Takings
of Copyright in The National Institute of HealthÕs Public Access Policy
Table of
Contents
A. Significance
of Access and the Effect of Copyright on Access to Medical and Scientific
Journals
B. Responses
to Insufficient Access
D. Federal
Takings of Intellectual Property
III. Analysis
of the NIH Open Access Policy.
A. Distinctive
aspects of the policy vs. building permits.
B. Under
a Physical taking standpoint
C. Under
Penn Central Regulatory Takings
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 HealthÕs 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.
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 ÒfactsÓ 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 ÒsendÓ the
information to the non-subscribing institution.[9] The most common mechanism to ÒshareÓ
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 Òfair useÓ[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 associateÕs 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]
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 Ò[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 paperÕs short comings immediately.Ó[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 publicÕs 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.
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.
Eminent domain is not a limit on the stateÕs
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 Òpublic use.Ó 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 Ôjust compensation.Ó 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 ÒtakingsÓ it does not matter that a plaintiff is alleging a physical
invasion, regulatory taking, or unfair exaction.[27]
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]
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.
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 ÒÔnexusÕ and Ôrough proportionalityÕ
between the property and the governmentÕs demands and the social cost of the
applicantÕs proposal.Ó[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 Òreasonable and entire compensation
for such use and manufacture.Ó[51]
This reasonable compensation includes not only the reasonable licensing fees
(the fair market value of licensing the invention). If the patent holder is Òan independent
inventor, a nonprofit organization, or an entity that had no more than 500
employees [in the five years preceding the infringing use]Óthe 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. CohenÕs 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. CohenÕs 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 NIHÕs 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 NIHÕs requirements without examining the
implications. Researchers in this
case donÕt really have an option.
However it is not the researchers who are upset by this policy. In general researchers want to have
access to otherÕs 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.
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 ownerÕs 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.
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 ÒtakeÓ 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):
ÒFor
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.Ó
[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.
ChapmanÕs 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, WhoÕs
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 Òmake sure that the agreement
allows the paper to be posted to PubMed Central (PMC) in accordance with the
NIH Public Access Policy.Ó 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 neighborÕs
backyard.
[24]. A government
agency may not believe the government action is a ÒtakingÓ 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 ownerÕs 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 ownerÕs 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 governmentÕs
use of anotherÕs 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) (Òthe 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.Ó)
[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
governenmentÕs use of anotherÕs 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)
(AffedÕ 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%).