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First Article (December 2004): A Potentially New IP: Storyline Patents

 

Second Article (December 2006): A Patently Novel Plot: Fiction, Information, and Patents in the 21st Century

 


 

A Potentially New IP: Storyline Patents

Reprinted from The Journal of the Patent and Trademark Office Society, Vol. 86, No. 11.

 

Abstract

 

In a series of cases beginning with Diamond v. Chakrabarty, which made famous the phrase “anything under the sun that is made by man” to describe statutory subject matter under 35 U.S.C. §101, the Federal Circuit has clarified that the truly expansive scope of Section 101 includes computer software, in spite of a blatant violation of the so-called printed matter doctrine, now relegated to an historical legal has-been.  This paper posits the existence and allowability under Section 101 of “Storyline Patent” claims, which aim to protect not the copyrightable expression of a unique underlying storyline, but the storyline itself—in the form of either the process necessary to implement the unique fictional plot in an entertainment medium, or in terms of the medium itself.  Not only should such claims be deemed statutory subject matter under current U.S. law, but the public policy rationales for the acceptance of Storyline Patent claims mirror those of any other type of patent claim.

 

I.          Introduction

 

In the landmark decision Diamond v. Chakrabarty, the Supreme Court held that living, genetically engineered bacteria were within the scope of utility patent protection under 35 U.S.C. §101, on the basis that Congress intended statutory subject matter to “include anything under the sun that is made by man.”[1]  Since then, Section 101, which statutorily includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” has been read to include computer software[2], business methods[3], even asexually reproducing hybrid plants[4], which would ordinarily be covered by plant patents.

 

The exclusionary effect of Section 101 is limited to "laws of nature, natural phenomena, and abstract ideas."[5]  The tension between patent and copyright protection has historically been addressed by the judicially created “printed matter doctrine,” which excludes printed matter per se from patent protection under Section 101, on the basis that intellectual property protection is already afforded under copyright law.  However, even the patentability exclusions of the printed matter doctrine have been whittled away by the present patentability of a storage medium—read: a non-novel storage medium currently existing in the prior art—containing patentable software that has no functional relationship to the storage medium itself.[6]  The fact that disk-contained software is “printed matter” that is both patentable for the method that it executes on a machine as well as copyrightable for its particular expression of the machine-executable method is happily embraced by U.S. law.

 

This IP protection dichotomy is easily understood when one recognizes that the underlying functional method that a software relays to a machine is fundamentally distinct—and valuable in its own right—from the software’s particular expression (i.e., its code) of that underlying method.  In other words, poorly written software implementing a valuable new method is nevertheless valuable, in spite of the code’s quality; vice versa, particularly well written software implementing an old method is also valuable, in spite of the method’s archaicness. 

 

Applying analogous reasoning, this paper will address whether a fictional plot or storyline, itself, may pass the test of patentability under Section 101.  Like software, a fictional story may include two valuable features: the underlying storyline and the particular expression of that storyline.  Like software, the latter is clearly protectible under copyright law.  And, like software, the former should be protectible under patent law.

 

One goal of this paper is to convince the reader that for those literary or cinematic works containing refreshingly original storylines, at least a portion of the social value of those works is in the storylines themselves, distinct from the particular expression of those storylines.  If so, public policy dictates a need for legal protection, in the form of intellectual property rights, for the entire work—expression and storyline. 

 

II.         Patent Law

 

A valid U.S. patent must satisfy, at a minimum, the requirements of Sections 101 (“utility”), 102 (“novelty”), 103 (“nonobviousness”), and 112 (“definiteness”) of 35 U.S.C.  Passing each of these tests is not equally difficult; by far the most common bases for final rejection of patent applications is novelty and nonobviousness. The Section 101 test—i.e., showing that the claimed invention is patentable subject matter—has the lowest threshold of all.

 

A.        Exceptions to Statutory Subject Matter

 

Section 101 includes as patentable subject matter “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof...”.  In Diamond v. Chakrabarty, the U.S. Patent and Trademark Office had rejected the applicant’s claims to a human-made, genetically engineered bacterium on the grounds that the legislative history of a 1930 Plant Patent Act indicated that Congress did not intend to cover living things, such as these laboratory-created microorganisms, within the scope of Section 101.  In response, the Supreme Court relied on Committee Reports accompanying a 1952 Act recodifying the patent laws which indicated that Congress intended statutory subject matter to “include anything under the sun that is made by man,” and thus included living, genetically engineered bacteria.[7]  While Section 101 should be read extremely broadly, the Court reminded the nation that specifically excluded from statutory subject matter are the laws of nature, physical phenomena, and abstract ideas.  As examples, the Court cited naturally occurring minerals and plants as well as the law of gravity and Einstein’s famed mass-energy equality E=mc2.[8] 

 

A mathematical algorithm or equation had historically been treated as an unpatentable law of nature or abstract idea.  See, e.g., Gottschalk v. Benson, in which the Supreme Court held that claims to a mathematical algorithm for converting binary code decimal numbers to equivalent pure binary numbers were unpatentable under Section 101 because otherwise “the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”[9]  However, the Court in Diamond v. Diehr recognized that the mere application of a well-known mathematical equation by a computer to an otherwise patentable process does not of itself kill patentability, because the applicants “seek only to foreclose from others the use of that [unpatentable] equation in conjunction with all of the other steps in their claimed process.”[10]

 

State St. Bank & Trust Co. v. Signature Fin. Group involved the validity of claims directed to a data processing system that implemented a mathematical algorithm to perform a useful business method.  The claims were challenged under both the “mathematical algorithm exception” and “business method exception” to patentable subject matter.[11] 

 

Regarding the former, the Court recognized that, fundamentally, every process is or includes an algorithm.  That Congress specifically included “process” within Section 101 is sufficient to conclude that an algorithm is not necessarily excluded from the realm of patentable subject matter.[12]  The court concluded that mathematical algorithms unpatentable under Section 101 are limited to “merely abstract ideas constituting disembodied concepts or truths that are not ‘useful.’”[13]  The dispositive inquiry, held the Court, is whether the claim as a whole is directed to statutory subject matter, even if the claim contains some subject matter (e.g., a mathematical algorithm) that may not be patentable by itself.  Because the claims were directed to a useful machine implementing the mathematical algorithm and producing a “useful, concrete and tangible result,” the claims did not fail under the mathematical algorithm exception.[14]

 

Regarding the latter, the Court clarified that the breadth of coverage afforded by a patent on a business method should be addressed under Sections 102, 103, and 112.  However, a business method is just that—a method—and falls within statutory subject matter by its very nature.[15] 

 

The Federal Circuit eventually had to face up to the inevitable truth about computers: that software, like a mathematical equation, is nothing more than an algorithm for converting an input into a desired output.  Can software, in and of itself, pass muster under Section 101?  Unlike State Street, in which claims to a useful machine were at issue, AT&T Corp. v. Excel Communs., Inc. was addressed to a bare machine-executed process—i.e., software itself—to determine a value of a primary interexchange carrier ("PIC") indicator in telephone systems.[16]  Consistent with the continually expanding scope of statutory subject matter, the Court first trashed any differential treatment under Section 101 between machines and processes, and held that the claimed process, implemented by software, is statutory subject matter because it “applies [a] Boolean principle to produce a useful, concrete, tangible result without pre-empting other uses of the mathematical principle.”[17]  The prohibition from statutory subject matter against mathematical algorithms is truly narrow, and does not apply where it is “applied in a practical manner to produce a useful result.”[18] 

 

Two cases are instructive on the meaning of “abstract idea.”  First, in In re Warmerdam, the applicant claimed a two-step process that produced no useful, tangible result. The Court held that the claims involved nothing more than the “manipulation of basic mathematical constructs,” in spite of the fact that the claimed method, in conjunction with other steps, could produce a useful result.  An apparatus performing the method was found to be statutory subject matter, but merely “taking several abstract ideas and manipulating them” does not pass muster under Section 101.[19]  Second, in In re Bonczyk, a pro se inventor had claimed the following: “A fabricated energy structure for a uniform energy of the type having a single nature separated to oppose itself by a precise alternate time duration of existence that creates the dual nature for supporting and extending the Fabricated energy...”.  The Court held that an incomprehensible claim to an abstract energy structure failed to fall within any of the four statutory classes.[20]

 

B.         The Printed Matter Doctrine

 

Another historical exception to statutory subject matter is known as the “printed matter doctrine,” loosely defined as the principle that printed matter (e.g., a book) is not, per se, patentable.[21]  This doctrine rests on shaky legal authority and, in any event, has been whittled away to an archaic common law has-been.  Even its current application in proving unpatentability over prior art has become an unpersuasive legal argument.

 

In In re Gulack, the applicant claimed a wearable ribbon containing various numbers and equations, intended to assist the wearer in performing various arithmetic calculations.[22]  The Board of Patent Appeals and Interferences had overturned the Examiner’s §101 rejection of the claims under the printed matter doctrine, on the basis that the ribbon was clearly a statutorily allowed “article of manufacture.”[23]  The question at issue was whether the printed matter doctrine prevented the numbers and equations printed on the ribbon from receiving patentable weight under Sections 102 and 103.  In other words, the printed matter doctrine—what little of it remains today—relates to the question of prior art, not of statutory subject matter.  The Court stated that “where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability,” and held that the ribbon was patentable because the printed matter was both functionally related to the ribbon and because the relationship was new and nonobvious.[24] 

 

In Ex parte Robert W. Carver, the applicant claimed a stereophonic recording which, when the recording is played on a stereo player machine, creates sounds in one location that cancel out certain sound patterns received at an opposing location.[25]  The court found that the sound information (which is legally equivalent in this analysis to words on a page) stored on a recording medium (which is legally equivalent to a sheet of paper) did not evoke the printed matter doctrine because “the claims, when considered as a whole... broadly define an article of manufacture (i.e., the recording in which the sound pattern is embodied) rather than a sound pattern per se.”[26]  The truly amazing fact, as pointed out by the Dissent, is that the claimed recording involved a sound pattern recorded on any one of a variety of possible substrates (records, magnetic tapes, CDs, etc.) with no functional relationship to the chosen substrate. Thus, in finding that the claims distinguished over the prior art, the Court ultimately gave the sound pattern per se patentable weight and implicitly destroyed the printed matter doctrine, even as applied to Sections 102 and 103.

 

The “functional relationship” test was finally put to rest in In re Lowry, in which the applicant’s claims related to the storage, use, and management of information residing in a memory.[27]  First, noting that the printed matter doctrine under Section 103 stood on questionable legal and logical footing anyway, the Court distinguished the present case over past printed matter cases, which “dealt with claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind [as opposed to a machine].”[28]  However, the asserted mind-machine dichotomy is a distinction without a difference in an electronic world in which books are often read on a computer screen and printed words and sentences may optically scanned and read as “useful and intelligible” commands to a computer.  Second, recognizing that its asserted mind-machine dichotomy may be insufficient, the Court reduced the printed matter issue to one question: does the claimed method perform a function?[29]  Of course, it is difficult to formulate a method that does not perform a function of some kind.

 

In In re Beauregard, the applicant’s computer program product claims were rejected as nonstatutory on the basis of the printed matter doctrine.[30]  During appeal, the Commissioner of Patents, apparently realizing the futility of arguing the printed matter doctrine, changed the Patent Office’s position such that “computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103.”  In stating that no controversy existed, the Court put the printed matter doctrine, as a whole, to rest.

 

What is surprising but equally clear, given the above-discussed law, is that a sheet of paper upon which patentable software is printed is patentable.  Software is merely a set of instructions to a processor for performing a method, and may be written in any conceivable language and on any conceivable substrate.  It makes no difference that the software language used may also be intelligible to and readable by a human mind.  Consider, for example, a software language that reads like ordinary English.  A sheet of paper is then imprinted with a program software, and is intended to be fed into a computer processor via an optical scanner that reads and executes the software’s method, but can just as easily be read and “executed” by a human person.  Make no mistake.  The imprinted sheet of paper is the very epitome of printed matter.  Yet, under In re Beauregard, the imprinted sheet of paper is a “computer [program] embodied in a tangible medium,” and must be examined for patentability under Sections 102 and 103.  In other words, if the software’s method is patentable, so is the imprinted sheet of paper.

 

In fact, a patentable method may be embodied in a book-bound fictional novel.  Because a processor may be programmed to glean instructions for performing the patentable method directly from the novel’s words, the novel itself may be a patentable article of manufacture.  Until Congress legislates otherwise or a high court revives it, the printed matter doctrine is dead.

 

III.       Storyline Patents

 

At the turn of the century, Writer/Director Christopher Nolan created a masterpiece in Memento, a motion picture which will serve as a working example.  The motion picture tells the story of Leonard, a man who was attacked by a perpetrator who raped and killed his wife.  The attack left him brain-damaged and incapable of creating new memories, so that each hour-long bout of conscious continuity is accompanied by an initial period of “waking up” and briefly learning—by looking at often freshly-drying Polaroid pictures—of his whereabouts, his mission, and his purpose. 

