IPR Career Stories: Rochelle Cooper Dreyfuss’s Thoughts Upon Receiving an Honorary Doctorate

This article is based on a presentation Rochelle Dreyfuss gave about her career and field on 31 October 2024 at the Hanken School of Economics, as part of the festivities surrounding its conferral of honorary degrees.

I am thrilled to be awarded this degree, to be included in an amazing group of honorees, and to participate in the Hanken School of Economics’ doctoral conferral events for 2024.  I thank Professors Nari Lee and Niklas Bruun for making it all happen.  As part of the program, I was asked to describe my career and then discuss some of the key issues that are emerging in my field.

I am the Pauline Newman Professor of Law Emerita at New York University School of Law and founding director, now a co-director, of NYU’s Engelberg Center on Innovation Law & Policy.  I am also a Research Fellow at the Oxford University Intellectual Property (IP) Research Center.  Although I am now a law professor, universities in the United States do not award first degrees in legal studies.  I began my higher education as a student of chemistry.  I received my B.A. from Wellesley College and an M.S. from the University of California at Berkeley.  Upon graduation as a chemist, I worked at the Vanderbilt University Medical Center in pharmacological research and at the Albert Einstein College of Medicine in genetics research.  I then shifted to the private sector, working at the pharmaceutical firm that was then Ciba-Geigy and is now Novartis.  I was a member of the Drug Metabolism Department which conducted research on how the body breaks down medication into smaller components (metabolites).[i]

The point of that work is two-fold.  First, regulatory agencies, including the Food and Drug Administration (FDA) in the United States and the European Medicines Agency (EMA) in the EU, use information on metabolites as part of their determinations as to whether new medications are safe and effective enough to market. Second, although some metabolites are dangerous—that is the concern of the FDA and EMA—they can also turn out to be better drugs: they may work faster, have fewer side effects, or treat new conditions.  As a result, pharmaceutical firms wish to isolate and identify them, with an eye toward possibly producing them.

The cost of bringing new drugs to market is, however, very high.  Thus, firms like Ciba-Geigy typically patent the new compounds they identify.  Patents, like other forms of intellectual property (copyrights and trademarks) give creators exclusive rights over their advances—in the case of patents, the rights to exclude others from making, using, or selling their inventions.  That freedom from rivals allows them to charge enough to recoup the costs of development and enables them to earn supra-competitive profits.  The promise of high returns is what is thought to encourage creative production, innovation, and progress.

For reasons lost in the mists of time, I became my department’s liaison to the firm’s legal department.  The regulatory and patent lawyers I worked with were impressed by my grasp of their fields and suggested that I would do well to go to law school.  As it happened, one of my lab mates was actually in law school.  He attended classes at night, and during the day, he’d often read me his assignments and we would discuss the questions he was asked to consider.  He often reported back that my answers were very close to those of the professors.  He concluded that I ought to go to law school.  At the time, I was also getting bad rashes on my arms and hands.  My doctor, suspecting the chemicals to which I was exposed, suggested I leave the lab and try something else.  Law school was his top recommendation.

I took the hint and 10 years after receiving my first degree, I found myself a student once again, this time at Columbia University School of Law.  Upon graduation, I was privileged to clerk for then-Chief Judge Wilfred Feinberg in the United States Court of Appeals for the Second Circuit and then at the United States Supreme Court for then-Chief Justice Warren Burger.  As with many Supreme Court clerks, that experience led me into academia.  I joined the faculty at New York University School of Law in 1983.

That period of time saw the onset of profound concerns in the United States about the escalating cost of healthcare. One fear was that patients would stay sick because the high cost of pharmaceuticals prevented them from taking their prescribed medications. At both the federal and state level, governments were making efforts to establish a strong generic drug sector that would offer off-patent medicines at cheaper prices.  Given my background, I chose a research agenda responsive to these concerns.  I focused my attention on crafting laws that encouraged innovation, but also promoted competition, public access, and follow-on research.[ii]  During my clerkship, the US Congress had established the United States Court of Appeal for the Federal Circuit, a specialized court with authority to review the decisions in patent cases from around the country. The workings of that court inspired me to think about whether the involvement of expert institutions would be another way to balance proprietary interests in strong protection with the public’s interest in access.[iii]  The articles I wrote examining the Federal Circuit later led me to offer suggestions during the run-up to the EU’s establishment of the Unified Patent Court, which is a somewhat similar institution.[iv]

Although my main focus was on patents and the life sciences, I also considered how the public/private balance should be struck in other intellectual property and related regimes, including copyright, trademark, and trade secrecy law.[v]  My all-time favorite (and probably best known) article was one that tried to disentangle marketers’ interest in obtaining exclusive rights over their trademarks so they could communicate unambiguously with customers from the interests of their rivals in comparative advertising (“which is better, Coke or Pepsi?”) and in nominative use (“we sell parts to fix your Mercedes Benz”), as well as from consumers’ interest in using marks expressively (“he treats me like a Barbie doll”).[vi]  In that strand of my work, I also considered attempts to use trademark law to control cultural symbols.[vii]

Once the World Trade Organization (WTO) was established, I also began to think about these issues from an international perspective. I considered the policy space the WTO’s TRIPS Agreement left to member states to balance public and private interests, how the agreement was interpreted, and its impact on health and other social interests.[viii]  I followed up with pieces about the effects of the IP provisions in preferential trade agreements and the protection offered to IP through international investment agreements.[ix]

One joy of working in this area is that it is always changing.  There are new technologies to consider and new social problems that require creative solutions. There are three such developments that I think will dominate the discussion in the near future.  One was revealed by the COVID-19 pandemic.  Experience at that time demonstrated that the access issues I’d long been thinking about were only part of the difficulties engendered by intellectual property rights.  To be sure, patents had likely spurred the rapid discovery of COVID vaccines.  But they were also a problem because they led to prices many countries could not afford to pay.  As it turned out, however, price was not the only issue.  In fact, there was not enough supply to go around at any price: many countries were simply unable to invent, manufacture, store, or deliver vaccines efficiently.  For a variety of reasons, international intellectual property obligations appear to have thwarted the ability of some nations to become technologically proficient.  In the future, we must find ways to help countries move toward self-sufficiency, at least with regard to advances important to their internal welfare.  We must, in short, build global capacity to fully participate in the scientific and technological enterprise.  In a recent article, I argued that there is, indeed, a human right to contribute to the common good and that states have an obligation to facilitate the ability of their citizens to participate in doing science.[x]

We need to build capacity not only to deal with pandemics.  A second challenge is posed by the health of the planet, including problems caused by pollution, climate change, and resource depletion.  To combat these issues, we need to promote sustainable development.  For that, we must interest as many scientists as possible.  Importantly, scientists trained in current methodologies are insufficient.  It is not possible to engage in controlled lab experiments on the planet.  Accordingly, we need to attract new epistemic communities; people with different ways of knowing, such as learning by observation and by carefully comparing the present with past experience.  Among other things, we need to bring those with traditional knowledge—those making advances in ways that are not currently susceptible to intellectual property protection—into the scientific and technological mainstream.  I am currently working on a paper tracing the extent to which national and international organizations are beginning to appreciate this need and are engaged in broadening the definition of science, recognizing new types of knowledge production, and bringing together those who approach sustainable development effort in diverse ways.

Furthermore, we need to reconsider the use of exclusive rights as our principle mechanism of encouraging innovation.  These rights are certain to get in the way of ensuring broad use of whatever mitigation strategies are invented.  Indeed, they are already an obstacle to repair, reuse, adaptation, and other efforts to build a circular economy.[xi]  For many reasons, the holders of intellectual property rights are motivated by their own vision of circularity, which is to promote endless cycles of buying and discarding, buying and discarding…. That needs to stop.

Of course, there are some who believe that such efforts are pointless; that the world’s problems will all be solved with artificial intelligence (AI).  That strikes me as an unreasonable hope.  Still, AI is rapidly becoming an important presence in the creative community.  It poses the third challenge that concerns me, for it is unclear what role intellectual property can and should play in this new world.

One question is about the relationship between AI and subsisting intellectual property rights.  Large Language Models (LLMs) are trained on existing works.  Is that use infringement?  If it is, then building LLMs will require developers to purchase rights to these materials.  If so, will AI become the province of the rich?  Since firms like Google, Facebook, and Amazon already possess vast amounts of information and can afford to buy more, this would be a recipe for their further domination.  But if AI developers can use existing material for free (as a form of fair use or as within exceptions built into the copyright system), then will there be adequate incentives available to human creators?  Will the inequities we currently see in the ability to contribute to the common good become even more prevalent?

Another problem concerns the output of AI.  Is a machine a “creator” for the purpose of acquiring intellectual property protection?  So far, most countries have said AI-created advances are not eligible for copyright or patent protection. But if they are not, then how will beneficial uses be encouraged?  What happens when the output is remarkably close to the existing work of a human?  If AI cannot be a right holder, can it nonetheless infringe the rights of others?  Can it be held responsible for other types of damage, such as the harm caused by its creation of fake news and misinformation?  What about accountability for the decisions AI systems facilitate?  Will rights over algorithms and training materials prevent challengers from using these materials to show that decisions about such matters as the length of criminal sentences, school placements, and professional licenses were faulty or tainted by bias in the training data?  Intellectual property law will have to be thoroughly reconsidered, as will concepts of tort law, ethics, and justice.  These are weighty issues and require a technical understanding of how AI works.  I happily leave them to future generations of scholars, policymakers, and legislators, including the wonderful students trained at the Hanken School of Economics.

__________

[i] H. Egger, F. Bartlett, R. Dreyfuss, and J. Karliner, Metabolism of Methyl Phenidate in Dog and Rat, 9 Drug Metabolism and Disposition 415, (1981).

[ii] Examples of that work include Rochelle Cooper Dreyfuss, Dethroning Lear: Licensee Estoppel and the Incentive to Innovate, 72 Va. L. Rev. 677 (1986); Reconsidering Experimental Use, 50 Akron L. Rev. 699 (2017); The Patentability of Genetic Diagnostics in U.S. Law and Policy in Pharmaceutical Innovation, Competition, and Patent Law: A Trilateral Perspective (Josef Drexl and Nari Lee eds., Edward Elgar Publishing 2013).

[iii] Rochelle Cooper Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. Rev. 1 (1989).  I wrote seven other articles about this court, ending in 2015 when it was well-established.

[iv] Rochelle C. Dreyfuss, An International Perspective I: A View from the United States in The Unitary EU Patent System (Justine Pila and Christopher Wadlow eds. Hart Publishing 2015); Rochelle Cooper Dreyfuss, Launching the Unified Patent Court: Lessons from the United States Court of Appeals for the Federal Circuit, in The Unitary Patent Package & Unified Patent Court: Problems, Possible Improvements and Alternatives (V. Cassiers, L. Desaunettes, F. de Visscher and A. Strowel eds. Ledizioni, 2023).

[v] Rochelle Cooper Dreyfuss, The Creative Employee and the Copyright Act of 1976, 54 U. Chi. L. Rev. 590 (1987); Trade Secrets: How Well Should We Be Allowed To Hide Them? The Economic Espionage Act of 1996, 9 Fordham Intell. Prop. Media, & Ent. L.J. (1998).

[vi] Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 Notre Dame L. Rev. 397 (1990).

[vii] Rochelle C. Dreyfuss, Cultural Heritage and the Public Domain: What the US’s Myriad and Mayo can Teach Oslo’s Angry Boy in Transition and Coherence in Intellectual Property Law (Niklas Bruun, Graeme B. Dinwoodie, Marianne Levin, and Ansgar Ohly, eds. Cambridge University Press 2020).

[viii] Graeme B. Dinwoodie & Rochelle C. Dreyfuss, A Neofederalist Vision of TRIPS: Building a Resilient International Intellectual Property System (Oxford University Press 2012); Balancing Wealth and Health: The Battle over Intellectual Property and Access to Medicines in Latin America (Rochelle C. Dreyfuss and César Rodríguez-Garavito eds. Oxford University Press 2014)

[ix] Rochelle Cooper Dreyfuss, Harmonization: Top Down, Bottom Up—And Now Sideways? The Impact of the IP Provisions of Megaregional Agreements on Third Party States, in Megaregulation Contested  (Benedict Kingsbury et. al., eds. Oxford University Press 2019); Rochelle Dreyfuss and Susy Frankel, Reconceptualizing ISDS: When is IP an Investment and How Much Can States Regulate It?, 21 Vand. J. Enter. & Tech’y Law 377 (2018).

[x] Rochelle Cooper Dreyfuss, Human Rights in a Technological Age: The Right to Participate in Science, 55 N.Y.U. J. Int’l L. & Pol. 581 (2023).

[xi] Rochelle Cooper Dreyfuss, Trade Secrets and Depp Secrets, in Research Handbook on Unfair Competition and Passing Off (Graeme B. Dinwoodie and Ansgar Ohly eds. Edward Elgar Publishing, forthcoming).

_________________________

Kannen kuva: Vilhelm Sjöström

Muut kuvat: Vilhelm Sjöström