Takings of Copyright in The National Institute of Health’s Public Access Policy

Table of Contents

I.        Introduction. 2

II.           Background. 2

A.      Significance of Access and the Effect of Copyright on Access to Medical and Scientific Journals  2

B.      Responses to Insufficient Access. 6

1.       Open Access. 7

2.       NIH Public Access Policy. 8

C.      Eminent Domain. 8

1.       Physical Taking. 10

2.       Regulatory Taking. 10

3.       Unfair Exaction. 12

D.      Federal Takings of Intellectual Property. 13

III.         Analysis of the NIH Open Access Policy. 15

A.      Distinctive aspects of the policy vs. building permits. 15

B.      Under a Physical taking standpoint. 16

C.      Under Penn Central Regulatory Takings. 17

D.      Under Nolan/Dollan/Koontz. 18

IV.          Conclusion. 19

 

 

 

 

 

 

 

 

I.               Introduction

The Fifth Amendment demands that when property is seized by the federal government[1] for public use, the owner of the property must be compensated for the use.  The power to seize property for public use is called eminent domain.  Intellectual property, like other forms of property, can be seized and used by the federal government, requiring compensation to the owners of the intellectual property.  This paper will examine potential takings of intellectual property by the National Institute of Health’s open access policy.  While takings take three forms, physical, regulatory, and unfair exactions, takings of intellectual property have only been discussed in association with physical takings.  This paper will therefore examine the open access policy under all three forms of takings. 

II.             Background

A.    Significance of Access and the Effect of Copyright on Access to Medical and Scientific Journals.

 

Medical and Scientific papers, like all fixed writings, are protected by copyright.[2]  The property right attaches as soon as the writing is fixed in a tangible medium and belongs to the author.[3]  However, because of the nature of the information discussed in scientific and medical articles, the copyright is very weak.[4]  The ideas and “facts” in a journal article are not protected, only the form the article takes.[5]  As a result, other researchers may copy the facts discussed in the article without violating copyright.[6]

Science progresses by standing on the shoulders of the giants who came before.[7]  By examining the most up to date studies scientists are able to expand that research and consider new ways of examining problems.  Within the medical community up to date information about medical procedures, research into diseases and treatment can literally be the difference between life and death.  Any delay in access to this information harms individuals working in the field and the public who ultimately reaps the benefits of the advancements. 

Without access to recent scientific and medical developments doctors and scientists are crippled.  If a medical breakthrough takes a year to reach the general medical community it can literally cost lives. 

The best way to combat a lack of information is via writings shared within the respective communities.  The main mechanism for communication of scientific and medical advancements is through articles discussing studies and/or experimentation.  Prior to the digital age this communication tool place through a variety of peer reviewed journals.  The Journals were printed on a schedule and individuals or organizations maintained subscriptions to them.  Journals took up a significant amount of physical space and maintaining a subscription to many journals was quite expensive.  As a result members of wealthy organizations, such as major universities or large hospitals, had greater access to expansive and up to date information, while poorer organizations, such as small universities and small medical practices, had limited access to the most up to date information. 

The promise of the digital age was extensive information available to more and more people than cold access the information in the ink and paper era.  With the development of the digital age shelf space no longer became an issue.  Academic institutions maintained their contracts with the publishing houses, but now material was available in searchable digital format.  Smaller institutions were now able to access information they could not previously have housed, but cost was still a limiting factor.   Currently even major institutions must choose which journals to subscribe to, but the digital age has brought about new hurdles to access. 

Many libraries use a system of inter-library loans where one institution will lend a copy of a book or journal to a scholar at a university without a subscription.  This borrowing was permitted due to the first sale doctrine in copyright that permits person to use their copy of a writing in whatever manner they see fit, including lending the copy.[8]  With digital media this leading is much more difficult.  The member of the institution with a digital subscription to a journal cannot “send” the information to the non-subscribing institution.[9]  The most common mechanism to “share” digitally available information is through an Inter Library Loan system.[10]  In using these systems a person must demonstrate their affiliation with an educational institution, then fill out a form explaining why and for what purpose they need access to the document.  A librarian will then determine if the request is sufficiently “fair use”[11] to permit a copy of the information to be made.  If the use fits within the fair use exception the librarian will send the relevant information to the non-subscribing institution.  This process is much more arduous and requires a requestor to not only know the specific article they are looking for, but to have a legitimate educational reason to examine the article.  In certain ways the digitization of information has made it easier to find information, but in a very strange way it has made it more difficult to actually use the information. 