 

To help place the audience in Leonard’s shoes, the audience too is denied the opportunity to remember past events: the movie is shown in short segments in reverse chronological order.  Thus, the movie begins with Leonard finding and killing the supposed perpetrator—a Polaroid in Leonard’s hand labeled, “Teddy. Don't listen to his lies. He's the one. Kill him.”—and progresses in reverse to show each of Leonard’s steps toward identifying and hunting Teddy.  The storyline ends in its chronological beginning when Leonard, in a saddening and emotionally charged realization that his prospects for retribution (indeed, for any meaningful endeavor) were impossibly slim in his hazy world of confusion, intentionally identifies Teddy, whom he knows is not the real perpetrator, as his prey.

 

This structure of the movie—while gripping and brilliant—may or may not be novel.  Nevertheless, that the method of creating a movie in this manner is statutory subject matter under Section 101 is indisputable.  Further, the motion picture as a whole, screenplay included, is clearly copyrightable.  What some may dispute is whether the movie’s underlying storyline, including what is probably a legally novel and nonobvious (not to mention shocking) plot twist at its chronological beginning, is statutory subject matter under current patent law.

 

How might a claim in a plot or storyline patent be structured?  A court might competently reason that a story in the abstract is just that: an unpatentable abstract idea.  However, that a book-bound fictional novel is unpatentable merely by nature of its being printed matter has been, I believe, refuted by the assertion that such a novel could be, in a very real sense, a patentable computer program embodied in a tangible medium—thus, a patentable article of manufacture.  A particularly skilled patent attorney could convert a unique storyline into a method performed by one of a series of possible infringers, including: a movie’s writers, directors, actors, and producers; a theater’s owners and employees; a movie seller’s owners and employees; a novel’s authors, publishers, and printers; a bookseller’s owners and employees; consumers of the movie, novel, or other products; and so forth.  Consider an example claim—which may be dubbed a “storyline method claim”—to a functional method of implementing Memento’s plot to the “useful, concrete, tangible result” of producing valuable entertainment:

 

A process of relaying a story having a unique plot, the story involving characters and having a timeline, comprising:

            indicating that a first character has an inability to retain long-term memories after a time in the timeline;

            indicating that said first character trusts notes written by said first character;

            indicating that said first character believes that said first character has been wronged by a perpetrator;

            indicating that said first character desires to perform an act of retribution against said perpetrator;

            indicating that said first character believes that attempting to perform said act is a futile endeavor; and

            indicating that said first character writes a note to said first character indicating that a second character, whom the first character believes is not the perpetrator, is the perpetrator.

 

The above example, which seems to catch the essence of the movie’s underlying storyline, looks and feels like a method—an ordinary, functional, useful method.  Subjective words such as “trusts,” “believes,” “desires,” and “wronged” should not raise problems of indefiniteness under Section 112 because the steps actually being performed are “indicating.”  In other words, a step of “desiring” might be problematic because desiring is an introspective, subjective mental process that can doubtfully be measured and, nevertheless, produces no useful, tangible result per se.  However, “indicating a desire” is clear—a jury knows what that looks like, particularly if the specification gives concrete examples of how one might indicate a desire, and it produces a useful, tangible result: an indication.

 

Notice that the above claim form is aimed broadly.  A director infringes it at least when she makes a movie implementing the implicitly claimed storyline (and possibly at other times, such as a showing of the movie); an actor infringes it at least when he plays his part as the first character; an owner of a movie theater infringes it at least when he shows the movie; the consumer infringes it at least when she plays a DVD containing the movie; and so forth.

 

Of course, different claim forms can and should be tested.  The author has submitted to the U.S. Patent and Trademark Office several test patent applications on novel storylines, utilizing various claim forms and a creatively distributed lexicon.  Regardless of which structures and words, if any, ultimately pass muster in the Patent Office and subsequent litigation, the present pursuit is guided by the realization that, fundamentally, the making of a movie (or writing of a novel or filming of a television show, etc.) involving a new, nonobvious storyline requires the performance of certain definite steps.  The combination of the fewest steps necessary to produce a movie or novel or show having the new storyline is a method that should be and, consistent with existing law, probably is patentable.

 

IV.       Analysis

 

The legal analysis is straightforward.  A method is a method and should be examined as such.[31]  The Supreme Court has made clear that statutory subject matter includes “anything under the sun that is made by man.”[32]  Unless the claimed invention is merely a law of nature[33], a natural phenomenon[34], a manipulation of basic mathematical constructs[35], an abstract idea constituting disembodied concepts or truths that are not useful[36], or an incomprehensible claim to an abstract energy state[37], it is patentable subject matter.  There is simply no statutory or common law exempting from patentability a useful method for producing entertainment.

 

Other claim forms, besides methods, may also be patentable subject matter, such as an article of manufacture containing the storyline.  Consider a claim—which may be dubbed a “storyline article claim”—to a storage medium, such as a DVD or video cassette:

 

A machine-readable storage medium storing information and configured to cause a machine to perform a process of relaying a story having a unique plot, the story involving characters and having a timeline, the process comprising:

            indicating that a first character...

 

The above claim format is substantively indistinguishable from the thousands of computer program product claims allowed by the Patent Office since In re Beauregard.  If a computer disk containing a functionally unrelated but independently patentable software is patentable, should not a DVD containing an independently patentable storyline (in the form of a method executed by a consumer via her DVD player) also be patentable?  Further, as previously discussed, a book-bound fictional novel containing a patentable method is probably patentable simply because the inscriptions in the pages of a novel just are a computer program—given a computer programmed to read prose as a software language.  A patentable software program embodied in a tangible medium is patentable.  Analogously, a patentable storyline method embodied in a tangible medium—e.g., a novel—may also be patentable subject matter.

 

A storyline method or article claim, such as the ones offered above, would have all the rights and responsibilities of any other patent claim.  For example, a patent on a particular software method or software-containing medium would cover every embodiment of the claimed invention: whether the software is written in C++, Pascal, or XML, whether the software is continuous or contains multiple subroutines, whether the software includes explanatory editorial notes or not, whether an input is called “I” or “Input4,” and so forth.  Each different expression of the underlying software may be independently copyrightable, but every expression would be covered by the patent.  Similarly, a patent on a particular storyline method or storyline-containing article or manufacture would cover every embodiment of the claimed invention.  Every possible expression of the storyline—whether involving five characters or ten, whether set in Amsterdam or Chicago, whether told in the first person by a Nigerian heroine or in the third person by a Chinese hero, whether embodied in a novel, a script, a movie, an advertisement, a television program, or a radio show—would require infringement of the claimed method or article of manufacture.  Again, each different expression of the underlying storyline may be independently copyrightable, but every expression would be covered by the patent.  Just as a patent granted on a software method or software-containing medium effectively covers the underlying software itself, so a patent granted on a storyline method or storyline-containing article of manufacture effectively covers the underlying storyline itself.

 

However, a valid plot or storyline claim would also have to maintain important responsibilities.  Though the present paper advocates the proposition that storyline claims—drafted either as the methods necessary to create the useful, tangible entertainment forms containing those storylines, or as the articles of manufacture (e.g., electronic or printed media) actually containing those storylines—are patentable subject matter under Section 101, that the claims must also pass the other more stringent tests of patentability cannot be overemphasized.  An old storyline can never be patentable (Section 102).  A storyline obvious to one of ordinary skill in the art can never be patentable (Section 103).  An indefinite storyline can never be patentable (Section 112).  As with any expansion in the scope of available patent protection, such as that to include so-called business methods, there is concern that intellectual property previously commonly owned is suddenly stripped of its public status.  But such is the province of the primary gatekeepers of patent law: Sections 102 and 103.  In other words, there is no fear that expanding the scope of Section 101 will strip from the public its property if the property did not already exist. 

 

V.        Public Policy

 

Chances are quite good that, guided by existing case law and Patent Office policy, a storyline method would be treated as just that: a statutory method that must be evaluated for novelty, nonobviousness, and other statutory requirements.  And, insofar as the printed matter doctrine is dead, particularly as it applies to a functional method embodied in a tangible medium, chances are also good that a storyline article of manufacture (e.g., a DVD or book) would be treated similarly.  However, one cannot avoid that patent law is guided, both legislatively and in courts, by a public policy that has a primary aim of increasing the wealth of the public domain by enticing inventors to invent (and publicize their inventions) in exchange for limited-term exclusive rights to their respective inventions, and a secondary aim of fairness to inventors.  Are these aims served by acknowledging that storyline methods and articles of manufacture are, indeed, statutory subject matter?

 

No doubt there is the practical concern that no competent examining unit at the Patent Office currently exists to examine such patent applications.  However, this concern is not sufficient by itself to exclude otherwise patentable subject matter from examination.  The same issue was faced—and ultimately addressed via iterative steps of improving Patent Office examination quality and invalidating non-novel or legally obvious patents during litigation—several times before, most notable with the Federal Circuit’s allowance of business method patents in State St. Bank.  The question remains: should storyline patents be granted?

 

If the previously offered example of Memento provides any indication, an embodied story (whether in a novel, a movie, a television program, a radio show, an advertisement, etc.) can have two valuable features: the underlying storyline and the particular creative expression of that storyline.  The underlying storyline of Romeo and Juliet, at the time of its creation, was neither novel nor excessively creative.  Children of two warring families enduring a tragic love affair is probably as old as spoken language.  But the particular expression of that underlying storyline is today as brilliant and beautiful as the day it was written.  Conversely, one could imagine a plot so inventive, so surprising, and so profound that any expression of it is valuable.  Such would be the scope of a storyline patent.

 

There is something fundamentally inventive—in the same way that conceiving of a new rocket engine design is inventive—about creating a new storyline.  The flash of inspiration is the same.  One does not conceive of a new rocket engine by building a rocket, but one could express that conceived engine by doing so.  Analogously, one does not conceive of a plot by expressing it, but one could express a conceived plot.  The spark of ingenuity is what gives rise to the infinitely many ways of expressing an invention—whether in the form of a tangible rocket engine or a novel—but without the invention there is nothing to express.  A particular rocket engine is but one of infinitely many embodiments of a rocket engine invention, just as a particular novel is but one of infinitely many embodiments of a storyline invention.  They are both inventions in a very real sense, distinct from their possible expressions.

 

Consider an analogy to what is clearly patentable subject matter—an automobile—and how a hypothetical lack of available utility patent protection would impact the above stated public policy aims.  Assume, for example, an automobile could only be protected under a design patent (which acts as a sort of “copyright” on ornamental designs).  An inventor, in a flash of inspiration, conceives of a novel internal combustion engine that is twice as efficient as existing engines.  He attempts to obtain intellectual property protection on what is the very epitome of a useful, valuable invention.  Sadly, he is a terrible automobile designer and a particularly bad artist, such that the scope of his attempted design patent protection is limited to an ugly automobile that will not sell.  Meanwhile, a non-inventor, who is in contrast a skilled designer and artist, has spent his career misappropriating the good ideas of others and compiling them into aesthetically pleasing final products.  He learns of the inventor’s original conception of a highly efficient engine and incorporates it into his next automobile design.  His works, of course, are protectible under the same design patent laws, the difference being that the non-inventor’s protection is infinitely more valuable—after all, given the choice between two automobiles, both incorporating the novel high-efficiency engine and identical except for their appearances, every consumer will choose the more aesthetically pleasing of the two—in spite of the non-inventor’s outright misappropriation of the inventor’s good idea.  Such a scenario would trump patent law’s stated aims because, first, would-be inventors of novel high efficiency engines would have little or no economic incentive to publicize their inventions (or even to invent at all, particularly where trade secret maintenance is a practical impossibility), and second, fairness dictates that the inventor receive protection for what he really invented: a valuable new engine, not an ugly automobile.

 

In the real world, the above scenario does not occur, because the inventor’s engine invention is protectible by a utility patent.  Without utility patent protection for novel storylines, analogous scenarios occur on a regular basis with regard to fictional storylines.  Is that why most movies and books relay the same hackneyed plots over and over again?  What inventor, who isn’t akin to Poe, would endure the time, sweat, and tears to embody his unique plot into a marginally readable novel or movie script, protectible only under copyright law, when a skilled, experienced Hollywood writer could lawfully, without even invoking copyright’s “derivative” protection, embody the unique plot in a far superior story?

 

Inventors are not typically akin to Poe.  In fact, few inventors are skilled at writing at all—hence the enormous market for $300-an-hour patent attorneys.  How can the public interests of fairness and of encouraging invention and proliferation of new and useful forms of entertainment be served if storyline inventions cannot be protected for what they are?  Storylines are not expressions of anything.  A storyline is not conducive, in and of itself, to copyright protection.  A storyline is an invention that may be embodied in a useful, functional method for relaying that storyline, or in a tangible medium containing that storyline.  Patent protection for storyline methods or storyline articles of manufacture is the next logical legal step in furtherance of the stated aims of patent law.

 

The following is an excerpt from one of the author’s several test storyline patent applications already submitted to the Patent office.

 

Hollywood has been failing.  Hackneyed plots are commonplace in modern movies and creativity has been replaced by expensive “special effects.”  Elaborate explosions and sophisticated fight scenes bore even the slightest intellect where the storyline is confused, dull, or lacking.  There is a substantial need for original, intellectually exciting plots in all forms of entertainment, such as novels and, particularly, motion pictures.

