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63
INTELLECTUAL PROPERTY LAW AND THE
RIGHT TO REPAIR
By Leah Chan Grinvald* & Ofer Tur-Sinai**
This Article posits that intellectual property law should accommodate
consumers’ right to repair their products. In recent years, there has been a
growing push towards state legislation that would provide consumers with a
“right to repair” their products. Currently, twenty states have pending
legislation that would require product manufacturers to make available
replacement parts and repair manuals. Unfortunately, though, this
legislation has stalled in many of the states. Manufacturers have been
lobbying the legislatures to stop the enactment of these repair laws based on
different concerns, including how these laws may impinge on their
intellectual property rights. Indeed, a right to repair may not be easily
reconcilable with the United States’ far-reaching intellectual property rights
regime. For example, requiring manufacturers to release repair manuals
could implicate a whole host of intellectual property laws, including trade
secrets. Similarly, employing measures that undercut a manufacturer’s
control of the market for replacement parts might conflict with patent
exclusivity.
Nonetheless, this Article holds that intellectual property laws should not
be used to prevent a right to repair from being fully implemented. In support
of this claim, this Article develops a theoretical framework that justifies a
right to repair in a manner that is consistent with intellectual property
protection. Based on this theoretical foundation, this Article then explores,
for the first time, the various intellectual property rules and doctrines that
may be implicated in the context of the current repair movement. As part of
this analysis, this Article identifies areas where intellectual property rights
could prevent repair laws from being fully realized, even if some of the states
* Associate Dean for Academic Affairs and Professor of Law at Suffolk University Law
School.
** Associate Professor of Law, Ono Academic College (Israel). LL.B., Ph.D., Hebrew
University of Jerusalem; LL.M., Columbia University. For helpful comments, suggestions,
and discussions, the authors are grateful to Katya Assaf, Sarah Burstein, Dylan Gilbert, Eric
Goldman, Lital Helman, Cynthia Ho, Steven Jamar, Mark Lemley, Peter Menell, Lateef
Mtima, Kali Murray, Lisa Larrimore Ouellette, Aaron Perzanowski, Michael Risch, Sharon
Sandeen, Joshua Sarnoff, Jessica Silbey, Michal Shur-Ofry, Ryan Vacca, and Peter Yu, as
well as the participants of the 2018 IP Mosaic Roundtable Conference (New Hampshire), the
Works-in-Progress Intellectual Property Colloquium (WIPIP) (Houston, 2019), and the
Sha’arei Mishpat Law College Faculty Seminar (Israel, 2019). Finally, the authors thank the
editors of the Fordham Law Review for their careful and thoughtful edits.
64 FORDHAM LAW REVIEW [Vol. 88
pass the legislation, and recommends certain reforms that are necessary to
accommodate the need for a right to repair and enable it to take hold.
I
NTRODUCTION .................................................................................... 65
I.
THE REPAIR SOCIAL MOVEMENT AND RIGHT TO REPAIR
LEGISLATION ............................................................................ 71
A. The Repair Social Movement .............................................. 71
B. Why Now? ........................................................................... 73
C. Legislation .......................................................................... 76
1. The Model Legislation ................................................. 77
a. Definitions and Scope ............................................ 77
b. Mandating Disclosure of Information .................... 78
c. Mandating the Availability of Parts and Tools to
Facilitate Repairs ................................................. 78
d. Mandating Disclosure of Information to Allow
Security Protections to Be Reset ........................... 79
e. Limiting Contracting Around Repair Law ............. 79
2. Why Has the Legislation Stalled? ................................ 80
3. Can State-Based Legislation Be Effectively
Implemented? .............................................................. 81
II.
NORMATIVE JUSTIFICATIONS FOR A RIGHT TO REPAIR ................. 83
A. External Justifications ........................................................ 83
B. Internal Justifications ......................................................... 85
1. Utilitarianism ............................................................... 85
a. Advancement of Progress ...................................... 86
b. Enabling User Innovation ...................................... 89
c. Promotion of Information Disclosure .................... 91
2. Nonutilitarian Justifications ......................................... 93
a. Labor Theory ......................................................... 93
b. Personality Theory ................................................. 94
c. Social Planning Theory .......................................... 95
C. Summary ............................................................................. 96
III.
INTELLECTUAL PROPERTY RAMIFICATIONS FOR A RIGHT TO
REPAIR ..................................................................................... 97
A. Repair by Individual Consumers ........................................ 99
1. Repairing Patented Products ...................................... 100
a. Exhaustion and the Repair-Reconstruction
Dichotomy .......................................................... 100
b. Post-Sale Contractual Restrictions ...................... 101
c. Sales Versus Licenses ........................................... 103
2. Copyright Implications of Repair .............................. 104
2019] THE RIGHT TO REPAIR 65
B. Repair Shops and the Diffusion of Repair Information .... 106
1. Activity of Independent Repair Shops ....................... 107
2. Diffusion of Information ............................................ 109
C. Enabling Competition in the Market for Replacement
Parts ................................................................................ 111
1. Patented Replacement Parts ....................................... 112
2. Trademark Law Implications ..................................... 116
a. Repair Parts as Registered Trademarks .............. 116
b. Claiming That Parts Are Counterfeit Goods ....... 117
D. Mandating Disclosure of Repair Information and
Supply of Replacement Parts .......................................... 119
1. Replacement Parts ...................................................... 119
2. Information ................................................................ 121
IV.
POTENTIAL CRITICISM ............................................................... 124
A. Quality of Repair .............................................................. 124
B. Economic Loss for Manufacturers ................................... 125
C. Increase in Counterfeiting or Theft of Intellectual
Property .......................................................................... 126
C
ONCLUSION ..................................................................................... 127
I
NTRODUCTION
The consumer technology products business is big. In 2018, the Consumer
Technology Association reported that the industry generated $351 billion in
retail revenue.
1
A contributing factor to the size of this industry is that almost
all consumer products and equipment include some type of technology in the
form of an electronic component or computer chip. Your Keurig coffee
maker? It has a computer chip.
2
Your Honda CR-V? It has multiple types
of electronics and technology embedded into it.
3
The same holds true in
1. CONSUMER TECH. ASS’N, BRINGING INNOVATORS TOGETHER: 2018 CORPORATE
REPORT 2–3 (2018), https://lsc-pagepro.mydigitalpublication.com/publication/?i=495372#
[https://perma.cc/2D7J-5H6K]. To put this in perspective, this would account for
approximately 3 percent of the overall retail sales in the United States based on 2018 third
quarter data. See generally U.S.
DEP’T OF COMMERCE, U.S. CENSUS BUREAU NEWS:
QUARTERLY RETAIL E-COMMERCE SALES 3RD QUARTER 2018 (2018) (stating that the total
retail sales for the third quarter in 2018 were estimated to be $1340.2 billion).
2. Juliana Kenny, Keurig Under Fire for Use of DRM in New Coffee Makers,
L
AW.COM: INSIDE COUNS. (Mar. 4, 2014, 4:55 AM), https://www.law.com/insidecounsel/
sites/insidecounsel/2014/03/04/keurig-under-fire-for-use-of-drm-in-new-coffee-makers/
[https://perma.cc/9PR6-L5HJ].
3. See, e.g., Jeff Plungis, Honda Delays CR-V Engine Fix but Details Rollout Plans,
C
ONSUMER REP. (Oct. 30, 2018), https://www.consumerreports.org/car-repair-maintenance/
honda-delays-cr-v-turbo-engine-fix-details-rollout-plans/ [https://perma.cc/29MN-9942]
(detailing the many parts that contain technology). While this Article focuses primarily on
electronics, it will also discuss repair and intellectual property with respect to other goods—
66 FORDHAM LAW REVIEW [Vol. 88
many other areas of consumer products.
4
As a corollary to this, gone are the
days when an at-home do-it-yourselfer could unscrew the back of the coffee
maker and fix it with a few tools. With embedded computer chips, software,
and other technology, specialized knowledge and tools are now needed to
make simple repairs. Therefore, it is likely not surprising that the repair
business is big, too. According to some estimates, the repair business
constitutes up to 3 percent of the U.S. economy.
5
Unfortunately for consumers, manufacturers have been taking advantage
of this product complexity to stymie the do-it-yourselfer and independent
repair shop from making repairs in a variety of different ways. Many
manufacturers maintain an “authorized” network of repair shops, which
consumers are required to use for repairs during a product’s warranty period.
6
Joining the network is typically difficult and expensive.
7
While this practice
in itself may be viewed as based on a legitimate concern for quality control,
it becomes more troubling when manufacturers couple it with obscure repair
information and a refusal to supply replacement parts in the open market.
8
In addition, some manufacturers utilize their intellectual property rights to
tighten their control over the repair market for their products. For example,
certain manufacturers place microscopic trademarks on repair parts that are
like cars—given the importance of the issue. To a large extent, the same issues can arise with
respect to other goods as well.
4. This Article focuses on all forms of “consumer products” that rely on some form of
an electronic chip embedded in or attached to the product. Generally speaking, these products
are more difficult to repair than products that do not depend on electronics. While this
category includes the ubiquitous smartphones made by Apple and Samsung, there is a wide
array of other products that belong to this category, including, for example, electric razors
made by Wahl, vacuum cleaners made by Dyson, insulin pumps made by Medtronic, and even
farm tractors made by John Deere. Recently, some companies, like Amazon, have begun to
create chips that can be inserted into electronic products that did not previously have the
capacity to communicate with voice-activated assistants, like Alexa, which makes these
products even more technologically complicated. See Laura Stevens, Amazon to Offer Alexa-
Enabled Chip to Electronics Manufacturers, M
ARKETWATCH (Sept. 20, 2018, 5:17 PM),
https://www.marketwatch.com/story/amazon-to-offer-alexa-enabled-chip-to-electronics-
manufacturers-2018-09-20 [https://perma.cc/MW3R-RBBN].
5. See Kyle Wiens, Copyright Office Ruling Issues Sweeping Right to Repair Reforms,
IFIXIT (Oct. 25, 2018), https://ifixit.org/blog/11951/1201-copyright-final-rule/ [https://
perma.cc/TJF9-ZXVX] (stating that “repair jobs represent 3% of overall employment” in the
United States); see also Alex Fitzpatrick, Hand Me That Wrench: Farmers and Apple Fight
Over the Toolbox, T
IME (June 22, 2017), http://time.com/4828099/farmers-and-apple-fight-
over-the-toolbox/ [https://perma.cc/EZW9-SJKY] (stating that Apple makes approximately
$1 billion to $2 billion per year in fixing iPhones).
6. See generally Apple Authorized Service Provider Program,
APPLE,
https://support.apple.com/en-hk/aasp-program [https://perma.cc/2C4H-J8MK] (last visited
Aug. 22, 2019).
7. See Jason Koebler, Do You Know Anything About Apple’s Authorized Service
Provider Program?, V
ICE: MOTHERBOARD (Mar. 16, 2017, 12:21 PM), https://
motherboard.vice.com/en_us/article/ypkqxw/do-you-know-anything-about-apples-
authorized-service-provider-program [https://perma.cc/8SCN-FG2U].
8. See A “Right to Repair” Movement Tools Up, E
CONOMIST (Sept. 30, 2017),
https://www.economist.com/business/2017/09/30/a-right-to-repair-movement-tools-up
[https://perma.cc/752Z-CN24].
2019] THE RIGHT TO REPAIR 67
not seen (nor are they intended to be seen) by consumers in order to control
their importation for repair purposes.
9
While this may be technically legal,
such use of a trademark to suppress repairs exceeds the traditionally accepted
purpose for trademarks, which is to promote competition and assist
consumers in identifying the source of goods.
10
Furthermore, manufacturers
have issued cease-and-desist letters or take down requests when consumers
or independent vendors have attempted to spread the knowledge of repair by
posting information online.
11
Some manufacturers also sue replacement
parts manufacturers for patent infringement
12
or utilize the services of the
U.S. Customs and Border Protection to seize replacement parts at the border
on the premise that the parts are counterfeit.
13
Consumer frustration with this interference into their personal autonomy
is apparent. In the words of one individual at a public hearing on this issue:
“it’s my own damn car, I paid for it, I should be able to repair it or have the
person of my choice do it for me.”
14
To address this frustration and combat
the hostage-taking of consumer product markets, a social movement
demanding a “right to repair” has sprung up and has gained steam in the last
five years.
15
The movement has several branches, with one branch focused
9. See Jason Koebler, DHS Seizes iPhone Screens from Prominent Right-to-Repair
Advocate, V
ICE: MOTHERBOARD (May 11, 2018, 4:26 PM), https://motherboard.vice.com/
en_us/article/evk4wk/dhs-seizes-iphone-screens-jessa-jones [https://perma.cc/LJ36-JFN7].
For example, Apple routinely places microscopic “Apple” logos on internal iPhone repair
parts (parts that consumers do not see because they cannot even open their phones) in order to
claim that an independent repairer is “counterfeiting” when using such parts to refurbish or
repair an iPhone. See id.
10. See S.
REP. NO. 79-1333, at 3 (1946) (“One [goal] is to protect the public so it may be
confident that, in purchasing a product bearing a particular trade-mark which it favorably
knows, it will get the product which it asks for and wants to get.”); Koebler, supra note 9; see
also Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait
Accompli?, 54 E
MORY L.J. 461, 466–67 (2005); William M. Landes & Richard A. Posner, The
Economics of Trademark Law, 78 T
RADEMARK REP. 267, 271 (1988) (“[A] trademark conveys
information that allows the consumer to say to himself, ‘I need not investigate the attributes
of the brand I am about to purchase because the trademark is a shorthand way of telling me
that the attributes are the same as that of the brand I enjoyed earlier.’”); Mark A. Lemley, The
Modern Lanham Act and the Death of Common Sense, 108 Y
ALE L.J. 1687, 1690 (1999);
Glynn S. Lunney, Jr., Trademark Monopolies, 48 E
MORY L.J. 367, 421, 432 (1999); I. P. L.
Png & David Reitman, Why Are Some Products Branded and Others Not?, 38 J.L. & E
CON.
207, 208–11 (1995).
11. Timothy B. Lee, When Tech Companies Won’t Provide Service Manuals, This Guy
Writes His Own,
WASH. POST (Jan. 13, 2014), https://www.washingtonpost.com/news/the-
switch/wp/2014/01/13/when-tech-companies-wont-provide-service-manuals-this-guy-writes-
his-own/ [https://perma.cc/3G2V-9U6J] (recounting Kyle Wiens’s experience).
12. See, e.g., Ford Glob. Techs., LLC v. New World Int’l, Inc., No. 3:17-CV-3201-N,
2018 WL 5786157, at *3–5 (N.D. Tex. Nov. 5, 2018) (finding in favor of Ford on summary
judgment on the ground of design patent infringement against the manufacturer of similar
parts). The authors thank Professor Sarah Burstein for bringing this case to our attention.
13. See, e.g., Koebler, supra note 9.
14. U.S.
COPYRIGHT OFFICE, SECTION 1201 RULEMAKING: SEVENTH TRIENNIAL
PROCEEDING TO DETERMINE EXEMPTIONS TO THE PROHIBITION ON CIRCUMVENTION 3 (2018).
15. See About Us: The Association, R
EPAIR.ORG, https://repair.org/association
[https://perma.cc/RD3V-C78R] (last visited Aug. 22, 2019) (stating that the association was
68 FORDHAM LAW REVIEW [Vol. 88
on pushing a “right to repair” or “fair repair” through state legislatures.
16
Another branch of the movement is focused on amending the Digital
Millennium Copyright Act
17
(DMCA), which has provided yet another major
legal ground for manufacturers to block repairs.
18
The primary justifications
for the legislation offered by the movement include environmental concerns,
consumer autonomy, and competition.
19
In the last two years, the movement has seen some success: as of the date
of this Article, right to repair bills have been introduced in twenty states.
20
These right to repair laws would require manufacturers of consumer
electronics (defined rather broadly) to enable consumers and independent
repair shops to repair consumer products.
21
Towards this goal, the legislation
would require manufacturers to make available, on fair and reasonable terms,
repair information, parts, and tools. As of the date of this Article, no state
has voted to enact the legislation. In fact, there are signs that the legislation
has stalled in some states.
22
One plausible explanation may be that the large
formed in 2013); Adam Wernick, The ‘Right to Repair’ Movement Wants You to Be Able to
Fix Your Own Stuff, PRI (Dec. 24, 2018, 11:30 AM), https://www.pri.org/stories/2018-12-24/
right-repair-movement-wants-you-be-able-fix-your-own-stuff [https://perma.cc/97QJ-PYPE]
(“America’s throw-away culture has expanded in the last decade from everyday products and
food to include consumer electronics—from iPhones to big-screen TVs. In response, a ‘Right
to Repair’ movement is now advocating for laws that allow people to fix the things they
own.”).
16. See Advocacy: Legislation, R
EPAIR.ORG, https://repair.org/legislation [https://
perma.cc/BV9L-BVLK] (last visited Aug. 22, 2019).
17. Pub. L. No. 105-304, 112 Stat. 2860 (1998) (codified in scattered sections of 5, 17,
28, and 35 U.S.C.).
18. See Kyle Wiens, Forget the Cellphone Fight—We Should Be Allowed to Unlock
Everything We Own, W
IRED (Mar. 18, 2013, 9:30 AM), https://www.wired.com/2013/03/you-
dont-own-your-cellphones-or-your-cars/ [https://perma.cc/3Y2T-PXUZ]. This branch of the
movement has seen some success lately. See infra notes 227–31 and accompanying text.
19. It’s Time for a Common-Sense Perspective,
REPAIR.ORG, https://repair.org/policy/
[https://perma.cc/7LPC-G567] (last visited Aug. 22, 2019); see also Repair Manifesto,
IFIXIT.COM, https://www.ifixit.com/Manifesto [https://perma.cc/UEK8-AXMU] (last visited
Aug. 22, 2019).
20. Matthew Gault, Bernie Sanders Calls for a National Right-to-Repair Law for
Farmers, V
ICE: MOTHERBOARD (May 5, 2019, 5:48 PM), https://www.vice.com/
en_us/article/8xzqmp/bernie-sanders-calls-for-a-national-right-to-repair-law-for-farmers
[https://perma.cc/T7QG-BCJD]. In addition, at least two Democratic Party presidential
hopefuls have called for a national right to repair law. While these calls are focused on
farmers, the implications for other consumers are promising. See id.; Makena Kelly, Elizabeth
Warren Comes Out in Support of a National Right-to-Repair Law for Farm Equipment, V
ERGE
(Mar. 27, 2019, 12:08 PM), https://www.theverge.com/2019/3/27/18284011/elizabeth-
warren-apple-right-to-repair-john-deere-law-presidential-campaign-iowa
[https://perma.cc/B4QV-95L4].