To gain the perspective of a scientist affected by these copyright issues I corresponded with Dr. Airlie Chapman.[12]  Dr. Chapman is a young academic and attempting to build her portfolio through research, application, and writing.[13]  Dr. Chapman noted that anytime she wishes to have her theories or research published, or speak on a topic at a conference, she is required to sign over all copyright for her work to the journal/conference.[14]  Additionally, to earn her Ph.D Dr. Chapman was required to publish her dissertation on several databases.  While she retained the copyright in the work, the forced publication makes her dissertation unappealing to publishers who want to own a full copyright.  In general Dr. Chapman expressed a desire to have access to her work by other individuals and to have access to associate’s work, but does not believe it is possible in the current publishing climate. 

Perhaps a scientist or researcher with significant clout could demand that his article be made publically available online, and some have successfully made the demand.  However, for the most part scientists are more concerned with being published and exposing their research to the field than making it available to the public.  Open access is a nice idea, but until the system changes it is difficult to step outside it. 

B.    Responses to Insufficient Access

In response to this problem, members of the scientific community replied with expanding into both the self-publishing and making demands of availability of publications online.  Calls have been made to move from a subscriber model, where universities pay to subscribe to Journals, to a publication model, where universities pay the publication costs associated with publishing in a journal and the journal is thereafter made available to the public.[15]

 Congress has also responded to the perceived lack of by requiring all publications of research funded by the National Institute of Health (NIH) be made available online within one year of publication. [16]

1.     Open Access

The movement to open research via self-publication and publication on open source forms had many positives.  The clearest benefit is access.  Any English speaking researcher, or curious individual, with internet access can readily access a wealth of information.  This promotes not only knowledge but permits all researchers to be on a level playing field.  Just as a school which selects only top students for admission will tend to have alumni in the top of their field, the lack of access limits the best information to members of richer institutions, permitting only those members to fully excel in the field. 

Some significant concerns exist however as to the reliability of the information that can be found in open access journals.  A few months ago John Bohannon a senior editor from the journal Science sent an article to over 300 open access journals.[17]  The named author was a non-existent person working at a non-existent university, and the article contained significant elementary scientific mistakes which “[a]ny reviewer with more than a high-school knowledge of chemistry and the ability to understand a basic data plot should have spotted the paper’s short comings immediately.”[18]  Nonetheless the article was accepted and moved through the editorial process by more than half of the open access journals.  Bohannon correctly stated that this sort of thing would never have happened at a peer reviewed journal.   The peer-review system helps to prevent articles that are not based on good science from being published.  The system is not infallible, but as a general rule flaws in scientific understanding are identified before publication by peers reviewing the article.  The open access system, on the other hand, relies much more on the prudence of the reader to determine if an article should be trusted.  With a lack of scientific and mathematical education and understanding in the United States this could be exceptionally detrimental to the general public’s ability to distinguish good science from junk science.  The peer-reviewed system did crate a fairly reliable system.  But it limits access to information to those who are able to pay to access the system. 

2.     NIH Public Access Policy

Any person who accepts funding from the national institute of health agrees that any paper based on the work funded by the institute must be made publicly available on the internet within 12 months of publication.[19]  This stipulation is not a limit on the copyright available to subsequent writings, regular copyright protections still apply to the writing, rather, it is a contractual agreement between the federal government and the researcher.  If a researcher sells their copyright to a journal for publication it is the obligation of the researcher to ensure the publisher makes the article publicly available.[20]  Because of a lack of privacy between the federal government and the publisher there is no recourse for the federal government against a subsequent holder of the copyright. 

C.   Eminent Domain

Eminent domain is not a limit on the state’s ability to seize private property for public use, rather it is a requirement that when a taking occurs, the property owner is entitled to compensation for the property.  There are two complicated issues that I will not go into during this paper, the first is what is “public use.”  The constitution requires that all legitimate takings must be for public use, however the exact contours of what this term means can be difficult to grasp.[21] For the purposes of this paper I will assume governmental action satisfies the public use requirement.  Second I will not discuss the exact contours of ‘just compensation.”  Compensation for taken property is based upon fair market value.[22]  Fair market value does not take into account the value the individual property owner places on the property; it only takes into account the value the owner could acquire on the open market, not the price they would sell it for. 

