorship, rather, it is a statutory right that is granted at the discretion of Congress).
24United States v. Wilkinson, 53 U.S. 244, 248 (1851). 25
remainder category into which any idea fell that was found not to be patentable was the public domain. Either the idea belonged to an inventor, or it belonged to the public. Traditionally, the public domain has been conceived of as containing all information publically known to and therefore available for use by people other than the inventor anywhere in the world, including information that the inventor him or herself had freely released to the public through printed publications accessible to the public.26
Where Congress and the courts have spoken to define the scope of the inventor’s entitlement, it has been understood that they were thereby simultaneously defining, as well, the scope of public access to information. The precise location of the line which when crossed through inventor communication of information to others serves to place inventive information in the public domain, so that it loses its patentability, has not remained entirely constant. Traditionally, a finding that the invention had been released into the public domain required a public disclosure by the inventor. Recently, the more precise definition of the boundary has been the object of further development and controversy. In one case that would have critical consequences for recent developments in patent law, the Court of Appeals for the Federal Circuit ruled in OddzOn Products. v. Just Toys (OddzOn Products) that the disclosure that one research partner made to another in advance of filing the patent application had the effect of affecting the baseline against which “nonobviousness” of the inventive step would be measured. In effect, this “private” release of information counted as a quasi-release of information into the public domain barring patentability, since the shared information counted as part of the “prior art” against which the inventive step would be measured.27
3. A Meaningful Right: Enforcement Via Several
Mutually Reinforcing Procedural Avenues of
Redress in Patent Law
Under the existing patent law scheme, several procedural avenues converge in support of the inventor who seeks to assert a positive claim of right, i.e. allowing the inventor to wield a sword to prevent others from access to his or her invention. Where a rival is making use of inventive formation, the original inventor, who holds a patent, may, for example, bring an infringement suit, which he or she will win upon proving both the validity of the patent and the fact of the
2635 U.S.C. § 102; Gillman v. Stern, 114 F.2d 28 (1940), cert. denied, 311 U.S. 718 (1941). 27
infringement.28 Where someone else holds him or herself out as the
owner of right of his or her invention, he or she may obtain a declaratory judgment that the patent, in fact, belongs to him or her, and obtain, as well, a court order requiring that it be turned over by the counter-claimant, as a matter of right under either federal statutory or state common law or both. Alternately, he or she may petition the court for an equitable transfer of ownership under common law conversion.29 Where the inventor claims the right of
ownership in an invention for which a patent is pending but has not yet been granted on an application by another, he or she can file a competing application and provoke an interference with pending application.30 Upon his or her doing so, the Patent and Trademark
Office (PTO) will conduct an adversarial hearing to determine the rightful inventive entity.31 If the inventor is asserting no more than
co-inventorship, he or she can petition simply to be added as an inventor, or to change the inventive entity on the filed patent.32
This ambit generally requires no more than simply submitting a form and a fee to the PTO.33 In the case of a contest by the holder of
another patent of record, the PTO will schedule an adversarial proceeding to resolve the dispute.34 If the inventor loses at the
administrative law level, he or she may take the matter to federal court to obtain a declaratory judgment action to have her name added to the list of inventors.35 Alternately, the unlisted inventor
may petition the court for an equitable transfer of shared ownership under common law conversion.36 Under either theory, a reversal of
the administrative law ruling requires a showing by clear and convincing evidence.37
By the same token, if a potential inventor or other consumer of information wishes to defend him or herself, i.e. hold up a shield, against claims by others aimed at barring his or her access to beneficial information he or she construes as being in the public domain, he or she has several legal devices which he or she may deploy. As the defendant in an infringement suit, he or she can assert that the patent is simply invalid and so ineffective as a basis
2835 U.S.C. § 271.
29Richardson v. Suzuki Motor Co. Ltd., 868 F.2d 1226 (Fed. Cir. 1989), cert. denied, 493 U.S. 853
(1989).
3035 U.S.C. § 135. 31
37 C.F.R. § 41.202. 3235 U.S.C. § 116. 33Id.; 37 C.F.R. § 1.497. 3435 U.S.C. § 135. 35
35 U.S.C. § 256; MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568 (Fed. Cir. 1989).
36Richardson v. Suzuki Motor Co. Ltd., 868 F.2d 1226 (Fed. Cir. 1989), cert. denied, 493 U.S. 853 (1989).
37See Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993) (holding that testimony by the
of liability. For example, he or she might assert that patent holder did not invest an inventive step in the subject matter to the patent so that the patent is therefore invalid.38 Where another inventor is
slow moving and is unable to meet the high bar of clear and convincing evidence, he or she may seek to disrupt the application process and win a ruling that the application is inadequate so that the knowledge contained therein is cast promptly into the public domain. Finally, under OddzOn Products,39 he or she can provide
evidence of her contribution to the invention by way of conversations with the inventor in the course of the inventive process, and thereby undermine the patent as failing the non-obviousness and inventive steps tests.
B. Relevant Patent Reform
A mood favoring change in patent law in the direction of a greater emphasis on utility and less on inventor’s rights began to take shape well in advance of the Patent Reform Act. As early as 1982, that least one federal circuit court in dictum registered its openness to allowing calculations of utility under Congress’s Commerce Power to override the principled and textual constraints of the Copyright Clause. A movement favoring legislative reform in patent law began with a 2003 initiative of the Federal Trade Commission (FTC) calling for a reduced emphasis on the inventor’s bundle of rights and a greater facilitation of competition, under the patent protection scheme.40 The FTC’s premise was that by encouraging companies
to behave competitively the state would maximize consumer welfare.41 The first legislative action was Congress’s enactment of
CREATE.42 These precursors to change can be fruitfully considered
first as setting the stage or the Patent Reform Act itself.