 

Traditionally, patent protection has provided the economic and moral impetus for technological improvements in all fields.  An inventor is motivated to absorb the substantial financial, time, and personal costs of identifying problems with current technologies and inventing solutions to those problems when he is assured the right to exploit that invention by excluding others from making, using, selling, offering to sell, and importing his invention.[38]  Where patent protection is not available or is not easily obtained or enforced, such as in the typically statist welfare countries of Central and South America and communist countries such as China, technological progress is stunted by at least two causes: a) inventors employed by a company have little motivation to disclose their inventions to the public, and thus tend to keep their inventions as trade secrets within the company; and b) independent inventors have virtually no motivation whatsoever to disclose their inventions to anyone, because of (justifiable) fears of expropriation.

 

In much the same way, the progress of intelligent fictional plots, particularly of movies, has been stunted worldwide.  Currently, a writer may receive free, comprehensive, and automatic copyright protection on anything she writes.  If her skill consists primarily of expressing old, stale concepts in new, creative, exciting ways, then she will benefit from copyright protection.  However, if her skill consists primarily of inventing new and unique broad concepts, then copyright protection will only protect one of uncountably many possible expressions of those new and unique concepts.  This dangerous dichotomy is explained further.

 

Patents and copyrights aim to protect different interests.  A copyrighted work is a particular expression or embodiment of a broader concept.  For example, a broad concept might be, “Life is worth living for its own sake, and the only economic system that respects humans’ right to live freely for their own happiness, without brute force compulsion to be sacrificed for the benefit of others, is capitalism.”  A particularly beautiful expression of this broad concept is Ayn Rand’s Atlas Shrugged, which is subject to copyright protection.  Ayn Rand’s estate does not own all embodiments of the broad concept—only the single expression embodied by her novel.

 

In sharp contrast, a patented invention protects each and every possible embodiment of a broad invention.  Consider a patent on a car.  It is not a particular actual car that is the subject of a patent, rather the wide class of possible cars that fall within the scope of the patent.  In other words, a particular car is simply one protected embodiment of the broader patented invention.  Because of the broad scope of rights afforded to a patent owner, one may not receive a patent on an invention that is old or obvious.[39] 

 

Thus, patent protection and copyright protection differ substantially on the ease with which infringement may be avoided.  Because a patent protects all expressions or embodiments of the single broad invention, a competitor who desires to use or sell the invention without paying royalties may not; it may only avoid patent infringement by paying royalties or avoiding the invention altogether.  In sharp contrast, a competitor who desires to use the broad concept disclosed in another’s work (e.g., book or article) may freely do so without infringing any copyrights, even when the broad concept is new and nonobvious.  All the competitor must do is to create a moderately different expression of the broad concept.

 

It is clear that copyrights protect those who are good performers: those who sing well, dance well, write well, act well, and so forth.  Copyrights are based on a system of recognition in which society rewards performers because they express an old concept in an original (and hopefully desirable) way, not because they express a new concept.  Of course, many artists do invent original concepts, but it is their expression of those concepts, not their creation or invention of those concepts, that copyright protection rewards. 

 

For example, one who sings a touching version of “White Christmas” may receive copyright protection on his performance—not because he invented the concept of singing about Christmas—not because he wrote the lyrics to the song—but because his particular vocal expression of it is original.  Further, a woman who writes and performs a love song may receive copyright protection on both the lyrics and her performance—not because she invented the concept of singing about love—but because her particular written expression of love, and her particular vocal expression of those written lyrics, are original.  Finally, consider the man who invents an entirely new and nonobvious type of music or method of performing music.  Clearly, copyright law cannot protect his invention.  His only possible recourse—which, to date, has not been tapped for the field of artistic inventions, such as original movie plots and new types of artistic expression—is patent protection.

 

There is no reason—neither statute nor case law nor PTO practice—why artistic inventions are not patentable subject matter under 35 U.S.C. §101.  In the landmark decision Diamond v. Chakrabarty, the Supreme Court held that living creatures were patentable subject matter under the doctrine that statutory subject matter includes “anything under the sun that is made by man,” with three exceptions: laws of nature, physical phenomena, and abstract ideas.  According to the Manual of Patent Examining Procedure, these three exceptions recognize that subject matter that is not a practical application or use of an idea, a law of nature, or a natural phenomenon is not patentable.[40]  

 

Certainly a movie implementing a unique plot is a practical application or use of the unique plot, so the unique plot should not be barred patentability under §101.  The invention of a new plot is just that—an invention—not merely an expression of an existing concept.  Similarly, the practical application or use of any new artistic invention should be patentable subject matter.

 

The fact that each particular expression (e.g., a movie) of a broad artistic invention (e.g., an original plot) is subject to copyright protection is not unique to artistic inventions.  For example, the software code on a patented software-containing disk may also be copyrighted.  The defining criterion separating the subject matter of patents from copyrights is not whether the subject matter is related to art—see the amusing counterexample of U.S. Patent No. 6,213,778 to Cohen.  Rather, the defining criterion is whether the subject matter is a broad concept practically applied or used (in which case a patent is appropriate), or a particular instance, embodiment, expression, or performance of the broad concept (in which case a copyright is appropriate).

 

There is little fear that artistic creation will be halted due to the enforcement of patent protection newly applied to artistic inventions.  A love song composer may indefinitely continue writing love songs without worry of infringing any patent, because the concept of writing songs about love is old and not patentable.  Statute clearly requires an invention to be new and nonobvious to receive patent coverage.  Thus, even if the broad concept or invention of singing about love were statutory subject matter under §101, it is as old as civilization, and would not survive an attack under §§102-103.  In fact, most artistic concepts today are very old—which is precisely the problem that must be remedied by patent protection for artistic inventions.  Unless patents on artistic inventions are upheld and enforceable, the great artistic minds of the day will be compelled to continue composing predictable love songs for pop stars and slightly altered dialogues for carbon copied movie plots.

 

There is currently little motivation for artistic inventors to innovate new plots, themes, and methods of expression.  The value of an innovator’s copyright, if he in fact embodies his invention in a particular expression (such as a novel or movie) is far less than the value of the invention itself, because the invention umbrellas every possible embodiment.  Further, and perhaps more importantly, the value of his copyright depends on his ability as a performer, not as an inventor.  An artistic inventor who invents a fantastically original and compelling storyline may not be a particularly skilled writer.  He may, for example, have a very limited vocabulary and a poor understanding of grammar.  Any book he creates will be avoided by any potential buyer who reads the first paragraph, such that the copyright value of his extremely valuable invention is nil.  Any Hollywood producer who sees through the book’s garbled sentence structure to the excellent and creative plot beneath the surface may steal the only value the book contained: its inventive plot.  The producer may then moderately alter the expression of the plot in a subsequent movie—while keeping the plot’s essence fully intact—and obtain unearned financial benefit from the inventor’s unrewarded hard work and innovation.  If there is any evil that the United States patent system ought to prevent, it is this.

 

Said another way: the value of a singer’s performance or a dancer’s performance or a writer’s performance or an artist’s performance is in the performance, while the value of an inventor’s invention is in the invention, not a single instance, embodiment, expression, or performance of the invention.  The value of a performance is protected by copyright; the value of an invention is not.  An artistic innovator is given but two choices absent patent protection: to sacrificially innovate for the unearned benefit of thieves, or to not innovate.  Both options are morally and practically repulsive.

 

A patent system that sanctions and defends patents on artistic inventions, such as new and nonobvious plots, will spur an array of never-seen-before, never-experienced-before, intellectually inspiring forms of entertainment.  A patent system that lethargically clings to an as-of-yet unarticulated rule that artistic inventions are not patentable subject matter because they are not closely enough related to a mechanical gear or an electronic integrated circuit will guarantee our nation the same repertoire of mind numbing movies and dime-a-dozen boy bands.

  

VI.       Conclusion

 

Case and statutory patent law provide no binding distinction, with regard to statutory subject matter, between software methods and storyline methods.  Even tangible media containing unique storylines are so legally analogous to patentable software contained on functionally unrelated computer disks that DVDs and novels—the very epitome of “printed matter”—are probably “articles of manufacture” under Section 101.  Will the Commissioner of Patents or the Federal Circuit agree?  With several test patent applications already pending in the Patent Office, only time will tell.

 

To be continued...

 

Post Script


The Author presently seeks collaboration by a reputable intellectual property law firm in developing and advancing this new patent law field, including arguing the patentability of Storyline Patent claims before the Federal Circuit, if necessary, and in sharing in new business that may arise from the allowability of Storyline Patents. For further information, see www.PlotPatents.com, or contact the Author at info@PlotPatents.com.

 


[1] 447 U.S. 303, 309, 206 U.S.P.Q. (BNA) 193 (1980).

[2] AT&T Corp. v. Excel Communs., Inc., 172 F.3d 1352, 50 U.S.P.Q.2D (BNA) 1447  (Fed. Cir. 1999).

[3] State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 47 U.S.P.Q.2D (BNA) 1596 (Fed. Cir. 1998).

[4] Pioneer Hi-Bred Int'l, Inc. v. J.E.M. Agric. Supply, Inc., 200 F.3d 1374, 53 U.S.P.Q.2D (BNA) 1440  (Fed. Cir. 2000).

[5] Diamond v. Diehr, 450 U.S. 175, 185, 209 U.S.P.Q. (BNA) 1 (1981).

[6] In re Beauregard, 53 F.3d 1583, 35 U.S.P.Q.2D (BNA) 1383 (Fed. Cir. 1995).     

[7] 447 U.S. 303, 309, 206 U.S.P.Q. (BNA) 193 (1980).

[8] Id at 309.

[9] 409 U.S. 63, 72, 175 U.S.P.Q. (BNA) 673 (1972).

[10] 450 U.S. 175, 187, 209 U.S.P.Q. (BNA) 1 (1981), emphasis added.

[11] 149 F.3d 1368, 1372, 47 U.S.P.Q.2D (BNA) 1596 (Fed. Cir. 1998).

[12] Id at 1374.

[13] Id at 1373.

[14] Id at 1375.

[15] Id at 1377.

[16] 172 F.3d 1352, 1358, 50 U.S.P.Q.2D (BNA) 1447 (Fed. Cir. 1999).

[17] Id.

[18] Id at 1360.

[19] 33 F.3d 1354, 1360, 31 U.S.P.Q.2D (BNA) 1754 (Fed. Cir. 1994).

[20] 10 Fed. Appx. 908, 911 (Fed. Cir. 2001).

[21] A related, and perhaps identical, doctrine is that nonfunctional descriptive material in a claim is not afforded patentable weight over prior art.  The concept appears in the Manual of Patent Examining Procedure, but sound or binding legal basis for it is utterly lacking.

[22] 703 F.2d 1381, 217 U.S.P.Q. (BNA) 401 (Fed. Cir. 1983).

[23] Id at 1384.

[24] Id at 1385.

[25] 227 U.S.P.Q. (BNA) 465 (Board of Patent Appeals and Interferences, 1985).

[26] Id.

[27] 32 F.3d 1579, 32 U.S.P.Q.2D (BNA) 1031 (Fed. Cir. 1994).

[28] Id at 1583.

[29] Id at 1584.

[30] 53 F.3d 1583, 35 U.S.P.Q.2D (BNA) 1383 (Fed. Cir. 1995). 

[31] State St. Bank at 1377.

[32] Chakrabarty at 309.

[33] Id.

[34] Id.

[35] In re Warmerdam at 1360.

[36] State St. Bank at 1373.

[37] In re Bonczyk at 911.

[38] 35 U.S.C. §271.

[39] 35 U.S.C. §§102-103.

[40] §2106 (IV)(A).

 


 

A Patently Novel Plot: Fiction, Information, and Patents in the 21st Century

Reprinted from IDEA: The Intellectual Property Law Review, Vol. 47, No. 2.

Andrew F. Knight, M.S., J.D.[1]

 Abstract

 Inventors are challenging the legally unsupported view that fiction is never the appropriate subject matter of an issued patent by way of several controversial “storyline patent” applications recently submitted to the U.S. Patent and Trademark Office.  This paper aims to address various potential statutory hurdles to the patentability of such “storyline patents,” such as enablement and definiteness under 35 U.S.C. § 112, the imaginary but oft-cited “technology requirement,” and potential Constitutional concerns arising under the First Amendment.  Inventors submitting storyline patent applications will likely overcome such hurdles.  Storyline patents offer the public a far greater benefit-per-cost than any other type of patent.