When a governmental agency identifies property to seize using the eminent domain power, the government engages in condemnation proceedings to gain ownership of the property.  If the agency does not use condemnation proceedings, due to either rush[23] or oversight,[24] a property holder may bring a claim of inverse condemnation.[25]  In an inverse condemnation proceeding requires the property holder to demonstrate their property was sieved for public use and if a taking is demonstrated, the government must give the property owner fair market value. 

There are three types of takings in land use.  A physical taking, a regulatory taking, and an exaction that does not have a sufficient nexus to the proposed land use.  When a governmental  agency authorizes an action for a taking under the Fifth Amendment,[26] it does not matter what type of taking the plaintiff is alleging.  Because all three types of takings are a subset of the broader category of “takings” it does not matter that a plaintiff is alleging a physical invasion, regulatory taking, or unfair exaction.[27]

1.     Physical Taking

A physical taking occurs when a governmental body uses a part or whole of property for public use.[28]  For example a seizure of land to construct a highway or a police officer seizure of vehicle to chase a suspect.  Whatever the size of the invasion or use of the property, the government must reimburse the property owner the fair market value of the property.[29]  Physical takings are the most common form of takings and are the only form of takings that utilize condemnation proceedings to gain title to the seized property.[30] 

2.     Regulatory Taking

Regulatory takings are different.  Rather than examining a physical invasion or use of property, regulatory takings examine the governmental restrictions put on land owners.[31]  There are two types of regulatory takings that trigger compensation.  First, a regulation that deprives the land owner of all economically beneficial use of the land.[32]  Second if a taking fails the Penn Central multifactor balancing test is considered a taking.[33]

Penn Central involved the historic Grand Central Terminal owned, by the Penn Central Transportation Co., in New York City.[34]  The City of New York declared the station a historic land mark and would not permit any development that affected the (outward appearance?) of the building.[35]  The owner of the station wished to tear down a portion to the terminal and construct a multistory office building atop the former terminal but the regulatory agency rejected the project as violating the provisions of the historic preservation.[36]  The land owners claimed the regulations operated as a taking, even though there would be some economically beneficial use of the land (thereby passing the original regulatory takings test).[37]  The Court held that the restrictions to the use of the former Penn Central station was not a regulatory taking.[38]  However, the Court expanded the definition of regulatory takings beyond just restrictions that prohibit all economically viable use of the land.  The Court determined that it was possible for a regulation that did not deprive the owner of all economically viable use of the land to still be considered a taking.[39] 

The Court did not create a set formula for evaluating takings claims, rather the Court discussed the importance of flexibility that analyzes the unique circumstances of each claimed regulatory taking.[40]  The Court did identify several significant factors that may offer weight to a decision on whether a taking had occurred.[41]  The most significant factors include economic impact of the regulation on the claimant, the extent to which the regulation has interfered with distinct investment-backed expectations, and the character of the governmental action.[42]  Due to the nature of multi factor fact based balancing tests it is difficult to predict how a court will weigh different facts and factors.  Ultimately the test boils down to weighing the state interest in providing the regulation against the individual interests of the landholder in using the land as they choose. 

3.     Unfair Exaction

Related to regulatory takings but distinct are exactions.  An exaction is a requirement placed on a property owner that requires the owner to perform certain activities in order to gain permission to engage in a regulated property use.[43] The most common form of exactions are on developers for gaining building permits.[44]  Most often exactions are used to ensure the development does not unfairly burden the infrastructure of the community.   For example, permission to build a large residential development may include provisions for increased sewer capacity or other public services the development will deplete.  However an exaction may amount to a taking when there is not sufficient “‘nexus’ and ‘rough proportionality’ between the property and the government’s demands and the social cost of the applicant’s proposal.”[45]  between to the proposed land use.  Nexus is determined by examining the state interest and the proposed exaction.[46]  When an exaction is not sufficiently related to the proposed land use to justify the exaction, the exaction is considered a taking and the state must compensate the land owner for the expense (or not make the requirement in the first place).[47] 

 

 

 

 