21. Model State Right-to-Repair Law, R
EPAIR ASS’N § 3(a)–(b) (July 24, 2018),
https://repair.org/s/Right-to-repair-Model-state-law-7-24-18.docx [https://perma.cc/ME8E-
9243].
22. See Brian Abel, ‘Right to Repair’ Bills Stall in MO, KS, KSHB (Apr. 25, 2017, 8:12
PM), https://www.kshb.com/news/local-news/right-to-repair-bills-stall-in-mo-ks [https://
perma.cc/AZ64-7XP3]; Ewan Spence, Apple Fights to Protect Public from Their Dangerous
iPhone, F
ORBES (May 1, 2019, 6:54 PM), https://www.forbes.com/sites/
2019] THE RIGHT TO REPAIR 69
manufacturers have been lobbying against this legislation.
23
In arguing
against the proposed laws, manufacturers have cited intellectual property
rights concerns, as well as safety,
24
as the main reasons to allow them to
retain control over repairs.
25
In response, the repair movement continues to stress the importance of
enacting a right to repair, while brushing aside, for the most part, any
intellectual property concerns.
26
To be sure, the repair movement recognizes
that a right to repair may impact intellectual property rights. However, on
the whole, the movement does not tie the two worlds together and does not
sufficiently address the potential clash between the two regimes.
27
While the justifications brought by the repair movement in support of the
legislation are convincing, the case for a right to repair can be bolstered even
further.
28
To counter the manufacturers’ strong objections, this Article offers
an analytical framework that justifies a right to repair in terms that are
consistent with intellectual property protection. As a first step in this
direction, this Article shows how seemingly external policy considerations
supporting repair—like environmental concerns and consumer autonomy—
can nevertheless be accounted for, and woven into, intellectual property law
and policymaking in a manner that preserves a space for a right to repair.
Beyond that, this Article reveals that a right to repair can be supported by
internal justifications—i.e., theories that are commonly used to justify
intellectual property protection, including ones rooted in utilitarianism and
others. Thus, a right to repair could, in fact, be not just compatible with
ewanspence/2019/05/01/apple-iphone-right-to-repair-parts-legislation-fight-dangerous-tim-
cook/ [https://perma.cc/96T8-ZA6U].
23. See Alex Fitzpatrick, Hand Me That Wrench: Farmers and Apple Fight Over the
Toolbox, T
IME (June 22, 2017), http://time.com/4828099/farmers-and-apple-fight-over-the-
toolbox/ [https://perma.cc/6EX3-FK96].
24. Both personal and cyber safety have been raised as part of manufacturers’ purported
concerns. See Spence, supra note 22. The repair movement has been attempting to provide a
direct rebuttal to these concerns. See, e.g., Louise Matsakis, Security Experts Unite Over the
Right to Repair, W
IRED (Apr. 30, 2019, 9:51 AM), https://www.wired.com/story/right-to-
repair-security-experts-california/ [https://perma.cc/63G8-QH62]. As reported in this Wired
article, a new group—Securepairs.org—was founded in order to counter the claims that
providing repair information would increase the likelihood of cyberattacks. See Statement of
Principles,
SECUREPAIRS.ORG, https://securepairs.org/statement-of-principles/#obscurity
[https://perma.cc/UFC6-BJG8] (last visited Aug. 22, 2019).
25. See Nicholas Deleon, Right-to-Repair Laws Could Make It Easier to Get a Phone or
Laptop Fixed, C
ONSUMER REP. (Mar. 29, 2018), https://www.consumerreports.org/consumer-
protection/right-to-repair-laws-could-make-it-easier-to-get-a-phone-or-laptop-fixed/
[https://perma.cc/YCU9-475P].
26. In fact, the model legislation itself references trade secrets but no other kind of
intellectual property. See Model State Right-to-Repair Law, supra note 21, § 5.
27. See It’s Time for a Common-Sense Perspective, supra note 19 (placing “Fix the
DMCA” into a different category from “Policy Objectives”).
28. While this Article embraces the term “right to repair,” in accord with proposed
legislation, this does not necessarily mean to suggest that the nature of consumers’ legal
entitlement in this context must be structured as a “right” in the strict Hohfeldian sense. For
a discussion, see infra note 191 and accompanying text.
70 FORDHAM LAW REVIEW [Vol. 88
intellectual property law but rather essential for it to achieve its prescribed
goals. This novel theoretical basis for a right to repair can make the case for
this right even stronger and help state policymakers to handle the
manufacturers’ objections on the intellectual property front.
Based on the theoretical discussion of the justifications for a right to repair,
this Article then maps the various intellectual property rights that could be
implicated by a right to repair. Such a broad exploration is necessary to
reveal any potential overshadowing of the state legislation efforts by federal
intellectual property laws. For the purposes of the analysis, this Article
visualizes the notion of a right to repair as concentric circles, beginning at
the core with a personal right to repair one’s own products, while each circle
adds other elements of such right. After the core, the second circle includes
the freedom to engage in other activities that facilitate repairs, including
diffusion of repair information and advertising repair businesses. The third
circle includes the right to manufacture, import, sell, and use replacement
parts in competition with the original manufacturer. Finally, the outer circle
includes the right to mandate original manufacturers to disclose repair
information and supply replacement parts. Regarding each circle, this Article
explores the rules and doctrines that may impede any state-based legislation
and offer suggestions as to changes, both within intellectual property law and
in the state legislation.
29
This Article is the first to examine the current repair movement in the
context of U.S. intellectual property laws. Other scholarly and policy articles
have touched upon the interface between repairs and intellectual property
law, but the majority of these pieces have focused on one particular area of
intellectual property law, such as patents or copyright.
30
The few papers that
have examined this area from a more general viewpoint were written before
the rise of the current repair movement.
31
This Article aims to take a fresh,
holistic look at intellectual property and a right to repair in an attempt to
reconcile the two. This Article ultimately concludes that intellectual property
laws can, and should, be construed in a manner that does not prevent a right
to repair from being fully implemented.
29. While there are international implications and the fight to repair consumer products is
global, this Article will focus mostly on U.S. law, given the space constraints.
30. See, e.g., Joshua D. Sarnoff, White Paper on Protecting the Consumer Patent Law
Right of Repair and the Aftermarket for Exterior Motor Vehicle Repair Parts: The PARTS
Act, S. 812, H.R. 1879, 115th Congress (Nov. 2017) (unpublished white paper), https://
papers.ssrn.com/sol3/papers.cfm?abstract_id=3082289 [https://perma.cc/KE3J-6HNM]
(focusing on patent law). The inability to repair one’s consumer product is discussed as a
consumer harm in a forthcoming article: Christopher Hoofnagle, Aniket Kesari & Aaron
Perzanowski, The Tethered Economy, 87 G
EO. WASH. L. REV. (forthcoming 2019)
(manuscript at 30–34).
31. For a prominent treatment of related issues, see generally Pamela Samuelson,
Freedom to Tinker, 17 T
HEORETICAL INQUIRIES L. 563 (2016). See also Estelle Derclaye,
Repair and Recycle Between IP Rights, End User License Agreements and Encryption, in
S
PARES, REPAIRS AND INTELLECTUAL PROPERTY RIGHTS 21, 21–56 (Christopher Heath &
Anselm Kamperman Sanders eds., 2009).
2019] THE RIGHT TO REPAIR 71
The remainder of this Article proceeds in four parts. Part I explores the
repair social movement and analyzes the proposed state legislation and the
manufacturers’ efforts to forestall it. Part II develops a novel theoretical
framework that justifies a right to repair in a manner reconcilable with
intellectual property protection. Part III explores various areas of intellectual
property law that are implicated by different aspects of a right to repair.
Based on the analysis, this Article provides suggestions on where these rules,
doctrines, or laws could be reinterpreted, revised, or amended to enable a full
implementation of a right to repair. Finally, Part IV provides responses to
some of the counterarguments that are raised in the right to repair debate and
could be used to criticize this Article’s thesis—such as the concern regarding
the quality of repairs, the fear that requiring manufacturers to provide repair
information or replacement parts would increase counterfeiting, and the
potential detrimental economic impact to manufacturers as a result of
opening the repair market to competition. A brief conclusion follows.
I.
THE REPAIR SOCIAL MOVEMENT AND RIGHT TO REPAIR LEGISLATION
A. The Repair Social Movement
In the last few years, a new consumer rights movement focused on a right
to repair consumer products has sprouted up.
32
The main organization
behind the repair movement is the Repair Association, which was officially
founded in July 2013 as the Digital Right to Repair Coalition.
33
Its members
include industry organizations and companies that have been impacted by the
inability to freely repair, reuse, and recycle consumer electronic parts or
products.
34
In addition to the larger players behind the Repair Association,
there are individual consumers and consumer-rights groups.
35
These include
some unlikely partners, such as farmers. In 2017, the American Farm Bureau
Federation adopted a policy to address the right of farmers to fix their own
farm equipment and has lobbied for this at the federal level.
36
Farmer
32. This movement is new in its focus on consumer products, although it has its roots in
the movement to repair automobiles. In fact, the current social movement references the
success of the previous movement as the basis for its current strategy. See
The Repair
Association, R
EPAIR.ORG, https://repair.org [https://perma.cc/9SVX-JDEA] (last visited Aug.
22, 2019) (“86% of voters in Massachusetts overrode big car companies and passed the
Automobile Owners’ Right to Repair in 2012.”).
33. About Us: History,
REPAIR.ORG, https://repair.org/history/ [https://perma.cc/KV86-
4R77] (last visited Aug. 22, 2019).
34. About Us: Members, R
EPAIR.ORG, https://repair.org/members-1/ [https://perma.cc/
E825-RYCS] (last visited Aug. 22, 2019).
35. Benefits, R
EPAIR.ORG, https://repair.org/benefits/ [https://perma.cc/79XY-Z8LL] (last
visited Aug. 22, 2019).
36. Kaleigh Rogers, The ‘Right to Repair’ Movement Is Being Led by Farmers,
VICE:
MOTHERBOARD (Jan. 31, 2017, 1:15 PM), https://motherboard.vice.com/en_us/article/
kbgzgz/farmers-right-to-repair [https://perma.cc/MEV6-W4K5].
72 FORDHAM LAW REVIEW [Vol. 88
“hacktivists” routinely hack their John Deere agricultural machinery in order
to repair their equipment and harvest their crops in a timely fashion.
37
This repair movement has gained steam in the last three years, with its
success leading twenty states (as of the date of this Article) to introduce
legislation that would guarantee consumers a right to repair their electronic
equipment.
38
The Repair Association has lobbied for their model legislation
to be the basis for state laws.
39
This Article will parse this model legislation
in Part I.C below. As will be seen, the main thrust of the model legislation
is to require manufacturers of consumer electronic equipment to make
available repair information, tools, and parts.
40
The movement is inspired—at least to a certain extent—by the successful
campaign that led to the passage of a 2012 Massachusetts law providing for
the right to repair automobiles.
41
After Massachusetts passed this law, the
automobile industry voluntarily agreed to work with independent car repair
shops nationwide.
42
While this voluntary agreement has been successful in
providing independent repair shops with the ability to repair cars, this
agreement has been frustrated in recent years by tactics employed by car
manufacturers that are enabled by the growing use of software, electronic
components, and wireless technologies in the car industry.
43
To date, no state has passed the legislation, and some reports suggest that
the movement has stalled in legislatures.
44
The reports point to behind-the-
scenes lobbying by major manufacturers that would be forced to provide
consumers with repair tools, parts, and information under the legislation.
45
37. See id.
38. See Gault, supra note 20.
39. Advocacy: Legislation, supra note 16.
40. Model State Right-to-Repair Law, supra note 21.
41. See M
ASS. GEN. LAWS ch. 93K (2019); see also Jonathan Ng, Independent Auto Repair
Shops Want Right-to-Repair Law Updated, B
OS. HERALD (June 18, 2019),
https://www.bostonherald.com/2019/06/18/independent-auto-repair-shops-want-right-to-
repair-law-updated/ [https://perma.cc/27JC-DXP6].
42. See A “Right to Repair” Movement Tools Up, supra note 8 (“The hope is that once an
important state passes such a law, the country will follow—as was the case in the car industry
after Massachusetts in 2012 passed a right to repair law for cars that led to a national
memorandum of understanding between carmakers and repair shops.”).
43. See, e.g., Matt Murphy, Bill Filed to Prevent Skirting Right-to-Repair Law,
M
ETROWEST DAILY NEWS (Sept. 18, 2018, 10:25 AM), https://
www.metrowestdailynews.com/news/20180918/bill-filed-to-prevent-skirting-right-to-repair-
law [https://perma.cc/HJW3-DFQ5] (citing to a new bill introduced in the Massachusetts state
legislature to prevent car manufacturers from evading the automotive right to repair law
through increased use of wireless technology); see also Ng, supra note 41 (describing how the
wireless data transfer of telematics is frustrating independent repair shops). Unfortunately,
the current repair movement exempts automobiles from its scope. See infra notes 74–75 and
accompanying text.
44. See Abel, supra note 22.
45. Jason Koebler, Appliance Companies Are Lobbying to Protect Their DRM-Fueled
Repair Monopolies, V
ICE: MOTHERBOARD (Apr. 25, 2018, 9:00 AM), https://
motherboard.vice.com/en_us/article/vbxk3b/appliance-companies-are-lobbying-against-
right-to-repair [https://perma.cc/W8LC-JEYA].
2019] THE RIGHT TO REPAIR 73
Companies—such as Apple, Samsung, Dyson, Wahl, and LG—have
privately lobbied in an attempt to prevent such legislation’s enactment.
46
These companies utilize different arguments, ranging from personal injuries
caused by incorrect repairs to intellectual property rights concerns.
47
In
response, the repair movement has justified the legislation with a variety of
arguments—including environmental, competition, and consumer autonomy
concerns.
48
As discussed below, these justifications from both sides appear
to be at cross-purposes, which may account for the lack of state enactment of
the pending laws.
49
Before reaching this discussion, a dive into the reasons
behind the current social movement is critical to understanding the
justifications motivating the movement.
B. Why Now?
Large manufacturers fighting against the ability of consumers to control
(and repair) their consumable products is not a new phenomenon. To
illustrate, in 1956, after being accused of unfair practices that violated
antitrust laws, IBM entered into a consent decree with the U.S. Department
of Justice that required IBM to undertake actions that would allow consumers
to repair their own machines, or at least choose who undertakes the repair.
50
Given this, the question becomes, why has the repair movement taken off
in such a big way over the last few years? There are a lot of possible
explanations to this, but one of the main answers is that almost every
consumer product nowadays has some type of electronic chip or other
technology embedded in it. This could make it hard, even for a do-it-
46. See, e.g., Letter from Jason L. Brown, Vice President Gen. Counsel & Sec’y, Dyson,
Inc., to David Harris, Ill. Gen. Assembly (Apr. 17, 2018), https://www.documentcloud.org/
documents/4446373-DYSON-Illinois-Opposition.html [https://perma.cc/6XWG-2MGY];
Letter from Rick Habben, Safety Compliance Eng’r, Wahl Clipper Corp., to David Harris, Ill.
Gen. Assembly (Apr. 17, 2018), https://www.documentcloud.org/documents/4446374-Wahl-
Opposition-Illinois.html [https://perma.cc/6ZBU-9DX4]; Letter from John I. Taylor, Senior
Vice President, Gov’t Relations, LG Elecs. USA, to David Harris, Ill. Gen. Assembly (Apr.
18, 2018), https://www.documentcloud.org/documents/4446375-LG-LETTER-HB-4747-
2.html [https://perma.cc/AXA3-6GA6]. Not all companies are anti-repair. For example,
Motorola and iFixit, a prominent repair organization, announced a partnership in 2018. Elise
Barsch, Motorola and iFixit—A Match Made in Mobile,
IFIXIT (Oct. 22, 2018),
https://www.ifixit.com/News/motorola-ifixit-partnership [https://perma.cc/6RBM-XAWE].
47. Letter from Jason L. Brown to David Harris, supra note 46; Letter from Rick Habben
to David Harris, supra note 46; Letter from John I. Taylor to David Harris, supra note 46.
48. See supra note 19 and accompanying text.
49. See infra Part I.C.2.
50. IBM 1956 Consent Decree, C
ONSUMER PROJECT ON TECH., http://www.cptech.org/
at/ibm/ibm1956cd.html [https://perma.cc/3EBJ-Q3MW] (last visited Aug. 22, 2019) (In the
consent decree, the parties agreed “to offer to sell at reasonable and nondiscriminatory prices
and terms, to owners of IBM tabulating or electronic data processing machines (whether or
not the purchaser receives IBM repair and maintenance service) and to persons engaged in the
business of maintaining and repairing such machines and during the period when IBM has
such parts and subassemblies available for use in its leased machines, repair and replacement
parts and subassemblies for any tabulating machines or electronic data processing machines
manufactured by IBM.”).
74 FORDHAM LAW REVIEW [Vol. 88
yourselfer, to fix broken products without any support from the
manufacturers.
51
Concomitantly with the “technologization” of consumer products,
manufacturers of these products began to tighten their control of the
aftermarket and claim that only authorized repair personnel (or the
manufacturers themselves) are qualified to repair such products.
52
Indeed,
manufacturers have attempted to control repairs by various means, including
refusing to release repair manuals or make repair parts available to
independent repair shops and consumers and strictly enforcing authorized
repair networks.
53
All of these practices have led to the inability to easily
obtain inexpensive and accessible repairs, which ultimately serves to channel
consumers into throwing away their broken products and buying new ones.
54
In addition to tight controls on authorized repairs, manufacturers have been
actively fighting against repairs at other levels, including use of their
intellectual property rights to block repair activities. Among other things,
they have brought actions against small independent repair shops in the
United States and abroad.
55
Many of these actions are extrajudicial, as these
small repair shops often settle prior to the filing of a lawsuit. However, the
few cases that make their way to the courts help illuminate the lengths to
which manufacturers will go to control repairs.
Apple’s tactics in a recent case in Norway may reflect a strategy taken by
other manufacturers as well.
56
Apple sued Henrik Huseby, the owner of a
small Norwegian repair shop, on grounds of trademark infringement, after
Huseby attempted to import sixty-three refurbished iPhone screens and
refused to enter into a settlement agreement that would have required him to
pay approximately $3400.
57
Most small repair shops are unable to finance
51. See supra note 4 and accompanying text.
52. See, e.g., Val Galin, Nikon USA to Stop Distributing Camera Parts to Unauthorized
Repair Shops,
TOGTECH, http://www.togtech.com/nikon-usa-to-stop-distributing-camera-
parts-to-unauthorized-repair-shops/ [https://perma.cc/9AEK-MPZP] (last visited Aug. 22,
2019).
