Intellectual Property Law and the First Amendment

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copyright law, trademark law, right of publicity law, and trade secret law are all speech restrictions. They restrict what people may say or write or perform. They do so based on the content of the speech. And they cover not just literal copying, but also the creation of new works. Saying that these laws protect property rights cannot resolve the problem; the question still remains: To what extent may the government protect intellectual property rights by restricting speech?

The Supreme Court, in Harper & Row Publishers v. Nation Enterprises (1985), held that copyright law is a permissible speech restriction, essentially carving out a new exception to first amendment protection: Speech that copies another's expression, and that is not a fair use, is unprotected by the First Amendment against a copyright infringement claim. Nonetheless, the Court suggested that these conditions—that copyright law restricts only the copying of expression and not of ideas or facts, and that copyright law provides a safe harbor for certain fair uses such as criticism or news reporting or parody—may be constitutionally required. Laws that restrict dissemination of facts, such as tort causes of action for misappropriation of news or statutes restricting copying of fact databases, might be unconstitutional.

Even given copyright law's substantive constitutionality, the First Amendment should impose the usual procedural safeguards on copyright litigation (and other intellectual property litigation). The prior restraint doctrine, for instance, may bar preliminary injunctions in many copyright cases. The independent appellate review doctrine described in Bose Corp. v. Consumer Reports (1984) might require de novo review of findings of substantial similarity of expression. The rules related to strict liability, punitive damages, quantum of proof, and burden of proof might likewise in some measure affect copyright law. Most of these claims have not been seriously explored by courts.

Most trademark infringement cases involve commercial advertising that is allegedly likely to confuse. Restricting this advertising poses little constitutional difficulty, because freedom of speech law allows restriction on misleading commercial speech. Nonetheless, some trademark cases, especially those involving uses that are not primarily advertising—for instance, book parodies that borrow the books' titles or cover layouts—do pose First Amendment problems. Lower courts are split about the extent to which the First Amendment provides a defense in these situations.

The relatively new state and federal trademark dilution statutes raise more serious First Amendment questions, because they restrict commercial uses of trademarks even when there is no likelihood of consumer confusion, and thus fall outside the doctrine that misleading commercial speech may be restricted. Courts have not yet had much occasion to confront this question. San Francisco Arts & Athletics, Inc. v. United States Olympic Committee (1987), which involved a specialized antidilution statute, suggests that such laws would probably be upheld; but the Court's recent, more speech-protective commercial speech jurisprudence makes the matter unclear.

The right of publicity gives people the exclusive ability to control use in commerce of their names, likenesses, voices, and other attributes that may remind the public of them. Lower courts have generally carved out exceptions, on First Amendment grounds, for news reporting, biography, fiction, and similar uses, even though these works are often sold for money; but courts have generally upheld the right of publicity as applied to commercial advertising and to merchandising (posters, busts, T-shirts, and the like).

It is not clear whether the right of publicity is always constitutional even when so narrowed. Even commercial advertising is usually entitled to considerable constitutional protection, and posters, busts, and T-shirts are as protected as movies or books or any other works that are commercially sold. Banning the unauthorized sales of, say, busts of martin luther king, jr.—as one court did—poses considerable First Amendment difficulties. Nonetheless, outside the context of merchandising that constitutes a parody, lower courts have generally rejected free speech arguments in advertising and merchandising cases.

The Court's only right of publicity case, Zacchini v. Scripps-Howard Broadcasting (1977), sheds little light on this subject. Zacchini upheld an unusual sort of right of publicity—a performer's right to prevent rebroadcasts of his entire performance—and said little about the much more common name/likeness/voice/identity claims.

Many trade-secret claims can probably be upheld on the grounds that they merely enforce a confidentiality contract, something that cohen v. cowles media (1991) holds is constitutional. On the other hand, when the defendant is not bound by a contract—for instance, a media organization to which the information was leaked—the First Amendment may pose serious obstacles to imposing liability, and even more serious obstacles to injunctions. The Court has not fully confronted the matter, though one Justice, granting a stay in CBS, Inc. v. Davis (1994), rejected on prior restraint grounds a request for an injunction against revealing trade secrets.

Eugene Volokh


Lemley, Mark and Volokh, Eugene 1998 Freedom of Speech and Injunctions in Intellectual Property Cases. Duke Law Journal 48:147–242.

Volokh, Eugene and Mc Donnell, Brett 1998 Freedom of Speech and Independent Judgment Review in Copyright Cases. Yale Law Journal 107:2431–2470.

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Intellectual Property Law and the First Amendment

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Intellectual Property Law and the First Amendment