D.   Federal Takings of Intellectual Property

Claimed takings of intellectual property are infrequent but nonetheless significant precedent exists.[48]  Congress made takings claims for violations of the exclusive rights of intellectual property holders against the federal government explicitly permissible in 1948 for patents,[49] and 1960 for copyright.[50]  Under subsection (a) the owner of a patent that is used by the federal government, or manufactured for by or for the federal government may sue to recover “reasonable and entire compensation for such use and manufacture.”[51] This reasonable compensation includes not only the reasonable licensing fees (the fair market value of licensing the invention).  If the patent holder is “an independent inventor, a nonprofit organization, or an entity that had no more than 500 employees [in the five years preceding the infringing use]”the patent holder is entitled to the reasonable licensing fees as well as reasonable costs incurred in bring the lawsuit. [52]

Chapter 28 section 1498(b) is the exclusive mechanism for seeking redress for claims against the federal government for violating the exclusive rights of copyright holders.[53]  This statute permits actions by both the original copyright holder as well as a licensee.[54]

The most common form of takings in intellectual property have been exercising of patents by the federal government.[55]   However instances of claimed takings have involved exercising the exclusive right of the intellectual property holder, such as practicing a patented invention[56] or copying a protected work.[57]  These uses are analogous to a physical taking in land use.  The government is invading the exclusive use owned by the intellectual property owner and the Constitution demands just compensation be provided to the property owner.[58]   There is a question as to whether or not section 1498 authorizes lawsuits based on regulatory takings or unfair exactions.  The statute does not authorize a person to

While clear president exits in applying physical takings analysis to intellectual property, application of regulatory takings and exactions to intellectual property remains theoretical.[59]   While an exaction or a regulatory taking is not explicitly authorized under section 1498, it is implicitly authorized.  The federal government waives any sovereign immunity from violating copyright or patent in section 1048. 

Cohen v. United States[60] is significant because it examines the relationship between the original copyright owner, licensees of the copyright and section 1498.  The court noted that a copyright, like other property rights, is not a single right, but rather a bundle of exclusive rights.[61] A holder of a copyright may give or sell these exclusive rights in whole or in part.  However granting a portion of the rights does not eliminate the withheld rights. [62]

The NIH policy should therefore be thought of as a limitation on one specific right, the right to make writings publicly available on the internet.  Cohen is also interesting because it involves medical information that was exceptionally important at the time it was posted.  Dr. Cohen wrote a series of works containing medical information.[63]  He licensed the right to publish in print to a publisher and the publisher subsequently sold the material to the Federal Emergency Management Agency to use in print brochures and publications.[64]   However, the federal government placed Dr. Cohen’s writings on the FEMA website.[65]  Dr. Cohen brought an action in the Federal Claims court pursuant to section 1498 and the court held that while Dr. Cohen had granted exclusive rights to copy the works in question in print and CD format, he had not granted the exclusive rights to make the works available online.[66]  Those rights had remained with Dr. Cohen and could not have been granted to FEMA.[67] 

While Dr. Cohen’s rights were clearly violated when FEMA placed his writings on the internet, forced internet publication, agreed to before the writing is created

 

III.           Analysis of the NIH Open Access Policy. 

A.    Distinctive Aspects of the Policy vs. Building Permits 

Unlike a building permit where a person owns the land and the bundle of rights associated with it before requesting a building permit and being presented with the exactions.  The NIH policy places a burden on the use of property that not only the person does not own, but has not created yet.  The nature of the intrusion is therefore different than a traditional taking. 

B.    Under a Physical Taking Standpoint

As noted in XX, the right to publish on the internet is an exclusive right of a copyright holder.  The NIH policy requires a writer to give up the right to control aspects of publication on the internet.  The author may still control when exactly the article is placed on the internet (as long as it is in the required period) as well as the forum that hosts the information.  However if a researcher chooses to publish an article based off of research funded in part by the NIH, the author must make that article available online.  There is no option.  The NIH policy, in effect, eliminates the right to not make an article available online from the bundle of right associated with the future article.  However, that right is only limited with regards to the original author who is in privity with the federal government.  Once an author assigns the copyright to a publisher, it is the responsibility of the researcher who accepted NIH funds to ensure the agreement to publish online is permitted. 

With the federal government funding nearly 60% of all basic scientific research[68] and the NIH’s acceptance of less than 20% of research proposals[69] competition for funding is high.  This may make a researcher more likely to blindly accept the NIH’s requirements without examining the implications.  Researchers in this case don’t really have an option.  However it is not the researchers who are upset by this policy.  In general researchers want to have access to other’s research and expose their own research to the community.  The real objections to the NIH policy come from the publishing community.  The benefits researchers seek and find in writing papers are tied to the prestige of being published in a well-known journal.  Writers in the scientific and medical field are not motivated by direct financial incentives that may be found in the literary field.  The financial incentives are based on the potential for increased research funding or potential career advancement, not financial outcomes associated with the particular writing. 

C.   Under Penn Central Regulatory Takings

While the multifactor balancing test of Penn Central can be difficult to predict, it is ultimately an issue of weighing the state interest against the personal interest of the property owner.  In the case of the NIH rules the state interest, in ensuring access to medical information and studies to the medical community and to the public is very high. 

Investment back expectations-because the restriction is placed on the writing before the writing is created.  There can be no expectations or investment in those expectations.  However, if the government was insisting on the publication of the article in a circumstance where the publisher was not aware of the source of funding, this factor could weigh in favor of the publisher. 

Character of the governmental action-this factor examines whether the regulation is the type of regulation a person assumes the government will make. 

Invasion of the regulation on the rights of the property owner.  This factor is an interesting factor because we often think of a copyright as the property of the writer, while in the scientific and medical research fields the copyright is almost exclusively held by a publishing company.  From the perspective of a researcher, accepting the NIH requirement may preclude the research from being published in a journal that requires handing over a full copyright.  This loss of esteem associated with a less prominent journal may be a real loss, albeit difficult to measure (particularly when taking into account the fact the research may never have happened without the NIH funding).   As far as the rights associated with the publisher, a requirement that the publication be made publically available 12 months after publication does invade the exclusive right to make the work available online. 

Most likely, due to the significant state interest in providing information to the scientific community, that the source of the funding is the federal government, and the significant amount of revenue still available to the copyright holder, a court would not find the NIH public access policy to be a regulatory taking. 

D.   Under Nolan/Dollan/Koontz

If the rationale of exactions is applied to the NIH Public Access Policy, a different outcome may result.   Exactions are concerned with the coercive nature of government regulations that grant administrative bodies nearly unfettered ability to control property owner’s use of property.[70] In that vein, a court may consider the Public Access Policy to be an unconstitutional condition placed on researchers.  Refusal to agree to the policy significantly limits the amount and type of research a researcher may engage in.  The NIH makes up a bulk of the funding for medical research in the United States.  It is vital to the medical research community especially researchers at smaller institutions.  Researchers at smaller institutions are also less likely to have the clout that enables them to publish in reputable journals even with the public access provision.  The policy may therefore operate to deprive the authors of real damage to their careers and fields. 

While the financial damage to publishers who choose to publish articles bound by the Public Access Policy, may be minimal.[71]  The damage to a person deciding whether to accept public funds may be substantial and very difficult to measure. 

While the motives behind the NIH Public Access Policy are very strong, to increase access to publicly funded medical research, thereby enabling better medical care, a court may determine that the requirements placed on researchers and their successors in interest amount to an unfair exaction requiring compensation. 

IV.           Conclusion

In many ways regulatory takings and exactions give a more interesting analysis to an eminent domain claim involving the NIH Public Access Policy.  Due to the untested application of the doctrines to intellectual property it is impossible to determine how a court will ultimately rule on the issue.  Nonetheless, the framework exists and is readily applicable to intellectual property.  

 



[1].   Takings are not exclusive to the federal government.  State and local governments may also “take” property within the meaning of the Fifth Amendment.  However , for clarity, this paper will be discussing only potential takings by the federal government rather than takings by all forms of government. 

[2].   17 U.S.C. § 102 (2010). 

[3].   Id.

[4].   International News Service v. Associated Press, 248 U.S. 215 (1918).

[5].   Id.

[6].   For and intersecting demonstration of this phenomenon, see Jorge L. Contreras, Confronting the Crisis in Scientific Publishing: Latency, Licensing, and Access, 53 Santa Clara L. Rev. 491, 509-10 (2013):

For example, below are two short descriptions of the same scientific finding . . .

Although eye color is usually modeled as a simple, Mendelian trait, further research and observation has indicated that eye color does not follow the classical paths of inheritance . . . . Although there are about 16 different genes responsible for eye color, it is mostly attributed to two adjacent genes on chromosome 15.69

 

Despite the typical modeling of eye color heritability in classical Mendelian terms, our research shows that eye color is not determined through traditional inheritance *510 pathways. . . . We identify a pair of neighboring genes along chromosome 15 that are found to have primary responsibility for determining eye color, among the sixteen or so genes that are generally credited with affecting this trait.

 

Though these two statements arguably convey the same scientific information (two genes out of sixteen strongly influence inherited eye color), the two modes in which this idea is expressed are sufficiently distinct that the second version should not infringe the copyright in the first.”

[7].   Nanos gigantum humeris insidentes

[8].   17 U.S.C. § 107 (2010).

[9].   Any mechanism to remove the relevant information from the databse consists of making a copy, in violation of copyright.  The subscribing institution similarly cannot give login information to the non-subscribing institution as it is a violation of the agreement with the publisher. 

[10]. Santa Clara University uses the ILLIAD system for requesting information from universities with access to unsubscribed sources.  https://scu.illiad.oclc.org/illiad/SCUHF/illiad.dll?Action=10&Form=21

[11]. Fair use for proper educational purposes is not a violation of copyright.  For example when I check the substantive accuracy of a footnote in a Law Review article I send a request to a library with a subscription to the relevant publication and receive a PDF of the relevant pages.  However, on some occasions I have needed to request more of a publication than the subscribing institution was comfortable providing, in that instance I provided the librarian with the relevant claim from the article and needed to rely on the librarian to verify the substantive accuracy of the claim. 

[12]. Postdoctoral fellow at the University of Washington Aeronautics & Astronautics Robotics, Aerospace and Information Networks (RAIN) Lab.  Ph.D. in Aeronautics & Astronautics, University of Washington (2013), M.Sc. in Mathematics, University of Washington (2013), M.Eng. in Research, University of Sydney (2008), B.Eng. in Aeronautical (Space), University of Sydney (2006), B.Sc. in Adv. Mathematics and Physics, University of Sydney (2006).

[13]. For a list of Dr. Chapman’s past and forthcoming publications please see: http://rain.aa.washington.edu/RAIN_Group_Members/Airlie_Chapman

[14]. Personal correspondence with Dr. Airlie Chapman, on file with author. 

[15]. See Mark McCabe & Christopher M. Snyder, The Economics of Open-Access Journals (2010). 

[16]. Consolidated Appropriations Act 2008, PL 110-161 § 218 (2008); see also National Institute of Health Public Access Policy Details available at http://publicaccess.nih.gov/policy.htm. 

[17]. John Bohannon, Who’s Afraid of Peer Review? 342 Science 60 (October 4, 2013). 

[18]. Id.

[19]. Consolidated Appropriations Act 2008, PL 110-161 § 218 (2008); see also National Institute of Health Public Access Policy Details available at http://publicaccess.nih.gov/policy.htm. 

[20]. The NIH website reminds researchers they are responsible to “make sure that the agreement allows the paper to be posted to PubMed Central (PMC) in accordance with the NIH Public Access Policy.”  http://publicaccess.nih.gov/adress_copyright.htm. 

[21]. For example public use is generally thought to include public works projects, such as highways or electric wires, but the Court has also held that projects to funded and benefiting private interests that will be used by the public and will give economic benefit to the community is a sufficient public use to permit the exercise of eminent domain.   Kelo v. City of New London, Conn., 545 U.S. 469 (2005) (holding that development of a shopping center satisfied the public use requirement). 

[22]. United States v. 564.54 Acres of Land, 441 U.S. 506, 511–513 (1979).

[23]. An emergency situation may require use of private land for legitimate government action, for example accessing a leaking pipe may require digging a large hole in a neighbor’s backyard. 

[24].       A government agency may not believe the government action is a “taking” of property and therefore did not engage on condemnation proceedings.  E.g. Loretto v. Teleprompter Manhattan CATV Corp., 458 U.S. 419(1982) (the government did not believe the limited invasion of the land owner’s property was a taking and did not engage in condemnation proceedings, the land owner subsequently brought and action for inverse condemnation). 

[25]. Inverse condemnation claims generally allow the property holder to reclaim not only the value of the property that was taken, but also the

[26]. State and federal and local government agencies are subject to sovereign immunity, therefore in order to bring an action against the agency there must be statutory language permitting the action. 

[27]. Kelo v. City of New London, 545 U.S. 469, 474 (2005).

[28]. Id. at 472. 