38
35 U.S.C. § 102(f).
39Brian Coggio & Todd Krause, ‘CREATE’ Act of 2004 Extends 'Safe-Harbor' Aspects of Patent Law, N.Y.L.J., Feb. 3, 2005, at 4; 35 U.S.C. § 116; 37 C.F.R. § 1.497.
40
TO PROMOTE INNOVATION: THE PROPER BALANCEOF COMPETITIONAND PATENT LAWAND POLICY, FED. TRADE
COMM’N., Oct. 2003 [hereinafter FTC Report].
41P
HILLIP E. AREEDA & HERBERT HOVENKAMP, ANTITRUST LAW: AN ANALYSISOF ANTITRUST PRINCIPLES AND
THEIR APPLICATION ¶100a at 4 (2000).
42
1. Precursors to Comprehensive Proposals for Change
a. The Arguable Priority of the Commerce Clause
Calculus:
Potential Adjudicative Inroad
Under existing constitutional case law, the Patent and Copyright clause has been considered “both a grant of power and a limitation.”43 That is to say, it is said to enjoy a preemptive
authority in relation to Congress’s other enumerated powers wherever the subject matter revolves around authors’ and inventors’ rights. While the majority of scholars hold that the Patent and Copyright Clause cannot be circumvented, for example, by Congress’s appeal to its much broader authority under the Commerce Clause,44 there is some academic weight on the other
side of the question.45 Both position and counter-position turn on
whether Congress’s power over patents and copyrights is to be read as implying a limit to Congress’s power over interstate commerce.46
The position that it does enjoys Supreme Court decisional authority as a matter of analogy to a case arising under the Bankruptcy Clause, Railway Labor Executives’ Association v. Gibbons.47 In Railway Labor Executives, a railroad entered
bankruptcy and slowly descended toward liquidation.48 While some
railroad employees were able to find comparable jobs with other railroads others were not.49 Congress responded to the
unemployable railroad workers by passing the Rock Island Transition and Employee Assistance Act.50 Among other things, this act
modified the bankruptcy code to require the bankruptcy trustee to pay economic benefits to the unemployable workers as an
43Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 5 (1966).
44Rochelle C. Dreyfuss, A Wiseguy's Approach to Information Products: Muscling Copyright and Patent into a Unitary Theory of Intellectual Property, 1992 SUP. CT. REV. 195, 230 (1992); Paul J. Heald & Suzanna Sherry, Implied Limits on the Legislative Power: The Intellectual Property Clause as an Absolute Constraint on Congress, 2000 U. ILL. L. REV. 1119 (2000); Yochai Benkler, Constitutional Bounds of Database Protection: The Role of Judicial Review in the Creation and Definition of Private Rights in Information, 15 BERKELEY TECH. L.J. 535 (2000); William Patry, The Enumerated Powers Doctrine and Intellectual Property: An Imminent Constitutional Collision, 67 GEO. WASH. L. REV. 359 (1999).
45Thomas B. Nachbar, Intellectual Property and Constitutional Norms, 104 C
OLUM. L. REV. 272 (2004).
46
Heart of Atlanta Motel, Inc. v. United States, 379 U.S. 241 (1964) (finding that the Civil Rights Act of 1964, while ostensibly passed under the Fourteenth Amendment under which it would be invalid, would be considered valid under the Commerce Clause and therefore the law was constitutional).
47U.S. 457 (1982). 48Id. at 459-60. 49Id. at 461-62. 50
administrative expense (i.e. before all of the creditors).51 Gibbons
filed a complaint in the Northern District of Illinois seeking to enjoin the court from enforcing the new law, arguing it was unconstitutional.52 The District Court granted the injunction.53
To allay constitutional concerns that its enactment had lacked an adequate predicate in the Bankruptcy Clause, Congress proceeded to enact a new statute with the same effect, this time under the Commerce Clause.54 Justice Rehnquist writing for a unanimous
Court noted, “Unlike the Commerce Clause, the Bankruptcy Clause itself contains an affirmative limitation or restriction upon Congress’ power: bankruptcy laws must be uniform throughout the United States.”55 The Court struck down the second law because it applied
to “one regional bankrupt railroad,” rendering the law not uniform and in violation of the Bankruptcy Clause.56
Federal courts have been asked to rule expressly on the application of the reasoning in Gibbons to the Patent and Copyright Clause in relation to the Commerce Power. Such has occurred in the context of legal challenges to the Digital Millennium Copyright Act’s imposition of criminal liability on an individual who, “knowingly” and for “commercial advantage or private financial gain[:]”
(1) fixes the sounds or sounds and images of a live musical performance in a copy or phonorecord, or reproduces copies or phonorecords of such a performance from an unauthorized fixation;57 Defendants facing criminal liability under this statute have argued that it is unconstitutional because it does not limit the predication of guilt on injury occurring within a durational limit of “for a limited time,” in conformity with the language of the Patent and Copyright Clause.58 Two such challenges have been the subject of federal
circuit courts of appeal rulings.59 Both cases, United States v.
Moghadam and United States v. Martignon, were resolved without deciding the question.60 The reasoning in each rested on a
51Id. at §1005, 1008; Congress has the power to create “uniform Laws on the subject of Bankruptcies.” U.S. CONST. art. I, § 8, cl. 4.