I.          Introduction

In 2003, the author submitted the first of several utility patent applications to the United States Patent and Trademark Office nominally claiming fictional storylines.[2]  Patentable subject matter is statutorily limited to a “process, machine, manufacture, or composition of matter,”[3] and so each storyline patent application claims processes of relaying a story such as creating and displaying a motion picture having a unique plot, and articles of manufacture such as DVDs and books containing information including a unique plot.[4]  Before publication of these storyline patent applications, the author publicly suggested a form of a storyline patent method claim that may pass muster under 35 U.S.C. § 101, using the plot of the motion picture Memento as a representative example:

A process of relaying a story having a unique plot, the story involving characters and having a timeline, comprising:

indicating that a first character has an inability to retain long-term memories after a time in the timeline;

indicating that said first character trusts notes written by said first character;

indicating that said first character believes that said first character has been wronged by a perpetrator;

indicating that said first character desires to perform an act of retribution against said perpetrator;

indicating that said first character believes that attempting to perform said act is a futile endeavor; and

indicating that said first character writes a note to said first character indicating that a second character, whom the first character believes is not the perpetrator, is the perpetrator.[5]

The author argued that these claims were statutory subject matter under 35 U.S.C. § 101[6] because statutory subject matter includes “anything under the sun that is made by man”[7] and because storyline patent claims do not fall under any of the delineated exceptions to statutory subject matter such as laws of nature,[8] physical phenomena[9] and abstract ideas[10] that do not produce a “useful, concrete and tangible result.”[11]  The author argued that an article of manufacture such as a DVD or a book is so akin to a patentable software-containing substrate, e.g., a computer disk or CD-ROM that it is probably statutory subject matter that is not barred by the waning, ineffective “Printed Matter Doctrine.”[12] 

Not surprisingly, the prospect of patent protection on fictional storylines has piqued the curiosity of some,[13] and storyline patents have come under fire by those who confidently assert that storyline patent applications will fail for various reasons, including subject matter requirements (35 U.S.C. § 101), novelty and nonobviousness (35 U.S.C. § 102 and § 103, respectively), enablement (35 U.S.C. § 112), indefiniteness (35 U.S.C. § 112), First Amendment concerns and public policy.[14]  This article aims to address these issues to the extent they were not already addressed in A Potentially New IP: Storyline Patents.[15]  In Part II, the viability of storyline patents will be evaluated against the requirements for patentability, namely subject matter requirements (35 U.S.C. § 101), novelty and nonobviousness (35 U.S.C. § 102 and § 103, respectively), enablement (35 U.S.C. § 112), and indefiniteness (35 U.S.C. § 112).  In Part III, potential First Amendment limitations to storyline patents will be analyzed.  Finally, in Part IV, storyline patents will be addressed in the context of the quid pro quo purpose of patent law.

II.         Requirements for Patentability

Among other requirements, to be patentable, an invention must be: a) the kind of subject matter for which Congress intended to reward inventors; b) new and not obvious in light of prior inventions; c) described sufficiently so that the invention may enter the public domain; and d) clearly delineated.[16]  For the reasons discussed below, a storyline patent application does not inherently fail any of these requirements.

A.        Subject Matter Limitations and the Imaginary Technological Arts Requirement

To be patentable, an invention must be a “process, machine, manufacture, or composition of matter”[17] that is not a law of nature,[18] a physical phenomenon[19] or an abstract idea[20] that fails to produce a “useful, concrete and tangible result.”[21]  The author has previously argued that patent applications claiming storyline methods satisfy these requirements because “[a] method is a method and should be examined as such.”[22]  Even the Printed Matter Doctrine, to the extent it contradicts the allowability of article-of-manufacture software claims,[23] may not prevent the allowability of article-of-manufacture storyline claims.[24]  These arguments will not be repeated here.

At least one commentator has suggested the continued viability of the so-called “technological arts requirement,” whereby courts in construing the subject matter requirement have “confined their liberal views to the realm of technology.”[25]  What is “nontechnology” is anybody’s guess, but this commentator suggests that works of fiction, music, and “business methods not implemented with computer technology” may be unpatentable “nontechnology.”[26]  Desperate for evidence, this commentator cites a dissenting opinion in binding case law to support the contention that creative works can never be patentable technologies.[27]  Another commentator has opined that creative works, such as movies, “satisfy the . . . tests for being ‘useful,’ yet would not be considered to be patentable subject matter,” because “no one would imagine obtaining a patent” for such creative works.[28]  In other words, this commentator suggests simply that the creative nature of creative works, coupled with the lay public’s suspicion that such works are not patentable subject matter, effectively precludes their patentability in spite of being “useful.”[29]  However, the following analysis aims to demonstrate that while many patents relate to what a lay person may deem “technology,” such a relationship is not a prerequisite to patentability.   It will be shown that not only is there no technological arts requirement, there is no ready means for compartmentalizing creations into patentable technology and non-patentable non-technology.

 i.          The Board of Patent Appeals and Interferences Has Explicitly Dismissed Any

Technological Arts Requirement.

Carl A. Lundgren filed an application claiming a business method for compensating a business manager.[30]  The Patent Office rejected the application on the grounds that the claimed invention was directed to “an economic theory expressed as a mathematical algorithm without the disclosure or suggestion of computer, automated means, apparatus of any kind.”[31]  The patent examiner held that the claims were thus non-statutory for failing the so-called “technological arts” test under 35 U.S.C. § 101.[32]

Upon a request for reconsideration and rehearing, the Board of Patent Appeals and Interferences (BPAI) reversed the Examiner’s rejection, on the basis that the patentable subject matter test requires that a process claim “produce a useful, concrete, tangible result without pre-empting other uses of the mathematical principle.”[33]  The Board pointed out that a process is statutory subject matter unless it is a law of nature, physical phenomenon or an abstract idea.[34]  The Board ruled that there is not now, nor ever has been, a separate “technological arts” patentability test under 35 U.S.C. § 101.[35]  The Board dismissed the contention that a new technological arts test is required by any binding decision[36] and specifically pointed to the Supreme Court's decision in Gottschalk v. Benson[37] as evidence that the Court was aware of such a test and had not adopted it.[38]

While the Lundgren decision certainly expanded the scope of business method patents, its reasoning precludes the application of a “technological arts” requirement to any field of endeavor. 

             ii.          No Technological Arts Requirement Could Be Legally Cognizable.

Per Lundgren, there is no “technological arts” requirement for statutory subject matter.  Nevertheless, to the extent that a BPAI decision is not binding on the Federal Circuit or Supreme Court, neither is likely to invent such a requirement.  This is because, for patentability purposes, there is and can be no legally cognizable “technology” difference between an unquestionably patentable device and a device such as a DVD player loaded with a DVD that creates a fictitious, creative virtual reality emulating the method implemented by the patentable device.

Many people may fail to understand the nature of technology and be tempted to artificially dichotomize fields of endeavor as either creative or technological.  One who is unfamiliar with science and engineering might attempt to classify technology as that which involves the use of screwdrivers, jackhammers, transistors, chemicals, and so forth, and therefore limit the scope of patentable subject matter.  We suggest that technology is no more than intentional changes[39] to the human condition.  While until relatively recently in human history many of these changes were effected with mechanical and electrical apparatus—the very epitome of patentable subject matter—there are several dangers to so limiting the word “technology.”  For example, one may be tempted to restrict patentable subject matter to “technology” that does not entertain or “technology” that entertains only in prescribed ways such as by using mechanical gears and engines.  A movie thus could not be patentable either because it entertains or because it entertains in a manner that is insufficiently technological.  Each such restriction is seriously problematic. 

First, there can be no legally cognizable technology requirement that hinges on whether an invention entertains.  During the Industrial Revolution, many mechanical devices were invented that increased productivity and thus provided more people their basic needs by feeding, clothing, and housing them.  For example, Eli Whitney’s invention of the cotton gin in the late 18th century helped to proliferate the availability and use of cotton clothing.  As technology improved—the human standard of living improving with it—technology evolved more to improve human comfort, not just prospects for bare survival.  The invention of modern air conditioning in the early 20th century by Willis Carrier is clearly “technology,” even though air conditioning is a modern convenience that is rarely if ever required for human survival.  Finally, as technology improved the human condition to a point at which people could live healthily and comfortably in spite of an abundance of free time, technology evolved to fill that comfort-induced void with entertainment.  Pleasure boats, recreational vehicles, small airplanes, television, radio, video games, CD and DVD players and every piece of equipment for every hobby, sport and recreation imaginable are all forms of technology, not a single one of which is required for human survival or comfort.  Whether a device has a primary purpose or use of more efficiently harvesting agricultural products or of entertaining the user is and should be irrelevant for purposes of patentability.  Indeed, the United States Patent and Trademark Office has not hesitated to issue thousands of patents all relating exclusively to entertainment: games,[40] sports moves[41] and even methods of creating art.[42]  It follows that the mere fact that fictional storylines entertain is not enough to classify a storyline method claim as a form of unpatentable non-technology.

Second, there can be no legally cognizable technology requirement that hinges on how an entertaining device or method entertains.  Consider a new thrill ride, such as a roller coaster at a major theme park.  The ride may include thousands of gears, pulleys, chains, hinges, bolts, motors, electrical actuators, relays, and so forth—i.e., patentable subject matter by any definition.  Next, consider a virtual reality ride that accurately but much less expensively and with far less risk to the rider mimics the thrill ride.  The virtual reality ride consists of a visual display, audio speakers, and a computer processor executing software programmed to create a virtual reality via the display and speakers that emulates the actual thrill ride.  The judiciary in AT&T Corp. v. Excel Commc’ns, Inc.[43] realized that, for patentability purposes, software performing a patentable process is indistinguishable from a machine performing that process.  Consequently, the virtual reality ride is patentable subject matter alongside the actual thrill ride.[44]  Further, that the virtual reality ride is patentable “technology” has nothing to do with whether it entertains by means of gears and pulleys or by LCD displays and microprocessors.[45]

Now consider a fictional motion picture that includes in its plot and corresponding cinematography indications of a character riding such a thrill ride.  For example, the movie may include video images of the character riding the thrill ride from the character’s perspective.[46]  In what legally cognizable way does this portion of the movie differ from the aforementioned patentable virtual reality ride?  It doesn’t.  Thus, to the extent that a DVD containing a movie having a fictional plot is configured to cause a machine such as a DVD player to generate a virtual reality—and every movie does—it is patentable subject matter.

            A virtual reality machine is clearly patentable subject matter, even though it may not be patentable unless the method it executes is both novel and nonobvious under 35 U.S.C. § 102 and § 103, respectively.  Further, the same virtual reality machine creating different virtual realities by executing different software embodiments may be patentable for each different software embodiment.  Analogously, a television connected to a DVD player loaded with a DVD is a virtual reality machine that is patentable subject matter under 35 U.S.C. § 101, even if the machine may be unpatentable for failing the novelty and nonobviousness requirements.  Further, the same machine creating different virtual realities by playing different DVDs may be patentable for each storyline embodiment in the different DVDs.

In other words, if a virtual reality ride is patentable “technology,” a motion picture is no less patentable “technology” simply for introducing more elaborate plot elements into the ride—i.e., for making the ride a subset of the entire plot.  A movie is a virtual reality, as anyone who has ever cried in a movie theater can attest to, and if a virtual reality ride is patentable subject matter, so is a motion picture.

B.         Novelty and Nonobviousness

An invention is not patentable if it is not new[47] or “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”[48]  One might argue that storylines, which have evolved since the inception of human communication, are so plentiful and exhaustive that no storyline method claim could pass the tests of novelty and nonobviousness.  We do not address this argument, as it pertains only to the quantity of prior art and not the inherent patentability of fictional storylines. 

Parenthetically, an analogy is instructive.  Imagine a world in which fluid pumps (e.g., air pumps, water pumps, fuel pumps, radial pumps, piston pumps, turbopumps, etc.) were not thought patentable.  One who then proposed the patentability of pumps would likely face the same absurd argument—that the mere quantity of existing pumps would preclude the conception of any new and nonobvious pump.  Yet, the fact that pumps have indeed been invented, designed, and built for many millennia has not closed the spigot of new, patentable pump inventions.[49]  While we expect novelty and nonobviousness hurdles to be high to any would-be plot inventor, one who asserts their insurmountability must contend that no one in the world will ever conceive of a patentably distinct plot.

In light of the thousands of overly broad patents that the United States Patent and Trademark Office issues every year due to poor and insufficient examination by an overworked and underpaid staff, many commentators have criticized the Patent Office’s porosity.[50]  Nevertheless, fear of overly broad and market stifling patent monopolies is not peculiar to storyline method patents; it is a symptom of a distressed patent system as a whole.[51]  Efforts to fix the system would be more efficiently aimed at reducing porosity than at eliminating broad categories of patentable subject matter, such as entertainment, software, business methods or storyline methods.

C.        Enablement

A patent is not valid if it fails to “sufficiently disclose an invention to enable those skilled in the art to make and use it. . . .  [A]n examiner may reject a claim if it is reasonable to conclude that one skilled in the art would be unable to carry out the claimed invention.”[52]

“One of ordinary skill in the art” is a term of art that refers to a hypothetical person who is extraordinarily knowledgeable in the relevant technological art, but not particularly clever.[53]  As an example, one attorney has suggested that one of ordinary skill in the art of software engineering possesses: (a) a degree in software engineering from an accredited university; (b) professional certification or licensure; (c) a “comprehensive understanding” of modern software’s object-oriented paradigm; (d) “competency and proficiency” in a modern programming language; (e) a basic understanding and familiarity with hardware components; and (f) knowledge to account for quality, maintenance, and modification of a software product.[54]  Enablement does not require that the person of ordinary skill be capable of constructing a particularly valuable, efficient, or pretty embodiment of the invention—any working embodiment will do.[55]

The pending storyline patent applications have been charged with failing the enablement requirement because they

fail to describe the narrative methods necessary to achieve the stories that are the object of [the] claimed ‘process.’  [The] patents do not teach how to tell stories . . . [which are] replete with the usual narrative elements such as point of view, setting, theme, [and] characters. . . .  [I]nventors of these plots may be poor writers who are unable to turn their brilliant plot ideas into stories.[56]

This analysis fails on at least three levels.

             i.          One of Ordinary Skill in the Art of Storytelling is Capable of Creating a Story

from a Detailed Plot Description.

First, each of the currently pending storyline patent applications includes at least one full story embodying the claimed invention, including point of view, characterization, setting, theme, and dialogue.  No assertions are made that the stories in their current forms are marketable as short stories or economically valuable for their particular copyrightable expressions.  However, enablement under 35 U.S.C. § 112 does not require so much.[57]  The disclosures are far more than bare plot descriptions; the characters even have names.  They are, in a word, stories.  Nevertheless, for the moment, it will be assumed arguendo and consistent with the aforementioned criticism[58] that each of the applications discloses only a detailed plot description that somehow falls short of the prized title “story.”[59]  To determine enablement, the level of skill of the hypothetical “one of ordinary skill in the art” of storytelling must be determined.  Importing comparable characteristics from the art of software engineering,[60] perhaps a person skilled in the art of storytelling possesses a degree in English or writing from an accredited university, a certification or licensure based on a standardized test in the field of storytelling, a comprehensive understanding of the components and features of prose, and a competency and proficiency in modern and historical storytelling.  The currently pending storyline patent applications are therefore not enabled if and only if the aforementioned person is incapable of telling stories “replete with the usual narrative elements such as point of view, setting, theme, [and] characters”[61] that embody the claimed inventions, based on the applications’ detailed plot descriptions.  Said another way: the argument against enablement rests on the assertion that one skilled in the art of storytelling, who likely possesses, at a minimum, a degree in English or writing, is incapable of creating a developed story from a detailed plot description.  Similar reasoning leads to the conclusion that a trained chef is incapable of producing a hamburger from raw ground beef and a roll.  Just as an average seventh grader can cook a hamburger, she also probably knows how to tell a story based on a detailed plot description.  Whatever abilities one of ordinary skill in the art of storytelling possesses, they likely exceed the anecdotal talents of a seventh grader.

             ii.          A Patent Disclosing an Actual Embodiment of the Claimed Invention is Self-

Enabling.

Next, consider a patent on a novel rocket engine.  While 35 U.S.C. § 112 does not require so much, the patent would  clearly be enabled if it included step-by-step instructions so detailed that a common machinist could assemble the engine through mindless obedience.  However, the machinist must still follow the instructions; merely copying the instructions gets him nowhere.  Now consider a software patent, claiming both a method and an instruction-containing substrate,[62] whose specification discloses an actual embodiment of the claimed software in a modern computer language, such as C++.  Unlike a rocket engine, which is an apparatus that may be assembled from a set of instructions, software code fundamentally is a set of instructions,[63] such that software can be “assembled” from instructions merely by copying those instructions.  In this example, one of ordinary skill in the art is enabled to practice the claimed invention simply by verbatim copying the code from the patent to his computer, saving the code to his hard drive (i.e., an information-containing substrate), and subsequently executing the code.  By merely copying the code disclosed in the patent, even the least computer savvy technophobe can almost unconsciously use the claimed method and make the claimed substrate.  Certainly, one of ordinary skill in the art, arguably a degreed and licensed software engineering having a “comprehensive understanding” of object-oriented software and a “competency and proficiency” in a modern programming language,[64] would be enabled by far less disclosure than an actual embodiment of the claimed software, such as a sufficient description of the software’s “ultimate purpose and functionality.”[65]  Nevertheless, what is enabling to the lay person is enabling to the skilled artisan—i.e., disclosure of an actual embodiment of the claimed software is as good as it gets.[66]

Further, the author has previously suggested that because a modern computer-plus-optical-scanner system is indisputably capable of reading and subsequently executing printed software, even where the “software” is written in normal human language instead of a more efficient and standardized computer language, a software patent claiming an information-containing substrate is itself an embodiment of the claimed software.[67]  In other words, as soon as a person prints or copies an issued software patent, he has reproduced the invention.  To the extent that an intoxicated monkey is capable of clicking the “print” button on a computer screen, it is enabled to practice the claimed invention.[68]

Analogously, a story is information such that a story may be “assembled” by copying another story.  Each of the presently pending storyline patent applications[69] discloses at least one full story embodying the claimed invention.  Like a self-enabling software patent application disclosing an actual embodiment of the claimed invention, a storyline patent application is self-enabling to the extent that it discloses an actual embodiment of the claimed invention.  A person is enabled to practice a claimed storyline process, for example, by simply reading the disclosed story to another.  No embellishment or deviation is necessary—just literacy.  While the hypothetical “one of ordinary skill in the art” of fictional storylines has yet to be described, he is, at a minimum, literate.  Further, where a storyline patent application claims an information-containing substrate, a person is enabled to construct the claimed invention merely by printing the patent application.

            iii.         A Storyline Claim May Be Self-Enabling.

It has been demonstrated that a storyline patent application disclosure is enabling to the extent that it includes a detailed plot description, both because one of ordinary skill in the art can create the claimed story based on the description, and because any literate person can practice the claimed invention simply by copying or relaying the story-containing disclosure.  Finally, even a bare plot, such as the bare plot recited in the elements of a storyline claim, is a story in its rawest form.  35 U.S.C. § 112 does not require a storyline patent to enable one of ordinary skill in the art to create a blockbuster Hollywood hit or a bestselling novel.  35 U.S.C. § 112 does not even require enabling the performance of a disappointingly executed high school play.  A storyline patent need only enable one of ordinary skill in the art to practice the claimed invention.[70]  Where the claimed invention is a process of relaying a story comprising a set of four specific steps, for example, the patent specification need only disclose how to perform these four steps.  Complex characterization, witty dialogue, and intricate plot details are simply not necessary to relay a story in its rawest form.

For example, assume that the primary plot in Romeo and Juliet[71] was reduced to a process of relaying a story comprising the following steps: a) indicating that the family of a first character is at war with the family of a second character; b) indicating that the first and second characters fall in love; and c) indicating that a conflict caused by the first and second characters’ love causes the first and second characters to kill themselves.  A patent application claiming this plot need not teach how to write beautifully or to assemble prose in iambic pentameter.  In fact, the activity recited in step a), for example, is self-reflexive because the phrase “indicating that the family of a first character is at war with the family of a second character” indicates that the family of a first character is at war with the family of a second character.  Said another way, merely reading the above process claim to another tells the precise story claimed.  If the reader is skeptical on this point, we suggest reading the above process claim to another to determine if she subsequently identifies the story of Romeo and Juliet.  In other words, while the presently pending storyline patent applications, each containing developed stories embodying the claims, are almost certainly enabled, even an application containing only a bare plot description little fuller than the claims themselves is likely enabled.[72]

D.        Definiteness

A patent claim is not valid if it is indefinite—i.e., if it fails to “particularly [point] out and distinctly [claim] the subject matter which the applicant regards as his invention.”[73]  A patent claim is definite when “a person experienced in the field of the invention would understand the scope of the subject matter that is patented when the claim is read in conjunction with the rest of the specification.”[74]  Further, “[a] claim is not ‘indefinite’ simply because it is hard to understand when viewed without benefit of the specification.”[75]  In Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,[76] the court held that a claim reciting a front leg portion that “is so dimensioned as to be insertable” in a region of an automobile is definite, even though exact dimensions were not claimed, because “those skilled in the art would understand what is claimed when the claim is read in light of the specification,” and “[t]he phrase ‘so dimensioned’ is as accurate as the subject matter permits.”[77]  A possible charge to the validity of a storyline patent claiming methods having steps of “indicating”[78] is that the claims are not sufficiently definite.  The charge likely fails for at least two reasons.

            i.          One of Ordinary Skill in the Art of Storytelling Would Understand the Scope of

the Claims When Read in Conjunction With the Specification.

Previously, the level of “ordinary skill in the art” in storytelling was suggested as including a degree in English or writing from an accredited university; a certification or licensure based on a standardized test in the field of storytelling; a comprehensive understanding of the components and features of prose; and a competency and proficiency in modern and historical storytelling.  Consider the previously-suggested method claim for the motion picture Memento[79] and assume that the claim accompanies a patent specification including a detailed description of Memento’s plot; the description may contain a thorough and exhaustive description written in “patentese,” a complete script, or both.  This claim would be indefinite if and only if the aforementioned “one of ordinary skill in the art” would not “understand the scope of the subject matter that is patented when the claim is read in conjunction with the rest of the specification.”[80]

The first step in the suggested method claim is “indicating that a first character has an inability to retain long-term memories after a time in the timeline.”  In determining whether one of ordinary skill in the art would understand the scope of the invention, the first word to be considered might be “indicating.”  In each of the pending storyline patent applications, the word “indicating” is clarified:

As well known by those of ordinary skill in the art, there are many ways to indicate a fact in a movie or a book without any explicit words to that effect at all: circumstance, cinematography, subtly suggestive newspaper headlines, suggestive words by the protagonist or other characters, etc., can all be indicative of that fact.[81]

 

            One of ordinary skill in the art of storytelling, whatever expertise she possesses, certainly understands how to indicate something in a work of fiction.  For example, consider the definiteness of the following step: “indicating that a character is ill.”  One of ordinary skill in the art of storytelling might demonstrate that a character is ill by any of the following: describing the character’s ailments; recording a conversation between two characters suggesting or detailing the ill character’s illness; describing various implements associated with illness, such as thermometers, medications, bandages, feeding tubes, etc.; or describing emotions or emotional dialogue of characters associated with illness, such as a character crying at the bedside of the ill character, and so forth.  Further, because she knows how to indicate something, she necessarily understands the scope of the recited word “indicating” in that she understands which dialogue and descriptions in a movie script indicate that a character is ill.  Of course, descriptions in the specification of what constitutes “indicating” (such as explicit statements, circumstance, cinematography, music tone, implicit suggestions in the actions and dialogue of other characters, etc.) further clarify her understanding of the scope of a claim that includes a step of “indicating.”

Having addressed the word “indicating,” the remainder of the first step in the suggested Memento claim would not appear to be problematic.  For instance, one of ordinary skill in the art of storytelling would understand what it means for a first character to have an “inability to retain long-term memories after a time in the timeline,” particularly after reading a detailed description (which may include the script) of the Memento plot.  Because she knows what it means, she understands the scope of indicating it.  In other words, while there are lots of possible ways to indicate in a motion picture that a first character cannot retain long-term memories, one of ordinary skill in the art would recognize them all as falling within the claimed scope.  Since the remaining steps in the suggested Memento claim have exactly the same form—i.e., “indicating . . .”—they would not pose any further issues.

            ii.          “Indicating” is not Inherently Indefinite

One might argue that the word “indicating” is inherently indefinite because the object of the verb is a human mind.  In other words, unlike the step “attaching a transistor to a silicon substrate,” in which physical articles are the objects of the verb “attaching,” the step “indicating the angular position of a cylinder” has the human mind as the object of the verb “indicating.”  After all, an indicator light (such as an automobile dummy light) inherently indicates something to a person.

This objection fails.  First, the fact that the object of “indicating” or an “indicator” is a human mind is irrelevant to whether “a person experienced in the field of the invention would understand the scope of the subject matter that is patented when the claim is read in conjunction with the rest of the specification.”[82]  Second, most, if not all, indicators or steps of indicating have human minds as objects.  Nevertheless, the validity of the thousands of patents having claims including the words “indicating” or “indicator” has never been called into question on the basis of the definiteness of these words.[83]

Nevertheless, even if the judiciary found a problem with the word “indicating,” other verbs could be used to save storyline method claims from death by indefiniteness.  For example, the step “creating an image” is not inherently indefinite; a patentable television certainly would perform a patentable method of “providing the [patentable] television and creating an image.”  Moreover, “creating an image of a person” is likely no less definite than “creating an image.”  Finally, “creating an image of a person playing baseball” is probably no less definite than “creating an image of a person”; it also could be the beginning of a fictional plot.  In other words, the word “indicating” in the pending storyline patent applications could be replaced with the phrase “creating an image” (or a comparable phrase) should the former create trouble.

III.       First Amendment Concerns

Patents are strange animals.  Debates rage as to whether they are forms of property, monopoly, or private regulation.[84]  Like property, a patent allows a patentee to exclude others from using his patent.[85]  Unlike property, a fact often confused by the lay public, a patent does not give the patentee the right to practice his own invention, in part because use of his invention may infringe another’s patent.[86]  If patents are property of some sort, they assume the form of a property-based legal theory at times, allowing a patentee to seek preliminary injunction in a court of equity to prevent future infringement.[87] They also assume the form of a liability-based legal theory at other times, only allowing a patentee to seek remedy at law after infringement if a preliminary injunction would have amounted to an impermissible prior restraint.[88]  Professor Thomas of Georgetown University Law Center argues that since patents are drafted by private individuals, patents are more akin to federal regulation yielding “causes of actions in tort that applicants write for themselves.”[89]  In any event, a patent gives a patentee, a private actor, the right to prevent others from making, using, selling, offering to sell, and importing the claimed invention.[90]  Whether seen as a form of property, monopoly, or private regulation, a patent gives a patentee the right to prevent others from acting and, sometimes, speaking.  To what extent would free speech guarantees of the First Amendment clash with storyline patent rights?

A.        Patents and the State Actor Doctrine

Commentators have asserted that “the initial grant and the enforcement of storyline patents in specific instances would almost certainly violate the First Amendment’s free speech guarantee”[91] without any recognition (or perhaps realization) that the First Amendment’s guarantee of liberty in speech applies, with few exceptions, only against the government.[92]  For example, while political speech is arguably the most protected First Amendment speech, a trespassing speaker being forcefully ejected from private property would likely find resort to the Constitution unproductive, no matter how politically charged his speech.  In other words, the First Amendment does not provide a carte blanche against which any entity may speak at any time, particularly where private property interests are concerned.  Whether or not a patentee is limited by First Amendment principles rests largely on the state actor doctrine: “[w]hen the nominally private party performs a traditional government function, is controlled by a state entity, or engages in conduct that has been encouraged or substantially facilitated by the government, then the constitutional guarantees will apply.”[93]  Currently, no court has addressed the applicability of the state actor doctrine to patents, a prerequisite to barring issuance or enforceability of a storyline patent on constitutional grounds.

Professor Thomas discusses the state actor doctrine as applied in three cases in which a private entity was granted a license from the government. [94]  In Moose Lodge No. 107 v. Irvis, the Court held that the mere granting of a state liquor license to a private club does not convert the licensee into a state actor.[95]  In Jackson v. Metropolitan Edison Co., the Court held that even a heavily-regulated utility enjoying monopoly status does not act as the state.[96]  Finally, in San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, the Court held that Congress’ transfer of ownership of the word “Olympic” to a private corporation did not transform the entity into a state actor.[97]  Professor Thomas concludes that because “[p]atentees are subject to considerably less government entwinement than any of these other entities,” a private patentee is likely not a state actor.[98]  While there is a line of cases suggesting a more liberal view of the state actor doctrine where more compelling rights violations are involved (such as a libel action for political speech against a state official[99] and racial discrimination[100]), the decision to apply the state actor doctrine to a particularly difficult patent case may infect every future patent enforcement suit “with the entire panoply of constitutional defenses.”[101]  Therefore, a court would most likely view a patent as a private-property right akin to enabling a real-property owner to eject a trespasser who is loudly denouncing the government, in spite of the trespasser’s compelling rights to freedom of political speech.

The aforementioned commentators miss the boat entirely by (1) ignoring the state actor doctrine and (2) citing Harper & Row Publishers, Inc. v. Nation Enterprises[102] as standing for the proposition that the First Amendment tempers intellectual property rights (specifically, the Copyright Revision Act of 1976) “by permitting free communication of facts while still protecting an author’s expression.”[103]  In Harper, the Court repeatedly mentions “First Amendment values” while holding that unauthorized use of President Ford’s memoirs was not a “fair use” under Section 107 of the Copyright Act.[104]  However, in spite of First Amendment-style dicta and consistent with the fact that the state actor doctrine was not applied, the Court’s decision was grounded in the Copyright Act—not the First Amendment.[105]  The Court refused to allow the First Amendment to “expand[] the doctrine of fair use to create what amounts to a public figure exception to copyright.”[106]  In other words, not only is there a dearth of binding case law holding that a patentee is a state actor restricted by the First Amendment, but case law actually suggests the opposite.

B.         The Generally-Accepted Presumption that Patent Rights are not Limited by First Amendment Rights

While the specific issue of whether or not a patentee is a state actor restricted by constitutional free speech guarantees has never been litigated, and even if the state actor doctrine is momentarily (but impermissibly) ignored, the following analysis aims to demonstrate that Congress, the Judiciary, and private entities all act under the apparently generally-accepted presumption that a patentee is not so restricted.

            i.          Section 271 Includes Restrictions on Otherwise-Protectable Commercial Speech

While patent law is not ordinarily perceived to involve restricting speech or expression, the Patent Act specifically limits at least some commercial speech by granting a patentee the right to prevent others from offering to sell a patented invention.[107]  In DeSantis v. Hafner Creations, Inc.,[108] the district court held that a magazine advertisement—which is commercial speech ordinarily protected under the First Amendment[109]—for an allegedly-infringing gun holster was an infringing offer for sale actionable under Section 271(a).[110]  Further, the Federal Circuit held in 3D Systems, Inc. v. Aarotech Laboratories, Inc.,[111] that mailing letters to four companies describing products for sale and their prices was an infringing offer for sale, whether or not the letters created a contractual offer.[112]  Thus, Section 271(a) ensures a patentee the right to curtail certain otherwise-protected commercial speech—namely commercial speech amounting to an offer for sale of a patented invention.[113]  First Amendment defenses were never raised in these cases.  Apparently, asserting that a privately-acting patentee is a state actor subject to First Amendment limitations sounds ludicrous even to defendants.

            ii.          The Patent Office Regularly Issues, and Private Entities Regularly Enforce, Patents that Inherently Restrict Speech

Methods of creatively painting may be patentable.[114]  In addition, methods having the steps of querying a respondent[115], instructing a person to act[116], or engaging others to answer and discuss open-ended questions[117] may be patentable.  One issued patent relating to home improvement includes a claim step of “presenting the design ideas to a client.”[118]  “[M]ethods of teaching language, music, vocabulary acquisition, dialogue writing, and mathematics” have been patented in various forms.[119]  In each of these patents, execution of the claimed invention does not merely include the possibility of speech—it requires speech or expression in some form.  In some cases the invention requires expression which, when fixed in a tangible medium of expression,[120] is protected under the Copyright Act.[121]

While the Patent Office is not the final arbiter to determine if the First Amendment applies to patents, it acts as a rulemaking agency of the federal government charged with upholding the Constitution.[122]  To the extent that the Patent Office regularly issues patents that are so intertwined with speech that use of the patents requires expression—and in many cases even copyrightable creative expression—it implicitly asserts that the First Amendment is not a concern to the patent system.

Furthermore, the following examples suggest that private litigants employing high-priced attorneys do not seem to think highly enough of the argument that the First Amendment is applicable to private patentees to argue it.  In 2001, a federal court issued a restraining order prohibiting Juno Online Services, Inc. from practicing a patented method of competitor NetZero, Inc.[123]  The patent, which claimed a method of displaying advertisements in floating windows,[124] is inherently and intimately intertwined with otherwise-protected commercial speech; First Amendment concerns did not arise, however.[125]

First Amendment concerns may be relevant, however, in evaluating a patentee’s rights to the extent that a preliminary injunction could amount to an impermissible prior restraint.  While the specific case has not yet arisen, working analogies are instructive on the conflict between the First Amendment and other intellectual property rights.  For example, a company may recover against a defendant who unlawfully expropriates and disseminates a company’s protected trade secrets; in other words, a citizen has no First Amendment right to freely speak such secrets.[126]  Nevertheless, prior restraints are considered so heinous a form of censorship, even when one has threatened to disseminate valuable trade secrets, that “courts generally do not allow preliminary relief that restricts free speech” because “[a]ny short-term restriction of free speech that might ultimately be adjudicated constitutionally protected speech is unacceptable to a court.”[127]  Applying this analogy to the patent arena, a defendant’s appeal to the First Amendment is likely to be successful, if at all, only on the question of a preliminary injunction preventing the defendant from speaking in an infringing manner.

iii.         The Patentable and Copyrightable Nature of Software Teaches that Free Expression Fails to Restrict a Private Patentee’s Rights

Software is often touted as enjoying the privileged status of intellectual property that may be protected under both patent and copyright law.[128]  For example, a software patent claim might include an information-containing substrate configured to cause an appropriately-configured machine to execute the software’s function.  An actual embodiment of the software in the form of code (usually written in a modern programming language) is a fixation in a tangible medium of expression that is copyrightable .[129]  In other words, the expression of the actual embodiment is copyrightable while the idea embodied on a physical substrate or apparatus is patentable.  The dual nature of software protection is easily understood by recognizing that software, fundamentally a set of instructions,[130] is no more than information.  In that respect, software is comparable to the information found in a copyrightable novel, song, or newspaper article.

However, like a novel, the information in software is subject to—and in fact at times actually requires—creative expression.  If a novel is the creative embodiment of a raw plot, software is the creative embodiment of a raw function.  More particularly, software is expression that is indeed protected by the First Amendment,[131] but it is also capable of private restriction via patents and copyrights.

In Bernstein v. United States Department of State,[132] a Ph.D. graduate student studying electronic encryption challenged the requirement that he obtain a license to publish encryption software, which was allegedly controlled by the Arms Export Control Act.[133]  He contended that the software was protected First Amendment speech and the Arms Export Control Act served as an impermissible prior restraint on this speech.[134]  The district court agreed with Bernstein on the basis that “[t]he statutory language, along with the caselaw of numerous circuits, supports the conclusion that copyright protection extends to both source code and object code” and “[f]or the purposes of First Amendment analysis . . . source code is speech.”[135]  The court specifically rejected the contention that functionality reduces First Amendment protection by pointing out that “[i]nstructions, do-it-yourself manuals, recipes, even technical information about hydrogen bomb construction are often purely functional; they are also speech . . . .  Like music and mathematical equations, computer language is just that, language, and it communicates information either to a computer or to those who can read it.”[136]

Bernstein was directed to restrictions imposed by the federal government on First Amendment speech; software is a subset of protected First Amendment speech.[137]  While Bernstein asserts that all software code (even object code[138]) is protected First Amendment speech,[139] no court has ruled that these protections are applicable in limiting the rights of private copyright and patent holders attempting to recover for damages against an infringer, no matter how expressive or creative the infringing software is.

Software may itself be a form of expressive speech.  For example, consider a security technology developer who patents software for encrypting information to prevent unauthorized copying.  A rogue citizen, protesting the American regime of strong intellectual property protection, uses the patented software without a license to create and prolifically distribute decrypting software that overcomes the developer’s patented encryption scheme.  The protestor’s software is itself political speech that infringes the developer’s patent.  While this precise issue has never been litigated, common sense instructs that the developer would be able to recover for patent infringement.[140]  Patent law does not look to the purpose behind an infringer’s act.[141]  Unlike copyright law’s fair use, educational, and other statutory-infringement exceptions,[142] such exceptions are notoriously absent from patent law.  One who infringes a software patent for good reasons or bad, for profit or nuisance, for charged political propaganda or for fun, is still an infringer.

In addition, software may be the result of a primarily expressive effort – e.g., 99% creative and 1% functional—and nevertheless be fully protected under patent law.  For example, because writing software is as much art as science, a particular computer function may be implemented by uncountably many software embodiments.[143] Software engineering students in the course of fully understanding this fact might engage in a coding competition in which the student who drafts the most complicated, convoluted, and confused code for a predetermined simple function wins.  Yet, no matter how much creativity and expression were involved in such coding, the resulting software would infringe a patent if it executed the claimed method.[144]

Finally, software may include otherwise-protected expressive speech without restricting a copyright or patent holder’s rights.  Consider a would-be infringer who includes otherwise-protected First Amendment speech, such as politically charged messages, between the lines of copyrighted or patented source code.  To the dismay of the infringer who planned on bypassing the patent by invoking the First Amendment, patent law contains no statutory infringement exceptions.[145]  Moreover, the First Amendment is probably not a limitation on a software patentee suing for damage recovery.[146]

In essence, if software is speech for First Amendment purposes,[147] and it is also subject to private appropriation via both copyright and patent law,[148] common sense demands that the former not kill the latter.  While some commentators seem bothered by the apparent conflict between the simultaneous protection and private restriction of certain speech,[149] their confusion (but probably not their indigestion) may be assuaged by recognizing that a private patent owner bringing a lawsuit to recover damages against an infringer is, as previously discussed, not a state actor restricted by the First Amendment.

C.        Protected Speech Versus the Patent System

While binding case law suggests that—and government and private entities act as if—a patentee is not a state actor limited by the First Amendment, there is a far more persuasive reason that patentees should not be limited by the First Amendment: a binding decision that a patent owner is a state actor whose enforcement activities are trumped by any First Amendment concerns would all but annihilate patent rights.  Essentially, any time a potential infringer dressed up a patented apparatus or method with a sufficient quantity of creativity, expression, or otherwise-protected First Amendment speech, he would avoid liability. 

Consider, in the software arena, a would-be infringer who writes a fictional short story.  The story is then fed to a creatively-designed compiler that converts the fictional story to object code that causes a computer to execute a patented method.  Is the fictional story protectable First Amendment speech?  Indubitably.  For example, the United States would be prohibited from censoring or controlling publication of the short story based upon its content.[150]  Nevertheless, if the First Amendment could trump the private patentee’s rights to recovery for infringement, the protected story could, and presumably would, proliferate among those who used the story for the software code it contained, without any reward to the patentee.  Similarly, consider the software pirate who inserts politically-charged (but nonfunctional) messages throughout patented software code and distributes the code without authority from the inventor, knowing that his protected political speech will always overcome a charge of patent infringement.  Said another way: whether or not all software code is inherently First Amendment-protected speech,[151] all software code can be converted into First Amendment-protected speech, whether by using the code as speech, expressively writing it, embedding it with speech, or reading it as speech.  Thus, if the First Amendment kills a patentee’s right to recover for infringement of his software patent, then he has, de facto, no patent rights at all.  Every valuable software patent would be lawfully infringed via the First Amendment loophole.

The above examples do not only apply to software patents.  Most, if not all, patented processes, machines, manufactures, and compositions of matter[152] could be converted into First Amendment-type speech.  Consider, for example, a would-be infringer of a valuable patented consumer product who, while otherwise impermissibly manufacturing the product, needlessly but expressively shapes or dresses the product to invoke the First Amendment trump against patent infringement.  Subsequently, he could profit from selling the pirated product without paying any royalty to the inventor.  Consider a would-be infringing user of a pirated video camera who asserts that her regular artistic uses of the camera constitute a First Amendment bar against patent infringement recovery by the uncompensated inventor.  Consider a would-be infringer who manufactures, sells, and profits from a patented airplane.  To escape the obligation to pay or even notify the patentee, he hires an artist to paint a First Amendment-type message on the side of each plane.  The examples are endless, as virtually every patent could be infringed in a manner that was expressive, creative or otherwise protectable under the First Amendment.  In such a regime, to the extent that a patented invention is made or used in any First Amendment-protected context, the inventor would go unrewarded for her contribution, and patent rights would exist in name only.

IV.       Quid Pro Quo and Conclusion

In 1880, Thomas Edison was incentivized by a robust patent system to conceive of the electric light bulb.[153]  The seventeen years[154] paid in patent exclusivity to Edison by the American populace in exchange for public disclosure and commercial availability of the incandescent bulb is indisputably dwarfed by royalty-free public use after his patent expired, which was over one-hundred years ago.  However, while the value of the electric light bulb will, given sufficient time, likely dim to more efficient light sources, a compelling fictional plot is an unbreakable diamond that will die only with humanity.  If the electric light bulb’s astronomical bang per buck is the poster child of a successful patent law regime at its best, how much more impressive would a regime be that induced inventors to create value having effectively infinite life, all for the low, low price of less than seventeen years of exclusivity?[155]

Even the most liberal critics of the U.S. patent system—e.g., those who oppose software patents and patents on essential pharmaceutical products—do not seem to doubt that information-processing apparatus, such as silicon microprocessors, should be (and are) patentable.  Amazingly, because of the exceptionally short market life of each patentably-distinct microprocessor improvement relative to the patent system’s twenty-years-from-filing monopoly grant, a patentee effectively owns that improvement for its entire useful life.[156] Of course, microprocessors are the extreme example, but virtually every inventive field of endeavor is rife with inventions whose valuable life ended or will end before expiration of the associated patent.[157] In fact, the incandescent light bulb’s useful life in excess of a century is the exception, not the rule.

In sharp contrast, the useful life of a fictional plot unarguably exceeds the life of any patent on it and, as suggested, could be effectively eternal.  While personal vehicles powered by steam are almost certainly a distant memory never again to reemerge, an incredibly good storyline is likely to reappear generation after generation until humanity ceases to exist.  If the purpose of the patent system is quid pro quo, whereby the public obtains the benefits of prolific, incentivized inventing coupled with early public disclosure in exchange for a limited private property right, then how can one argue that the patent system succeeds in cases where the entire value of the invention is enjoyed during the patent term, but fails in cases where the value extends long after the patent term?

One may argue that a patented microprocessor is still valuable to the public even when the particular microprocessor is obsolete, because the public disclosure allowed other inventors to improve on the device.  While that may be true, that argument is no less potent in the case of patented storylines.  In other words, on sum, the price per benefit paid by the public for storyline patents is necessarily and significantly less than that for all other patents.  If the concept of quid pro quo is to have any meaning and credibility in the U.S. patent system, then storyline patents are at least as beneficial as other patents to the American public.

In spite of various concerns to the contrary, storyline patent applications probably do not inherently fail any statutory test, even if many particular applications would fail under at least one of the definiteness, novelty, and nonobviousness standards.  Further, First Amendment concerns will probably fail to prevent the issuance and enforcement of storyline patents, in part because a patentee is a private actor enforcing private property rights, and in part because the extent to which the First Amendment forecloses storyline patents is the extent to which the same rule of law would predictably destroy the entire patent system.  Concerns about stifling creativity, patent overbreadth, and destructive economics induced by the litigiousness of so-called “patent trolls” are generic to the patent system as a whole.  If these dangers and economic costs are indeed outweighed by reciprocal benefits to the public, then champions of the U.S. patent system will recognize that storyline patents have the potential to impart at least the same net benefit as other patents.


[1] Andrew F. Knight is the proprietor of Knight & Associates (www.PlotPatents.com), the inventor and owner of nine U.S. patents and 18 pending patent applications, and the first person to apply for a utility patent claiming a fictional storyline.  Mr. Knight may be reached at info@plotpatents.com.

[2] See U.S. Patent Application No. 20050244804 (filed Nov. 28, 2003) (published Nov. 3, 2005); U.S. Patent Application No. 20050255437 (filed May 17, 2004) (published Nov. 17, 2005); U.S. Patent Application No. 20050272013 (filed June 7, 2004) (published Dec. 8, 2005); U.S. Patent Application No. 20050282140 (filed June 17, 2004) (published Dec. 22, 2005) (all entitled “Process of relaying a story having a unique plot”) [hereinafter collectively Storyline Patent Apps.].

[3] 35 U.S.C. § 101 (2006).

[4] Storyline Patent Apps., supra note 2.

[5] Andrew F. Knight, A Potentially New IP: Storyline Patents, 86 J. Pat & Trademark Off. Soc’y 859, 867 (2004).

[6] Id. at 868-70.

[7] Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).

[8] Id. (suggesting the law of gravity and Einstein’s famous mass-energy relationship are unpatentable laws of nature.)

[9] Id. (suggesting naturally occurring minerals and plants are natural phenomena.)

[10] Id.  Mathematical algorithms were at one time considered unpatentable abstract ideas.  See Diamond v. Diehr, 450 U.S. 175, 187 (1981) (recognizing that the mere application of a well-known mathematical equation by a computer to an otherwise patentable process does not of itself kill patentability.) 

[11] State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1373 (Fed. Cir. 1998).  The mathematical algorithm exception was effectively put to rest by the Court to the extent that a claimed invention produces a “useful, concrete and tangible result.”  Id.  In other words, an idea is not impermissibly abstract under 35 USC § 101 where it produces such a result. 

[12] Knight, supra note 5, at 860, 868–69.  But see In re John Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (holding that a kit including instructions describing a patentable method was not a patentable article of manufacture because the set of instructions was “printed matter” that “was not ‘functionally related’ to . . . [and did] not interrelate with the kit.”)  This recent and unfortunate revival of the Printed Matter Doctrine represents a poor judicial understanding of the nature of software.  Software, which is nothing more than the information necessary to cause an appropriately configured machine to perform a desired function, may currently be claimed as a method, a system including a computer processor, and an information-containing article of manufacture.  The latter, which is merely a set of instructions encoded on a substrate in a manner functionally unrelated to the substrate, should not be allowable under the Printed Matter Doctrine.  Thus, until the Court strikes down either the Printed Matter Doctrine or the allowability of article-of-manufacture software claims, it beds inconsistency and contradiction.  See generally Andrew F. Knight, Software, Components, and Bad Logic: Recent Interpretations of Section 271(f), 87 J. Pat. & Trademark Off. Socy 493 (2005) [hereinafter Software, Components, and Bad Logic].

[13] See, e.g., Daniel Fisher, Box Office Patents, Forbes.com, Aug. 15, 2005, http://www.forbes.com/work/2005/08/15/patent-movies-scripts-cz-df_0812script.html; see also Andrew Kantor, A Novel Idea, The Roanke Times, Nov. 27, 2005, Business 1; Tresa Baldas, No Tall Tale: Patent Filed for a Fictional Storyline Could Meet ‘Utility Requirement,’ but May Open Pandora’s Box, 28, No. 12, 11/21/2005 Nat’l L.J. 6 (2005); Greg Aharonian, Patenting Movies and Music?, 27, No. 7 Ent. L. Rep., 4, 4 (2005). 

[14] See, e.g., Recent Development: Pure Fiction: The Attempt to Patent Plot, 19 Harv. J.L. & Tech 231, 234–35, 240–42 (2005) [hereinafter Pure Fiction] (asserting that storyline patent applications will likely fail under the subject matter requirements, enablement, the First Amendment, and public policy); see also Lewis R. Clayton, ‘Lundgren’ and Limits, 28, No. 16, 12/19/2005 Nat’l L.J. 18 (asserting that storyline patent applications will likely fail under subject matter requirements, novelty and nonobviousness, indefiniteness, and enablement).

[15] Knight, supra note 5.

[16] 35 U.S.C. §§ 101, 102, 103, and 112.

[17] 35 U.S.C. § 101.

[18] 447 U.S. at 309.

[19] Id

[20] Id

[21] 149 F.3d at 1373. 

[22] Knight, supra note 5, at 868.

[23] See generally Software, Components, and Bad Logic, supra note 12.

[24] Id.  However, because of various problems that arise with the patentability of articles of manufacture containing only process information (such as CD-ROMs, DVDs, disks, or books) that do not arise with the patentability of the processes themselves, the present article will discuss and advocate only for the allowability of storyline method claims.

[25] Pure Fiction, supra note 14, at 235.

[26] Pure Fiction, supra note 14, at 237-8.

[27] Id. at 238.

[28] Robert A. Kreiss, Patent Protection for Computer Programs and Mathematical Algorithms: The Constitutional Limitations on Patentable Subject Matter, 29 N.M L. Rev. 31, 62, 65 (1999). 

[29] Amazingly, the (now clearly false) assumption that “no one would imagine obtaining a patent” for fictional movies is used as evidence for the author’s contention that a “technological arts” requirement exists and precludes the patentability of movies.

[30] Ex parte Carl A. Lundgren, No. 2003‑2088, 76 U.S.P.Q.2d 1385, 1385 (Bd. Pat. App. & Int. 2005).

[31] Id. at 1386.

[32] Id. at 1387.

[33] Id. at 1386.

[34] Id. at 1387.

[35] Id. at 1388.

[36] See id. at 1387 (citing In re Musgrave, 431 F.2d 882, 893 (CCPA 1970), In re Toma, 575 F.2d 872, 877–78 (CCPA 1978), and Ex parte Bowman, 61 U.S.P.Q.2d 1669 (Bd. Pat. App. & Int. 2001) (non-precedential)).

[37] 409 U.S. 63 (1972).

[38] Lundgren, 76 U.S.P.Q.2d at 1387.

[39] In most cases, the intention is probably toward improvement, although one might argue that much technology (such as weapons) was intended to worsen the human condition.

[40] See, e.g., Game for two people in a relationship and method of play, U.S. Patent No. 6,631,904 (filed March 21, 2001) (issued Oct. 14, 2003); Dinner party conversation generator, U.S. Patent No. 6,464,222 (filed March 21, 2000) (issued Oct. 15, 2002).

[41] See, e.g., Method of putting, U.S. Patent No. 5,616,089 (filed March 29, 1996) (issued Apr. 1, 1997).

[42] See, e.g., Painting kit and related method, U.S. Patent No. 6,022,219 (filed Dec. 18, 1998) (issued Feb. 8, 2000).  See generally John R. Thomas, The Patenting of the Liberal Professions, 40 B.C. L. Rev. 1139 (1999).

[43] 172 F.3d 1352, 1358 (Fed. Cir. 1994).

[44] This does not imply, of course, that the virtual reality ride is patentable, for it may fail other statutory requirements—e.g., the virtual ride may have been obvious in light of existing prior art, a failure under 35 U.S.C. § 103.

[45] If one attempts to argue that it is the very use of LCD displays and microprocessors that puts the virtual reality ride in the realm of patentable technology, the same argument would clearly apply to fictional motion pictures, which are displayed by means of projectors, electronic displays, electric speakers, microprocessors, DVDs and DVD players, VHS tapes and players, film rolls, and so forth.

[46] This example is reminiscent of the scene in the motion picture Vacation in which fictional character Clark Griswold and his WallyWorld hostage arrive at and subsequently fall from the peak of a roller coaster. VACATION, Nat’l Lampoon (1983).

[47] 35 U.S.C. § 102 includes many paragraphs, all loosely referred to as “novelty.”  For example, under § 102(a), an inventor is not entitled to a patent if “the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the application for patent.”

[48] 35 U.S.C. § 103(a) (2006).

[49] See, e.g., Pressurizer for a Rocket Engine, U.S. Patent No. 6,499,288 (filed June 12, 2001) (issued Dec. 31, 2002).

[50] See, e.g., John R. Thomas, The Responsibility of the Rulemaker: Comparative Approaches to Patent Administration Reform, 17 Berkeley Tech. L.J. 727, 731 (2002) (questioning how use of a vending machine does not anticipate Amazon.com’s arguably overly broad patent claiming single action purchasing).

[51] Id. at 728.

[52] In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991); see also 35 U.S.C. § 112 ¶ 1 (2006).

[53] For example, one argument detailed in § 2143.01 of the Manual of Patent Examining Procedure for overcoming a rejection based on the combination of two references under § 103 is that neither reference nor the general knowledge of one of ordinary skill in the art teaches or suggests the desirability of combining the references.  In other words, one of ordinary skill in the art will not combine element A from a first reference and element B from a second reference to form a combination invention A+B unless he is told to do so!

[54] Lance D. Reich, One of Skill in the Art in Software Engineering: The Rising Tide, 84 J. Pat & Trademark Off. Soc’y 269, 278–84 (2002).

[55] In fact, disclosure of a working embodiment is not even necessary if one skilled in the art can practice the invention without undue experimentation.  See, e.g., Atlas Powder Co. v. E.I. Du Pont de Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984) (holding that disclosure in the patent of numerous salts, fuels, and emulsifiers that could form thousands of emulsions, without commensurate teaching as to which combinations would work, did not fail enablement, even where some of the claimed combinations were inoperative).

[57] Supra text accompanying notes 52-55.

[58] Supra text accompanying note 14.

[59] Realistically, there could be no legally cognizable distinction between a plot description and a story, as a detailed plot description is a story, even if less interesting, detailed, or marketable.  The plot summary in a book review is a story per se, even to the extent that it lacks setting, dialogue, characterization, and other features of a more developed story.

[60] Reich, supra note 54.

[61] Pure Fiction, supra note 14, at 242.

[62] Software patents often include claims directed both to the methods performed by the software as well as machine-readable substrates containing information causing an appropriately configured machine to perform the methods.

[63] Software, Components, and Bad Logic, supra note 12, at 494.

[64] Reich, supra note 54.

[65] Id.

[66] Extremely skilled software engineers are capable of drafting code so complicated and confusing as to convolute the software’s true function to prevent reverse engineering and maintain trade secrets.  While disclosure of such code would enable one of ordinary skill in the art to practice the claimed invention—merely via copying and executing the code on a computer—disclosure of only such code in a patent application would not satisfy the quid pro quo purpose of patent law, and would likely fail both the written description and best mode requirements of § 112.  For an interesting discussion of the difference between the enablement and written description requirements, see Robert Greene Sterne et al., The Written Description Requirement+, 37 Akron L. Rev. 231 (2004).  Further, if one of ordinary skill in the art were enabled to practice the claimed invention only by copying the disclosed code (such as where the code is meticulously convoluted for trade secret purposes), a Constitutional issue could arise under Article I, Section 8, Clause 8 (authorizing Congress to award patents and copyrights), because the entire value of such code would arguably be fully protected under Copyright law, and thus would not be eligible for additional protection under patent law.  However, to the extent that one of ordinary skill in the art is enabled to practice the invention in copyrightably distinct ways—e.g., by providing him the tools to create different code having the same underlying function—this Constitutional issue should not arise.

[67] Software, Components, and Bad Logic, supra note 12, at 505–06.

[68] Unfortunately, a poor understanding by the Federal Circuit of the nature of software has led to the disastrous but previously unrecognized result that the mere printing of an issued software patent is also an infringing “making” of the claimed invention under § 271.  See Software, Components, and Bad Logic, supra note 12, at 512.  For this reason alone, software should be patentable only as processes or complete computer systems, not simply as information-containing substrates.  The currently pending storyline patent applications each claims information-containing substrates, such as books and DVDs, with the recognition that while such apparati should not be patentable, they are probably no less patentable than currently allowable software apparati.

[69] Storyline Patent Apps., supra note 2.

[70] Supra text accompanying notes 52-55.

[71] William Shakespeare’s classic screenplay would never be available for expropriation from the public domain via a patent system that embraces storyline patents in part because § 102(b) includes as anticipating prior art all publications older than one year.

[72] However, such a patent application would not satisfy the quid pro quo purpose of patent law, and would likely fail both the written description and best mode requirements of § 112.

[73] 35 U.S.C. § 112, ¶ 2.

[74] S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001); see also Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (“If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.”)

[75] 259 F.3d at 1369.

[76] 806 F.2d 1565 (Fed. Cir. 1986).

[77] Id. at 1576.

[78] Knight, supra note 5, at 867–68.

[79] Id. at 867.

[80] S3 Inc., 259 F.3d at 1367.

[81] See, e.g., U.S. Patent Application No. 20050244804 at ¶ 52 (filed Nov. 28, 2003) (published Nov. 3, 2005).

[82]  S3 Inc., 259 F.3d at 1367.

[83] See, e.g., Creo Prods., Inc. v. Presstek, Inc., 305 F.3d 1337, 1342 (Fed. Cir. 2002) (discussing the definiteness of claims reciting “receiving position information indicating the angular position of said cylinder” on grounds other than the definiteness of the word “indicating”); see also Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 937 (Fed. Cir. 1987) (discussing the validity of claims reciting “continuously indicating the position of an item to be sorted” on grounds other than the definiteness of the word “indicating”).

[84] Thomas, supra note 50, at 741.

[85] 35 U.S.C. § 271(a) (2006).

[86] See, e.g., Alison Marcotte, Concurrent Protection of Products by Patent and Trade Dress: Use of the Functionality Doctrine in Marketing Displays, Inc. v. TrafFix Devices, Inc., 36 New Eng. L. Rev. 327, 357 (2001).

[87] Andrew Beckerman-Rodau, Prior Restraints and Intellectual Property: The Clash Between Intellectual Property and the First Amendment from an Economic Perspective, 12 Fordham Intell. Prop. Media & Ent. L.J. 1, 11-18 (2001).

[88] Id. at 26-31.

[89] Thomas, supra note 50, at 741.  I heartily disagree.  A patent is more analogous to a federal law, drafted by a private citizen and skilled attorney, mailed to his U.S. Representative as a mere suggestion, and subsequently proposed, amended, and passed as a bill.  The House passed the bill—not the citizen—although the citizen certainly helped.

[90] 35 U.S.C. § 271(a).

[91] Pure Fiction, supra note 14, at 242.

[92] John R. Thomas, Liberty and Property in the Patent Law, 39 Hous. L. Rev. 569, 592 (2002).

[93] Id. at 592–93 (footnotes omitted).

[94] Id. at 597–99.

[95] 407 U.S. 163, 175–78 (1972)

[96] 419 U.S. 345, 358–59 (1974).

[97] 483 U.S. 522, 544 (1987).

[98] Thomas, supra note 92, at 598 (Professor Thomas also notes the surprising conclusion that a patentee could, consistent with the Constitution, limit speech in a manner impermissible to the government.).

[99] See N.Y. Times Co. v. Sullivan, 376 U.S. 254, 283 (1964) (holding that the First Amendment bars a libel action against a newspaper for publishing an advertisement about a public official acting in his official capacity).

[100] See Shelley v. Kraemer, 334 U.S. 1, 20 (1948) (holding that judicial enforcement of private racially-restricted covenants constitutes state action).  Shelley’s holding has been considerably narrowed by subsequent decisions and its precedential value has been limited.  Thomas, supra note 94, at 602.  Further, both New York Times Co. and Shelley were decided amidst a nation torn by politics of race.  The judicial determination of the viability of storyline patents, on the other hand, is unlikely to be so influenced.

[101] Thomas, supra note 92, at 606.

[102] 471 U.S. 539 (1985).

[103] Pure Fiction, supra note 14, at 243 (quoting Harper & Row Publishers, Inc., 471 U.S. at 556).

[104] Thomas, supra note 92, at 600.

[105] Harper & Row Publishers, Inc., 471 U.S. at 559–60; Thomas, supra note 92, at 600.

[106] Harper & Row Publishers, Inc., 471 U.S. at 559–60; Thomas, supra note 94, at 600.

[107] See 35 U.S.C. § 271(a) (2006).

[108] 949 F. Supp. 419 (E.D. Va. 1996).

[109] See, e.g., Beckerman-Rodau, supra note 87, at 34.

[110] DeSantis, 949 F. Supp. at 426.

[111] 160 F.3d 1373 (Fed. Cir. 1998).

[112] Id. at 1379; see Beckerman-Rodau, supra note 87, at 35.

[113] See Beckerman-Rodau, supra note 87, at 35.

[114] See, e.g., Painting Kit and Related Method, U.S. Patent No. 6,022,219 (filed Dec. 18, 1998) (issued Feb. 8, 2000).

[115] See, e.g., Method and Apparatus for Administering a Survey, U.S. Patent No. 6,093,026 (filed July 6, 1998) (issued July 25, 2000).

[116] See, e.g., Character Assessment Method, U.S. Patent No. 5,190,458 (filed Apr. 17, 1991) (issued Mar. 2, 1993).

[117] See, e.g., Dinner Party Conversation Generator, U.S. Patent. No. 6,464,222 (filed Mar. 21, 2000) (issued Oct. 15, 2002).

[118] Method for Designing and Illustrating Architectural Enhancements to Existing Buildings, U.S. Patent No. 5,668,736 col.5 l.11 (filed Jan. 25, 1995) (issued Sept. 16, 1997).

[119] Thomas, supra note 92, at 590 (footnotes omitted).

[120] See 17 U.S.C. § 101 (2006).

[121] See 17 U.S.C. § 106 (2006).

[122] Thomas, supra note 92, at 613–14.

[123] Nancy Weil, NetZero Suit Hits Juno with Restraining Order, Network World, Jan. 8, 2001, available at 2001 WLNR 11763442.

[124] Communication System Capable of Providing User with Picture Meeting Characteristics of User and Terminal Equipment and Information Providing Device Used for the Same, U.S. Patent No. 6,157,946 col.1 ll.56–67 (filed Aug. 26, 1998) (issued Dec. 6, 2000).  See also Thomas, supra note 92, at 589.

[125] Thomas, supra note 92, at 589.

[126] See, e.g., Universal City Studios, Inc. v. Corley, 273 F.3d 429, 458 (2d Cir. 2001) (holding that the First Amendment does not permit a person to publish secret DVD decryption software).

[127] Beckerman-Rodau, supra note 87, at 26–27.

[128] See, e.g., Mark H. Webbink, A New Paradigm for Intellectual Property Rights in Software, 2005 Duke L. & Tech. Rev. 12, ¶29 (2005).

[129] See 17 U.S.C. § 101 (2006).

[130] E.g., Software, Components, and Bad Logic, supra note 12, at 494.

[131] Universal City Studios, 273 F.3d at 449-50.

[132] 922 F. Supp. 1426 (N.D. Cal. 1996).

[133] Id. at 1430–31.

[134] Id.

[135] Id. at 1436.

[136] Id. at 1435.

[137] Id.

[138] But see Patrick Ian Ross, III. First Amendment c) Computer Programming Language: Bernstein v. United States Department of State, 13 Berkeley Tech. L.J. 405, 409–10 (1998) (arguing the insufficiency of the Bernstein court’s analogies between software and other speech, such as music).  Further, for a hearty discussion on the distinction between software-as-function and software-as-expression, and whether or not software is speech for First Amendment purposes, see Dan L. Burk, Patenting Speech, 79 Tex. L. Rev. 99

(2000).

[139] Bernstein, 922 F. Supp. at 1435.

[140] See, e.g., Universal City Studios, supra note 125, at 458.  Patent issues did not arise in Universal City Studios because the encryption code was not patented.  The Court had no trouble applying traditional American principles of strong intellectual property protection, however, to conclude that the First Amendment is not a loophole to justify the expropriation of an individual’s intellectual property.  See id.

[141] See 35 U.S.C. § 271(a) (2006).

[142] See, e.g., 17 U.S.C. § 107 (2006).

[143] Software is simply a set of instructions to cause an appropriately configured machine to execute a desired function.  Software, Components, and Bad Logic, supra note 12, at 494.  Intuitively, as there are many ways (i.e., sets of instructions) to make a peanut butter and jelly sandwich (i.e., the desired function), there are many possible software embodiments for any desired computer function.

[144] See 35 U.S.C. § 271(a).

[145] 35 U.S.C. § 271.

[146] See generally Thomas, supra note 92, at 588-606.

[147] See Bernstein, 922 F. Supp. at 1435.

[148] See Webbink, supra note 128, at ¶29.

[149] See, e.g., Mark A. Lemley & Eugene Volokh, Freedom of Speech and Injunctions in Intellectual Property Cases, 48 Duke L.J. 147, 149–51 (1998).

[150] There are but a handful of specific exceptions to this rule, such as in the cases of fighting words, obscenity, and incitement of illegal activity.  See, e.g., Beckerman-Rodau, supra note 87, at 27.

[151] For example, there is debate as to whether bare object code counts as speech for First Amendment purposes.  See, e.g., Burk, supra note 136.

[152] See 35 U.S.C. § 101 (2006).

[153] See, e.g., Electric Lamp, U.S. Patent No. 223,898 (issued Jan. 27, 1880).

[154] The Patent Act of 1861 increased the term of a patent grant from 14 to 17 years from issue.  Effective 
June 8, 1995, U.S. patent law was amended to change the patent term to twenty years from the earliest 
effective filing date.  See 35 U.S.C. § 154 (2006).  Because a patent typically issues more than three years 
after filing, the effective available patent term for applications filed after June 8, 1995 is often less than seventeen 
years.

[155] See supra note 146 and accompanying text.

[156] For example, a particular patented silicon microchip that is rendered obsolete in three years enjoyed patented status during its entire useful life.

[157] Only approximately 42.5% of U.S. patents are maintained beyond their twelfth year, indicating that the economically valuable life of the remaining patents ended before the entire potential twenty-year term.  Johnathan A. Barney, Comparative Patent Quality Analysis: A Statistical Approach for Rating and Valuing Patent Assets, PatentRatings.com, http://www.patentratings.com/001/nacv_white_paper.sv (last visited June 21, 2005).

 

 


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