The Evolving Doctrine of Copyright Misuse

47 Pages Posted: 15 Jul 2006

See all articles by Brett M. Frischmann

Brett M. Frischmann

Villanova University - Charles Widger School of Law

Daniel Moylan

Murphy & Shaffer LLC

Date Written: July 2006


Copyright misuse is a common law defense to copyright infringement. In contrast with defenses addressing the nature of copyrighted material or the defendant's conduct, copyright misuse focuses on the plaintiff's conduct and determines whether the plaintiff is entitled to enforce her rights. This alternative focus orients misuse differently. Copyright misuse regulates copyright owners' use of their rights, polices the boundaries set by Congress in the copyright statute, and protects important public interests.

This chapter explores the defense of copyright misuse in a manner calculated to expose the theoretical underpinnings of the doctrine as well as to provide practical guidance on future doctrinal development. The chapter is organized as follows.

Part II provides a brief introduction to the (potential) jurisprudential functions of the copyright misuse doctrine. It first develops a schematic model for understanding the jurisprudential relationship between the copyright misuse doctrine and copyright, patent, and antitrust laws. Next, it considers two approaches to formulating and applying misuse principles: per se rules and the rule of reason.

Part III analyzes the case law in the Supreme Court and the federal courts of appeals. Part III.A examines four foundational Supreme Court cases. Part III.B covers circuit precedents, and Part III.C covers other influential case law. Part III.D provides a brief overview of district court litigation.

In Part IV, we distill a set of guiding principles for evaluating copyright misuse. We conclude that courts ask first whether a challenged action amounts to per se misuse by looking to the facts for evidence of blatantly egregious conduct. Two sets of per se rules may be fashioned by the courts. The first type identifies misuse violating the antitrust laws while the second type identifies misuse violating an important public policy behind the intellectual property grant. We discuss both types of per se rules. If a challenged action does not fit within either set of per se rules, courts may engage in a rule of reason analysis. Again, two approaches are possible. The first approach, which coincides with patent and antitrust analysis, weighs the anticompetitive and procompetitive effects of the challenged action. The second approach is broader in scope and balances policy interests reflected in the intellectual property system. We evaluate these approaches to identifying misuse and conclude that courts should apply both types of per se rules - antitrust-based and policy-based - and should only apply a competition-based balancing approach. We remain skeptical about the advisability of a policy balancing test - e.g., a test that weighs pro-expressive against anti-expressive effects on a case-by-case basis - for doctrinal as well as pragmatic reasons.

Keywords: copyright, misuse, unclean hands, antitrust, intellectual property

JEL Classification: K1, K2, K3, K13, K21, O34

Suggested Citation

Frischmann, Brett M. and Moylan, Daniel, The Evolving Doctrine of Copyright Misuse (July 2006). Available at SSRN: or

Brett M. Frischmann (Contact Author)

Villanova University - Charles Widger School of Law ( email )

299 N. Spring Mill Road
Villanova, PA 19085
United States

Daniel Moylan

Murphy & Shaffer LLC ( email )

36 South Charles Street
Suite 1400
Baltimore, MD 21201
United States
410-783-7000 (Phone)

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