The Superior Spider-Man & The March Across the Valley of Death (Part 1)

 

(This fantastic guest post, the first of two parts, was written by Anthony Cova, who serves as the Corporate Counsel at Addgene, Inc., a nonprofit plasmid repository, where he handles the company’s legal and technology transfer matters.  The views expressed in these posts are solely those of the author and do not necessarily reflect the views of Addgene.)

 

Since regaining control of his body from Dr. Otto Octavius following the events of The Superior Spider-Man, Peter Parker has had his hands full reconciling with family, friends and co-workers, and restoring Spider-Man’s credibility with the public and other heroes. Yet, despite all the harm Octavius caused during his tenure as Peter Parker/Spider-Man, he still managed to obtain a Ph.D., found a company and restore Parker’s loved ones’ ability to walk.

Now, the cybernetics technology that freed Aunt May from her cane and Flash Thompson from his wheelchair is at risk. In a recent public address, Parker announced that Parker Industries would be putting its cybernetics line “on hold” to research and develop technologies focused on capturing, imprisoning and depowering super villains. Parker, who does not possess Octavius’s cybernetics knowledge, would rather shelve a proven technology than carry out another’s work. Given the benefits of Octavius’s cybernetics technology, can Parker simply halt its research and development (presumably indefinitely) out of pride and insecurity? Will the public be deprived of invaluable cybernetic prosthetics? Who can rescue the technology from the crumbled shelves of Parker Industries?[1]

In Part I, I will provide a brief overview of technology transfer—its history, objectives, and barriers. Part II will then describe the powers and objectives of Empire State University and the federal government and whether they are sufficient to rescue the cybernetics technology on the public’s behalf.

PART I. TECHNOLOGY TRANSFER

The Origin Story

In the sweltering summer months of 1787, a conclave of demigods[2] assembled behind bolted doors and shuttered windows at the Pennsylvania State House. Their task: to bandage a hobbling federal government. However, rather than patching the Articles of Confederation, the demigods chose to create an entirely new constitution. Unlike its penniless, toothless predecessor, the 1787 Constitution empowered the federal government to collect taxes “to provide for the common defence [sic] and general welfare;”[3] to grant inventors an exclusive right (a patent) to exclude others from using their inventions for limited periods of time “to promote the progress of science and the useful arts;”[4] and to make all laws “necessary and proper” to “carry[] into execution the foregoing powers.”[5] While these powers strengthened the federal government, they were intended to be exercised to “promote the general welfare.”[6]

Since the conclave’s end, the U.S. has grown into a global, economic power. Recognizing the benefits of “promoting the progress of science and the useful arts” and the need to remain competitive internationally, the federal government, through its various agencies (collectively, the “FED”), began funding university research. Similar to the FED, universities are “conducted for the common good.”[7] They are committed to the education of their students, the pursuit of unbiased research and the dissemination of knowledge to the public. Moreover, as institutes of higher learning, universities have historically served as centers of innovation. Indeed, many products today can be traced back to a university lab notebook or chalkboard.[8] When innovations are transferred from universities to commercial partners and, ultimately, the general public, this process is referred to as “technology transfer.” Unfortunately, despite FED objectives and university academic principles, technology transfer is not always successful.

 

The Bayh-Dole Act and the Rise of the Technology Transfer Offices

Prior to 1980, title to any patentable innovations developed through government-sponsored contracts or federally funded research (a federally funded invention or “FFI”) typically vested in the FED. This reflected the rationale that research funded by the public belonged to the public. Ironically, only a handful of FFIs ever reached the public. Neither the FED nor the university possessed the necessary resources to develop and commercialize FFIs for public use, and obtaining developmental help from the private sector was often a slow, circuitous process due to the number of funding federal agencies and/or their inconsistent intellectual property policies.[9] Exacerbating FFI unavailability was the fact that some FED agencies offered FFIs on a non-exclusive basis only, believing that non-exclusivity provided the public potentially with greater access. Unsurprisingly, this deterred many in the private sector from investing in and commercializing a FFI. If the public was ever to benefit from the fruits of its tax dollars, legislative and systematic changes were needed.

In 1980, Congress passed the Bayh-Dole Act (“BD”) in order “to promote [FFI] commercialization and public availability” and “to protect the public against [FFI] nonuse or unreasonable use.”[10] By granting universities the right to retain title to FFIs, BD allowed universities to facilitate technology transfer transactions on behalf of the FED and to streamline the licensing process. Revenue from these licenses also provided universities additional funds to be reinvested into further research. Since its passage, BD has created thousands of jobs, generated billions of dollars and significantly increased the number of FFIs reaching the public. Nonetheless, the right to retain title is not absolute. BD requires universities to timely file patent applications, to prefer certain licensees and, most importantly, to promote a FFI’s utilization, commercialization and public availability. Universities that fail to comply with these and other obligations risk losing title to FFIs and even future research funds.[11]

With so much at stake, U.S. universities have established special administrative offices, generally referred to as technology transfer offices (“TTOs”), to manage regulatory compliance and advance university policies. TTO operations can typically be divided into three purposes: (1) generate revenue for the university to supplement federal grants; (2) support the university’s research community (e.g., facilitating industrial partnerships, assisting spinout companies, responding to student and faculty intellectual property queries, etc.); and (3) comply with external laws and regulations. While some TTOs may focus their operations on one purpose over another, most TTOs fulfill, to varying degrees, all three. More importantly, as stalwarts of their universities, TTOs are charged with defending and advancing their universities’ core academic principles. TTOs must be vigilant of any hazards that could interfere with a university’s ability to develop and disseminate innovations and knowledge to the public. For example, contract provisions that restrict publication or intellectual discourse amongst faculty are often immediately struck from any collaboration agreement. Licenses that restrict universities’ rights to use an invention for research purposes are often renegotiated, and any agreements that narrow or remove access to research tools are best avoided. Given these academic principles and the BD obligations described above, TTOs have a duty to promote public availability of FFIs and to ensure that the public will ultimately benefit from federally funded university research.

 

The Valley of Death

Across the commercial plain, nestled between academia and the consuming public, lies the Valley of Death (the “Valley”). Despite the best efforts of countless TTOs, the Valley has claimed many worthwhile innovations. Some FFIs perish along the way for lack of funding—having failed to attract investors or to maintain sufficient cash flows. Others—having been deemed commercially invaluable—may be immediately abandoned at the Valley’s edge. Although lack of funding and investment support are endemic to the Valley, those wishing to guide FFIs through the financial brambles have many tools at their disposal. Universities and local business groups often offer low cost spaces or business incubators for small businesses. Financial programs like the Small Business Innovation Research Program provide federal funds to support the research and commercial development of small business innovations. Even federal laws, such as the Orphan Drug Act, can incentivize commercial investment and development of less marketable technologies. While these and other tools may not always be sufficient to blaze a path through the Valley, TTOs can help FFI licensees appropriately equip themselves for the attempt.

More troubling within the Valley are the surreptitious barbs of patent trolls or the alluring facades of devious competitors. Patent trolls often use broadly written, and sometimes ambiguous, patents to poke at a company’s portfolio in hopes of spearing forced royalties and/or settlement payments. Although many companies may succeed in routing these attacks, they may find they have suffered significant financial lacerations to continue beyond the Valley. Devious competitors, looking to maintain or promote their own technologies, might approach a TTO with alluring exclusive license terms, only to later bury the competing technology within the Valley. While President Obama and various legislators have taken great strides to cull the patent troll population and professional technology transfer organizations have developed best practices to prevent the burying or intentional shelving of exclusively licensed technologies,[12] many innovations continue to languish in the Valley.

In the present case, Parker has simply decided that Parker Industries will no longer pursue the cybernetics technology. The decision to shelve the technology—thereby abandoning it in the Valley—stems from Parker’s hurt pride rather than for lack of funding. Unlike Aunt May and Flash Thompson who benefitted directly by Octavius’s hand, the public may have to wait years before the cybernetics technology finds its way out of the Valley, just because Parker is ashamed that he lacks the necessary cybernetics skills and knowledge. For some members of the public, access to such life-changing technologies may come too late.

 

To be Continued . . .

Next time, in Part II of this series, we will consider whether the powers and obligations of Empire State University, the university where Octavius earned Parker’s Ph.D., and/or the FED, are sufficient to rescue the technology from Parker Industries on behalf of a needy and ready public.

 

[1] This article was originally written shortly after the Ghost had destroyed Parker Industries.

[2] Letter from Thomas Jefferson to John Adams (Aug. 30, 1787), in Hilary, Prologue: Pieces of History, The National Archives, Dec. 5, 2012 (referring to the Framers of the Constitution as an “assembly of demigods”).

[3] U.S. Const. art. I, § 8, cl. 1.

[4] U.S. Const. art. I, § 8, cl. 8.

[5] U.S. Const. art. I, § 8, cl. 18.

[6] U.S. Const. pmbl.

[7] American Association of University Professors, 1940 Statement of Principles on Academic Freedom and Tenure 14 (1940).

[8] For example, Gatorade was developed at the University of Florida; the algorithms for Google were developed at Stanford University; and the components that produce high-definition television were developed at MIT.

[9] There were 26 different federal agency policies regarding the use of federally funded research at the time of the Bayh-Dole Act’s consideration. U.S. Gen. Accounting Office, GAO-09-742, Information on the Government’s Right to Assert Ownership Control Over Federally Funded Inventions 4 (2009).

[10] 35 U.S.C. § 200.

[11] For example, in Campbell Plastics, the Federal Circuit determined that a federal defense contractor had forfeited its right to retain title under BD for failure to comply with BD’s invention disclosure requirements. Campbell Plastics Engineering & Manufacturing, Inc. v. Brownlee, 389 F.3d 1243 (Fed. Cir., Nov. 10, 2004).

[12] See David Kravets, History Will Remember Obama as the Great Slayer of Patent Trolls, Wired (Mar. 20, 2014) (discussing the various implementations to combat patent trolls including five executive orders issued by President Obama and patent reform legislation introduced in Congress); and AUTM, In the Public Interest: Nine Points to Consider in Licensing University Technology (AUTM, Mar. 6, 2007).

Jim Gordon and the Felony Murder Rule

Today’s post was inspired by a question from Christopher about the first episode of the new season of Gotham.  His question presents an interesting twist on felony murder.  Spoilers below:

Continue reading

Super Heroines in the Pub

This Monday, September 28th, I will be giving a talk on Batman villains and the insanity defense as part of a Super Heroines, Etc. event here in St. Louis.  Super Heroines, Etc. (aka SHE) is a St. Louis-based 501c3 nonprofit focused on empowering women through educational events, classes, and workshops.  I’m looking forward to it and hope to see many of you there!

Law and the Multiverse Retcon #10

Time for another installment of the Law and the Multiverse Retcons series, in which I discuss changes in the law (or corrections in my analysis) that affect older posts.  Alert readers will notice that there was no Retcon #9.  This is because there are actually two Retcon #6s, and I have decided to retcon the Retcon numbering system as though I had not lost the ability to count to 10 at some point between kindergarten and last year.

This Retcon addresses some of my shortcomings on a recent episode of the Geek’s Guide to the Galaxy podcast, specifically my discussion of Man of Steel and Superman’s possible civil and criminal liability for the destruction of Metropolis.  I saw the movie when it was released and had forgotten several key plot points that affect the legal analysis.  Thanks to Damon for pointing out these issues!  Some spoilers for Man of Steel follow.

Continue reading

Naomi Hinchen on Wizard Politics

Following a theme for the day: Just as with Star Trek, I also rarely talk or write about Harry Potter, since the details of its fictional legal system are kind of fuzzy.  Luckily, long-time reader Naomi recently wrote a post on her blog that raises some great questions about the interaction between the wizarding and muggle legal systems.

Star Trek and Customs Law

Star Trek is usually outside the scope of this blog, since its fictional legal systems are a) quite a bit different from ours and b) not very well fleshed-out in any of the TV series or movies.  But previous guest author Larry Friedman has recently found a way to bring Star Trek and the law together on his Customs Law Blog, with a post about a customs ruling involving Star Trek toys.  Larry goes on to muse about the role of customs law in the Star Trek universe.  As it turns out, a check of a database of Star Trek transcripts finds a few references to cargo manifests, particularly on Deep Space Nine (unsurprising given the setting).  So while we don’t see a lot of customs law on Star Trek, it does exist.

