The Elusive Logic of Standing Doctrine in Intellectual Property Law

Abstract

This article provides the first comprehensive analysis of the rules that courts employ to determine who must, may, or may not be a plaintiff in a patent, copyright, or trademark infringement action. Under the patent rules, which date back to the nineteenth century, the patent owner must always be a party to infringement litigation; the exclusive licensee of a patent also may initiate litigation, but only if she joins the owner as a plaintiff; and a nonexclusive licensee lacks standing to participate altogether. As we demonstrate, these simple-sounding rules give rise to some anomalies and are inconsistent, in certain important respects, from the more liberal rules followed in copyright and trademark law. We argue that economic analysis can help to clarify the ways in which infringement threatens (or does not threaten) the interests of the various parties to a transfer agreement (including assignors, assignees, licensors, and exclusive and nonexclusive licensees), and that it provides some plausible reasons for the differences among the rules employed within the three bodies of intellectual property law. More importantly, we argue that, once the relevant interests are better understood, the joinder and intervention provisions of the Federal Rules of Civil Procedure furnish a sufficient framework for determining who should or should not be a party to an infringement action. The need for standing rules that are specific to intellectual property disputes is, in other words, a myth.