Courts, commentators, and practitioners have for too long viewed intellectual property law as a discrete discipline, without putting it into the proper theoretical context of general jurisprudence. Intellectual property law cannot and must not exist on its own, outside the normative framework of overlapping legal institutions. Even within the rubric of intellectual property, courts have overlooked the potential for cross-applying relevant doctrines between patent, copyright, and trademark law. Certainly, when intellectual property disputes touch on other disciplines, such as civil procedure, contract, or tort law, courts have tended to overlook their synergies, focusing instead on only one of several important policies or principles. The result has gone beyond missed opportunities. It has led to judicial mistakes, including in the very recent, and broad-based, 2007 U.S. Supreme Court case of MedImmune v. Genentech. (1) The Court's errors have far-reaching implications for the future of the law and its practice.
This article examines the intersection of normative values between intellectual property and contract law. Utilizing graphic illustrations in tables and diagrams, the article proposes a more appropriate interdisciplinary framework for resolving cases that cross disciplines, such as those involving intellectual property licensing. (2) The article refers to such cases as "cross-over disputes." Interestingly, in its 2008 term, the U.S. Supreme Court granted certiorari on a crossover dispute involving intellectual property licensing. As discussed in Part V, infra, the Court disappointingly once again missed an opportunity to consider the intersection of patent law and contract doctrine, and instead presumed the primacy of patent doctrine with barely a footnote about contract law. With the current state of the law, still in future cross-over disputes, courts, litigants, and license negotiators may employ this article's proposed matrix in order to reach more rational and informed decisions.
The analysis begins by addressing parties' "right to license." What may appear to be a straightforward question of contractual authority has actually not been treated as a contractual matter at all. Part II of this article discusses the various issues that must be examined in order to determine the ability and authority of private parties to enter into a license agreement. First, Part II(A) examines the commonalities between patent, copyright, and trademark law. This section shows that while each of the three main branches of intellectual property has unique qualities to consider, their underlying normative values are substantially similar and may be addressed together. Next, Part II(B) provides a normative analysis of each of these three main branches of intellectual property, including a representation (Table I) of the competing interests of creators, their competitors, and the public, as these vary between patent, copyright, and trademark doctrine.
The article goes on to examine the normative values of contract law in Part II(C), presenting a graphic illustration of the competing interests between the private right to contract and the need for limitations (Table II). The article then draws on these illustrations to provide an interdisciplinary framework for properly viewing the convergence of contract and intellectual property law, showing that there is substantial overlap in their normative values. This analysis is set forth in Part II(D), with an illustrative diagram (Diagram A) that demonstrates the many areas where contract and intellectual property law converge. The article proceeds to discuss the perceived divergence between contract and intellectual property law, a red herring that has led courts to overlook the importance of weighing contract doctrine in the balance for cases involving intellectual property licensing. As this section suggests, and Diagram B illustrates, the perceived "divergence" between contract and intellectual property law is actually no more than a recasting of the actual convergence of contractual illegality--a particular area that fits within standard contract doctrine--and intellectual property law. …