The Uses of IP Misuse
62 Pages Posted: 17 Jun 2019 Last revised: 11 Nov 2019
Date Written: April 1, 2019
Roughly seventy-five years ago, the equitable doctrine of misuse emerged as a tool to police intellectual property (IP) owners’ overzealous contracting and enforcement behavior. First in patent law and then in copyright, courts developed the misuse doctrine to scrutinize practices that expanded IP rights in socially disadvantageous ways. The misuse doctrine reminded IP owners that their contractual freedom was not absolute, that legislatively calibrated limitations on IP rights were more than mere suggestions, and that certain enforcement tactics could trigger a court’s refusal to enforce IP rights.
In recent years, patent misuse doctrine has essentially gone the way of antitrust — narrowing its focus to a thin sliver of anticompetitive harms. Copyright misuse doctrine has, however, stayed faithful to broader IP policy concerns. Courts have, for example, responded to misuse arguments where a copyright owner’s licensing or enforcement behavior threatens to deter innovative activity or socially valuable speech.
Similar to their IP counterparts, trade secret owners also engage in problematic licensing and enforcement behavior. This is perhaps unsurprising, given the growing legal and economic importance of trade secrets to firms. Yet what is surprising is that courts have not developed an analogous trade secret misuse doctrine. Instead, courts tend to ignore trade secret owners’ problematic practices or evaluate them through the lens of ill-fitting doctrinal substitutes. This Article takes the first close look at the justifications for introducing a trade secret misuse doctrine — and considers how copyright misuse doctrine provides a template for reform.
Keywords: intellectual property, trade secret, patent, copyright
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