Houston Law Review
The misuse defense in copyright and patent law is something of an anomaly. Under the approach favored by many courts that have considered the defense, misuse is defined as the broadening of one's copyright or patent with anticompetitive effect. When a defendant in a copyright or patent infringement suit succeeds in proving that the plaintiff has misused its copyright or patent, the court typically enters judgment that the copyright or patent is unenforceable until the misuse is purged. There is no necessary requirement that the copyright or patent defendant itself has been a victim of the misuse (the "standing" anomaly); and despite the posited relationship of misuse to competition policy, courts continue to affirm that misuse may exist even when the challenged practice does not amount to a violation of the antitrust laws. As such, misuse can become something of a wild card in copyright and patent litigation. Articulating a distinct role for the doctrine, in relation to both antitrust law and to such copyright doctrines as fair use and merger, has not proven easy. In this essay, I argue for a reformed and narrowed version of the misuse defense in both copyright and patent law. Specifically, I argue that licensing provisions that enable copyright or patent owners to extract concessions from licensees that are likely to cause net social harm to interests such as dynamic efficiency and freedom of speech should be deemed unenforceable under a doctrine of "transactional misuse." Courts should be reluctant to find such misuse absent clear evidence of such net harm; at the same time, however, there may be rare cases in which such harm is present despite the fact that antitrust law would probably not intervene under similar circumstances. Finally, the standard remedy for transactional misuse should be limited to the unenforceability of the offending license provision, a reform that would tend to eliminate the standing anomaly. For "litigation misuse," on the other hand, tentatively defined as the spurious assertion of copyright or patent rights in litigation for the purpose of inducing defendants to avoid accessing public-domain materials not within the scope of the grant, unenforceability of the intellectual property in its entirety may in some instances be an appropriate remedy.
Thomas F. Cotter, Misuse, 44 Hous. L. Rev. 901 (2007), available at http://scholarship.law.umn.edu/faculty_articles/193.