52Ry. Labor Executives' Ass'n v. Gibbons (Railway Labor Executives), 455 U.S. 457, 463 (1982)
(stating the appellees argument that by depriving them of funds, Congress was violating the “just compensation” clause of U.S. CONST. amend. V).
53Id.
54
Staggers Rail Act of 1980, §701 (codified at 45 U.S.C. § 701). 55Railway Labor Executives, 455 U.S. at 468.
56Id. at 470.
5718 U.S.C. 2319A (2002). A similar provision imposes civil liability for the same action. 17 U.S.C. §1101.
58
1 NIMMERON COPYRIGHT § 1.09 (2009).
59United States v. Moghadam, 175 F.3d 1269 (11th Cir. 1999), reh’g and reh’g en Banc denied, 175 F.3d 1269, (11th Cir. 1999), cert. denied, 529 U.S. 1036 (2000); United States v. Martignon, 492 F.3d 140 (2d Cir. 2007).
conclusion that a “live musical performance” was not a “writing” within the meaning of the Patent and Copyright Clause, with the consequence that the limited time provision of the clause did not apply in any event.61 Bootlegging, on the other hand, which was an
issue in both cases, was a problem with respect to interstate commerce that Congress was authorized to regulate under the Commerce Clause.62 Both courts stipulated that the facts of the
case did not place the Commerce Clause in conflict with the Patent and Copyright Clause. In Moghadam, however, the Second Circuit stated in dictum that were the issue seen in Railway Labor Executives ever joined in a copyright-related matter, the application of Railway Labor Executives would require, at the threshold, a resolution of a tension the court noted as characterizing the relationship of Railway Labor Executives to Heart of Atlanta Motel.63
This dictum suggests that the Second Circuit, at least, may eventually hold that Congress is empowered to override some internal requirements of the Copyright Clause by reason of its Commerce Power. Because the commercial logic of the latter power implies a teleological or even utilitarian calculus, this move would effectively cancel the principled constraints embodied in the former.64
b. CREATE: A First Legislative Inroad
In 2004, Congress responded to OddzOn Products by enacting the Cooperative Research and Development Act (CREATE).65 This Act
modified that ruling’s exclusion from the category of patentable inventions, a product of research based on information that has been disclosed to another in the course of the inventive process. The means the enactment employed to annul the outcome of the case was a stipulation that the patent applicant was deemed “to own” the information it communicated to it the other party in a joint research relationship, with the consequence that such information was not deemed part of information belonging to another that could undermine the applicant’s showing of non-obviousness. Information so communicated could no longer serve as a barrier to patentability.
61Martignon, 492 F.3d at 151 (“Thus, under either mode of analysis, Section 2319A is not subject to the limitations of Article I, Section 8, cl. 8.”); Moghadam, 175 F.3d at 1279 (“the Commerce Clause may be used to accomplish that which the Copyright Clause may not allow”).
62Moghadam, 175 F.3d at 1279. 63Id. at 1279-80.
64This is the logic of Wickard v. Filburn, 317 U.S. 111 (1942), or even of United States v. Lopez, 514 U.S. 549 (1995). Although Lopez established limits of the Commerce Clause, it was not a complete bar.
65
Congress’s ambit for cancelling the ruling in OddzOn Products entailed a not-so-subtle compromise of the moral principle of the inventor’s moral right as a basis of patent law, for it conferred “ownership” on someone who had not actually invented it. By permitting a patent applicant to treat the invention of a research partner as constructively his or her own, CREATE loosened the patent scheme for one of its basic normative anchors, the moral right of the actual inventor.66 Against the backdrop of the existing
patent law and the history of patent law preceding it, this development represented, moreover, a limited but nonetheless significant departure of patent law from what theretofore had been one of its key normative assumptions, namely that the removal of information from the public domain will be allowed only with some justification in relation to the intrinsic moral right of an inventor.
2. Proposed Comprehensive Change: The Patent
Reform Act
Congress evinced a potential openness to a more comprehensive reform of the patent law with the introduction into the House of Representatives of the Patent Reform Act of 2005.67 This bill did not
pass the House and never reached the Senate. The Patent Reform Act of 2007 was introduced in the next following Congress.68 It was
not enacted, and was superseded by the Patent Reform Act of 2009, which in turn was amended to become the Patent Reform Act of 2010.69 This was again revised to the Patent Reform Act of 2011
(Patent Reform Act), which is the object of the present comment.70
The central innovation contained in all three proposals has been identical: an alteration of the requirements of patentability to replace the existing “First to Invent” with a “First to File” system. The Patent Reform Act merely sets forth the proposal in its most recent instantiation. The patent scheme assigns rights based primarily on who files first on the invention. The true inventor is not entirely forgotten, but is relegated to having no more than the “nod” of a limited procedural right to intervene in and preempt the
66Another concern was that of the retroactive effect of the law in restricting inventors’ rights. See
WENDY H. SCHACHT, CONG. RESEARCH SERV., COLLABORATIVE R&D AND THE COOPERATIVE RESEARCH AND
TECHNOLOGY ENHANCEMENT ACT (2005), available at http://cine
online.org/NLE/CRSreports/05jan/RS21882.pdf.
67The Patent Reform Act of 2005, H.R. 2795, 109th Congress (2005). 68
The Patent Reform Act of 2007, H.R. 1908, S. 1145, 110th Congress (2007).
