The literature on intellectual property (IP) rights has overwhelmingly focused on their birth, life, and enforcement. Rare indeed have been articles about how and why those rights cease to be enforceable.
In How IP Ends, Fagundes and Perzanowski have written the first comprehensive article about different ways that IP rights can cease to exist for the four most common IP regimes (e.g., patents, copyrights, trademarks, and trade secrets) through what they call “terminal mechanisms”: expiration, abandonment, forfeiture, and two types of invalidations (distinguished below).
The article’s first section provides a taxonomy of these terminal mechanisms to enable IP scholars to overcome the “impoverished vocabulary” we have historically had to discuss various ways that IP rights can end. The taxonomy aims to sharpen distinctions among the mechanisms, such as abandonment and forfeiture, which IP scholars and judges sometimes fail to appreciate.
Abandonment, the article observes, requires (or at least should require) a subjective intent to relinquish IP rights, coupled with an overt act manifesting that intent. Forfeiture, by contrast, is an unintentional relinquishment of rights (e.g., as when an author of a work forgets to file for a renewal of her copyright).
IP scholars and courts sometimes loosely refer to these two concepts as if they are the same thing. Fagundes and Perzanowski maintain that their emphasis on sharpening such distinctions is “more than terminological scolding.” It is instead a way to enrich our understanding of the mechanisms and their role in the IP system, and improve our vocabulary about them.
Another important distinction they make is between ex post invalidation and ab initio invalidation. The authors define ex post as a type of invalidation in which the IP right was at one time valid and enforceable, but ceases to be valid owing to changed circumstances (e.g., a once valid trademark becomes generic for a type of product). Ab initio invalidation, by contrast, is defined in terms of IP rights that were granted, but are subsequently determined to be invalid (e.g., a patent that gets struck down on obviousness grounds).
Although ab initio invalidations are about IP rights that should never have been recognized, those rights may have been plausibly claimed and the claimants may have asserted them against others or persuaded third parties to license. These claimed rights have a practical significance that deserves to be recognized. After all, IP laws do not require claimants of ab initio invalid IP rights to pay back, after invalidation, any royalties they may have collected when asserting those rights against some users.
A second section of How IP Ends discusses various policy rationales for IP right terminations. Most familiar is enrichment of the public domain after patents and copyrights expire. Another familiar rationale is the role that IP terminations play in screening out low value IP rights (e.g., when a patentee decides not to pay a maintenance fee because it regards the patent as no longer sufficiently valuable to justify paying the fee). A third familiar rationale is correcting errors (e.g., PTAB reviewing patent claims based on prior art patent examiners missed).
The most surprising category of the policy rationales described in the Article is that which promotes IP rights’ autonomy interests. If I as a creator have rights in a particular IP asset and I decide I want to relinquish those rights, then my personal autonomy interests give me power to do this. While I agree that there is something to be said about this, it seems an unlikely rationale for ending IP rights in the modern era.
The most stimulating and intellectually rich part of How IP Ends is its third section which presents a series of thought experiments about how IP rights could end differently. The authors pose the question: what about creating a termination mechanism for patents or copyrights (especially the latter) if the right holder fails to exercise those rights after a period of time? After all, trademark rights can cease to exist after long periods of nonuse, so why not other forms of IP?
Reinstating formalities in copyright law is another mechanism the authors consider. It used to be so easy to dedicate original works of authorship to the public domain (e.g., publishing copies of the works without copyright notices). Now there are too many copyrights and no certain way to dedicate them to the public domain. Bringing back formalities at least for U.S. works is possible, even if unlikely, but it is a good thought experiment topic.
And why shouldn’t trade secrets and trademarks expire like patents and copyrights do? These and other questions will tease the minds of all thoughtful IP scholars. This is an article that really needed to be written.