[29]. Loretto v. Teleprompter Manhattan CATV Corp., 458 U.S. 419(1982) (the invasion of a television wire on a land owners roof was sufficient to constitute a taking).

[30]. Regulatory takings and unfair exactions are always arise out of a property owner’s inverse condemnation action.  Because both regulatory takings and unfair exactions involve legislative and administrative  actions the respective bodies be definition consider to not be a taking no condemnation proceedings are utilized to gain control of the property.

[31].       See generally Penn Cent. Transp. Co. v. New York City, 438 U.S. 104, 115 (1978). 

[32]. Lucas v. South Carolina Coastal Council, 505 U.S. 1003 (1992).

[33].       See Kelo at 475.

[34].  Penn Cent. Transp. Co. v. New York City, 438 U.S. 104, 115 (1978).

[35].  Penn Cent. at 116.

[36]. Id. at 118.

[37]. Id. at 119.

[38]. Id. at 138.

[39].       Id.

[40].       Id. at 124. 

[41].       Id. 

[42]. Id.

[43]. Koontz v. St. Johns River Water Mgmt. Dist., ___ U.S. ___, 133 S. Ct. 2586, 2594-95, 186 L. Ed. 2d 697, 708 (2013).

[44]. Id.

[45]. Id. at 2595, 709 (citing Nollan v. California Coastal Comm'n, 483 U.S. 825, 837(1987); Dolan v. City of Tigard, 512 U.S. 374, 391 (1994)).

[46].  Id.

[47].  Id.

[48]. See e.g. United States, Zolotek Corp. v. United States, 58 Fed. Cl. 688 (2003) (the government’s use of another’s patent rights, without permission, is an exercise of eminent domain requiring compensation). 

[49]. 28 U.S.C. §1498 (a) (2010) (enacted 1948).

[50]. 28 U.S.C. §1498 (b) (2010) (enacted 1960). 

[51]. 28 U.S.C. §1498 (a)

[52]. Id.

[53]. 28 U.S.C. section 1498 (b) (“the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims for the recovery of his reasonable and entire compensation.”)

[54]. Cohen v. United States, 98 Fed. Cl. 156, 161 (Fed. Cl. 2011) (a writer who licensed his copyright in making print and CD copies of his work to a publisher did not thereby lose his exclusive right to make and post digital copies of the work online.  While he did not each of the bundle of rights, he was still authorized to sue under 28 U.S.C. 1498(b) for the rights he did not

[55].       See e.g. United States, Zolotek Corp. v. United States, 58 Fed. Cl. 688 (2003) (the governenment’s use of another’s patent rights, without permission, is an exercise of eminent domain requiring compensation). 

[56].       Id.

[57]. See e.g. Spilman v. Mosby-Yearbok, Inc.,  115 F. Supp. 2d. 148 (2000, DC Mass).

[58]. Zolotek at 692. 

[59]. One notable exception is  Shubha Ghosh, Toward a Theory of Regulatory Takings for Intellectual Property: The Path left open After College Savings v. Florida Prepaid, 37 San Diego L. Rev. 637 (2000).  While the article discusses the concept of regulatory takings applied to copyright, the paper is more focused on utilizing regulatory takings to overcome state sovereign immunity in copyright violations rather than analyzing intellectual property rights under regulatory and unfair exaction takings. 

[60]. 98 Fed. Cl. 156 (2011) (Affed’ without comment, 2013 U.S. App. LEXIS 16789, 2013 WL 4081423 (Fed. Cir. 2013)

[61]. Cohen at 162. 

[62]. Id. 

[63]. Id. at 158-59.

[64]. Id.

[65]. Id. at 159.

[66]. Id. at 165-67. 

[67]. Id. 

[68]. The Federal Government and U.S. Research Universities: Driving Innovation that Fuels the Economy, The Science Coalition, available at : http://www.sciencecoalition.org/sites/sciencecoalition.com/images/file/Basic%20Research%20and%20the%20Innovation%20Process.pdf  (in 2009)

[69]. Id.  in 2011

[70]. Koontz v. St. Johns River Water Mgmt. Dist., ___ U.S. ___, 133 S. Ct. 2586, 2591, 186 L. Ed. 2d 697, 705 (2013).

[71]. See Contreras, supra note 6, at 563 (estimating losses to the publishing industry due to forced online access is approximately 2.5-4%).