Book Review: INTELLECTUAL PROPERTY STORIES

Edited by
Jane C. Ginsburg and Rochelle Cooper Dreyfuss
Book Review by Auric D. Steele

Intellectual Property Stories is a collection of writings on seminal cases in the history of intellectual property (IP) law.  The book is divided into six chapters, which represent six categories of cases that illustrate various issues addressed by IP law. Each “story” is authored by a different legal scholar, but the writings are not completely separate as they often refer to one another.  In particular, the stories of INS v. AP [2] (chapter 1), and Kellogg v. National Biscuit Co.,[3](chapter 3) are so connected that the authors and editors rarely discuss one without mentioning the other.  The common thread between these two cases is the pivotal participation of Louisville’s Justice Louis D. Brandeis.[4]
The cases chosen span over 175 years.  The editors stress that these cases are not intended to give an exhaustive or even representative history of IP law.  However, the cases chosen are evenly balanced between decisions which deny protection to IP rights and decisions which uphold protection. The editors stress that this balance in judicial holdings among the chosen cases was not intentional.  However, mere mention of balance in IP law brings up the subject of the necessity of judicial intervention.  As the editors point out, IP owners are influential in the legislative process.  This influence is a significant reason for Congress’ tendency to enlarge rather than diminish IP rights.  As a result, it falls to the Court to strike a necessary balance between the scope of IP rights and the competing interests and needs of society.
Many of the cases in Intellectual Property Stories are mainstays of the standard law school curriculum.  INS v. AP,[5] for instance, makes an appearance in nearly every first year property class as a springboard for an elementary discussion on the nature of property rights.  However, the cases in this book are not presented in their usual naked IL format. They are featured, fully clothed, in the facts and circumstances of the time and place in which they occurred. They are discussed in relation to all subject areas, disciplines, and areas of law that they touch.  As the authors and editors point out, when viewed in context, these cases often tell a very different story than what they purport to tell in their customary casebook presentation.
As mentioned above, two of the most interesting stories in the book are those which involve Justice Brandeis.  Interestingly, one of them is a dissent written during his early years on the court (INS – 1918), while the other is a majority opinion from his last year on the court (Kellogg – 1938).  The editors mention these cases together in the introduction, stating that the subplot of each is the story of Brandeis’ intellectual property and anti-trust jurisprudence.  Likewise, the authors of these stories refer to each other’s chapters in a way that suggests that INS is the prelude to Kellogg, and that Kellogg is the final word on INS.
The title of the chapter about the INS case refers to “the uneasy legacy of a concocted controversy.”  The author points out that neither the Court at the time, nor many legal scholars, were aware that the case did not arise out of a legitimate adversarial controversy.  On its face, the case asks whether a news service can have a property interest in factual information that it has gathered, so that another news service is not able to report the same news, at the same time, without having expended any expense or effort to gather it. What was not apparent to the court, and therefore not a part of the opinion that is a mainstay of Property I casebooks, is that the parties were not true adversaries.  Several newspaper owners, including William Randolph Hearst, found themselves on both sides of the “v” in this case.
Justice Brandeis was always skeptical of broad IP rights.  He feared “bigness” in general.  In particular, he had a problem with granting monopoly rights to a corporation, beyond that which was necessary for the furtherance of knowledge, and called for in the Constitution. The idea that a commercial enterprise could restrict the free flow of information by claiming a property interest in that information did not sit well with Brandeis.  The majority held that INS had misappropriated the news from AP, and in doing so, had “reaped where it had not sown.” This ruling allowed AP the opportunity to assert ownership in news against anyone who would use it without paying, not just against rival newspapers.  Brandeis dissented and was joined by Justice Holmes.  Despite the majority being duped about AP’s agenda in bringing the suit, this opinion was construed narrowly and therefore did not apply in many subsequent cases.  It was ultimately eviscerated indirectly by another Brandeis opinion: Erie Railroad v. Tompkins,[6] in 1938. This opinion was handed down only months prior to the decision in Kellogg.
Kellogg Co. v. National Biscuit Co.[7] is a strange story of health and religion.  It involves the attempts by the successor corporation to an owner of an expired patent to artificially extend the monopoly afforded by the patent through application of trademark law.  National Biscuit Company (Nabisco) claimed that the pillow shape of its shredded wheat deserved trademark protection as an indicator of source.  It further claimed that it alone had the right to use the generic and descriptive term “shredded wheat,” in connection with the sales of its product, and that this exclusive right should be protected by trademark law.  Additionally, Nabisco claimed that a photograph of a cereal bowl with two shredded wheat biscuits, half submerged in milk, could not be used in connection with a competing product. Brandeis and the majority rejected this attempt to extend indefinitely, through the application of trademark law, the limited and temporary monopoly which had already been afforded to the inventor.
The legacy of Kellogg is found in its influence on the Lanham Act legislation, which was proposed later that same year.  Kellogg is also cited routinely in trademark cases regarding a question of whether a product name is descriptive or generic, and in cases which involve a determination of trademark rights in a product shape. Its broader influence is seen in its impact on the law of unfair competition.  Justice Brandeis understood better than most that legal controversies do not exist in a vacuum, and that legal rights granted in one area can have significant impact in others.
Intellectual Property Stories very successfully presents seminal cases in the history and development of IP law, in their historical, legal, and societal context. The cases take on greater significance when they are viewed in relation to the facts and circumstances of the time and place in which they occurred. Additionally, when viewed in their fullest possible context, the cases are able to convey a more meaningful message and to tell a more complete story.


[1] Foundation Press, Thomson/West, New York, 2006.
[2] International News Service v. Associated Press, 248 U.S. 215 (1918).
[3] Kellogg v. National Biscuit Co., 305 U.S. 111 (1938).
[4] Supreme Court Justice Louis D. Brandeis, 1856 – 1941, is the namesake of the Louis D. Brandeis School of Law at the University of Louisville, as well as the namesake of the Brandeis Intellectual Property Association (The Brand), which publishes this Internet Magazine. Brandeis was a lifelong advocate and supporter of the University of Louisville’s School of Law, which was subsequently named for him. Upon his death, all of his personal papers were donated to the school.  Additionally, both Justice Brandeis and his wife are buried on the grounds of the law school. For more information see: http://www.law.louisville.edu/students/thebrand/brandeis-warhol/
[5] INS, 248 U.S. 215 (1918).
[6] Erie Railroad v. Tompkins, 304 U.S. 64 (1938).
[7] Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938).