69The Patent Reform Act of 2009, H.R. 1260, S. 515, 111th Congress (2009). Senate Bill 515 was then amended to be re-introduced as the Patent Reform Act of 2010 on Feb 26, 2010.
70The Patent Reform Act of 2011 § 2, S. 23, 112th Congress (2011). As explained infra note 76
application by another, prior to the running of a stated time period. In addition, these proposed enactments, most recently the Patent Reform Act, integrates the CREATE provision creating constructive ownership in shared informed with a consequent diminution of the scope of what is in effect the public domain.
The current patent statute reads, “A person shall be entitled to patent unless—(f) he did not himself invent the subject matter sought to be patented.”71 A finding by clear and convincing
evidence72 that a patent arises by derivation from the invention of
another results in an immediate invalidation of the patent or patent application.73 The Patent Reform Act, however, simply eliminates
§102(f). The fact that the invention is really that of another is thus in this new scheme no longer a barrier to patentability.74 In the
place of this requirement, the Reform continues to require merely an oath of a subjective belief that the invention is one’s own.75 As an
objectively enforceable limit, it provides, in a decidedly ungenerous provision, merely that the inventor may come forward to challenge the patent or patent application by a derivative action:
(a) Dispute Over Right to Patent.—
(1) INSTITUTION OF DERIVATION PROCEEDING.— An applicant may request initiation of a derivation proceeding to determine the right of the applicant to a patent by filing a request which sets forth with particularity the basis for finding that an earlier applicant derived the claimed invention from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention. Any such request may only be made within 12 months after the date of first publication of an application containing a claim that is the same or is substantially the same as the claimed invention, must be made under oath, and must be supported by substantial evidence. Whenever the Director determines that patents or
71
35 U.S.C. §102(f) (2000).
72Historically, the courts have been skeptical of the testimony of would-be inventors. Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993) (holding that testimony by the inventor is insufficient); accord Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 60, (1923); Deering v. Winona Harvester Works, 155 U.S. 286, 300-01 (1894); Barbed Wire Patent, 143 U.S. 275, 285 (1892).
73Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981).
74Some scholars believe that inventorship is inherent in §101 and is a constitutional requirement for Congress to give a patent, so that the fundamental requirement would remain. See 1-2 CHISUM
ON PATENTS § 2.01 (“It would be morally offensive to allow one to harvest what another has
sown.”). 75
applications for patent naming different individuals as the inventor interfere with one another because of a dispute over the right to patent under section 102(a), the Director shall institute a derivation proceeding for the purpose of determining which applicant is entitled to a patent.76
Derivation, in this scheme, becomes a bar to patentability only if the rival inventor comes onto the scene and succeeds in proving by clear and convincing evidence that he or she has created a prior invention, communicated this to the patent applicant, and the communication is one which would enable a person of ordinary skill in the art to make and use the invention.77 Notice too that the
standard of proof that the true inventor faces is daunting: substantial evidence. The Federal Trade Commission, in spite of its general approval of the direction of the patent reform embodied in the Reform Act concluded that the procedural barrier in the burden of proof (substantial evidence) was excessive.78 Compare this single
remaining technical window with the ample avenues named above under the existing patent scheme whereby the true inventor may legally enforce his or her moral right.79
Notwithstanding the technical presence of an oath and of a certain residual window within which the true inventor may technically seek to vindicate his or her rights, the overall result is that the moral right foundation of the Patent scheme is, in this scheme, decisively severed. It has been noted, in the literature, that a secondary effect has been to place intrinsically offensive conductive in the theft of ideas beyond the scope of the punishment of law.80
In eliminating 102(f), the Patent Reform Act would effectively reverse the portion of the Federal Circuit’s decision in OddzOn Products, holding that § 102(f) material could be used as prior art in a rejection for obviousness under § 103(a).81 In that case, the
76Patent Reform Act § 3(i).
77Price, 988 F.2d at 1194; Kendall v. Searles, 173 F.2d 986, 993 (C.C.P.A. 1949); Gambro Lundia AB
v. Baxter Healthcare Corp., 110 F.3d 1573, 1576 (Fed. Cir. 1997); Loom Co. v. Higgins, 105 U.S. 580, 594 (1882) (ruling that the exhibits themselves were enough without corroboration). 78FTC Report supra note 43 at 11.
79See supra text accompanying notes 28-37. 80See T
ODD BAKER, 35 U.S.C. 135—GATEWAY TO PRIORITYAND DERIVATION DETERMINATIONSBYTHE BPAI, available at www.oblon.com/media/index.php?id=400 (last visited July 5, 2011) (“It is peculiar that the patent reform bills maintain the arcane statute of repose for derivation cases and limit the venue for hearing such cases.”).
