Tuesday, July 05, 2005

Sandra Day O'Connor

Justice O'Connor's announcement last Friday of her retirement was surprising and expected. The last time I saw her, the morning of the Grokster argument (March 29), she had moved out of her usual chambers into much smaller chambers on the other side of the building. Her old chambers were on the left of the Court as you walk up the front steps and had a wonderful view of the Capitol. She could also see and hear protesters, who not infrequently gathered below. The Court is undergoing a modernization project, quadrant by quadrant, and her quadrant was first. I was told in early March by a relative of hers not to read "too much" into the move, but it was hard not to, especially as the new chambers are those for a retired Justice, the ones she will now occupy permanently.

She was, the day of the Grokster argument, as she always is: incredibly warm, gracious, and wanting to know the latest with you and your family. I worked for 12 years in DC, 8 of them in the legislative branch, and with some masterful politicians. In person, Justice O'Connor has an aura, an astonishing ability to connect on an intimate level that cannot be explained unless you experience it. Her love of people is genuine, her loyalty unflagging, and she is very direct: she says what she means and means what she says. She is also down to earth, as befits someone who grew up on a working ranch and who was cut no slack because she was a woman. An illustration: once, when I was working for the House IP subcommittee, my direct line rang: I answered the phone and heard a very recognizable voice on the other end: "Hello, Bill, this is Sandra. Are you free for dinner at the house Thursday with Craig and I?" The DC protocol for important people is to have their staff call for them: Justice O'Connor always called herself, and always referred to herself as Sandra.

Craig is Craig Joyce, an old friend (I was for a time co-author of a few editions of his casebook on copyright and he is the co-author with her of her latest book, the one I am reading in my blog photo). He is a close relative of the Justice's by marriage and once worked as an associate for John O'Connor in the latter's then Arizona law firm. (In 1978, the O'Connors set him up on a blind date with the woman who became his wife, Molly, a cousin of the Justice's; they have two children, Will and Matt.) The dinner the Justice had called me about consisted of her cooking dinner for Craig and I in her kitchen, she bedecked with an old apron. We had a small salad and then the main course, an enormous piece of salmon. I have been a strict vegetarian for over 30 years, but it was just the three of us, in her kitchen, and she was the cook. I ate every bit of it, but was the last to finish by an uncomfortable amount of time.

I don't know many who, in her position, would cook for lowly people like me. When Janet Reno was confirmed as Attorney General, she came over to the House Judiciary Committee and had a brown bag lunch just with staffers; that was a big deal to us, but she didn't make our lunches. Justice O'Connor is to me as perfect as human beings get: so warm you feel you are a close friend, brilliant, loyal, incredibly strong yet still caring, and always reaching out to opponents to try and find common ground. Before the Grokster argument, three times she mentioned to me how much Congress hated the Court, yet she had a short time before invited a group of House Republicans over to the Court for a private lunch to try and repair relations, a wonderful gesture, and one that would never have been initiated from the other direction.

Justice O'Connor's approach to the work of the Court was best summed up by Eugene Volokh, whom I met while he was an O'Connor clerk: "Justice O'Connor, a pragmatist, saw the work of the law as making law work." That approach angered the uber-ideological, those like Robert Bork, who view as apostates conservatives who don't put their private views into action on the Court (See the transcript of Bork's July 1, CNN interview.) Of course, Bork didn't make it on to the Court and O'Connor did; he should, but doesn't, see a lesson in that.

Being a pragmatist doesn't mean an absence of principle, as Judge Posner never tires of pointing out. And Justice O'Connor's dissents in Raich and Kelo certainly dispel any doubt that her principles are deeply conservative ones. (You can buy an SOC Kelo dissent t-shirt at cafepress.com). But she viewed her job as deciding the case before her; she didn't view the case as a vehicle for furthering a private philosophical view.

Much has been made in the press about Justice O'Connor's role as the swing vote, and there is no doubt she was in many case, but any real estimation of the number of times she was the "swing" might helpfully focus on those where her vote was in play, not just those where she was in the majority. One case where she was the decisive 5th vote was Sony. In a previous posting on June 1, I gave a look at the behind the scenes shift in votes in Sony, and there was one Justice and one Justice only I didn't name. Justice O'Connor was that Justice and she was, in Sony, the 5th vote that switched from Blackmun, making Stevens' opinion the new majority. Sony, then, is a case where she cast the decisive vote. And she stuck with Justice Stevens in Grokster, joining him in Breyer's concurring opinion.