53. See, e.g., Apple Authorized Service Provider Program, supra note 6 (listing as a
benefit of the service provider program the ability to obtain repair parts: “[o]nly Authorized
Service Providers are able to obtain parts directly from Apple in order to complete repairs”).
54. See, e.g., Press Release, Susan Talamantes Eggman, Cal. State Assemblymember,
Eggman Introduces Legislation to Create a “Right to Repair” for Electronics (Mar. 7, 2018),
https://a13.asmdc.org/press-releases/20180307-eggman-introduces-legislation-create-right-
repair-electronics [https://perma.cc/7YU6-C7T6].
55. See Koebler, supra note 9.
56. See Jason Koebler, Apple Sued an Independent iPhone Repair Shop Owner and Lost,
V
ICE: MOTHERBOARD (Apr. 13, 2018, 12:03 PM), https://motherboard.vice.com/en_us/
article/a3yadk/apple-sued-an-independent-iphone-repair-shop-owner-and-lost
[https://perma.cc/C3GS-XYYQ]. Similar claims have been made by Apple in the United
States. See Mike Masnick, ICE Starts Raiding Mobile Phone Repair Shops to Stop Repairs
with Aftermarket Parts, T
ECHDIRT (Apr. 30, 2013, 8:28 AM), https://www.techdirt.com/
articles/20130429/07214322874/homeland-security-participates-trademark-raid.shtml
[https://perma.cc/PD6L-F6LQ].
57. See Koebler, supra note 56. Mr. Huseby subsequently won his case against Apple.
See id.
2019] THE RIGHT TO REPAIR 75
litigation,
58
and so it is likely that many would pay the $3400 just to make
Apple go away, like Apple’s lawyer promised Huseby.
59
Interestingly,
Apple’s lawsuit relied on its claim that the refurbished parts were
counterfeits.
60
While different countries have different trademark laws, a
refurbished part or product—one that was previously sold, broken, and then
repaired by a third party—is not a counterfeit in the United States (and, as
ultimately determined in Huseby’s case, not in Norway either).
61
Nevertheless, the fact that many manufacturers claim that independent repair
shops are “counterfeiting” has a significant deterrent effect on repair shop
proprietors because, among other things, counterfeiting may subject them to
criminal action.
62
This strategy is not limited to trademarks. Manufacturers have routinely
utilized other intellectual property rights to control their products and prevent
the allegedly unauthorized repairs of those products.
63
To illustrate, Ford
recently sued the marketer and distributor of its Mustang and F-150 car
replacement parts for design patent infringement.
64
As will be further
discussed in Part III below, car manufacturers have been obtaining design
patents on exterior parts to control repairs by independent repair shops or do-
it-yourselfers.
65
With a patented replacement part, only Ford is allowed to
make, use, offer to sell, sell, or import such part.
66
This strategy works, as
58. See Leah Chan Grinvald, Charitable Trademarks, 50 AKRON L. REV. 817, 832–36
(2017) (explaining that such litigation is expensive, time-consuming, and emotionally draining
for small organizations).
59. See Koebler, supra note 56.
60. See id.
61. See id. In the United States, the “first sale” or “exhaustion” doctrine in trademark law
generally allows the resale of products without the need for further authorization by the
original manufacturer or trademark owner. 4 J.
THOMAS MCCARTHY, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 25:41 (5th ed. 2019). See generally Champion
Spark Plug Co. v. Sanders, 331 U.S. 125 (1947); Nitro Leisure Prods., L.L.C. v. Acushnet Co.,
341 F.3d 1356 (Fed. Cir. 2003); Davidoff & CIE, S.A. v. PLD Int’l Corp., 263 F.3d 1297 (11th
Cir. 2001).
62. Manufacturing or selling counterfeit products is a crime in the United States and in all
countries that are signatories to the Agreement on Trade-Related Aspects of Intellectual
Property. See 18 U.S.C. § 2320(a) (2012) (imposing criminal liability on counterfeiters);
Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994,
Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S.
299.
63. For other examples, see supra notes 9–13 and accompanying text.
64. See generally Ford Glob. Techs., LLC v. New World Int’l, Inc., No. 3:17-CV-3201-
N, 2018 WL 5786157 (N.D. Tex. Dec. 5, 2018). Ford was later awarded damages in a
subsequent proceeding. See Brooks Kushman Obtains Willful Infringement on 13 Design
Patents on Behalf of Ford Motor Company, B
ROOKS KUSHMAN: CASE STUD. (Dec. 5, 2018),
https://
www.brookskushman.com/case-studies/case-studies/ford-global-technologies-llc-v-new-
world-international-inc/ [https://perma.cc/797T-CE8K].
65. See infra Part III; see also Sarnoff, supra note 30.
66. See 35 U.S.C. § 271(a) (2012).
76 FORDHAM LAW REVIEW [Vol. 88
Ford was granted summary judgment on its infringement claims.
67
Without
widely available replacement parts that match the car’s overall design, Ford
retains the sole control over the availability and pricing of such parts. This
likely forces consumers to have their cars repaired at authorized repair shops
or pay significantly higher costs for repairs if the parts are made available at
independent repair shops.
In sum, different but related factors have contributed to the rise of the
current repair movement: the purposeful sabotaging of the ability to repair
through withholding of information and parts, the increasing expense paid to
fix one’s product through authorized channels, and the growing use by
manufacturers of their intellectual property rights to suppress repairs. As a
response to these factors and the ever-increasing difficulty in obtaining
repairs, the repair movement has fought back and lobbied state legislators
over the past few years for a right to repair.
C. Legislation
Twenty different state legislatures (as of the date of this Article) have
introduced bills that would provide a right to repair electronic products.
These states span the United States: from Hawaii to Washington to the New
England area, including Massachusetts, New Hampshire, and Vermont.
68
The legislation introduced in many of these states is based in large part (or in
whole, in some instances) on the model legislation proposed by the Repair
Association.
69
Although a few state legislatures have edited the model
legislation to fit certain needs of that particular state—for example,
California’s 2018 bill was originally proposed to be part of the previously
enacted Electronic Waste Recycling Act
70
—the core provisions of the model
legislation have typically been preserved.
71
Therefore, this Article will focus
on these core provisions.
67. See generally Ford Glob. Techs., 2018 WL 5786157 (granting Ford’s summary
judgment motion on the question of infringement of thirteen design patents Ford owned for
“original equipment designs”).
68. The twenty states include: California, Georgia, Hawaii, Illinois, Indiana,
Massachusetts, Minnesota, Missouri, Montana, North Dakota, Nevada, New Hampshire, New
Jersey, New York, Oregon, South Dakota, Vermont, Virginia, Washington, and West Virginia.
See Press Release, U.S. PIRG, California Becomes 20th State in 2019 to Consider Right to
Repair Bill (Mar. 18, 2019), https://uspirg.org/news/usp/california-becomes-20th-state-2019-
consider-right-repair-bill [https://perma.cc/GTC5-6NGC].
69. See Advocacy: Legislation, supra note 16 (crediting current state right to repair
legislative efforts largely to the influence of the 2012 Massachusetts law); see also Model
State Right-to-Repair Law, supra note 21.
70. Assemb. 2110, 2017–2018 Leg., Reg. Sess. (as introduced by California Assembly,
Feb. 8, 2018).
71. See About Us: The Association, supra note 15 (describing the Repair Association’s
work to introduce pro-repair legislation in several state legislatures).
2019] THE RIGHT TO REPAIR 77
1. The Model Legislation
There are four main parts to the model legislation: (1) mandating
disclosure of information that will allow repairs; (2) mandating the
availability of parts and tools to facilitate repairs; (3) mandating disclosure
of information to allow security protections to be reset; and (4) forbidding
contracting around such provisions in terms between authorized repair
providers and the original equipment manufacturers.
72
Before each part is
discussed, some definitions in the legislation should be flushed out.
a. Definitions and Scope
The scope of the model law is intended to be broad, and the reach of the
act is to all “digital electronic equipment,” which is defined as “any product
that depends for its functioning, in whole or in part, on digital electronics
embedded in or attached to the product.”
73
This definition encompasses
seemingly every type of product that people use in their daily lives, ranging
from our coffee machines to cleaning equipment to our cars. However, the
model legislation excludes from its ambit “motor vehicles” (as do many of
the state versions). In turn, the definition of “motor vehicle” includes those
types of vehicles that transport “persons or property on a street or highway,”
but it does not include a motorcycle or a motor home (either an RV or other
type of motor home).
74
This exception may be in recognition of the car
industry’s nationwide “memorandum of understanding” that deals with a
consumer’s right to repair motor vehicles.
75
Unfortunately, as noted above,
some motor vehicle manufacturers are finding ways around the agreement
and the Massachusetts auto repair law. As such, motor vehicle manufacturers
may not warrant exclusion from the model legislation.
76
An additional definition that broadens the scope of the model legislation
is the definition of “owner.” The model law defines “owner” as anyone who
purchases or leases digital electronic equipment.
77
This is an important
definition because it would prevent manufacturers from evading the
legislation by entering lease contracts with customers rather than selling them
the equipment.
72. See Model State Right-to-Repair Law, supra note 21, § 3.
73. Id. § 2(b).
74. Id. §§ 2(h), 6.
75. See Memorandum of Understanding Between Auto. Aftermarket Indus. Ass’n, Coal.
for Auto Repair Equal., All. of Auto. Mfrs. & Ass’n of Glob. Automakers (Jan. 15, 2014),
http://www.nastf.org/files/public/OtherReference/MOU_SIGNED_1_15_14.pdf
[https://perma.cc/27YP-7YVJ].
76. See Murphy, supra note 43 (describing the ways in which the car industry is seemingly
working its way around this agreement and the Massachusetts repair law).
77. Model State Right-to-Repair Law, supra note 21, § 2(m).
78 FORDHAM LAW REVIEW [Vol. 88
b. Mandating Disclosure of Information
Section 3(a) of the model legislation requires that original equipment
manufacturers disclose “documentation” that is required to diagnose,
maintain, or repair digital electronic equipment.
78
The documentation must
be disclosed to either independent repair providers (defined as those who do
not have any relationship with the manufacturer) or to owners of digital
electronic equipment. This documentation is further defined as “any manual,
diagram, reporting output, service code description, schematic diagram, or
similar kinds of information.”
79
The idea behind this requirement is that this information is essential in
order to diagnose, maintain, and repair electronic equipment. Yet, it can be
quite difficult to obtain this information, even via reverse engineering.
80
Kyle Wiens, the chief executive officer of iFixit, a repair-related company,
has made it a mission to obtain this information and has published the results
of reverse engineering in videos called “teardowns.”
81
However, most
independent repair shops or owners do not have the time or know-how to
conduct extensive reverse engineering for all products.
82
Therefore,
mandating such disclosure will facilitate more independent repairs.
c. Mandating the Availability of Parts and Tools to Facilitate Repairs
Another aspect that stymies repair of digital electronic equipment is the
unavailability of tools and parts needed to undertake such repair. Even if a
highly motivated owner of such equipment could figure out how to repair her
broken phone, it is unlikely that she would be able to do so with standard
home repair tools.
83
This is because the parts of some digital equipment are
either too miniscule to manage with regular tools or because they are simply
not available for purchase.
84
The repair company noted above, iFixit,
realized that there was a market for tools that could assist in repairing
electronic equipment.
85
It now not only provides the information for
repairing products but also the means to do so through sales of its specialized
repair equipment. Replacement parts, however, are a little trickier because
78. Id. § 3(a).
79. Id. § 2(c).
80. See Kyle Wiens, Using Copyright to Keep Repair Manuals Secret Undermines
Circular Economy, G
UARDIAN (Dec. 20, 2013, 10:09 PM), https://www.theguardian.com/
sustainable-business/copyright-law-repair-manuals-circular-economy [https://perma.cc/
9TQC-T2X4].
81. Teardowns,
IFIXIT, https://www.ifixit.com/Teardown [https://perma.cc/SN95-RN5M]
(last visited Aug. 22, 2019).
82. About iFixit,
IFIXIT, https://www.ifixit.com/Info [https://perma.cc/G692-2C6J] (last
visited Aug. 22, 2019).
83. See A “Right to Repair” Movement Tools Up, supra note 8.
84. See id.
85. See David Whitford, Meet the $21 Million Company That Thinks a New iPhone Is a
Total Waste of Money, I
NC., https://www.inc.com/magazine/201704/david-whitford/ifixit-
repair-men.html [https://perma.cc/DHU2-B3ZG] (last visited Aug. 22, 2019).
2019] THE RIGHT TO REPAIR 79
their manufacture, sale, and use may infringe upon intellectual property
rights.
86
Considering this, a requirement to make replacement parts available
is necessary to facilitate repairs.
d. Mandating Disclosure of Information to Allow Security Protections to
Be Reset
Given that virtually all digital electronic equipment uses some type of
software, manufacturers’ inclusion of security locks on such software has
created another problem for repairers. These “electronic security locks” are
intended to prevent third parties from accessing the software and are legally
allowed under the DMCA’s § 1201.
87
While these locks are typically
vulnerable to hacking by those with enough know-how, and hacking is
widespread, § 1201 further makes it illegal to hack and disseminate the
knowledge of how to hack around software security protections.
88
Even if hacking is successful, the ability to use the device once the repair
is made is not guaranteed. Some manufacturers require the device to confirm
that the repair was authorized before the software will start again.
89
While
exemptions to § 1201 may allow hacking for purposes of repair, these
exemptions do not address manufacturers’ additional security measures after
the repairs are made.
90
A requirement that manufacturers provide the
information necessary to reset the lock is highly imperative considering the
manufacturers’ efforts to prevent independent repairs.
e. Limiting Contracting Around Repair Law
Finally, section 5 of the model legislation seeks to ensure that
manufacturers do not attempt to contract around the provisions of the law by
including terms in their agreements with their authorized repair providers that
would “purport[] to waive, avoid, restrict, or limit an original equipment
manufacturer’s obligation to comply with this Act.”
91
If the original
equipment manufacturer attempted to do so, such provision would be “void
and unenforceable.”
92
86. See infra Part III. This could actually be the case with respect to repair tools as well.
87. 17 U.S.C. § 1201 (2012).
88. Id.
89. See Jason Koebler, In Groundbreaking Decision, Feds Say Hacking DRM to Fix Your
Electronics Is Legal, V
ICE: MOTHERBOARD (Oct. 25, 2018, 12:41 PM), https://
motherboard.vice.com/en_us/article/xw9bwd/1201-exemptions-right-to-repair
[https://perma.cc/NTA5-8R8F] (describing Apple’s “built-in kill switch that can prevent new
MacBook Pros from functioning if they have been repaired by anyone who is not authorized
to do so”).
90. For example, Apple has begun to require that even after a device is reset and repaired,
the device must connect with Apple servers to check that the repair was done by an authorized
vendor. See id.
91. Model State Right-to-Repair Law, supra note 21, § 5(b).
92. Id.
80 FORDHAM LAW REVIEW [Vol. 88
As discussed above, manufacturers typically maintain an authorized
network of repair vendors.
93
The typical relationship between the
manufacturer and authorized repair vendor is a contractual one. Section 5 of
the model legislation is designed to limit the freedom of contract in this
context. If manufacturers were able to contract around the provisions of the
repair law, they could circumvent the spirit and intent of the law.
However, this provision is not as broad as it needs to be because it does
not limit what manufacturers can place in their sales (or lease) contracts with
their consumers. Manufacturers are already including limiting provisions in
contracts with purchasers or lessees of their equipment.
94
As will be
discussed in Part III below, this is an area that is squarely in the mandate of
the state legislatures to address because contract law is state based. States
can declare void any contract terms that would purport to limit repair-related
activities. If these types of provisions were included in any enacted state
repair law, this would go a long way in making a right to repair a reality.
2. Why Has the Legislation Stalled?
Given how large the repair business is for manufacturers, it is not
surprising that manufacturers would be upset by any attempt to interfere with
their ability to control the repair market. Some larger manufacturers have
been active in attempting to forestall the passage of any right to repair law.
95
In Illinois, for example, the Association of Home Appliance
Manufacturers rallied Dyson, Wahl, and LG to send similar letters to seven
members of the Illinois House of Representatives, including the
representative who introduced the legislation and the Speaker of the House,
in opposition to a proposed “fair repair” law.
96
These letters cited a number
of different reasons as to why the proposed fair repair law was unwise to
enact, including concerns regarding quality of repair, consumer safety,
cybersecurity, and intellectual property.
97
Facially, these letters are quite
persuasive, particularly in their lead arguments regarding consumer and
product safety. Given that the legislation is framed as a type of consumer
protection law, this may seem to make sense.
98
In response to the arguments from manufacturers, members of the repair
movement cite to consumer autonomy and environmental concerns as
93. See generally Apple Authorized Service Provider Program, supra note 6.
94. See, e.g., Terms & Conditions/Health & Safety Information, S
AMSUNG,
https://www.samsung.com/us/Legal/Phone-HSGuide/ [https://perma.cc/EJ8H-N573] (last
updated May 9, 2018).
95. See Koebler, supra note 45.
96. Letter from Jason L. Brown to David Harris, supra note 46; Letter from Rick Habben
to David Harris, supra note 46; Letter from John I. Taylor to David Harris, supra note 46.
97. Letter from Jason L. Brown to David Harris, supra note 46; Letter from Rick Habben
to David Harris, supra note 46; Letter from John I. Taylor to David Harris, supra note 46.
98. But see infra Part IV.A (presenting certain counterarguments).
2019] THE RIGHT TO REPAIR 81
rebuttals.
99
With respect to consumer autonomy, the main argument is that
a consumer should have the ability to do what they want with their product
after purchase.
100
As to the substantial e-waste created by products that
cannot be repaired, the Public Interest Research Group, for instance, reported
that “New Hampshire throws away 1,500 cell phones every day, and 92
percent end up in [the] waste stream.”
101
While these and other arguments that the repair movement has offered to
rebut the concerns expressed by manufacturers have merit, these rebuttals
have not proven successful.
102
In fact, as of the date of this Article, none of
the twenty states that have pending repair laws have passed their bills. The
fight for the right to repair is not over, as some state lawmakers have already
announced plans to reintroduce failed bills or continue them in their next state
legislative sessions.
103
In addition, the U.S. Copyright Office’s exemptions
for 2019–2021, which will be discussed below, also provide some
promise.
104
In any event, it seems that the state legislation could use some
steam. The way the repair movement has dealt with the manufacturers’
arguments on the intellectual property front, in particular, may not have been
satisfactory. Paying due attention to intellectual property law is important
for another reason, as explored in the next section.