81
company OddzOn held a design patent for a toy football, and another firm, Just Toys, sold a competing design.82 When OddzOn
sued for infringement, Just Toys argued the patent was invalid for a lack of novelty since the inventor had been aware of two confidential designs that “inspired” him to create the football.83 The
Federal Circuit’s reasoning held that § 102(f) is a prior art provision for purposes of § 103, so that the disclosures were relevant to the question of obviousness. The fund of evidence that OddzOn Products opened up for use in establishing obviousness foreseeably had the effect of making the patenting information more difficult and thereby foreseeably served to expand the scope of the public domain. Thus, the Patent Reform Act serves to curtail the scope of the public domain, even as it narrows the rights of the true inventor. By incorporating the provisions of CREATE, which utilize the concept of constructive ownership to restrict the public domain, the Patent Reform Act also effectively limits the public domain. In both respects, the Patent Reform Act limits the public domain for the benefit of the party receiving an arbitrary statutory conferral, and not for the good of a true inventor. To comprehend the shift in emphasis, compare the ample avenues cited above by which the potential inventor or other consumer of information can defend his or her access to opportunities within the public domain.84
II. Universal Moral Principle as an Underpinning of Law
While it may sometimes be overlooked, the law of the United States, during the latter half of the twentieth century and into the present, continues to affirm that the law’s intelligibility hinges on respect for certain universal moral principles.85 Even the classic contemporary
exposition of legal positivism endorses this idea.86 Natural law
philosophy, only sometimes grounding its assertion of universal moral principles in God, presents one interpretation of this undergirding relationship of law to moral principle.87 Many
significant philosophies of law converge in their explanations and
82Oddzon, 122 F.3d at 1399. 83Id. at 1401.
84See supra text accompanying notes 38-39. 85
M.D.A. FREEMAN, LLOYD’S INTRODUCTIONTO JURISPRUDENCE 49-50 (7th ed. 2001) (reasoning moral content can be distilled from legal order when judges apply moral principles to legal rules). 86H.L.A. H
ART, THE CONCEPT OF LAW 193-200 (1997) [hereinafter CONCEPT OF LAW] (stating that standards of behavior necessary for peaceful coexistence create “a core of good sense in the doctrines of natural law”).
87
NATURAL LAW AND NATURAL RIGHTS, supra note 8, at 231-39. Morality is so ingrained in legal
justifications of this basic point of orientation in the meaning of law.88 A deeper understanding of this idea can be best here
advanced by considering: a) the idea that law has a moral underpinning as such; b) lawmaking’s manner of integrating moral knowledge; and c) a necessary balancing of duty and aspiration in lawmaking.
A. The Idea that Law has a Moral Underpinning
The legal positivism of H.L.A. Hart eschews reliance on natural law in a traditional sense, but, nonetheless, finds a universal orientation of law to certain recurring moral rules, arising from a need for reliable legal order based on mutual restraint in the face of inherent flaws in human beings.89 Because of a universal propensity of people to
invade one another’s interest in security and well being coupled with every person’s equally universal vulnerability to such invasion, the first order of societal business under law is an enforceable order of mutual respect.90 Through law, societies everywhere provide
some sort of basic protection for persons, property, and interests arising under promise.91 Society places the satisfaction of this
objective before other possible and elective uses of law.92
Contemporary natural law thinkers cite this same universally recurring moral reference in legal order, but explain it differently and more adequately. These thinkers hold rather that law serves to lead citizens to a kind of virtue.93 On the question of society’s
response under law to the production of wealth, positivists and natural law thinkers tend to diverge.94 Positivists are either
88See Michael W. McConnell, Secular Reason and the Misguided Attempt to Exclude Religious Argument from Democratic Deliberation, 1 J. L. PHIL. & CULTURE 159, 168 (arguing that removing religion from the public discourse would lead to isolationism and increased hostility as a result of radicalization of excluded groups).
89C
ONCEPTOF LAW, supra note 86, at 199 (calling the essential functions of social cooperation a
“natural necessity”).
90Id. at 198-201; see also S
T. AUGUSTINE, CITY OF GOD, reprinted in THE WORKS OF AUREILIAS
AUGUSTINE, BISHOPOF HIPPO bk. XIX ch. 15 (Marcus Dods ed., 1871) [hereinafter CITYOF GOD]
(stating that people, by nature flawed, are not able to produce good rule over other people; as a result, efforts to create such laws are doomed to failure).
91Contrast C
ONCEPTOFLAW, supra note 86, at 43-44 (noting that positive law includes not only the
enacted law, but also promises made between individuals within the law which Hart believes would provide for more than minimalist protections), with NEIL MACCORMICK, H.L.A. HART 23-24 (1981) (arguing that there is little evidence that these minimalist protections would necessarily ensure any efficient positive development in society).
92Posner, Cultural Studies and the Law, 19 R
ARITAN: A QUARTERLY at 52 (dispelling the claim that
there is a need for rule of law altogether).
93 T
HOMAS AQUINAS, SUMMA THEOLOGICA, I.II., Q. 95, Art. 1 (Fathers of the English Dominican Province
trans., Benziger Brothers 1948). [hereinafter SUMMA THEOLOGICA]; ARISTOTLE, NICHOMACHEAN ETHICS, bk. 2, §1 1103a35 at 29 (J. L. Ackrill & J.O. Urmson eds., W.D. Ross trans., 1998) [hereinafter
NICOMACHEAN ETHICS]; NATURAL LAW AND NATURAL RIGHTS, supra note 8, at 231 (calling these
requirements of society “practical reasonableness” to shape one’s life). 94
indifferent to the question or couple their legal theory with an ethical imperative saying that society should maximize wealth, while natural law theorists affirm that even as the law advances wealth it must do so in a manner specifically constrained to ensure the dignity of all persons in society.95
Natural law theorists tend to agree with positivists, however, to the extent that they acknowledge that the law’s purposes are bifurcated, in a basic way, distinguishing a basic preservation of order, on the one hand, from the more expansive pursuit of elective societal purposes, on the other.96 Lon Fuller suggests that the first
kind of purpose is expressed through the enforcement of a basic order of duty under law.97 John Finnis likewise assumes that the law
first establishes itself as an order of obligation before it is enlisted in advancing other specific goals.98 Natural law thinkers understand
the law’s orientation to an order of basic legal obligation as having
some relation to a distinctly moral
principle,99 which sets some overarching limit to the law’s pursuit of
efficiency in pursuit of other elective goals.100
The insight that an order grounded, not just functionally as Hart asserts, but essentially in moral obligation has endured through time. In antiquity, Cicero traced the source of knowledge that makes this possible to a primordial commonwealth where men and gods lived together so that men were able to learn from the gods’ knowledge of universal moral constraints.101 The knowledge of
universal principles that Cicero asserted had nothing to do with history or utility, but rather had roots deep within the meaning of human virtue itself.102 Cicero describes virtue as a perfected nature
that is developed to its highest point of integrity.103
95Id.; N
ATURAL LAWAND NATURAL RIGHTS, supra note 8, at 231-39, 271-72.
