Scope
Authors: Lemley Mark 
Published: July 2018

Intellectual property (IP) law doctrines fall into three basic categories:validity, infringement and defenses. Virtually every significant legaldoctrine in IP is either about whether the plaintiff has a valid IP rightthat the law will recognize – validity – about whether what the defendantdid violates that right – infringement – or about whether the defendant issomehow privileged to violate that right-defenses.IP regimes tend to enforce a more or less strict separation between thesethree legal doctrines. They apply different burdens of proof and persuasionto infringement and validity. In many cases they ask different actors todecide one doctrine but not the other. The U.S. Patent and TrademarkOffice, for example, decides questions of patent and trademark validity butnot questions of infringement. Even in court, resolution of one issue isoften allocated to a judge while the jury decides a different issue. Andeven where none of that is true, the nature of IP law is to categorize anargument in order to apply the proper rules for that argument.The result of this separation is that parties treat IP rights “like a noseof wax, which may be turned and twisted in any direction.” Wheninfringement is at issue, IP owners tout the breadth of their rights, whileaccused infringers seek to cabin them within narrow bounds. When it comesto validity, however, the parties reverse their position, with IP ownersemphasizing the narrowness of their rights in order to avoid having thoserights held invalid and accused infringers arguing the reverse.Because of the separation between validity, infringement, and defenses, itis often possible for a party to successfully argue that an IP right meansone thing in one context and something very different in another. Andcourts won’t necessarily detect the problem because they are thinking ofonly the precise legal issue before them.The result is a number of IP doctrines that simply make no sense to anoutsider. In patent law, for instance, it is accepted law that there is no“practicing the prior art” defense. In other words, one can be held liablefor doing precisely what others had legally done before, even though apatent isn’t supposed to cover things people have already done. In designpatent law, one can be held liable for making a design that an “ordinaryobserver” would find too similar to a patented design, even though thethings that make the two look similar – say, the roundness of the wheels onmy car – are not things the patentee is entitled to own. In copyright, oncea court has concluded that someone has actually copied from the plaintiff,a song will sometimes be deemed infringing because of its similarity to aprior song, even if the similarity is overwhelmingly attributable tounprotectable standard components of the genre. And in trademark, a partycan be deemed infringing because its products look to similar to theplaintiffs’ mark and therefore make confusion likely, even if thatconfusion is likely caused by non-source-designating features of the design.The culprit is simple, but fundamental: IP regimes largely lack anintegrated procedure for deciding the proper extent of an IP right. Theproper scope of an IP right is not a matter of natural right or immutabledefinition. Rather, it is a function of the purposes of the IP regime. Butwithout some way of assessing how broad an IP right is that considersvalidity, infringement, and defenses together, courts will always be proneto make mistakes in applying any one of the doctrines.In this article, we suggest that IP regimes need a process for determiningthe scope of an IP right. Scope is not merely validity, and it is notmerely infringement. Rather, it is the range of things the IP rightlawfully protects against competition. IP rights that claim too broad ascope tend to be invalid, either because they tread on the rights of thosewho came before or because they cover things that the law has made adecision not to allow anyone to own. IP rights with narrower scope arevalid, but the narrowness of that scope should be reflected in thedetermination of what actions do and do not infringe that right. Andwhatever the doctrinal label, we should not allow an IP owner to capturesomething that is not within the legitimate scope of her right. Nor shouldit follow from the fact that some uses are outside the lawful scope of anIP owner’s right that the IP right itself is invalid and cannot be assertedagainst anyone. Only by evaluating scope in a single, integrated proceedingcan courts avoid the nose of wax problem that has grown endemic in IP law.Scope is, quite simply, the fundamental question that underlies everythingelse in IP law, but which courts rarely think about expressly.