3. Can State-Based Legislation Be Effectively Implemented?
Even if the state laws pass, there is a good possibility that states could not
effectively implement them. The legislation as currently written is framed in
consumer protection terms and, on its face, does not account for federal
intellectual property law.
105
However, the repair model legislation implicates copyright and patent
laws, both of which are in the exclusive jurisdiction of the federal
99. It’s Time for a Common-Sense Perspective, supra note 19; Repair Revives End-of-Life
Electronics, R
EPAIR.ORG, https://repair.org/the-environment [https://perma.cc/FA3B-2J5E]
(last visited Aug. 22, 2019).
100. See, e.g., Bob Sanders, Heavy Debate Ensues over ‘Right to Repair’ Bill, NH
BUS.
REV. (Feb. 13, 2018), https://www.nhbr.com/March-2-2018/Heavy-debate-ensues-over-right-
to-repair-bill/ [https://perma.cc/6X2X-2MME].
101. Id. (quoting Nathan Proctor, the director of Public Interest Research Group’s (PIRG)
right to repair campaign). As a counter to this, the manufacturers have argued that their
proprietary software is intended to prevent against overrides that could delete features of
products that are intended to be environmentally friendly. See id.
102. See Abel, supra note 22.
103. See iFixit Video, Repair Radio Episode 6: Right to Repair Chat with Rep. Jeff Morris
and Kevin Purdy, Y
OUTUBE (Apr. 11, 2019), https://www.youtube.com/
watch?v=i51YOXCAXJ0 [https://perma.cc/29HR-F73T] (stating that the bill will continue in
the next session).
104. See infra Part III.A.2.
105. But see infra Part III.D.2 (discussing trade secrets as an exception to the lack of direct
engagement with intellectual property).
82 FORDHAM LAW REVIEW [Vol. 88
government.
106
Under the federal preemption doctrine, in the case of a
conflict between a state law and a federal law, the federal law controls.
107
Courts typically analyze preemption under the Supremacy Clause of Article
VI of the U.S. Constitution, which provides that the laws of the United States
“shall be the supreme Law of the Land . . . any Thing in the Constitution or
Laws of any State to the Contrary notwithstanding.”
108
Thus, when a state
law interferes with the underlying goals of a federal law, it may be struck
down as preempted.
109
Arguably, the proposed model legislation does not
align with various aspects of intellectual property law. This may mean that
state laws based on the model legislation, if enacted, could be subject to
constitutional challenges in their implementation and enforcement.
110
However, in the past, courts have upheld other state-based legislation that
similarly attempted to dictate manufacturer actions, even where patent rights
were implicated.
111
For example, the Song-Beverly Act in California
requires that manufacturers of various types of electronics who have made
express warranties provide “service literature and functional parts.”
112
Thus,
despite the potential for preemption claims, it is more likely that other
106. 17 U.S.C. § 301(a) (2012) (providing exclusive federal jurisdiction for copyright); 28
U.S.C. § 1338(a) (2012) (providing exclusive federal jurisdiction for patents).
107. See, e.g., Camilla A. Hrdy, The Reemergence of State Anti-Patent Law, 89 U.
COLO.
L. REV. 133, 158 (2018) (“‘Preemption’ generally describes a situation in which federal law
‘preempts,’ or supersedes, a state or local law.”); Dmitry Karshtedt, Contracting for a Return
to the USPTO: Inter Partes Reexaminations as the Exclusive Outlet for Licensee Challenges
to Patent Validity, 51 IDEA 309, 317 (2011) (noting that under the preemption doctrine “the
federal law controls and the state law is invalidated” in the case of a conflict between federal
and state law).
108. U.S.
CONST. art. VI, cl. 2; see Hrdy, supra note 107, at 158.
109. See, e.g., Hrdy, supra note 107, at 158 (noting that “the Federal Circuit currently
assesses preemption of state anti-patent law by considering whether the challenged state law
interferes with the underlying goals of the Patent Act and is therefore preempted under the
Supremacy Clause”). For other sources discussing preemption and intellectual property laws,
see generally Dan L. Burk, Protection of Trade Secrets in Outer Space Activity: A Study in
Federal Preemption, 23 S
ETON HALL L. REV. 560 (1993); Roger Ford, The Uneasy Case for
Patent Federalism, 2017 W
IS. L. REV. 551; Jeanne C. Fromer, The Intellectual Property
Clause’s Preemptive Effect, in I
NTELLECTUAL PROPERTY AND THE COMMON LAW 265
(Shyamkrishna Balganesh ed., 2013); Paul R. Gugliuzza, Patent Trolls and Preemption, 101
V
A. L. REV. 1579 (2015); Paul Heald, Federal Intellectual Property Law and the Economics
of Preemption, 76 I
OWA L. REV. 959 (1991); Mark A. Lemley, Beyond Preemption: The Law
and Policy of Intellectual Property Licensing, 87 C
ALIF. L. REV. 111 (1999); Maureen A.
O’Rourke, Drawing the Boundary Between Copyright and Contract: Copyright Preemption
of Software License Terms, 45 D
UKE L.J. 479 (1995); Joan E. Schaffner, Patent Preemption
Unlocked, 1995 W
IS. L. REV. 1081.
110. See, e.g., Gugliuzza, supra note 109, at 1607 (discussing the application of the
preemption doctrine to state anti-troll patent laws).
111. In fact, Kali Murray traces how states were historically able to enact state anti-patent
statutes pursuant to the Tenth Amendment and the states’ “police power” over property and
contracts. Kali Murray, Constitutional Patent Law: Principles and Institutions, 93
NEB. L.
REV. 901, 926–29 (2015).
112. C
AL. CIV. CODE § 1793.03 (West 2019). The authors are indebted to Aaron
Perzanowski for this insight.
2019] THE RIGHT TO REPAIR 83
challenges based on intellectual property laws could be used to prevent
effective implementation of a right to repair law.
Before discussing such doctrinal challenges, however, this Article
engages, first, in an attempt to develop a cohesive theoretical framework for
justifying a right to repair. Such a framework bolsters the case for the
passage of state right to repair laws and also serves as a basis for this Article’s
proposed revisions of federal intellectual property law as needed to
effectively implement repair legislation.
II.
NORMATIVE JUSTIFICATIONS FOR A RIGHT TO REPAIR
The corporations lobbying against the legislation have relied, to a large
extent, on their intellectual property rights.
113
The response of the repair
advocates has mostly remained on a separate normative level—justifying the
legislation by resorting to environmental concerns and arguments rooted in
consumer autonomy and competition—and has not tackled the objections on
the intellectual property front in a direct manner.
114
This Part presents an analytical framework that justifies a right to repair in
terms that are reconcilable with intellectual property protection. Reframing
and bolstering the arguments for a right to repair in the manner proposed
herein is likely to reinforce the case for a right to repair, enable a more
meaningful discussion regarding the potential ways to balance the various
considerations at stake, and ultimately increase the chances of enacting and
implementing effective right to repair legislation.
A. External Justifications
Intellectual property protection is not absolute. The law recognizes that
intellectual property rights may entail significant costs and come at the
expense of other valuable social interests. In response, the law is often
designed in a manner that attempts to balance the benefits of intellectual
property rights and other external interests that could be negatively impacted
if those rights were too strong.
115
Each branch of law that deals with a certain
type of intellectual property right has various mechanisms that aim to achieve
such a balance. For instance, the fair use doctrine in copyright law is often
perceived as a mechanism for balancing copyright protections and free
speech concerns.
116
Similarly, § 287(c) of the Patent Act prevents patent
113. Letter from Jason L. Brown to David Harris, supra note 46; Letter from Rick Habben
to David Harris, supra note 46; Letter from John I. Taylor to David Harris, supra note 46.
114. See supra notes 19, 100–01 and accompanying text.
115. Cf. Niva Elkin-Koren, Copyright in a Digital Ecosystem: A User Rights Approach,
in C
OPYRIGHT LAW IN AN AGE OF LIMITATIONS AND EXCEPTIONS 132, 141 (Ruth L. Okediji ed.,
2017) (explaining that copyright limitations and exceptions are often conceived as necessary
to “balance author rights against a public interest”).
116. See generally Lee Ann W. Lockridge, The Myth of Copyright’s Fair Use Doctrine as
a Protector of Free Speech, 24 S
ANTA CLARA COMPUTER & HIGH TECH. L.J. 31 (2007)
84 FORDHAM LAW REVIEW [Vol. 88
owners from suing doctors for infringing medical procedure patents.
117
This
provision, which significantly limits such patents’ effectiveness, is
commonly justified by the fundamental need to provide patients with access
to medical treatment.
118
Therefore, even to the extent that the social interests underlying a right to
repair are external to the values underlying intellectual property rights, this
does not mean that these interests cannot be accorded significant weight in
intellectual property policymaking. Notably, the general values and interests
highlighted by the repair movement in support of the proposed legislation—
including static efficiency considerations (competition in repair markets),
environmental concerns, and consumers’ rights in their products—are
already accommodated in various contexts within intellectual property law’s
balancing mechanisms.
119
In fact, even the need to enable repairs itself has
been recognized to some extent as an interest worthy of consideration within
various intellectual property law rules and doctrines.
120
Part III will explore
these areas of the law and examine the need to supplement existing rules and
doctrines with additional mechanisms to protect and enable a meaningful
right to repair.
Thus, just because a certain value or social interest is external to the logic
and nature of intellectual property rights, this does not mean that such value
or interest is irrelevant. Nor, for that matter, is it that such interests must
always be an afterthought to the protection of intellectual property rights.
This understanding itself may be helpful in strengthening the case for a right
to repair against the objections raised on the intellectual property front.
Yet, it is possible to go one step further. The next section will demonstrate
that a right to repair can be justified from an internal perspective as well.
Though this may seem counterintuitive at first glance, a right to repair could
(providing a critical analysis of the role that the fair use defense purportedly plays as a
safeguard for protected speech).
117. 35 U.S.C. § 287(c) (2012).
118. For a critical discussion of this provision, see generally Cynthia M. Ho, Patents,
Patients, and Public Policy: An Incomplete Intersection at 35 U.S.C. § 287(c), 33 U.C.
DAVIS
L. REV. 601 (2000).
119. Static efficiency considerations are reflected in intellectual property law in various
ways—including, for instance, by limiting the period of exclusivity under various intellectual
property regimes in order to restore competition in the market once it expires. Environmental
concerns are reflected, for instance, in the implementation of measures by various patent
offices around the world to fast-track green patent applications. See, e.g., Antoine
Dechezleprêtre & Eric Lane, Fast-Tracking Green Patent Applications, WIPO
MAG. (June
2013), https://www.wipo.int/wipo_magazine/en/2013/03/article_0002.html [https://
perma.cc/5894-AAZY] (providing analysis of such programs). In addition, the Clean Air Act
employs a mandatory licensing scheme for patented inventions relating to devices for reducing
air pollution. See 42 U.S.C. § 7608 (2012). Finally, the need to accommodate consumers’
rights in their products is reflected, for instance, in the patent exhaustion doctrine. See, e.g.,
Amelia Smith Rinehart, Contracting Patents: A Modern Patent Exhaustion Doctrine, 23
H
ARV. J.L. & TECH. 483, 492 (2010) (noting that the “enforcement of . . . resale or use
restrictions would create an obstacle to the free use and alienability of personal property”).
120. See infra Part III.
2019] THE RIGHT TO REPAIR 85
be justified by the very same rationales that have traditionally been used to
justify intellectual property rights.
121
This understanding makes the case for
carving out a space for a right to repair within intellectual property law even
more compelling.
B. Internal Justifications
Many theories have been formulated over the years to justify intellectual
property protection.
122
This section will focus primarily on the utilitarian
theory—the most popular account of intellectual property rights, pursuant to
which the law should be designed to maximize net social welfare.
123
As
explored below, a strong case for a right to repair can be made under this
approach. Conducting the theoretical analysis with the lens of the utilitarian
theory of intellectual property is particularly beneficial as the arguments
raised by opponents of the state legislation are framed in utilitarian terms as
well. The centrality of the utilitarian argument to this Article’s thesis
notwithstanding, this Article also briefly discusses the possibility of
justifying a right to repair under other theories commonly used in discussions
of intellectual property law: the labor theory, the personality theory, and the
social planning theory.
124
1. Utilitarianism
The primary utilitarian justification for the patent and copyright systems
focuses on their role in promoting progress by providing an incentive for the
development of technological inventions and the creation of original works
of authorship.
125
This notion is embedded in the U.S. Constitution, which
121. Cf. Guy Pessach, Toward a New Jurisprudence of Copyright Exemptions, 55 IDEA
287, 293 (2015) (suggesting that “the justifications for structuring copyright’s exemptions as
exclusion rights, mirror economic justifications for copyright protection”).
122. See generally William Fisher, Theories of Intellectual Property, in N
EW ESSAYS IN
THE
LEGAL AND POLITICAL THEORY OF PROPERTY 168 (Stephen R. Munzer ed., 2001).
123. See, e.g., id.; see also Gaia Bernstein, In the Shadow of Innovation, 31 C
ARDOZO L.
REV. 2257, 2275 (2010) (noting the scholarly convention that the utilitarian theory is the
prominent justification for intellectual property rights in the United States).
124. By choosing to focus on the utilitarian approach, we do not mean to imply that
utilitarianism is a descriptively or normatively satisfactory account of intellectual property
law. In fact, both authors have expressed in various contexts criticism of the utilitarian account
of intellectual property. See, e.g., Leah Chan Grinvald, Making Much Ado About Theory: The
Chinese Trademark Law, 15 M
ICH. TELECOMM. TECH. L. REV. 53 (2008); Ofer Tur-Sinai,
Beyond Incentives: Expanding the Theoretical Framework for Patent Law Analysis, 45
AKRON L. REV. 243 (2012) [hereinafter Tur-Sinai, Theoretical Framework]; Ofer Tur-Sinai,
Technological Progress and Well-Being, 48 L
OY. U. CHI. L.J. 145 (2016) [hereinafter Tur-
Sinai, Technological Progress].
125. For sources noting the utilitarian nature of the patent system, see, for example, Dan L.
Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 V
A. L. REV. 1575, 1597 (2003);
Robert P. Merges, Rent Control in the Patent District: Observations on the Grady-Alexander
Thesis, 78 V
A. L. REV. 359, 359 (1992); Maureen A. O’Rourke, Toward a Doctrine of Fair
Use in Patent Law, 100 C
OLUM. L. REV. 1177, 1181–82 (2000); Lisa Larrimore Ouellette, Do
Patents Disclose Useful Information?, 25 H
ARV. J.L. & TECH. 545, 554 (2012). For the
86 FORDHAM LAW REVIEW [Vol. 88
empowers Congress “[t]o promote the Progress of Science and useful Arts,
by securing for limited Times to Authors and Inventors the exclusive Right
to their respective Writings and Discoveries” (“IP Clause”).
126
As the
analysis below will show, designing intellectual property law in a manner
that accommodates the concept of a right to repair and balances the exclusive
rights granted to intellectual property owners with the right to repair could
promote “Progress” in three interrelated ways: (1) as an essential component
of the “Progress of Science and useful Arts” that Congress is mandated to
promote under the Constitution; (2) as necessary to enable user innovation;
and (3) as a mechanism that enhances the flow of information about
technological innovation to the public.
a. Advancement of Progress
Under a utilitarian worldview, the state’s ultimate goal is to enhance
human well-being in society.
127
To promote this goal in the context of the
IP Clause, the state needs to not only ensure the development of products and
services but also to promote their commercialization and broad diffusion. To
the extent that consumers are not getting a chance to access and benefit from
such products or services, their impact on human welfare is not fully
realized.
128
As highlighted by Professor Gaia Bernstein, “[a]ttaining the
progress objective requires not just innovation but also an adoption process.
Progress can be attained only if people adopt and use the new technology.”
129
Indeed, this notion is reflected in the U.S. Supreme Court’s intellectual
dominance of the utilitarian justification for copyright law, see, for example, Jeanne C.
Fromer, An Information Theory of Copyright Law, 64 E
MORY L.J. 71, 73 (2014). Notably, the
utilitarian justification for trademark law is different and focuses on the role of trademarks in
reducing consumers’ search costs and in incentivizing businesses to produce consistently high-
quality goods and services. See generally Fisher, supra note 122. See also supra note 10 and
accompanying text.
126. U.S.
CONST. art. I, § 8, cl. 8.
127. For the link between utilitarianism and the maximization of social welfare, see
Matthew Adler & Eric A. Posner, Happiness Research and Cost-Benefit Analysis, 37 J.
LEGAL
STUD. 253, 255–56 (2008) (discussing the moral framework of utilitarianism); William W.
Fisher & Talha Syed, Global Justice in Healthcare: Developing Drugs for the Developing
World, 40 U.C.
DAVIS L. REV. 581, 602 (2007) (noting how utilitarianism “urges lawmakers
to choose the course of action that is most likely to produce the highest net social welfare”).
For a discussion of the criterion of well-being that the state should adopt in the context of
innovation law and policy, see generally Tur-Sinai, Technological Progress, supra note 124.
128. Indeed, some scholars have emphasized the role of both patent and copyright law in
incentivizing the commercialization of new products and works, and not just their initial
creation. See, e.g., F. Scott Kieff, Property Rights and Property Rules for Commercializing
Inventions, 85 M
INN. L. REV. 697, 736 (2001) (suggesting a justification for the patent system,
which is based on the need to provide “incentive to commercialize” the invention); Adam
Mossoff, How Copyright Drives Innovation: A Case Study of Scholarly Publishing in the
Digital World, 2015 M
ICH. ST. L. REV. 955 (illuminating the importance of copyright in
incentivizing intermediaries to invest in and create distribution mechanisms for copyrighted
works).
129. See Bernstein, supra note 123, at 2259.
2019] THE RIGHT TO REPAIR 87
property jurisprudence. In Kewanee Oil Co. v. Bicron Corp.,
130
for instance,
the Court explained that patent laws promote progress by incentivizing
inventors to make a productive effort that will ultimately “have a positive
effect on society through the introduction of new products and processes of
manufacture into the economy, and the emanations by way of increased
employment and better lives for our citizens.”
131
Thus, even under a
traditional view of the IP Clause, there is a justification for a right to repair
as a measure enhancing consumers’ ability to benefit from the innovative
products brought about by technological progress.
Yet, once the traditionally narrow and simplistic perception of progress is
replaced with a more holistic one, the justification for a right to repair as an
essential component of a balanced intellectual property regime can be
bolstered even further. The term “Progress” in the IP Clause is traditionally
conceived as representing a modernist perception, under which constant
innovation and creation are regarded as necessary to maintain perpetual
growth and satisfy consumers’ demand for new products and services.
132
Such a concept of progress represents political ideologies of economic
liberalism, capitalism, and consumerism.
133
But in recent years, various
intellectual property scholars have challenged this simplistic account of
progress and proposed alternate constructions of this term that are broader
and more holistic.
134
Professor Margaret Chon, for example, rejects the view of progress as a
“liberating upward trajectory” and advances a postmodern view of progress,
which incorporates “ecologically-based limits to economic growth, as well
as the need for the redistribution of existing material wealth within present
and between present and future generations.”
135
Chon posits that “the
incentives provided by copyrights and patents are only second-order
concerns which serve a higher purpose—the ‘Progress’ project—which
preserves and nurtures a commons of knowledge.”
136
Ultimately, Professor
130. 416 U.S. 470 (1974).
131. Id. at 480.
132. See Tur-Sinai, Technological Progress, supra note 124, at 147.
133. Id.
134. See infra Part II.B.2.c. To a large extent, the social planning theory discussed below
as part of the nonutilitarian theories can also be viewed as a richer version of utilitarianism, as
it views the law as means to advance the state of society, though its vision of a desirable
society exceeds the conceptions of “social welfare” traditionally embraced by utilitarians. See
infra note 181 and accompanying text.
135. Margaret Chon, Postmodern “Progress”: Reconsidering the Copyright and Patent
Power, 43 D
EPAUL L. REV. 97, 100, 127 (1993).
136. Id. at 104. For other critical accounts of the modernist notion of progress underlying
intellectual property policymaking and scholarship, see, for example, Estelle Derclaye,
Eudemonic Intellectual Property: Patents and Related Rights as Engines of Happiness,
Peace, and Sustainability, 14 V
AND. J. ENT. & TECH. L. 495, 508–19 (2012) (arguing that the
progress ideology is parochial); Simone A. Rose, The Supreme Court and Patents: Moving
Toward a Postmodern Vision of “Progress”?, 23 F
ORDHAM INTELL. PROP. MEDIA & ENT. L.J.
1197, 1207 (2013) (criticizing the measuring of societal progress by technological
advancement and economic growth while failing to adequately balance “other equally
88 FORDHAM LAW REVIEW [Vol. 88
Chon maintains that “[a]n idea of progress that rejects sheer material growth
as its sine qua non changes the focus of our intellectual property laws from
competition policy to the complicated interface between science and
society.”
137
Similarly, Professors Brett Frischmann and Mark McKenna
argue that “the IP Clause leaves open a number of ways to conceive of
Progress,”
138
in support of their claim that a normative commitment to
intergenerational justice is compatible with the IP Clause.
139
This Article shares with these scholars the principal view that the
constitutional mandate to promote “the Progress of the Science and useful
Arts” should not be reduced to enabling market incentives to drive
technological innovation and artistic creation. Furthermore, not only should
“Progress” be construed in a broader, more holistic way but it should also be
interpreted in a dynamic manner. The notion of “Progress” envisioned by
the framers of the Constitution in the eighteenth century is not necessarily
equal to the type of “Progress” that would benefit society in the twenty-first
century. Notably, as the world is facing a potential major environmental
crisis due to climate change,
140
intellectual property laws should be applied
in a way that is consistent with and sensitive to environmental outcomes.
141
important measures of progress such as improving public health, sustainability, and access to
basic research tools”).
137. Chon, supra note 135, at 145.
138. Brett Frischmann & Mark P. McKenna, Intergenerational Progress, 2011 W
IS. L.
REV. 123, 123.
139. Id. at 138. For other works that offer a critical examination of the concept of
“Progress,” see generally Barton Beebe, Bleistein, The Problem of Aesthetic Progress and the
Making of American Copyright Law, 117 C
OLUM. L. REV. 319 (2017) (exploring whether
copyright law ought to seek to promote aesthetic progress); Jessica Silbey, Promoting
Progress: A Qualitative Analysis of Creative and Innovative Production, in SAGE
HANDBOOK FOR INTELLECTUAL PROPERTY 515 (Matthew David & Deborah Halbert eds., 2015)
(investigating the concept of “progress” envisioned by subjects of a qualitative empirical
study); Ned Snow, The Regressing Progress Clause: Rethinking Constitutional Indifference
to Harmful Content in Copyright, 47 U.C.
DAVIS L. REV. 101 (2013) (discussing the potential
value of the content-restrictive function of the Progress Clause).
140. See, e.g., Michael A. Carrier, An Antitrust Framework for Climate Change, 9 N
W. J.
TECH. & INTELL. PROP. 513, 513 (2011) (“Climate change is one of the most important issues
of the twenty-first century.”); Megha Shah, Grassroots Enforcement of EISA: The Need for a
Citizen Suit Provision in the Energy Independence and Security Act of 2007, 77 G
EO. WASH.
L. REV. 488, 488 (2009) (noting that former U.N. Secretary General Ban Ki-moon described
climate change as “the defining challenge of our age”); see also J. B. Ruhl & James Salzman,
Climate Change Meets the Law of the Horse, 62 D
UKE L.J. 975, 977–78 (2013) (“Climate
change is here. Its impacts are present in the current landscape, and, barring miraculous
developments in politics and technology, it will be a part of the future for our generation and
for many to follow.”).
141. For scholarly discussions acknowledging the need to incorporate environmental
considerations into intellectual property policymaking, see, for example, Jonathan H. Adler,
Eyes on a Climate Prize: Rewarding Energy Innovation to Achieve Climate Stabilization, 35
H
ARV. ENVTL. L. REV. 1 (2011); Estelle Derclaye, Should Patent Law Help Cool the Planet?:
An Inquiry from the Point of View of Environmental Law; Part 2, 31 E
UR. INTELL. PROP. REV.
227 (2009); Gregory N. Mandel, Promoting Environmental Innovation with Intellectual
Property Innovation: A New Basis for Patent Rewards, 24 T
EMP. J. SCI. TECH. & ENVTL. L.
51 (2005); Joshua D. Sarnoff, The Patent System and Climate Change, 16 V
A. J.L. & TECH.
2019] THE RIGHT TO REPAIR 89
Once we embrace a broader and more dynamic construction of the term
“Progress” and a correspondingly broader reading of the IP Clause, it is easy
to justify a right to repair as a notion that is at least compatible with the
rationales underlying intellectual property law. Such a right is likely to
enable consumers to enjoy goods and services in a fuller and more
meaningful way, which entails more autonomy and involves less dependency
upon the original suppliers of such goods and services. Consumers’
enjoyment of the relevant products could also be expected to last for longer
periods, assuming that more consumers will choose to repair their products
under a regime of competition in repair markets than when these markets are
controlled by original manufacturers.
142
Altogether, with a right to repair in
place, consumers are likely to derive more utility from their consumption of
technological goods—what ultimately serves the underlying utilitarian goal
of enhancing overall well-being.
143
In addition, a legal regime enabling
repairs could have a positive impact on the natural environment that certainly
aligns with a more holistic concept of “Progress.”
144
Many of the arguments noted above have been brought up by the right to
repair advocates in support of the legislation. What has been missing is the
link to intellectual property law. As demonstrated, such arguments can serve
as the basis for an internal justification of the right to repair—one that views
such a right as a vital component of an intellectual property regime that aims
to promote “Progress.”
b. Enabling User Innovation
Even under a narrower concept of “Progress” that focuses on the need to
incentivize the development of novel technological products and the creation
of original works of authorship, a right to repair can still be justified as
necessary to facilitate and encourage user innovation. As demonstrated in
the work of Professor Eric von Hippel and others, “users of products and
services—both firms and individual consumers . . . are increasingly able to
innovate for themselves.”
145
Indeed, in today’s innovation landscape,
301 (2011); Ofer Tur-Sinai, Patents and Climate Change: A Skeptic’s View, 48 ENVTL. L. 211
(2018).
142. See, e.g., Mostafa Sabbaghi et al., The Current Status of Consumer Electronics Repair
Industry in the U.S.: A Survey-Based Study, R
ESOURCES, CONSERVATION & RECYCLING, Jan.
2017, at 137, 143–44 (discussing price sensitivity of consumers and repair).
143. Interestingly, recent studies in the field of psychology point to the relation between a
“maker identity” (i.e., being involved in do-it-yourself activities) and subjective well-being.
See, e.g., Ann F. Collier & Heidi A. Wayment, Psychological Benefits of the “Maker” or Do-
It-Yourself Movement in Young Adults: A Pathway Towards Subjective Well-Being, 19 J.
H
APPINESS STUD. 1217 (2018). Inasmuch as this is true, it adds another layer of support to
the argument that having a right to repair may enhance the value that consumers derive from
their products.
144. See supra notes 140–41 and accompanying text.
145. E
RIC VON HIPPEL, DEMOCRATIZING INNOVATION 1 (2005). For a list of examples of
user innovation, see Katherine J. Strandburg, Users as Innovators: Implications for Patent
Doctrine, 79 U.
COLO. L. REV. 467, 468–69 (2008).
90 FORDHAM LAW REVIEW [Vol. 88
innovation in many technological fields is often originated from users of
technology who develop new products and services to satisfy their own
needs, rather than to sell them.
146
While this is beneficial to the individuals
engaging in the practice of innovation, such innovative activity can also yield
significant benefits to society.
147
The innovations created often spread to
peers and to commercial firms that may adopt them as the basis for valuable
market products.
148
Yet, in order to enable and encourage user innovation, the intellectual
property system must preserve a space for users to tinker, experiment, and
otherwise engage with their products in various ways.
149
In this vein, users
should also be free to engage in repairs of technological products without
fear of infringement liability.
150
A right to repair, in other words, is an
essential component of a legal environment conducive to user innovation.
More concretely, while repairing a product, a user could come up with
ideas for improvements, variations, or spin-offs of the same product or be
inspired to design something new. One famous example for an innovation
born out of repair is the first operative airplane built by the Wright brothers
at the beginning of the twentieth century.
151
The brothers, working alone
from their bicycle repair shop, solved the problem of “controlled flight” that
had occupied the minds of many engineers throughout the years.
152
The
solution was found while Wilbur, one of the brothers, was toying in their
store with a rectangular bicycle inner-tube box.
153
Wilbur concluded that
“by connecting the motion of a flying machine’s wings in relation to one
another, twisting the axis of the wings in the same way a box twists,” a pilot
could control the aircraft.
154
This led to the successful development of the
first airplane and is considered a foundation to modern-day aeronautics.
155
In addition to innovations related to the product itself, opening repair
markets for competition could also increase innovation in the repair industry.
Consumers and independent repair shops might come up with new methods
146. See Strandburg, supra note 145, at 469. For other prominent works exploring user
innovation, see generally
VON HIPPEL, supra note 145; William W. Fisher III, The Implications
for Law of User Innovation, 94 M
INN. L. REV. 1417 (2010); Samuelson, supra note 31;
Andrew W. Torrance & Eric von Hippel, The Right to Innovate, 2015 M
ICH. ST. L. REV. 793.
147. See Strandburg, supra note 145, at 469.
148. Id.
149. For the importance of the right to tinker, see generally Samuelson, supra note 31.
150. With respect to the link between repair and user innovation, see Strandburg, supra
note 145, at 494–95.
151. See Katherine White, What If Bicycles Held the Secret to Human Flight?, H
ENRY
FORD, https://www.thehenryford.org/explore/stories-of-innovation/what-if/wright-brothers/
[https://perma.cc/URE5-2NNF] (last visited Aug. 22, 2019); see also Brittany McCrigler, The
Wright Way: Repair Teaches Engineering,
IFIXIT (Mar. 21, 2013), https://www.ifixit.com/
News/the-wright-way-to-teach-engineering [https://perma.cc/4H77-J3UW].
152. White, supra note 151.
153. Id.
154. Id.
155. See, e.g., id.; see also McCrigler, supra note 151 (noting other “bike repair concepts”
that are mirrored in the airplane built by the Wright brothers).
2019] THE RIGHT TO REPAIR 91
of repair, develop or improve repair tools, and create user-generated tips,
manuals, and kits that could significantly benefit others.
156
More generally,
repairing a product requires observation and the acquisition of knowledge.
Thus, while engaging in repair, users are likely to increase their technological
savviness and mechanical skills and acquire knowledge and tools that could
prove helpful at a later point as they come across an opportunity to be
involved in an innovative endeavor.
157
To conclude, a right to repair can directly lead to further innovation and,
thus, can be justified from the perspective of dynamic efficiency underlying
intellectual property laws. Once again, the justification for a right to repair
can be predicated on the same rationales that are normally used to justify the
exclusive rights of intellectual property owners.
c. Promotion of Information Disclosure
A third way by which a right to repair fits in the utilitarian justification for
intellectual property rights has to do with the disclosure function of patents.
One of the economic justifications of patent law under the utilitarian
overarching framework is the “incentive to disclose” theory.
158
Under this
theory, patents contribute to progress by incentivizing disclosure of
information that would have otherwise remained secret. This theory is often
framed in terms of a “bargain” between the inventor and the state.
159
To
enjoy the period of exclusivity offered by the state, the inventor must disclose
certain information related to her invention that ultimately becomes part of
156. For examples of repair tools and manuals, see IFIXIT, https://www.ifixit.com/
[https://perma.cc/92AF-3WY9] (last visited Aug. 22, 2019).
157. Consider, again, the Wright brothers, whose innovative techniques in engineering are
commonly attributed to their hands-on experience in repair.
158. For sources describing the incentive to disclose theory, see, for example,
Rebecca S.
Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56
U.
CHI. L. REV. 1017, 1028–29 (1989); Wendy J. Gordon, Intellectual Property, in THE
OXFORD HANDBOOK OF LEGAL STUDIES 617, 632 (Peter Cane & Mark Tushnet eds., 2003);
Ouellette, supra note 125, at 571–81; Julie S. Turner, The Nonmanufacturing Patent Owner:
Toward a Theory of Efficient Infringement, 86 C
ALIF. L. REV. 179, 189–90 (1998).
159. The notion of the “patent bargain” refers to the “bilateral relationship between the
inventor and the state, under whose terms the inventor must disclose in exchange for protection
of a property right in the invention.” Shubha Ghosh, Patents and the Regulatory State:
Rethinking the Patent Bargain Metaphor After Eldred, 19 B
ERKELEY TECH. L.J. 1315, 1338
(2004); see also Jeanne C. Fromer, Patent Disclosure, 94 I
OWA L. REV. 539, 553 (2009) (“The
accepted understanding in patent policy and doctrine is that disclosure of a patented invention
to the public—and its dedication to the public after the expiration of the patent term—is part
of a quid pro quo the patentee must provide to gain the broad patent right.”); Gordon, supra
note 158, at 632 (discussing the notion of patent as a “bargain”: “the government gives the
possibility of exclusivity and in exchange the patent applicant gives disclosure”). In the
Supreme Court’s words, “the quid pro quo [for the patent grant] is disclosure of a process or
device in sufficient detail to enable a person skilled in the art to practice the invention once
the period of the monopoly has expired.” Universal Oil Prods. Co. v. Globe Oil & Refining
Co., 322 U.S. 472, 484 (1944).
92 FORDHAM LAW REVIEW [Vol. 88
the public domain.
160
As stated by the Supreme Court in Kewanee Oil Co.
v. Bicron Corp.:
When a patent is granted and the information contained in it is circulated
to the general public and those especially skilled in the trade, such additions
to the general store of knowledge are of such importance to the public weal
that the Federal Government is willing to pay the high price of 17 years of
exclusive use for its disclosure, which disclosure, it is assumed, will
stimulate ideas and the eventual development of further significant
advances in the art.
161
The current disclosure obligations do not mandate a patent applicant to
disclose information that would enable repair of a patented product but only
“the manner and process of making and using the invention.”
162
Arguably,
to use the invention meaningfully, a user must have information that would
enable repairs if needed. Yet the statutory disclosure obligations have never
been construed as encompassing a duty to supply repair information.
Regardless, looking at a right to repair from the perspective of the
“incentive to disclose” theory highlights another way that repairs may
promote “Progress.” Enabling the repair of a patented product by consumers
and independent repair shops may result in a wider diffusion of knowledge
about the technological features of the invention embedded in said product.
Thus, a right to repair could complement the existing patent disclosure
requirements in facilitating a flow of information regarding technological
innovation to the public. To better serve this aim, repairers should also be
allowed to disseminate repair information publicly through manuals, do-it-
yourself videos, etc. Notably, repair information that is supplied by
manufacturers or independently uncovered by users would remain accessible
to the public even if the intellectual property owner ceases production and
distribution of the product and stops offering repair services with respect
thereto.
163
Continuous availability of such information could be important
160. As part of the disclosure requirement, the inventor must adequately disclose three
separate elements: (1) enough information to indicate that the inventor is in possession of the
claimed invention (the “written description” requirement), (2) the manner and process of
making and using the invention, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is most nearly connected, to make
and use the same (the “enablement” requirement), and (3) the best mode contemplated by the
inventor of carrying out his invention (the “best mode” requirement). 35 U.S.C. § 112 (2012);
see also 3 D
ONALD S. CHISUM, CHISUM ON PATENTS §§ 7–9 (2019); Fromer, supra note 159,
at 546.
161. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974).
162. See Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir.
2010).
163. Cf. Ariel Katz, The First Sale Doctrine and the Economics of Post-Sale Restraints,
2014 BYU
L. REV. 55, 111 (maintaining that enabling works to remain accessible to the public
is one of the benefits of the first sale doctrine in copyright law).
2019] THE RIGHT TO REPAIR 93
not only from the narrow perspective of the ability to repair the specific
product but also as a stimulant for follow-on innovation.
164
2. Nonutilitarian Justifications
In addition to the utilitarian justification, a right to repair can be justified
from the perspective of certain nonutilitarian theories that have often been
used in theoretical discussions of intellectual property law: labor theory;
personality theory; and social planning theory. The next paragraphs will
briefly survey these theories and the potential insights that can be drawn from
them with respect to the justifications for a right to repair.
a. Labor Theory
The labor theory, based on the work of John Locke,
165
is one of the
principal theories used to justify property rights in general
166
and intellectual
property rights in particular.
167
Under the labor theory, the right of every
person to the fruits of her labor is limited by two provisos: (1) “there is
enough, and as good, left in common for others”;
168
and (2) the laborer does
not waste resources by taking more than she needs for her own use, including
use by means of exchange with others.
169
Using intellectual property rights to block consumers from repairing their
own products and to secure control over the repair industry does not align
with these provisos.
170
Generally speaking, the broader the scope of
intellectual property rights, and the more control their owners are given over
secondary markets—the narrower the opportunities are of others to labor and
earn sustenance, contrary to the first proviso.
171
As to the second proviso, a
legal regime that does not allow for independent repairs of consumer
164. Kewanee Oil Co., 416 U.S. at 481 (“[D]isclosure . . . will stimulate ideas and the
eventual development of further significant advances in the art.”).
165. See generally J
OHN LOCKE, TWO TREATISES OF GOVERNMENT (1690), reprinted in TWO
TREATISES OF GOVERNMENT AND A LETTER CONCERNING TOLERATION 100 (Ian Shapiro ed.,
2003).
166. See, e.g., J.
W. HARRIS, PROPERTY AND JUSTICE 182–212 (1996); STEPHEN R. MUNZER,
A THEORY OF PROPERTY 254–91 (1990); JEREMY WALDRON, THE RIGHT TO PRIVATE PROPERTY
19 (1988).
167. See generally, e.g., Lawrence C. Becker, Deserving to Own Intellectual Property, 68
C
HI.-KENT L. REV. 609 (1993); Benjamin G. Damstedt, Limiting Locke: A Natural Law
Justification for the Fair Use Doctrine, 112 Y
ALE L.J. 1179 (2003); Wendy J. Gordon, A
Property Right in Self-Expression: Equality and Individualism in the Natural Law of
Intellectual Property, 102 Y
ALE L.J. 1533 (1993); Justin Hughes, The Philosophy of
Intellectual Property, 77 G
EO. L.J. 287 (1988); Tur-Sinai, Theoretical Framework, supra note
124.
168. L
OCKE, supra note 165, at 112–13.
169. Id. at 121.
170. See also Joshua D. Sarnoff, Patent-Eligible Inventions After Bilski: History and
Theory, 63 H
ASTINGS L.J. 53, 85–88 (2011) (discussing Locke’s proviso in the context of
subject matter eligibility).
171. Damstedt, supra note 167, at 1187.
94 FORDHAM LAW REVIEW [Vol. 88
products would most certainly result in waste if consumers chose not to repair
their products and instead bought new ones. In such a case, the social value
of the product is not fully realized. Therefore, a right to repair consumer
products may be a critical component of an intellectual property system under
the labor theory.
b. Personality Theory
The right to repair can also be justified under the personality theory of
property, which is based on Hegel’s work.
172
According to the personality
theory, private property is necessary as a means for developing and realizing
one’s personality.
173
Under Hegel’s theory, a person cannot begin to realize
her self-identity until she is given an opportunity to exercise her will on
external objects in her surroundings.
174
For a person to enjoy freedom of
action with respect to assets and a sense of security with respect to the
continuity of her relationship with them and be able to uniquely identify
herself based on her relationship with such assets, she should be provided a
certain level of control over the assets—which is the reason that the
institution of private property is necessary.
175
The personality theory has
been used to justify rights in tangible property as well as in intellectual
property.
176
Entrusting control over repair of consumer products to original
manufacturers denies consumers an important aspect of product ownership—
the ability to control the “destiny” of their own property and to decide how
to handle it when it is malfunctioning. These aspects could be essential for a
consumer’s ability to preserve a sense of autonomy and realize their self-
identity under the personality theory.
177
In addition, consumers who choose
to repair their products on their own could benefit from “exercise of
competence, meaningful engagement, and self-expression.”
178
At the same
172. See generally G. W. F. HEGEL, PHILOSOPHY OF RIGHT (S. W. Dyde trans., Dover
Philosophical Classics 2005) (1821).
173. Id.
174. Id.
175. Id.; see also Brian M. Hoffstadt, Dispossession, Intellectual Property, and the Sin of
Theoretical Homogeneity, 80 S.
CAL. L. REV. 909, 934, 948 (2007); Hughes, supra note 167,
at 330; Margaret Jane Radin, Property and Personhood, 34 S
TAN. L. REV. 957, 972 (1982).
Notably, the trend toward licensing, leasing, and other business models that do not provide
individuals with full ownership of products they use undermines their ability to develop their
personality in this manner. See generally A
ARON PERZANOWKSI & JASON SCHULTZ, THE END
OF
OWNERSHIP: PERSONAL PROPERTY IN THE DIGITAL ECONOMY (2016). The authors are
indebted to Jessica Silbey for this insight.
176. See, e.g., Becker, supra note 167; Hughes, supra note 167; Tur-Sinai, Theoretical
Framework, supra note 124.
177. See, e.g., Samuelson, supra note 31, at 565 (noting the “intellectual privacy and
autonomy interest” in investigating and exploring consumer products as an essential feature
of the “freedom to tinker” which the author advocates).
178. See generally Andrew Torrance & Eric von Hippel, Protecting the Right to Innovate:
Our Innovation “Wetlands,” in T
HE NEW PRODUCTION OF USERS: CHANGING INNOVATION
2019] THE RIGHT TO REPAIR 95
time, carving out a space for a right to repair consumer products does not
seem to harm the personality interests of owners of intellectual property
rights that are embodied in such products. In fact, when the owner of the
rights is a corporation rather than a private individual, the personality interest
is largely irrelevant.
179
For all of these reasons, the personality theory can
also bolster the arguments in favor of a right to repair.
c. Social Planning Theory
Another theoretical justification for intellectual property law is the “social
planning theory.”
180
As described by Professor William Fisher, who coined
this term, this approach is rooted in the proposition that the law “can and
should be shaped so as to help foster the achievement of a just and attractive
culture.”
181
“Social justice” is another related concept that is used by
scholars who view intellectual property law as a mechanism for social
engineering.
182
Surely, there is a need to agree on a particular vision of a just
society that needs to be promoted. The concepts of distributive justice
183
and
COLLECTIVES AND INVOLVEMENT STRATEGIES 45 (Sampsa Hyysalo et al. eds., 2016) (noting
that these factors are evident in connection with user innovation).
179. For discussion, see Tur-Sinai, Theoretical Framework, supra note 124, at 285; see
also David McGowan, Copyright Nonconsequentialism, 69 M
O. L. REV. 1, 6–7 (2004) (noting
that rights-holding firms lack the individuality commonly associated with theories of personal
autonomy).
180. See Fisher, supra note 122, at 173.
181. See id. at 172 (noting that the social planning approach “is similar to utilitarianism in
its teleological orientation, but dissimilar in its willingness to deploy visions of a desirable
society richer than the conceptions of ‘social welfare’ deployed by utilitarians”); see also
Chidi Oguamanam, Beyond Theories: Intellectual Property Dynamics in the Global
Knowledge Economy, 9 W
AKE FOREST INTELL. PROP. L.J. 104, 128 (2009) (noting that the
social planning theory “has been espoused by an array of voices under different but related
conceptual alignments”); Madhavi Sunder, IP
3
, 59 STAN. L. REV. 257, 285 (2006) (discussing
intellectual property’s social effects and the conception of this law as a tool for crafting
cultural relations). See generally Grinvald, supra note 124 (analyzing Chinese trademark law
under the lens of the social planning theory).
182. See generally Steven D. Jamar & Lateef Mtima, A Social Justice Perspective on
Intellectual Property, Innovation and Entrepreneurship, in E
NTREPRENEURSHIP AND
INNOVATION IN EVOLVING ECONOMIES: THE ROLE OF LAW 78 (Megan M. Carpenter ed., 2012);
Lateef Mtima, Copyright Social Utility and Social Justice Interdependence: A Paradigm for
Intellectual Property Empowerment and Digital Entrepreneurship, 112 W.
VA. L. REV. 97
(2009).
183. See generally K
EITH AOKI, SEED WARS: CONTROVERSIES AND CASES ON PLANT
GENETIC RESOURCES AND INTELLECTUAL PROPERTY (2008); Fisher, supra note 122 (listing
distributive justice as one of the features of a just and attractive culture); Mtima, supra note
182 (discussing the use of intellectual property law as an engine for the socioeconomic
advancement of marginalized communities); Haochen Sun, Can Louis Vuitton Dance with
HiPhone?: Rethinking the Idea of Social Justice in Intellectual Property Law, 15 U.
PA. J.L.
& SOC. CHANGE 389 (2012); see also ROBERT P. MERGES, JUSTIFYING INTELLECTUAL
PROPERTY 102–36 (2011) (demonstrating how intellectual property law embodies distributive
justice considerations); Sunder, supra note 181, at 264 (integrating concerns for distributive
justice as part of his “cultural analysis of intellectual property” theory).
96 FORDHAM LAW REVIEW [Vol. 88
a need to balance between competing stakeholders are often raised in this
context.
184
It is easy to understand how a right to repair could be justified from the
perspective of social planning theory. Such a right could advance the
position of individual consumers vis-à-vis original manufacturers of
consumer goods. The more competitive the repair market, the easier it would
be for consumers to obtain inexpensive and accessible repairs. In some cases,
this may result in a consumer’s decision to keep a repaired product rather
than throw it away and buy a new one. Keeping their products functioning
longer may be economically significant for consumers; technologically
complex products are generally more expensive to replace. For example,
fixing a smartphone may cost around $200, whereas buying a new
smartphone may cost upwards of $550.
185
Thus, by recognizing the
legitimate interests of consumers in accessing a well-functioning repair
market for their products, a right to repair could advance greater
socioeconomic equality. At the same time, enabling the owners of
independent repair shops to keep their jobs is also a step towards a more just
society. Beyond the economic savings, a legal regime that enables and
encourages independent repairs is likely to increase consumers’ sense of
autonomy while decreasing their dependency on original manufacturers.
Finally, a culture that encourages repairs of broken products is certainly more
attractive than one where people are tempted to throw away their products
and replace them, particularly in light of the current environmental concerns.
C. Summary
The foregoing analysis has demonstrated that a right to repair is supported
both by external considerations and internal justifications underpinning
intellectual property law. In essence, the right to repair could be conceived
as necessary to enable intellectual property law to achieve its prescribed
goals.
Notably, many of the justifications raised by advocates of the right to
repair legislation (and presented originally as external justifications) can be
integrated within, and presented as components of, the internal justifications
184. See, e.g., Neil Weinstock Netanel, Copyright and a Democratic Civil Society, 106
Y
ALE L.J. 283, 378–81 (1996) (recommending certain reforms in copyright law, including
employment of compulsory licensing systems more often, to balance the interests of artists
and consumers in their works); Oguamanam, supra note 181, at 129 (“The social planning
school of thought aspires towards a regime of intellectual property rights that advances a
balanced cultural and a balanced competing stakeholders’ vision of intellectual property.”).
185. See Tuan Do, The Real Production Costs of Smartphones, T
ECHWALLS (Mar. 10,
2019), https://www.techwalls.com/production-costs-of-smartphones/ [https://perma.cc/
HZ64-92F3]; Brant Ranj, This Is the Cheapest Place to Repair a Cracked Screen for Older
iPhones—and It Isn’t the Apple Store, B
US. INSIDER (Sept. 20, 2018, 9:41 AM),
https://www.businessinsider.com/amazon-home-services-repair-cracked-iphone-screen-for-
cheap-2018-6 [https://perma.cc/75DM-GHAH] (discussing the different prices for repairing a
cracked iPhone screen).
2019] THE RIGHT TO REPAIR 97
as well. The discussion above has illustrated, for example, that enabling
repairs of protected products in an effort to minimize waste could be viewed
as a vital component of an intellectual property regime that is designed to
promote “Progress.”
186
In addition, for similar reasons, repairs are a
necessary exception to the scope of intellectual property protection under the
labor theory.
187
As another example, considerations related to consumer
autonomy and the need to respect consumers’ property rights are integral to
the analysis under the personality theory.
188
Tying these seemingly external justifications with the fundamental notions
underlying intellectual property law highlights the importance of
acknowledging, and carving out a space for, a right to repair within
intellectual property law. However, as justified as a right to repair may be,
it is important to ensure that its implementation would not weaken
intellectual property protection to a suboptimal level.
Taking control of the repair business out of the hands of manufacturers
will undoubtedly affect their profits. For the most part, this should not
undercut the ability of intellectual property systems to achieve their
prescribed policy goals.
189
Yet, adequate balancing between the
considerations at stake is more nuanced and context dependent. For instance,
one relevant consideration that may impact the proper balancing is whether
any duty is imposed on the manufacturers (i.e., a duty not to interfere with a
right to repair or an even more active duty) or we are merely dealing with a
consumer’s privilege. This and other considerations will guide us in Part III
where we take a close look at intellectual property law and analyze the extent
to which it is compatible with a right to repair. Such an exploration is
necessary to ensure that once a right to repair is established, manufacturers
could not use their intellectual property rights to undercut consumers’ ability
to effectively exercise such right. While exploring the different branches of
intellectual property law, Part III identifies certain rules and doctrines that
already accommodate, to some extent, the need for a right to repair and
examine whether such rules and doctrines satisfactorily balance the
considerations at stake. In contexts where current doctrine does not
sufficiently take into account the need to enable repairs, we will evaluate the
possibility of construing or amending the law to better accommodate this
need.
III.
INTELLECTUAL PROPERTY RAMIFICATIONS FOR A RIGHT TO REPAIR
To account for the factors noted above in Part II and other relevant policy
considerations, the discussion in Part III will frame the right to repair as
186. See supra Part II.B.1.a.
187. See supra notes 165–71 and accompanying text.
188. See supra notes 177–79 and accompanying text.
189. See infra Part IV.B.
98 FORDHAM LAW REVIEW [Vol. 88
encompassing four different concentric circles.
190
The analysis will first
discuss the core aspect of a right to repair: the right of individual consumers
to engage in the activity of repairing their own products. It will then move
to outer circles. The second circle represents the ability to engage in other
activities that facilitate repairs, including diffusion of repair information and
advertising repair businesses. The next circle contains the freedom to
manufacture, import, sell, and use replacement parts. The final outer circle
encompasses the right to mandate original manufacturers to disclose repair
information and supply replacement parts.
This Article’s proposals regarding the narrower circles may be perceived
as more modest and be more politically feasible than the ones portrayed in
the outer circles. Thus, holding the discussion in such a modular manner
accommodates the possibility that some readers might support the arguments
made in connection to inner circles, even if they are not persuaded by this
Article’s recommendations with respect to outer ones.
Figure 1
190. While we find this division into four different layers useful in illuminating certain
common characteristics of different activities taken in the context of repair, this Article’s
recommendations are not dependent on it.
Mandating Disclosure & Supply
Replacement Parts
Diffusing Information
& Repair Shops
Repair by
Individuals
2019] THE RIGHT TO REPAIR 99
A. Repair by Individual Consumers
At the very core of the right to repair is a right of individual consumers to
engage in repair activities. In this context, all the justifications underlying a
right to repair are directly applicable, including the need to preserve
consumer autonomy and the potential contribution of independent repair
activity to “Progress” in the different manners explored above. At the same
time, enabling repair by consumers does not require the original
manufacturers to do much. In this sense, it might be tempting to characterize
the nature of consumers’ legal entitlement to repair as a “privilege,” in the
Hohfeldian sense of the term, rather than a right.
191
Yet, the term “right”
seems to be more accurate, even with respect to this core layer. For the
consumers’ entitlement to repair to be meaningful, it must be correlated with
a duty of the original manufacturers to not interfere with the exercise of the
right (for instance, by way of enforcing intellectual property rights against
individual consumers who repair their own products).
192
Within this core layer, manufacturers are under no duty to take any
affirmative actions to facilitate repairs. This, coupled with the importance of
enabling the core activities, makes balancing manufacturers’ interests and
consumers’ interests in this context clearly in favor of repair. Furthermore,
enabling repairs does not negatively impact the primary market for any
protected invention embodied in the product, which was already sold once,
presumably by or under the authorization of the manufacturer. Thus,
measures to secure this layer of the right to repair can be implemented
without fear of reducing intellectual property incentives to a suboptimal
level.
193
The proposed model legislation does not deal with this core layer of the
right to repair at all, although it should not be taken for granted. As the
following analysis demonstrates, repairing a product may implicate patent
and copyright law issues.
194
While it is unclear to what extent manufacturers
191. See Wesley Newcomb Hohfeld, Fundamental Legal Conceptions as Applied in
Judicial Reasoning, 26
YALE L.J. 710 (1917); Wesley Newcomb Hohfeld, Some Fundamental
Legal Conceptions as Applied in Judicial Reasoning, 23 Y
ALE L.J. 16 (1913).
192. See infra Part III.A.2 (discussing copyright law and 17 U.S.C. § 1201 (2012)).
193. See infra Part IV.B.
194. Notably, neither trademark law nor trade secret law is seemingly implicated by this
layer and therefore not addressed in this section. Trademark law requires that the original
trademark be “used in commerce.” 15 U.S.C. § 1127 (2012). Where the owner of the product
makes the repairs herself, courts have held that there has been no use in commerce and,
therefore, trademark law is not brought into question. Karl Storz Endoscopy-Am., Inc. v.
Surgical Techs., Inc., 285 F.3d 848, 856 (9th Cir. 2002) (“We do, however, recognize the right
of property owners to repair or alter trademarked goods without implicating the Lanham Act.
For example, if the owner chooses to buy aftermarket spare parts and do the repairs himself,
there is no sale of a trademarked good in commerce, and hence no trademark infringement.”).
Similarly, trade secret law is not implicated in this scenario—assuming that the owner of a
product is utilizing information and know-how that is publicly available or she is able to obtain
herself through reverse-engineering. See 18 U.S.C. § 1839(3) (2012).
100 FORDHAM LAW REVIEW [Vol. 88
would take action against individual consumers, the fact that consumers are
exposed to potential legal liability is still problematic.
195
Therefore, there is
a need to examine how intellectual property law may stymie consumer
freedom and how courts or legislation could resolve this issue.
1. Repairing Patented Products
a. Exhaustion and the Repair-Reconstruction Dichotomy
Under § 271 of the Patent Act, “whoever without authority makes, uses,
offers to sell, or sells any patented invention . . . during the term of the patent
therefor, infringes the patent.”
196
Repairing a patented product entails a use
of the invention and, therefore, counts as patent infringement unless
otherwise permitted.
197
Fortunately, patent law recognizes a right to repair to a considerable
extent.
198
Under the doctrine of patent exhaustion, an authorized sale of a
patented item exhausts the patentee’s rights with respect to that item and
leaves the purchaser and subsequent owners free to use or resell it without
fear of an infringement lawsuit.
199
As part of the “use” of the product, its
owner can repair it, if necessary. Yet, courts have drawn a distinction
between repair and reconstruction. While repair is permissible, the
reconstruction of a patented product amounts to the making of a new article
and thus constitutes patent infringement.
200
Courts have struggled in
drawing the line between repair and reconstruction.
201
195. Informal demand letters are used to intimidate individuals and create a “chilling
effect.” See generally Leah Chan Grinvald, Policing the Cease-and-Desist Letter, 49 U.S.F.
L. REV. 411 (2015) (discussing how cease-and-desist letters are used to intimidate individuals
and small entities into acceding to intellectual property rights demands made by larger
entities).
196. 35 U.S.C. § 271(a) (2012).
197. This is true with respect to both a utility patent and a design patent. Id.
198. In addition to the right to repair that exists due to the exhaustion doctrine discussed
below, another possibility to shield repair activity from a patent owner’s control could be to
classify the invention’s use as private and noncommercial. But the United States, unlike other
countries, does not have a “private use” exception to patent infringement—so this is not a
realistic possibility. See Roger D. Blair & Thomas F. Cotter, An Economic Analysis of Seller
and User Liability in Intellectual Property Law, 68 U.
CIN. L. REV. 1, 3 (1999) (noting that
U.S. patent law is “inconsistent with the practice in some other countries, which exempts from
liability the private, noncommercial use of patented inventions”).
199. See, e.g., Impression Prods., Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523, 1529 (2017);
Bowman v. Monsanto Co., 569 U.S. 278, 283 (2013); Quanta Comput., Inc. v. LG Elecs., Inc.,
553 U.S. 617, 625 (2008).
200. For a leading case, see Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S.
336 (1961).
201. See Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 709 (Fed. Cir. 1992)
(“Although the rule is straightforward its implementation is less so, for it is not always clear
where the boundary lies: how much ‘repair’ is fair before the device is deemed
reconstructed.”); Mark D. Janis, A Tale of the Apocryphal Axe: Repair, Reconstruction and
the Implied License in Intellectual Property Law, 58 M
D. L. REV. 423, 425 (1999) (“The
2019] THE RIGHT TO REPAIR 101
Given the gray line between what is considered a repair versus
reconstruction, consumers’ ability to operate freely has been limited. But as
the line between repair and reconstruction is a judicially constructed one,
recognizing the strong justifications for a right to repair can lead to a shift in
the way this line is drawn. In doing so, courts could ultimately classify more
uses as permissible repairs rather than as “reconstruction,” which would
provide consumers more freedom in repairing their products.
b. Post-Sale Contractual Restrictions
But what if the patent owner prohibits independent repairs as part of the
sale or license agreement with the consumer? The Samsung Galaxy
smartphone’s terms and conditions contain an example of a contract
provision that could be construed as prohibiting repairs: “[a]ny changes or
modifications to your mobile device not expressly approved by Samsung
could void your warranty for this equipment and void your authority to
operate this equipment.”
202
Similarly, farm equipment sold by John Deere
is accompanied by a license agreement that prevents consumers from
accessing the software embedded in the equipment and prohibits any repairs
other than those made by an authorized repair provider.
203
For many years, the Federal Circuit treated exhaustion as a default rule that
may be contracted around, which enabled patent owners to enforce post-sale
restrictions through patent infringement lawsuits.
204
However, the Supreme
Court held in its recent landmark decision Impression Products, Inc. v.
Lexmark International, Inc.
205
that an authorized sale of a patented item
exhausts all patent rights with respect to that item, regardless of any
restrictions on use that the patentee purports to impose.
206
In other words,
violations of such restrictions no longer have remedies in patent law.
207
Nevertheless, the Court in Impression Products did not rule out the
possibility that the patent owner could enforce post-sale restrictions
(including non-repair clauses) under contract law in state court.
208
An action
for a breach of contract is surely not as effective or as rewarding as a patent
repair-reconstruction dichotomy has baffled and annoyed courts for decades, often driving
courts to employ ‘loose language.’”).
202. Terms & Conditions/Health & Safety Information, supra note 94.
203. See Jason Bloomberg, John Deere’s Digital Transformation Runs Afoul of Right-to-
Repair Movement, F
ORBES (Apr. 30, 2019), https://www.forbes.com/sites/jasonbloomberg/
2017/04/30/john-deeres-digital-transformation-runs-afoul-of-right-to-repair-movement/
[https://perma.cc/2Q93-AUQQ].
204. See Mallinckrodt, 976 F.2d at 701 (“Use in violation of a valid restriction may be
remedied under the patent law, provided that no other law prevents enforcement of the
patent.”).
205. 137 S. Ct. 1523 (2017).
206. Id. at 1532–33.
207. See Rinehart, supra note 119, at 486.
208. See Impression Prods., 137 S. Ct. at 1335.
102 FORDHAM LAW REVIEW [Vol. 88
infringement lawsuit.
209
Still, the possibility of being sued may deter
consumers and repair businesses from exercising their right to repair. Thus,
it is important to find ways to decrease this concern.
210
One possible way to deal with this is to look to certain contract law
doctrines to strike down post-sale restrictions on repair, particularly when the
contract at hand is a standard form contract, involving parties of unequal
bargaining power, rather than an agreement between commercial parties
dealing at arm’s length.
211
Among such doctrines, the public policy
exception to contract enforcement or the unconscionability doctrine may
prove particularly relevant.
212
The downside to simply relying on these
doctrines is that there is a great uncertainty involved in their application,
which leaves consumers exposed to potential liability. Moreover, in order to
invalidate a contract, a consumer would need to be prepared to dispute the
terms.
213
209. To begin with, the contractual route cannot be used against entities with which the
patent owner does not have privity of contract. See, e.g., Robert P. Merges, The End of
Friction?: Property Rights and Contract in the “Newtonian” World of On-Line Commerce,
12 B
ERKLEY TECH. L.J. 115, 119 (1997) (“Parties must be in privity with each other for a
contract to be formed.”). In addition, the remedies for a breach of contract are generally not
as broad as the remedies for patent infringement. See, e.g., Omri Ben-Shahar, Contract Versus
Property Damages, 12 A
CADEMIA SINICA L.J. 1, 7–8 (2013) (“In patent law, the shift from
contract to infringement remedies could also increase the magnitude of damages.”). Even
after the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388
(2006), which made it more difficult for patent plaintiffs to obtain injunctions, injunction is
still a common remedy in patent infringement lawsuits. See, e.g., Megan M. La Belle, Against
Settlement of (Some) Patent Cases, 67
VAND. L. REV. 375, 402 (2014) (“[E]ven after eBay,
permanent injunctions remain the norm in patent cases when there is a finding of
infringement.”). In contrast, under contract law, specific performance is deemed an
extraordinary remedy, awarded at the court’s discretion. See, e.g., Alan Schwartz, The Case
for Specific Performance, 89 Y
ALE L.J. 271, 272 (1979). The shift from infringement
remedies to contract remedies could also decrease the magnitude of monetary damages
available to the plaintiff. See Ben-Shahar, supra, at 7–8. Among other things, while contract
monetary remedies are limited to expectation damages, in a patent infringement suit, the court
may award punitive damages and recovery of attorney’s fees as well. See 35 U.S.C. §§ 284–
285 (2012); see also Ben-Shahar, supra, at 8 (noting, in addition, the longer statute of
limitations available under patent law).
210. A threat of litigation through cease-and-desist letters would likely be enough to deter
any individual consumer. See generally Grinvald, supra note 195.
211. For an example of such a uniform contract, see supra note 202 and accompanying
text.
212. For relevant discussion, see Daniel Laster, The Secret Is Out: Patent Law Preempts
Mass Market License Terms Barring Reverse Engineering for Interoperability Purposes, 58
B
AYLOR L. REV. 621, 693–97 (2006). In addition to these doctrines, in certain instances, rules
regarding contract formation may enable a court to avoid enforcement. Notably, the patent
misuse doctrine is irrelevant in such cases, where the enforcement of post-sale restrictions
under patent law is already barred under the exhaustion doctrine and the only question is
whether the patentee should be allowed to enforce such restrictions under contract law. See
infra note 219 and accompanying text.
213. The problem here is that many of these standard-form contracts now include
mandatory arbitration clauses, which prevent consumers from banding together in a class
action lawsuit against manufacturers for any such abusive contractual terms. See, e.g., Legal
Policies: Conditions of Use, A
MAZON, https://smile.amazon.com/gp/help/customer/
2019] THE RIGHT TO REPAIR 103
It may be more effective if states were to declare post-sale restrictions on
repair void and unenforceable. This can be done as part of the same state
legislation that deals with the right to repair. In fact, as discussed in Part I.C,
the proposed model legislation already includes a provision along these lines
that applies in a more limited context. Under section 5(b) of the proposed
legislation, “any provision in [the terms of a contract between an authorized
repair provider and an original equipment manufacturer] that purports to
waive, avoid, restrict, or limit the original equipment manufacturer’s
obligations to comply with this Act shall be void and unenforceable.”
214
The
right to repair legislation could be more widely applicable and effective if it
explicitly provides that consumers have a right to repair their products; while
section 5(b) should be expanded to provide that any restriction on the right
to repair would be void and unenforceable in any type of transfer contract.
215
c. Sales Versus Licenses
One important limitation of the use of the exhaustion doctrine as a safe
harbor for repair activities has to do with the distinction between sales and
licenses embedded in patent exhaustion jurisprudence and reaffirmed by the
Court in Impression Products. In contrast to an authorized sale of a patented
product, a mere license of same product does not trigger exhaustion.
216
Therefore, if a firm manages to structure its transactions with its consumers
in a manner that does not entail full transfer of ownership—for instance, by
adopting subscription-based or leasing business models—then the
exhaustion doctrine would not apply. Such a firm could continue to impose
effective limitations on the use of its products, including no-repair clauses.
217
In light of this distinction, it is likely that certain businesses would try to
hide the true economic nature of a transaction and disguise it as a mere
license when it is actually a sale. The need to ensure that intellectual property
rights would not be used to circumvent the right to repair increases the
urgency of developing tests that enable courts to distinguish between de facto
sales and other transactions that are authentically not sales.
To be sure, even if a transaction is not classified as a sale and no exhaustion
is triggered, the ability to enforce post-sale restrictions on repair via patent
law is not guaranteed. As noted above, such restrictions could be invalid as
display.html?ie=UTF8&nodeId=508088&ref_=footer_cou [https://perma.cc/L4N7-U7FE]
(last updated May 21, 2018) (specifying arbitration, except for small claims actions).
214. See Model State Right-to-Repair Law, supra note 21.
215. The term “void and unenforceable” is important because it allows for consumers to
disregard any such terms without having to cause any contract terms that fall into this category
to be voided.
216. Impression Prods., Inc. v. Lexmark Int’l, Inc., 137 S. Ct. 1523, 1534 (2017).
217. See Aaron Perzanowski, Lexmark and the Future of Sales, E
ND OWNERSHIP (June 1,
2017), http://www.theendofownership.com/blog/2017/6/1/thoughts-on-impression-products-
v-lexmark [https://perma.cc/KZU6-2U4Q] (“Another potential concern is that companies
like Lexmark will stop selling products altogether and move to lease, rental, or
subscription models that don’t entail transfers of ownership to consumers.”).
104 FORDHAM LAW REVIEW [Vol. 88
far as contract law is concerned.
218
Moreover, in light of the strong policy
considerations favoring repair, courts should consider such restrictions to be
patent misuse.
219
To the extent post-sale restrictions constitute patent
misuse, a patentee who imposes such restrictions cannot enforce their
patent.
220
Thus, this doctrine may serve as a tool to preserve a right to repair
in the face of non-repair clauses, even for users that are not protected by
exhaustion. Finally, certain contractual restrictions that seek to inhibit
competition in repair markets may run afoul of federal antitrust laws as
unlawful agreements in restraint of trade.
221
2. Copyright Implications of Repair
Copyright law already recognizes, to a limited extent, the notion of a right
to repair at this core layer. Section 117(c) of the Copyright Act provides an
exemption to owners or lessees of computers that allows them to make copies
of software in order to maintain or repair the machine without infringing
upon the copyright of the software.
222
Unfortunately, though, there is another layer in the Copyright Act that is
incompatible with a right to repair. Section 1201 of the DMCA prevents
anyone from disabling a technological protection measure that a copyright
owner has placed on a work in order to protect its copyrighted software (a
“digital lock”).
223
In practice, almost any type of consumer technological
product includes software, which in turn, likely includes such a digital
lock.
224
Consumers cannot disable the digital lock without being liable under
§ 1201, even if the purpose for such hack was to diagnose, maintain, or repair
the product. If the disabling is done willfully and for commercial gain, the
circumventer may be criminally liable.
225
218. See supra notes 211–15 and accompanying text.
219. Patent misuse can be raised as a defense in patent litigation when the patentee takes
unfair advantage of its patent rights. See, e.g., Gaia Bernstein, The Rise of the End User in
Patent Litigation, 55 B.C.
L. REV. 1443, 1467 (2014).
220. See, e.g., Mark A. Lemley, The Economic Irrationality of the Patent Misuse Doctrine,
78 C
ALIF. L. REV. 1599, 1613 (1990) (“If a patentee has misused his patent, the courts will
neither enjoin an infringement of that patent nor award damages to the patentee.”).
221. See 15 U.S.C. § 1 (2012) (“Every contract . . . in restraint of trade or commerce . . . is
declared to be illegal.”); see also infra note 324 (discussing antitrust implications of a refusal
to sell or license replacement parts).
222. 17 U.S.C. § 117(c) (2012); see Lateef Mtima, So Dark the Con(Tu) of Man: The Quest
for a Software Derivative Work Right in Section 117, 70 U.
PITT. L. REV. 1, 23–24 (2008)
(noting that “section 117 functions as one of the chief mechanisms through which the public
interest in software programs is balanced against the copyright holders’ property rights in such
programs”).
223. 17 U.S.C. § 1201 (2012).
224. See, e.g., Kenny, supra note 2 (describing the digital lock on newer Keurig coffee
machines).
225. 17 U.S.C. § 1204.
2019] THE RIGHT TO REPAIR 105
Fortunately, § 1201 provides a safety valve in that it authorizes the U.S.
Copyright Office to adopt exemptions to these strict prohibitions.
226
These
exemptions are short-term fixes and are only valid for three years, although
they can be renewed.
227
With the exemptions announced in 2018, the repair
movement scored a victory in persuading the Copyright Office to officially
recognize repair as a reason to circumvent digital locks.
228
The 2018
exemptions, valid until 2021, allow users to access software provided that
they circumvent the digital lock to diagnose, repair, or maintain certain
devices in which the software is embedded.
229
However, the types of devices
that these exemptions cover are limited to “motorized land vehicles,”
smartphones, or “home appliance[s] or home system[s],” such as
refrigerators or thermostats.
230
The list excludes, for instance, aircraft and
boats, but includes increasingly ubiquitous voice-assisted home devices such
as Amazon’s Alexa.
231
While the 2018 exemptions are exciting news for the repair movement and
provide individual consumers with greater freedom in this core layer, a major
downside is that these exemptions are temporary. In order for the exemptions
to continue beyond three years, the Copyright Office needs to renew them.
232
On past occasions, the Copyright Office has decided not to renew much-
needed exemptions, including the “unlocking” exemption that had been
provided from 2006 to 2012 to allow consumers to connect their wireless
226. Id. § 1201.
227. Id.
228. See Mitch Stoltz, New Exemptions to DMCA Section 1201 Are Welcome, but Don’t
Go Far Enough, E
LECTRONIC FRONTIER FOUND. (Oct. 26, 2018),
https://www.eff.org/deeplinks/2018/10/new-exemptions-dmca-section-1201-are-welcome-
dont-go-far-enough [https://perma.cc/784V-NBW8].
229. 37 C.F.R. § 201.40 (2019).
230. Id. § 201.40(b)(9)–(10) (“Computer programs that are contained in and control the
functioning of a lawfully acquired smartphone or home appliance or home system, such as a
refrigerator, thermostat, HVAC or electrical system, when circumvention is a necessary step
to allow the diagnosis, maintenance or repair of such a device or system, and is not
accomplished for the purpose of gaining access to other copyrighted works”).
231. See Chaim Gartenberg, New Copyright Exemptions Let You Legally Repair Your
Phone or Jailbreak Voice Assistants, V
ERGE (Oct. 25, 2018, 3:58 PM), https://
www.theverge.com/circuitbreaker/2018/10/25/18024332/us-copyright-office-right-to-repair-
dcma-exemptions [https://perma.cc/6DQE-6HAF]; Hamza Shaban, ‘Right to Repair’
Advocates Claim Major Victory in Smartphone Copyright Exemption, W
ASH. POST (Oct. 26,
2018), https://www.washingtonpost.com/technology/2018/10/26/right-repair-advocates-
claim-major-victory-new-smartphone-copyright-exemption/ [https://perma.cc/Y6BG-E7ER].
232. 17 U.S.C. § 1201(a)(1)(D) (2012) (“The Librarian shall publish any class of
copyrighted works for which the Librarian has determined, pursuant to the rulemaking
conducted under subparagraph (C), that noninfringing uses by persons who are users of a
copyrighted work are, or are likely to be, adversely affected, and the prohibition contained in
subparagraph (A) shall not apply to such users with respect to such class of works for the
ensuing 3-year period.”); see also Frequently Asked Questions About the Section 1201
Rulemaking, C
OPYRIGHT.GOV, https://www.copyright.gov/1201/2018/faqs.html [https://
perma.cc/2HZK-9EHP] (last visited Aug. 22, 2019).
106 FORDHAM LAW REVIEW [Vol. 88
devices to an alternative network.
233
Therefore, this partial victory for the
repair movement may end up being temporary.
234
As evident by this
Article’s thesis, the authors support a renewal of this exemption or,
preferably, that Congress enacts these (or even more encompassing)
exemptions through legislation.
One other limitation of the repair exemptions is that they do not explicitly
authorize consumers to use independent repair shops to take advantage of
their ability to repair.
235
Indeed, the “anti-trafficking” provisions of § 1201
may be implicated once the broken machine is given to a repair shop, given
that these shops are likely turning to instruction manuals provided by third
parties online. Trafficking in anti-circumvention information is prohibited
and the Copyright Office is not authorized to provide an exemption in this
respect.
236
While the 2018 exemptions are not restricted, by their terms, to
individual consumers,
237
the Copyright Office clarified that “[g]iven the
legal uncertainty in this area, services electing to proceed with circumvention
activity pursuant to the exemption do so at their peril.”
238
This limitation
hampers consumers’ ability to use the exemption, as many do not have the
skill, time, or will to repair their own products. Part III.B discusses this issue
further while examining the second circle of activities comprising the right
to repair.
B. Repair Shops and the Diffusion of Repair Information
The second layer of the right to repair expands it in two different ways.
First, it expands the identity of the persons entitled to repair—this layer
encompasses not only consumers but also independent repair shops. Second,
this layer broadens the scope of permitted activities—it includes not only
repair itself but also advertising repair activities and the diffusion of repair
information through any type of medium (for example, instructional videos
on YouTube or instructional manuals on websites).
Admittedly, expanding the scope of the right to repair to include
independent repair shops is not supported by some of the policy justifications
discussed above—including the autonomy argument, the related personality
233. See Exemption to Prohibition on Circumvention of Copyright Protection Systems for
Access Control Technologies, 77 Fed. Reg. 65,260, 65,264–66 (Oct. 26, 2012) (describing the
history and subsequent narrowing of the unlocking exemption). It took an act of Congress to
overturn the denial of the exemption. See Unlocking Consumer Choice and Wireless
Competition Act, Pub. L. No. 113-144, 128 Stat. 1751 (2014) (codified as amended at 17
U.S.C. § 1201 note (2012 & Supp. V 2018)).
234. See generally Aaron Perzanowski, The Limits of Copyright Office Expertise, 33
B
ERKELEY TECH. L.J. 733, 755–56 (2018) (explaining the origins of the triennial rulemaking
process).
235. See U.S.
COPYRIGHT OFFICE, supra note 14, at 222–25.
236. See infra notes 254–57 and accompanying text.
237. In fact, the 2018 regulation attempted to stay neutral and instead deleted the term
“authorized owner” that was originally included in the previous exemptions as the entity able
to take advantage of the exemptions. See U.S.
COPYRIGHT OFFICE, supra note 14, at 225.
238. Id.
2019] THE RIGHT TO REPAIR 107
theory justification, and certain aspects associated with human flourishing
discussed under the utilitarian account.
239
However, independent repair
shops must be included in the scope of the right to repair if consumer
autonomy in their choice of vendor is to be preserved.
240
It is likely that most
consumers would rather have their products fixed by professionals.
Therefore, to promote the policy goals supporting a right to repair,
independent repair shops must be allowed to conduct their business. In
addition, enabling activity by independent repair shops has unique social
benefits—most importantly, repair shops boost the economic vitality of the
U.S. economy. According to some estimates, “repair jobs represent three
percent of overall employment” in the country.
241
Once the right to repair is expanded to include consumers and repair shops,
they should also be enabled to advertise their services and share repair
information—as advertising and information sharing are essential to
exercising the right to repair in a meaningful manner. Permitting these
activities is not likely to have a significant detrimental effect on incentives to
innovate as these activities do not cut into the primary market for any
protected intellectual creations embodied in the product. In addition, similar
to the core layer of repair activities, no active duty is imposed on the original
manufacturers in this context. Therefore, ensuring that intellectual property
rights do not interfere with these activities is justified. Interestingly, once
again, the proposed model state legislation does not address these activities,
despite the fact that, as with the core circle, intellectual property law—
particularly copyright law and trademark law—could impose a roadblock to
the full exercise of a right to repair in this domain.
1. Activity of Independent Repair Shops
Independent repair shops undertake a number of activities that make them
vulnerable to intellectual property liability, beyond actual repair.
242
First, in
advertising their services, many independent repair shops use the
manufacturers’ trademarks. For example, many independent repair shops
use the lowercase “i” to designate that they fix iPhones or other Apple
products. Others, like iPad Rehab, use the trademark in the name of the
business.
243
Another advertising method is to use trademarks in business
descriptions. If repair shops cannot use a brand’s trademark in advertising,
239. See supra note 182 and accompanying text.
240. If the only choice a consumer has is to have their product repaired by an authorized
repair vendor, then their ability to make a fully free choice has been taken away by the
manufacturers.
241. Wiens, supra note 5.
242. With respect to the repair itself, the discussion in Part III.A does not change much
once we expand the privilege to repair patented products from the consumers themselves to
repair shops.
243. See Koebler, supra note 9.
108 FORDHAM LAW REVIEW [Vol. 88
how would consumers know that they could bring their branded products to
the independent repair shop?
If trademark law could be used to prevent this form of commercial speech,
competition for repair services would be slim to none. Fortunately,
trademark law already recognizes the need to carve out a space where
trademarks are used by third parties to advertise, in order to combat
potentially anticompetitive behavior by trademark owners.
244
Courts have
developed the doctrine of “nominative fair use,” under which third parties
are able to utilize trademarks to the extent necessary to communicate
information regarding their businesses to consumers.
245
In R. G. Smith v.
Chanel, Inc.,
246
the Ninth Circuit case that originated this doctrine of
nominative fair use, the defendant was found to have made noninfringing use
of Chanel’s No. 5 mark.
247
The defendant permissibly used the mark
“Chanel No. 5” for a competitive need—to compare its product to that of
Chanel’s.
248
This nominative fair use doctrine has gained acceptance, and
courts have held that using original manufacturers’ word marks in similar
contexts—including by repair shops and parts resellers—is noninfringing.
249
The problem remains, though, when manufacturers still attempt to enforce
their trademarks in these situations.
250
Independent repair shops, particularly
small businesses or sole proprietorships, are likely to be similarly situated to
consumers in terms of resources to fight back. Additionally, independent
244. See, e.g., Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1176–77 (9th
Cir. 2010) (“Prohibition of such truthful and non-misleading speech does not advance the
Lanham Act’s purpose of protecting consumers and preventing unfair competition; in fact, it
undermines that rationale by frustrating honest communication between the Tabaris and their
customers.”).
245. See Alexandra J. Roberts, Trademark Failure to Function, 104 I
OWA L. REV. 1977,
1997 (2019) (describing the nominative fair use defense).
246. 402 F.2d 562 (9th Cir. 1968).
247. Id. at 563.
248. Id. at 568. (“As we have noted, the most effective way (and in some cases the only
practical way) in which others may compete in satisfying the demand for the product is to
produce it and tell the public they have done so, and if they could be barred from this effort
appellees would have found a way to acquire a practical monopoly in the unpatented product
to which they are not legally entitled.”). As an additional layer, Smith had only used the
“word” mark of the Chanel trademark and not the stylized mark, which a later Ninth Circuit
opinion would hold is valuable in the analysis as to whether the defendant is only using as
much of plaintiff’s mark as is necessary. See New Kids on the Block v. News Am. Publ’g,
Inc., 971 F.2d 302, 308 (9th Cir. 1992) (“Both The Star and USA Today reference the New
Kids only to the extent necessary to identify them as the subject of the polls; they do not use
the New Kids’ distinctive logo or anything else that isn’t needed to make the announcements
intelligible to readers.”).
249. See, e.g., Toyota Motor Sales, 610 F.3d at 1176–77 (holding that Toyota is not entitled
to a wholesale injunction against a broker of genuine Lexus cars).
250. See Susan Frohling, OEM Trademarks in the Aftermarket: Exploring the Boundaries,
IPWATCHDOG (Sept. 19, 2018), https://www.ipwatchdog.com/2018/09/19/oem-
trademarks-aftermarket-exploring-boundaries/id=101163/ [https://perma.cc/6QPA-M5ZW]
(discussing such cases where manufacturers attempted to enforce their trademarks). In
addition, there is a split among the circuits as to how the nominative fair use is utilized and
whether some level of confusion is still allowed. See M
CCARTHY, supra note 61, § 23:11.
2019] THE RIGHT TO REPAIR 109
repair shop owners would not always know that these types of claims are not
grounded in current trademark law. Therefore, there is still a need for some
type of legal clarity regarding the scope of trademark rights and the
consequences for unfounded claims of infringement. Some relief might
come in the form of a state law providing a cause of action to address
“abusive threats” made by manufacturers.
251
Notably, where repair shops and resellers use the original manufacturer’s
logo (or “stylized” mark), courts more readily find trademark
infringement.
252
In today’s image-heavy world, an independent repair shop’s
use of a manufacturer’s logo is likely essential for it to compete with
authorized repair shops.
253
Regardless, this issue is left aside for another day
given that the use of the word marks is allowed, and it is questionable whether
the sole use of logos is essential to effectively competing in the repair market.
2. Diffusion of Information
Another activity that repair shops and proponents of a right to repair
undertake is the diffusion of information on how to repair, including how to
disable security locks and reset them. Unfortunately, § 1201 of the DMCA
acts as a roadblock in this context. Sections 1201(a)(2) and 1201(b) (the
“anti-trafficking” provisions) prohibit the distribution of information about
the ways to disable a digital lock.
254
This prevents repair shops from posting
content online and distributing information related to disabling digital locks.
In addition, distributors are exposed to criminal liability if they distribute the
information willfully and for commercial gain.
255
In its announcement of the
§ 1201 exemptions, the Copyright Office was explicit that it was not
authorized to provide any exemptions from § 1201(a)(2) or § 1201(b).
256
This means that even to the extent consumers or independent repair shops are
permitted to undertake repairs, they are often not allowed to share
information on how to do so.
257
251. See Grinvald, supra note 195, at 449.
252. See, e.g., Hypertherm, Inc. v. Precision Prods., Inc., 832 F.2d 697, 701 (1st Cir. 1987)
(upholding an injunction in part on the defendant’s use of plaintiff’s trade dress).
253. Another issue is whether a repair shop or other e-recycler can utilize the trademark on
the repaired product. For the most part, trademark law recognizes the right to use the original
trademark in these instances, up until the point where the product is so extensively
reconditioned that it is materially different from the original product. See, e.g., Nitro Leisure
Prods., L.L.C. v. Acushnet Co., 341 F.3d 1356, 1360–64, 1367 (Fed. Cir. 2003) (explaining
the “material difference” test).
254. 17 U.S.C. § 1201(a)(2), (b) (2012).
255. See id. § 1204.
256. U.S.
COPYRIGHT OFFICE, supra note 14, at 5 (“The anti-trafficking provisions provide
vital protections to copyright owners, and Congress did not authorize the Librarian to grant
exemptions from them.”).
257. Wiens, supra note 5.
110 FORDHAM LAW REVIEW [Vol. 88
The Copyright Office recognizes this significant concern.
258
But Congress
is the only body of government that could revise the law to provide for an
exemption from the DMCA anti-trafficking provisions that would cover the
activity of independent repair shops even if they use online manuals.
259
Such
legislation has been introduced in the past, and the repair movement’s goal
is to create momentum to enact it in the future.
260
This Article’s thesis
supports this direction.
Notably, § 107 of the Copyright Act (the “fair use” provision) recognizes
that there are certain uses of copyrighted works that should be considered
noninfringing.
261
The diffusion of information regarding repairs, even if it
incorporates copyrighted material (for example, software code) may
constitute fair use—provided that it does not relate to the disabling of a digital
lock. The fair use provision may assist companies like iFixit, that routinely
create their own instructional videos showing how to fix the hardware of
electronic products, to continue making such videos available to the
public.
262
The problem for smaller independent repair shops or individuals
that may wish to act similarly is that relying on fair use provides cold comfort
as manufacturers can still claim that the distribution of copyrighted materials
does not qualify as fair use. This concern is heightened by the uncertainty
involved in fair use determinations.
263
As mentioned above, these claims
typically come in the form of cease-and-desist letters.
264
If repair shops or
individuals receiving such a letter decide neither to cease nor desist, they
open themselves up to expensive and lengthy litigation. Therefore, unless
258. U.S. COPYRIGHT OFFICE, supra note 14, at 5 (“In this proceeding, proponents of the
vehicle repair exemption again request provision for third-party assistance, arguing that
limiting the exemption to individual owners threatens to render it effectively meaningless for
those who lack the technical knowledge to access and manipulate increasingly complex
embedded computer systems. The Acting Register is sympathetic to these concerns and has
attempted to draft the exemption language in a manner that accommodates such assistance to
the extent it does not implicate the anti-trafficking provisions.”). In addition, the Acting
Register recommended removing the current exemption language requiring that
circumvention be “undertaken by the authorized owner.” Id. at 224. While the statutory
language is far from clear, and the courts have yet to address this issue, there is at least a
plausible argument that some forms of third-party assistance involving circumvention will not
rise to the level of a prohibited “service” in all instances.
259. See id. at 5 (“The Office continues to believe that legislation permitting third-party
assistance in appropriate circumstances would benefit stakeholders and provide valuable
clarity to the overall statutory scheme.”).
260. Wiens, supra note 5. The Act did not make it out of subcommittee. See Unlocking
Technology Act of 2015, H.R. 1587, 114th Cong. (2015).
261. 17 U.S.C. § 107 (2012); see also More Information on Fair Use, U.S.
COPYRIGHT
OFF., https://www.copyright.gov/fair-use/more-info.html [https://perma.cc/7NE5-BU9R]
(last visited Aug. 22, 2019).
262. See Repair Guides,
IFIXIT, http://www.ifixit.com/guide [https://perma.cc/ZNG2-
ABS4] (last visited Aug. 22, 2019).
263. See, e.g., Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions,
1978–2005, 156 U.
PA. L. REV. 549, 575 (2008) (reporting that 30.4 percent of preliminary
injunction decisions and 24.1 percent of bench trial opinions found in favor of fair use).
264. See supra note 11 and accompanying text.
2019] THE RIGHT TO REPAIR 111
action is taken at the federal level to provide a safe harbor from liability for
diffusion of repair-related information,
265
it is likely that the diffusion of such
information will be limited and only undertaken by those who are less
adverse to litigation.
266
C. Enabling Competition in the Market for Replacement Parts
The third circle necessary for an effective right to repair regime is a right
to make, import, sell, and use replacement parts in competition with the
original equipment manufacturer. Repairing a product often entails the need
to replace certain parts or components. Thus, consumers and independent
repair shops must have access to replacement parts. Yet, without competition
in the market for replacement parts, consumers and repair shop owners are
entirely dependent on the supply of parts by the original manufacturer.
267
If
no such parts are available in the market, consumers have no choice but to
have their products repaired by the original manufacturer or its authorized
agents.
268
Even if the original manufacturer supplies replacement parts in
the market, monopolistic pricing of such parts on its behalf may result in
consumers avoiding repairs altogether or using different replacement parts,
if available. In the latter case, the desire to avoid paying the high costs of
original parts may result in a lower-quality repaired product. Altogether,
then, a right to repair can only be implemented effectively if original
manufacturers do not control the markets for replacement parts. As further
discussed below, opening the market for repair parts to competition is not
likely to deprive original manufacturers of legitimate profits that are
necessary to incentivize them to develop new products. Notably, with respect
to this circle of activities as well, manufacturers are under no duty to perform
any affirmative action.
265. See, e.g., PERZANOWKSI & SCHULTZ, supra note 175, at 176–77; Wiens, supra note 18.
266. See, e.g., Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001). For
example, iFixit hosts user-generated how-to guides, including those related to software. See,
e.g., Aaron Cooke et al., How to Install macOS Mojave on Unsupported Macs,
IFIXIT,
https://www.ifixit.com/Guide/How+to+install+macOS+Mojave+on+Unsupported+Macs/11
5162 [https://perma.cc/79BV-Z6G6] (last visited Aug. 22, 2019).
267. For example, the car repair shops were in this situation prior to the 2014 nationwide
memorandum of understanding. See Kyle Wiens, You Gotta Fight for Your Right to Repair
Your Car, A
TLANTIC (Feb. 13, 2014), https://www.theatlantic.com/technology/archive/
2014/02/you-gotta-fight-for-your-right-to-repair-your-car/283791/ [https://perma.cc/K52R-
WTV4].
268. Interestingly, the growing availability of 3D printing technology may alleviate this
concern to an extent: 3D printing of replacement parts by individuals may be hard to detect
and not worth pursuing, thus avoiding effective enforcement by intellectual property owners.
For discussion of 3D printing and intellectual property, see generally Deven R. Desai &
Gerard N. Magliocca, Patents, Meet Napster: 3D Printing and the Digitization of Things, 102
G
EO. L.J. 1691 (2014); Timothy R. Holbrook & Lucas S. Osborn, Digital Patent Infringement
in an Era of 3D Printing, 48 U.C.
DAVIS L. REV. 1319 (2015); Mark A. Lemley, IP in a World
Without Scarcity, 90 N.Y.U.
L. REV. 460 (2015).
112 FORDHAM LAW REVIEW [Vol. 88
Interestingly, this aspect as well is not addressed in the model legislation,
which focuses on the duty of the original equipment manufacturer to make
parts available on fair and reasonable terms. Yet, under the model legislation,
an original equipment manufacturer is under no obligation to supply a part if
such part is no longer available.
269
Thus, at its unilateral discretion, the
original manufacturer may stop supplying parts for a certain product—for
instance, when the warranty for all units sold expires and later models are
available. In such cases, the manufacturer’s duty to supply parts under the
proposed legislation would fade away. This reinforces the importance of
enabling competition in markets for replacement parts. Unfortunately,
manufacturers often resort to patent law or trademark law to forestall
competitors from producing and selling competitive replacement parts. Both
areas of law are addressed below.
270
1. Patented Replacement Parts
Courts dealing with the patent exhaustion doctrine have clarified that
repair may entail the replacement of spent elements and, yet, still be
permissible.
271
However, a challenge arises when the replacement part itself
is protected by a utility or design patent. Even though the sale of the product
exhausts the rights of the patentee with respect to every patented part
embedded in the product,
272
exhaustion does not permit the purchaser to
make additional copies of patented items.
273
Thus, when parts are protected
269. See Model State Right-to-Repair Law, supra note 21, § 3(a).
270. While copyright law could also be implicated by attempting to provide a space for
competitive replacement parts, the concerns are more theoretical in nature and have not been
raised in actual arguments.
271. In Aro Manufacturing Co. v. Convertible Top Replacement Co., the defendant
replaced the worn-out fabric of the patentable convertible top on his car and the Supreme
Court classified it as a permissible repair. 365 U.S. 336, 345–46 (1961); see Sarnoff, supra
note 30, at 3 (“The consumer repair right [under the patent exhaustion doctrine] is very broad.
It includes restoring or rebuilding damaged original parts, as well as substituting new
replacement parts.”).
272. While the exhaustion doctrine has been developed in the context of utility patents, it
is most likely applicable to the exact same extent with respect to design patents as well. 35
U.S.C. § 171(b) (2012) clarifies that “[t]he provisions of this title relating to patents for
inventions shall apply to patents for designs, except as otherwise provided.” Admittedly,
§ 171(b) refers to the provisions of the statute, whereas the doctrine of patent exhaustion is
entirely judge-made. Yet, absent case law that provides otherwise, it is likely that such a major
patent law doctrine that has been developed in cases dealing with utility patents is also
applicable in the context of design patents. Most importantly, the policy considerations that
underlie the exhaustion doctrine, including the desire to accommodate free use and alienability
of patented goods released into the stream of commerce, are equally applicable in both
contexts. For a recent case supporting this conclusion, see Automotive Body Parts Ass’n v.
Ford Global Technologies, LLC for an explanation that “[t]here is no case dividing patent law
this way—i.e., creating separate exhaustion doctrines for utility and design patents.” 293 F.
Supp. 3d 690, 706 (E.D. Mich. 2018), aff’d, 930 F.3d 1314 (Fed. Cir. 2019).
273. See, e.g., Bowman v. Monsanto Co., 569 U.S. 278, 284 (2013) (clarifying that “the
doctrine restricts the patentee’s rights only as to the ