Brandeis's IP Federalism: Thoughts on Erie at Eighty

The University of Akron IdeaExchange@UAkron Akron Law Review Akron Law Journals May 2019 Brandeis's IP Federalism: Thoughts on Erie at Eighty Joseph Scott Miller Please take a moment to share how this work helps you through this survey. Your feedback will be important as we plan further development of our repository. Follow this and additional works at: https://ideaexchange.uakron.edu/akronlawreview Part of the Civil Procedure Commons Recommended Citation Miller, Joseph Scott (2019) "Brandeis's IP Federalism: Thoughts on Erie at Eighty," Akron Law Review: Vol. 52 : Iss. 2 , Article 7. Available at: https://ideaexchange.uakron.edu/akronlawreview/vol52/iss2/7 This Article is brought to you for free and open access by Akron Law Journals at IdeaExchange@UAkron, the institutional repository of The University of Akron in Akron, Ohio, USA. It has been accepted for inclusion in Akron Law Review by an authorized administrator of IdeaExchange@UAkron. For more information, please contact , . Miller: IP Federalism BRANDEIS’S IP FEDERALISM: THOUGHTS ON ERIE AT EIGHTY Joseph Scott Miller* I. II. III. Introduction ............................................................... 367 Erie’s IP Context ....................................................... 371 A. The 1830s and ‘40s ............................................. 374 B. The 1920s and ‘30s ............................................. 380 Conclusion ................................................................. 389 “I have always regarded the [Erie] decision as one of the modern cornerstones of our federalism, expressing policies that profoundly touch the allocation of judicial power between the state and federal systems.” — Harlan the Younger 1 I. INTRODUCTION Like each of us, Erie Railroad Co. v. Tompkins 2 contains multitudes. 3 Most pragmatically, “[u]nder the Erie doctrine, federal courts sitting in diversity apply state substantive law and federal procedural * Professor, University of Georgia School of Law. © 2019 Joseph Scott Miller. With great thanks to those who organized and attended the Akron Law Review’s September 2018 “Erie at Eighty” event. 1. Hanna v. Plumer, 380 U.S. 460, 474 (1965) (Harlan, J., concurring). See also Guar. Tr. Co. of N.Y. v. York, 326 U.S. 99, 109–10 (1945): Erie R. Co. v. Tompkins . . . expressed a policy that touches vitally the proper distribution of judicial power between State and federal courts . . . [and] has been applied with an eye alert to essentials in avoiding disregard of State law in diversity cases in the federal courts. A policy so important to our federalism must be kept free from entanglements with analytical or terminological niceties. 2. 304 U.S. 64 (1938). 3. See Walt Whitman, Song of Myself, in LEAVES OF GRASS 29, (David McKay ed., 1891) (“Do I contradict myself? | Very well then I contradict myself, | (I am large, I contain multitudes.)”). SYMPOSIUM, ERIE AT EIGHTY: CHOICE OF LAW ACROSS THE DISCIPLINES Published by IdeaExchange@UAkron, 2019 1 Akron Law Review, Vol. 52 [2019], Iss. 2, Art. 7 368 AKRON LAW REVIEW [52:367 law.” 4 Parsing the substantive from the procedural “is sometimes a challenging endeavor,” 5 to be sure, but the goal—identifying the rule of decision in state law—is clear. The Erie case holds, as a formal matter, that the state-law referent comprises not only a state’s statutory law, but also its decisional law (be the question local or general): So far as the Rules of Decision Act 6 is concerned, “whether the law of the State shall be declared by its Legislature in a statute or by its highest court in a decision is not a matter of federal concern.” 7 The Erie provocation, finally, “is about effectuating a policy of federalism”—about “allocat[ing power] between federal courts and state courts, and federal law and state law.” 8 It is that provocation that prompts me to explore, in the Erie context, our intellectual-property-law federalism. The choice to propertize information, in the Anglo-American utilitarian tradition, is easy to explain: give a time-limited right to exclude others from competitive imitation to cut off at the pass an underproduction-of-ideas risk. 9 Atop this foundation is a body of law that makes an especially fruitful ground for considering juridical federalism. First, the five modes of IP protection sit on a continuum from largely 4. Gasperini v. Ctr. for Humanities, Inc., 518 U.S. 415, 427 (1996). Also, where a federal court has supplemental jurisdiction over a state claim, see 28 U.S.C. § 1367 (2012), state law supplies the rule of decision. See, e.g., Felder v. Casey, 487 U.S. 131, 151 (1988). Courts should, however, approach state law mindful of the presence of that primary federal claim. See Alexander Reinert, Erie Step Zero, 85 FORDHAM L. REV. 2341, 2367–76 (2017). 5. Gasperini, 518 U.S. at 427. An inquiry of this sort thoroughly fractured the Court, most recently, in Shady Grove Orthopedic Assocs., P.A. v. Allstate Ins. Co., 559 U.S. 393 (2010). 6. Judiciary Act of 1789, ch. 20, § 34, 1 Stat. 73, 92 (1789) (codified as amended at 28 U.S.C. § 1652 (2012)). 7. Erie, 304 U.S. at 78. For a detailed analysis of the Erie case on its own stated grounds, by one of the decision’s most able defenders, see Ernest A. Young, A General Defense of Erie Railroad Co. v. Tompkins, 10 J.L. ECON. & POL’Y 17 (2013). For a bracing analysis from one of Erie’s most trenchant critics, see Suzanna Sherry, Wrong, Out of Step, and Pernicious: Erie As the Worst Decision of All Time, 39 PEPP. L. REV. 129 (2011). For an excellent contemporary middle path, see Caleb Nelson, A Critical Guide to Erie Railroad Co. v. Tompkins, 54 WM. & MARY L. REV. 921 (2013). All three pieces have helped me enormously in thinking about Erie more clearly. 8. Donald Earl Childress III, Redeeming Erie: A Response to Suzanna Sherry, 39 PEPP. L. REV. 155, 161 (2011); see also Young, supra note 7, at 20 (concluding that Erie embodies “the vision of limited federal lawmaking . . . in which the federal separation of powers reinforces federalism by limiting when federal lawmaking may displace state law.”). 9. See U.S. CONST. art. I, § 8, cl. 8. The propertization strategy for intangibles is discussed in hundreds of articles. To choose but one, see Amy Kapczynski, The Cost of Price: Why and How to Get Beyond Intellectual Property Internalism, 59 UCLA L. REV. 970, 974–75 (2012) (describing the strategy’s internal logic). For a general description of tangibles and intangibles, see Thomas W. Merrill, The Property Strategy, 160 U. PA. L. REV. 2061, 2062–63 (2012) (describing “property [a]s a distinctive strategy for determining how resources will be used and by whom,” in which “[s]pecific resources are assigned to designated persons who have unique prerogatives in dealing with the resource relative to all other persons in the relevant normative community.”). https://ideaexchange.uakron.edu/akronlawreview/vol52/iss2/7 2 Miller: IP Federalism 2018] IP FEDERA (...truncated)