Geek’s Guide to the Galaxy Interview

Occasional guest author Brad Desnoyer and I were interviewed for the Geek’s Guide to the Galaxy podcast, hosted by wired.com.  Thanks to David Barr Kirtley for a great interview!

What Zombies Can Teach Law Students

Professor Tom Simmons at the University of South Dakota just published a great law review article titled What Zombies Can Teach Law Students: Popular Text Inclusion in Law and Literature, 66 Mercer L. Rev. 729 (2015).  Drawing on popular works such as The Walking Dead and World War Z, Simmons shows how many legal issues can be illustrated and explained in the classroom using examples that are more interesting than the abstract “A sues B” type and more engaging than examples from more “serious” literature.

I applaud Prof. Simmons’s work, which follows and greatly expands upon some of my work in this area as well as the work of Prof. Adam Chodorow at ASU and the work of Lawrence M. Friedman at John Marshall.  Anyone interested in zombie fiction or novel legal teaching methods should give the article a read.

Ant-Man: Robbery vs Burglary vs Theft

I saw Ant-Man this weekend and thoroughly enjoyed it.  Appropriate to the title character, it’s a movie that deals in seemingly small things with larger implications.  Largely disconnected from the wider Marvel Cinematic Universe plot arc, Ant-Man is a pleasant break from the Dramatic Global Crisis or Dramatic Cosmic Crisis themes of the Avengers and their individual films.

But you didn’t come here to read a movie review.  So let’s take a closer look at a fine legal distinctions that the protagonist, Scott Lang, makes a few times in the movie: robbery versus burglary.  Some minor, early spoilers ahead.

Continue reading

Uncle Ben at the Supreme Court

Thanks to Joe, Josh, and others for pointing out Justice Kagan’s quotation in yesterday’s decision in Kimble v. Marvel:

What we can decide, we can undecide. But stare decisis teaches that we should exercise that authority sparingly. Cf. S. Lee and S. Ditko, Amazing Fantasy No. 15: “Spider-Man,” p. 13 (1962) (“[I]n this world, with great power there must also come—great responsibility”). Finding many reasons for staying the stare decisis course and no “special justification” for departing from it, we decline Kimble’s invitation to overrule Brulotte.

I happen to disagree with the majority’s decision; Brulotte v. Thys was wrongly decided*, and the Court wasted a rare opportunity to correct a mistake.  So on the one hand the citation and other references to Spider-Man were fun, but on the other hand it felt a little too cute by half for a decision that will ultimately result in Marvel (now part of the second largest media company in the world) avoiding royalty payments to an individual inventor whose idea Marvel (apparently) pretty blatantly ripped off.  The tone of the opinion is incongruous with its consequences.

It may seem a little overly dramatic in a case that is ultimately about money, but I am reminded of Robert Cover’s Violence and the Word:

Legal interpretation takes place in a field of pain and death. This is true in several senses. Legal interpretive acts signal and occasion the imposition of violence upon others: A judge articulates her understanding of a text, and as a result, somebody loses his freedom, his property, his children, even his life. Interpretations in law also constitute justifications for violence which has already occurred or which is about to occur. When interpreters have finished their work, they frequently leave behind victims whose lives have been torn apart by these organized, social practices of violence. Neither legal interpretation nor the violence it occasions may be properly understood apart from one another.

This is not to say that all judicial writing should be humorless.  I have enjoyed reading any number of funny, often acerbic opinions, but those opinions were usually written in response to parties that were themselves behaving badly or foolishly, and so deserved to be treated lightly or even mockingly.  In this case, however, the Court has sided with a multi-billion dollar corporation over an individual inventor and did so on fairly technical grounds.  The majority interpreted the law of stare decisis, and as a result Stephen Kimble lost his property (i.e. the contractual right to royalties from sales of the patented toy).  This does not seem like an appropriate occasion for such levity.

Stepping back off my soap box, I promise the next post will return to discussing the legal implications of comic book hijinks.

* A full discussion of why this is the case is beyond the scope of this blog, but if you’re interested, see the dissent in Kimble and Judge Posner’s opinion in Scheiber v. Dolby Labs.