96But see T
HEORYOF LEGISLATION, supra note 3, at 102-03 (stating that the rule is merely an excuse
for the elective purpose). 97
LON. L. FULLER, THE MORALITY OF LAW 19-30 (rev. ed. 1969) [hereinafter MORALITY OF LAW] (describing the two purposes, including the basic preservation of order as a sort of necessary minimum).
98N
ATURAL LAWAND NATURAL RIGHTS, supra note 8, 261-64, 288-89.
99
MORALITYOF LAW, infra note 97, 27-28 (describing this balancing process as “locating the pointer
on the moral scale”). 100See, e.g., L
UC WINTGENS, LEGISPRUDENCE 5 (2002) (explaining criticisms that markets do not
always produce morally desirable or optimal results and that they should be made more rational through legislation).
101
CICERO, DELEGIBUS § 1.7 (Clinton Walker Keyes trans., 1966) (stating that god created man with
the unique status of possessing reason, and from the commonality men and gods alone are part of a “commonwealth”).
102Compare F
REEMAN, supra note 85, at 60 (stating morality should be judicially imposed), with
WINTGENS, supra note 104, at 4-6 (arguing morality should be legislatively imposed). Cicero would
agree with Wintgens. 103
CICERO, supra note 101, at § 1.8. Compare DAVID HUME, A TREATISEOF HUMAN NATURE 245-46 (T.H.
Cicero’s point becomes clearer when extracted from its particular mythico-religious context. The content of classical Roman mythology and the religious practice of Cicero’s era are both highly ambiguous, and could equally be taken to contradict the idea that there exists an enduring moral order.104 Cicero’s account, with the
substitution of an element of transcendence in human moral awareness substituted for the “gods” of his religious view, is widely cited as offering the core insight of natural law thinking. It is taken as affirming a theme recurring throughout the history of subsequent legal systems, and it continues to be relevant.105 Stripped of its
early mythological encumbrances, it affirms that normative values are not the product of elective decisions, but rather represent an intrinsic starting point for reasoning about the parameters of just law.106 Modern western legal systems themselves attest that some
moral principles are knowable and normative for law without reference to history or tradition.107 The principles in question reflect
the nature of justice and of the basic outlines of human well being.108
B. Translating Moral Principle into Law
The order or moral obligation that gives the legal system its basic nonnegotiable set of purposes pertains to the order of justice. The device that the legal system applies to advance this order is that of directives in the form of commands, permissions and prohibitions of certain interpersonal requirements of right reason.109 Individuals
moral judgment of what ought to be on the basis of what presently exists), with AYN RAND, THE
VIRTUEOF SELFISHNESS 9-17 (1964) (stating that an objective system of morality is possible and
necessary because the existence of a being determines what it ought to be). Cicero’s premise that man obtains virtue from his relationship with gods represents a standard of life, therefore, to the effect that that which furthers the good and avoids evil is objectively moral. It does not incur an is-ought problem.
104D
AVID C. YOUNG, A BRIEF HISTORYOFTHE OLYMPIC GAMES 72-74 (2004) (noting that people could be deified after some particularly remarkable event); FINLEY HOOPER, GREEK REALITIES: LIFEAND THOUGHT
IN ANCIENT GREECE 420 (1978) (describing how a site could be made after some event); Acts
17:16-34 (Explaining how Greek Gods suffered the same vices as humans, St. Paul confronted the Athenians about their statue to “an unknown god” which they erected to avoid offending any covert deity).
105
FREDERICK D. WILHELMSEN, CHRISTIANITY AND POLITICAL PHILOSOPHY 52-59 (1982) (developing the
unique relationship of positive law to natural law).
106N
ATURAL LAWAND NATURAL RIGHTS, supra note 8, at 281-82 (formulating just laws as being based
on universal moral principles developed by the particular desires of society). 107See generally T
REATISEOF HUMAN NATURE, supra note 103, at 416-20, 426-28, 443-48 (discussing
the role of history in forming social norms). 108See N
ATURAL LAWAND NATURAL RIGHTS, supra note 8, at 161 (defining justice as “an ensemble of
requirements of practical reasonableness that hold because the human person must seek to realize and respect human good . . . in his community”).
109See generally C
ONCEPT OF LAW, supra note 86, at 155-57 (accepting a certain baseline of
are barred, under law, from treating other individuals as a means rather than as ends-in-themselves.110 The law protects the
vulnerable from being overridden in violation of their dignity, by ploys of unmediated power.111 The law then necessarily
promulgates standards for individual living, oriented always to the social good.
These requirements are broad in general outline, and they leave room on most questions for legislators to exercise discretion in formulating the law’s specific requirements to ensure the fulfillment of elective policies within the parameters of the reasonable.112 In
this view, the legislature’s elective objectives are pluriform and diverse, and they allow for many different configurations of individual and communal emphasis in particular societies.113
Universal normative constraints impinge, nonetheless, on lawmaking at certain points. In general, at those points lawmakers must balance common elective projects with respect for individual right, as two necessary dimensions of the common good.
Where the good of the individual is concerned, the law intrinsically aims at enabling each to acquire the means necessary to survive,114 but also beyond that to support each becoming an
independent moral agent, by behaving well in society.115 The law
aims to supply, in this regard, a practical immunity from invasion by others of the personal dignity of the individual, so that each can be said to be an end-in-oneself rather than a means.116 By coordinating
conduct so that each can act without offending the dignity of his or her neighbors, the law fosters individual virtue.117 The postulates of
neoclassical economics asserting that individuals are rational maximizers of self-interest, are fine as far as they go within the
110I
MMANUEL KANT, GROUNDWORKFORTHE METAPHYSICSOF MORALS 4:428 (Thomas E. Hill Jr. & Arnulf
Zweig eds., Arnulf Zweig trans., 2002) [hereinafter METAPHYSICS OF MORALS] (declaring chattels have a conditional and relative worth and can be utilized for some purpose, however, people have transcendent value in themselves as beings and therefore cannot be used as a means to an end). 111
METAPHYSICSOF ETHICS, supra note 3, at 48-55.
112From a Christian perspective, God has placed all of the rulers in the world in place, Colossians 1:16, and required people to be subject to their rules, Titus 3:1, 1 Peter 2:13; however, God only asks the rulers that they avoid making unjust laws, Isaiah 10:1-4, and the potential penalty for violation is removal from power, id. See generally CARL E. BRAATEN, PRINCIPLES OF LUTHERAN
THEOLOGY (2007) [hereinafter PRINCIPLESOF LUTHERAN THEOLOGY].
113See W
ILHELMSEN, supra note 105, at 32-41 (mentioning Cicero stated personal and social
obligation is a result of man’s inherent strive toward perfection). 114See J
EREMY BENTHAM, AN INTRODUCTIONTOTHE PRINCIPLES OF MORALSAND LEGISLATION 58-63, (J.H.
Burns & H.L.A. Hart eds., 1996) [hereinafter PRINCIPLES OF MORALS] (stating an individual who suffers from weak health is unlikely to conform to the social norms of one in good health). 115
Here we are only interested with the independent moral agents that pursue this well being. See NICOMACHEAN ETHICS, supra note 93, at bk. 10, § 6 1176a-1177a4m, § 91179a34-1181b23 at 261-63, 269-76 (calling this wellbeing eudaimonia).
116M
ETAPHYSICS OF MORALS, supra note 110, at 4:428 (declaring chattels have a conditional and
relative worth and can be utilized for some purpose, however, people have transcendent value in themselves as beings and therefore cannot be used as a means to an end).
117See N
ATURAL LAW AND NATURAL RIGHTS, supra note 8, at 103 (indicating the requirement to
model of economics, considered as a social science.118 However,
these postulates make sense only with the further unstated assumption that each individual has moral dignity and is the subject of moral duty to others.
C. Balancing the Demands of the Law’s Moral
Constraints and the Law’s Elective Purposes
Just how far society must go in imposing limits on individual freedom and societal ambition for the sake of invariant moral principle is a question.119 Minimalist and maximalist positions have been
proposed, with the state being accorded by some, no more than a night watchman role, and, by others a role in advancing substantive visions of the good society.120 A middle position leaves it to political
decision in a particular society to select some point along this spectrum.121 If a society elects to extend the legal enforcement of
moral duty too far into the realm of human aspiration, the consequence may be a severe limitation on experimentation, innovation, and human inspiration.122 Then again, if the society sets
the level of enforcement too low, a kind of moral indifferentism may cause citizens to disengage from virtue with a resulting loss of creativity out of an inherent human weakness or even depravity.123
A brief look at two philosophical schools is warranted for the sake of understanding this spectrum. Options before the American legal system can be seen as falling on this same spectrum.
1. Two Philosophical Schools Representing the Poles of
this Spectrum
One finds support for a more ambitious vision of the role of law in advancing societal good through elective projects in the teachings of Aristotle and St. Thomas Aquinas, both of whom viewed the state was an institution designed to lead its citizens to virtue.124 This is a
118
Morris Altman, Handbook of Contemporary Behavioral Economics: Foundations and Developments 36 (2006) (calling this a “self reference fallacy” as it fails to consider empathy). 119But see J
OHN AUSTIN, THE PROVINCEOF JURISPRUDENCE DETERMINED 122-28 (Prometheus Books 2000)
(1832) (stating that “positive law” and “positive morality” are independent); RICHARD POSNER, THE
PROBLEMATICS OF MORAL AND LEGAL THEORY 17-23 [hereinafter PROBLEMATICS OF MORAL AND LEGAL
THEORY] (summarizing many of the views on this issue).
120
MORALITYOF LAW, supra note 97, at 27-28 (noting that an excessively regimented society may
limit the potential of individuals and therefore their aspiration will be limited as well). 121See, e.g., R
ICHARD A. POSNER, LAW, PRAGMATISM, AND DEMOCRACY 51 (2003) (describing Machiavelli
as someone who understood public morality is required for the performance of political tasks, but as not applying in the realm of private morality).
122
ECONOMIC ANALYSISOF LAW, supra note 7, at 549-51 (stating that free speech should extend to
commercial speech to avoid stifling expression).
123Id. (stating further that false advertising actually causes harm and free speech should not extend to it).
124
view embodied today in Catholic social teaching.125 The vision of law
as properly more restricted in its role is found perhaps most seminally, on the other hand, in St. Augustine who argues the state exists to do little more than to order society, by constraining moral disorder that predictably erupts from inherent human depravity, to prevent chaos and punish crime.126
Aristotle and, with him, Aquinas, hold that the legislator intends to lead law-abiding citizens to higher virtue and success in human living, which inherently possess a social character.127 The law
provides opportunities for collaboration and cooperation and it intervenes to prevent some behavior that will ultimately cause the common good to suffer.128 Therefore, society, in its own dynamism
towards fulfillment legislates from the vantage of these moral underpinnings. Via the Reformed tradition of Protestantism stemming from John Calvin with its influence on American legal culture but also via Enlightenment rationalism through its impact on the founders,129 something akin to this same view helped inspire the
constitutional order of the United States insofar as that order treats the state as an instrument for social change and improvement. Thus, the Constitution is structured to create wealth and advance other aspects of happiness.
In Augustine’s view, God has ordained that legislators should wield their power for a higher purpose, which is to restrain sin and to ensure that a rough order of justice prevails in society.130 Because
human character is inherently flawed, Augustine predicts that legislators will themselves misuse their authority, unnecessarily stifling individual freedom.131 Accordingly, the state should only
pass the laws necessary to maintain order and allow individuals to care for themselves, a freedom that will be well applied when the individual has recourse to grace.132 This view received reception in
bk. 2, § 1, 1103a35, at 29.
125See generally Symposium – Reflections on Catholic Social Thought, 2 J. L. P
HIL. & CULTURE 55
-note 119, at 93-94 (reasoning that protection enables people to choose how they will utilize their own portions of happiness).
129A
LEXISDE TOCQUEVILLE, DEMOCRACYIN AMERICA 275-287 (Harvey C. Mansfield & Delba Winthrop
eds. & trans., Univ. Chicago Press 2000) (1835) (describing the influence of Protestantism on American culture). For a sketch of the continuing contemporary influence of Protestantism on American political life, see Linda Feldmann, Religious Right’s Tough Call, CHRISTIAN SCI. MONITOR, Oct. 22, 2007.
130
CONCEPTOF LAW, supra note 86.
131 C
ITYOF GOD, supra note 90, at bk. XIX, ch. 17 (stating that all an earthly government can strive to accomplish is a state “whereby earthly peace is secured and maintained”).
132
For an extreme and distinctively American position in this matter see HENRY DAVID THOREAU,
Lutheran circles from the Reformation until the middle of the 20th century.133 Its influence on the American constitutional order is
unmistakable. This influence is visible, for example, in the principles of the separation of powers and of limited government, which exist to limit abuse of power (in religious terms, sin).134
2. American Legal System: A Balanced View
The balance recognized in American law respects norms arising at two separate poles. The law is inherently oriented to the generation of wealth, but, in this pursuit, basic respect for the moral worth of persons may not be sacrificed. Thus, as the law regulates behavior to advance societal goods, it restricts individual liberty not merely for elective and instrumental ends, but for the sake of safeguarding an order of respect for personal dignity.135 Thus, the American
constitutional order is oriented two fundamental normative underpinnings of law.136
Instances in American law demonstrating this fact may profitably be considered. One example can be taken from the cooperation-based model of the family. In the law governing the treatment of children, the safety of the unemancipated child is a social value.137
In its rules on capacity, the law stipulates that the child must submit to the will of its parents. At the same time, legal rules on parental obligation require the parent, in turn, to give the child care and protection. The law, then, channels resources to help struggling parents, standing by to cancel the parent’s rights over the child, if the parent fails to meet his or her obligations. The law enforces the child’s right to live safely, obligating his family to ensure this occurs.138 It will be observed that even as it directs outcomes for a
social good, i.e. the well being of the dependent and vulnerable child, the law sets boundaries with cognizance of the individual dignity of both parent and child. The state is not allowed to treat
hungry and clothing the freezing are goodness tainted).
133P
RINCIPLESOF LUTHERAN THEOLOGY, supra note 112, at 123-38 (relating the history of the method
of thought as well as modern challenges in the light of recent human rights abuses). 134See generally J
ACK N. RAKOVE, INTERPRETING THE CONSTITUTION: THEDEBATE OVER ORIGINALINTENT (1990) (including a multitude of perspectives on the principles and origins of the separation of powers).
135R
ONALD DWORKIN, TAKING RIGHTS SERIOUSLY 90-91 (1978) (calling these values collective goals
which encourage trade-offs of benefits and burdens in a community). Dworkin describes these as less than absolute; here, I am referring only to the balancing act between different social values and the compromises they entail.
136
YVES SIMON, THE TRADITIONOF NATURAL LAW 108 (Vukan Kuic ed., 1965) [hereinafter TRADITIONOF
NATURAL LAW] (defining this law as a rule of reason having a relationship to the common good that
proceeds from consensus).
137United Nations Convention on the Rights of the Child, G.A. Res. 44/25, U.N. Doc. A/RES/44/25, Sept. 2, 1990.
138