I want to conclude though with more typical O'Connor opinions, those where she forged a 9-0 Court, in particular, Bonito Boats, Inc. v. Thundercraft Boats, 489 U.S. 141 (1989) and Feist Publications, Inc. v. Rural Telepone Services, 490 U.S. 340 (1990). Justice O'connor prided herself not for being the swing vote, but on her ability to forge a consensus. These two opinions, written a year apart and properly regarded as twins, express a coherent, principled, pragmatic view of how the intellectual property system should work, a view that is frequently overlooked. Both cases express the view that IP is a two-sided coin in which the Promotion of the Progress of Science can only go forward if the public domain is protected as well as content owners' rights. In Bonito Boats, the Court struck down an effort by the State of Florida to circumvent the lack of patent novelty by providing a mutant form of unfair competition protection. In Feist, the Court insisted that the originality requirement in copyright means something, and that facts really are free.

Justice O'Connor clearly saw that a balance was integral to our IP system. To her, this meant a balance by which an adequate amount of incentives are provided but not at the expense of a vigorous public domain. She saw her job as making that system work. Those of us who are non-ideological, precisely because we believe that the system can function properly only if both sides of the equation genuinely work and work together, have an extra reason to mourn her retirement.


Anonymous said...

It would have been more consistent with the philosophy underlying the Feist and Bonito Boats decisions if Madam Justice O'Connor had either joined Justice Breyer's dissent in Eldred, or at least filed a separate concurrence, agreeing with the decision but distancing herself from the sneering inhumanity that underlies parts of the Court's Eldred opinion, such as footnote 18.

Joe G said...

A thoughtful and personal post; thank you, and a hat tip to A3G for pointing out the post.

Also, a great discussion of the meaning and motive for Bonito Boats and Feist. I know for a fact that I studied Feist in copyright class, and Bonito Boats in patent and trademark classes, but I don't know whether I ever had a chance to put the two together.

William Patry said...

Timothy: I too wish she had distanced herself from Eldred. I think at the end, especially with Justice Ginsburg there, Justice O'Connor had turned away from involvement in IP opinions, although she was very active at arguments.

Joe G said...

Timothy Phillipps: *Madame* Justice? Where'd you get that from?

Prior to her elevation to Justice, the Court decided on its own to stop referring to its membership as "Mr. Justice." Presumably in anticipation of the breaking of the gender barrier.

So, members of the Court are now, always and necessarily referred to as "Justice X." Not Mr. Justice. Nor Mr. Chief Justice. Not like Mr. President (a badge of reverse-honor, in a sense, a humble designation indicating his equality with the citizenry).

Calling her Mistress Justice would be an insult to the dignity of the office she holds and held. Calling her Madame Justice ain't much better.

On the other hand, if you're just being snarky, well then fine. Never let it be said I was a humorless, sarcasm-colorblind scold. Well, let it be said but not truthfully.

thevitaminkid said...

As an ideologue, I would side with Bork. However, I enjoyed your "human interest" side of the story. I'm sincerely glad this fine human being can have some family time now.

Congress is not alone in hating the Court. I don't hate the people, but am continually bewildered at the decisions they inflict on 290 million people.

I will be interested to read your comments on the hell-raising that is apparently about to start regarding the selection of a replacement. Your well-informed perspective is helpful.

William Patry said...

Dear Vitaminkid: Thanks for your comments. I too am distressed by the Court: Bush v. Gore, Raich and Kelo seem so far beyond at least my pale that I agree with Justice Thomas's comment in Kelo about something being serious awry witht he Court's interpretation of the Constitution. And, as my comments on Grokster indicate, I am baffled by their low caseload and seeming unwilligness to try to work together as a Court rather than as nine splintered individuals.

In my job and most people's you can't just decide not to perform a task, and to me the failure to address the Sony in Grokster was a signal failure of will.

Until I read the transcript of Bork's CNN interview on July 1 about Justice O'Connor, which I regard as sneeringly condescending, I felt he had been wronged, and I guess I still do, although his comments make me glad on one level he is not on the Court.

I have a number of good friends who were quite actively involved in the "Borking" and they did it with glee. I thought unseemly and inappropriate. He was clearly very well qualified and should have been confirmed given to me that there were no other disqualifying aspects to his nomination. But we are too far down a road of no return now, and I imagine Bush will appoint whomever he damn well pleases; he always does. None of the top six names being bandied about should be rejected in my view, nor should they be given a hard time. My personal choice would be Samuel Alito from the Third Circuit. A former student and friend clerked for him and he was kind enough to cite me in an en banc copyright opinion, which he sent on to me with a very nice note. (I'm obviously easily swayed by flattery).

But I fear the Democrats, who have just woken up to the fact that they really are a minority party, will feel they have to put on a red meat show for their base. That will damage everybody.

Anonymous said...

We're getting off topic here, but why such a harsh opinion of Eldred fn18?

I have some quibbles with it: It's too dismissive of JJ. Breyer and Stevens. It fails to recognize that mere creation isn't the same as the public interest, and that more incentives (which are of arguable value even as incentives) won't always result in more public benefit.

But the idea that copyright is a tool for the public to exploit artists (at least artists that need exploiting) is bang on.

William Patry said...

I have been engaging in a running debate on O'Connor's status as the Fifth Vote at the Volokh Conspiracy, that may interest some: http://www.volokh.com/posts/1120579406.shtml

Anonymous said...

Since it is off-topic, I'll refer the anonymous contributor to my first response to the Eldred opinion, which may be found at:


I would like to see Alex Kozinski nominated to the Supreme Court. But I doubt it'll happen this time around.

Anonymous said...

Nice blog, but you may want to consider running your posts through a grammar check. You made a "fingernails-on-blackboard" error twice, including here: "...at the house Thursday with Craig and I?" An easy test for this one--just leave off the "Craig and" and see how it sounds. Lawyers are expected to have impeccable grammar...

William Patry said...

Dear Anonymous:

Even Supreme Court Justices speak ungramatically, although Rehnquist is a stickler. I was at an argument where he stopped a lawyer who made the mistake of using the word "irregardless." Rehnquist shouted down at him: "That's not a word!" I would have responded to him, "regardless, my point is ...."

Anonymous said...

How did she prepare the Salmon?

Anonymous said...

Re: Grokster

In his opinion Justice Souter said "Although an exact calculation of infringing
use, as a basis for a claim of damages, is subject to dis-
pute, there is no question that the summary judgment
evidence is at least adequate to entitle MGM to go forward
with claims for damages and equitable relief."
In their complaint MGM asked for statutory damages. In view of the Grokster opinion, can MGM still claim them?
In SONY the Court of Appeals awarded statutory damages but the Suprewme Court reversed them on liability. The Grokster opinion states that "inducing infringement" liability is based upon "common law prinicples". Further, inducing infringement is not one of the Section 106 rights which define an infringer. It would seem that the trial court may well find that MGM is not entitled to them but must rely on common law damage principles. Congress may at that point be motivated to act as they did on the patent side with Section 271. Mr Patry, what do you think of this question?

William Patry said...


The salmon was to me just damn big, scary big, but I guess if you eat meat it was tender. The next time I went over for dinner, it was a buffet, so that was cool.

As for statutory damages, if they were pled and if the infringement occurred after registration, MGM can get them if infringement is found. Third-part liability applies to all the Section 106 rights, so that's not an obstacle.

Anonymous said...

With regard to 3d party damages, perhaps I did not make my point clear enough. I read the Grokster opinion as recognizing a new cause of action, "inducing infringement". This is distinguished from contributory infringement which relied upon agency principles to make the contributor stand in the shoes of the direct infringer. Both were found therefore to be "infringers" under the Copyright Statutes. Inducing infringement liability is based upon common law principles and not the statutes. An inducer is not defined as an infringer under the statutes. If an inducer is not an infringer, you cannot claim statutory damages against them directly. My proposition is that you must also sue the direct infringer to claim statutory damages in a case that also includes an inducer.
PS I did not make the comment on eating the Salmon.

William Patry said...

I still don't think there is a problem with inducement liability. I don't agree the statute doesn't cover it. Section 106 grants the copryight owner the right to "do and to authorize," and "authorize" is broad enough to cover inducement.

And I don't think the Court believed it was creating a new right, as opposed to refining one that already existed in the statute. Moreover, calling something a common law cause of action doesn't mean anything under a statutory regime.

Copyright owners have never been required to sue the direct infringer in order to collect against a third-party infringer.

Anonymous said...

Assume statutory damages are available. How do you measure them? Are the defendants liable for every infringing use, or just the infringing uses that they "actively induced"? If 90% of the P2P traffic is infringing, how much of that was induced by the defendants' advertising and promotion, and how much was induced by reading about P2P on CNET.com, or at the lunch table in the highschool cafeteria. Are defendants liable for only for their own active inducement, and are those infringements identifiable? Or are they liable for the "network effects" that they set into motion?

Anonymous said...

And what about the injunctive relief? Isn't that pretty well moot? A quick Westlaw search for injunctions in patent infringement inducement cases reveals orders enjoining advertising and instructing the infringing use of articles of manufacture that are alone non-infringing. Is there any evidence here of continuing inducement?

William Patry said...

I don't have off the top of my head answers to John Noble's important questions, and I think that we are in deep, uncharted waters if the Court meant to suggest that the entirety of patent law concept of inducement including remedies is to be incorporated into copyright to the extent there is nothing directly on point in the Copyright Act. As for the one case where there is something directly on point, statutory damages, the quick but useless answer is that one can collect only for acts attributable to the infringement, that is the inducement, but that just rephrases the question.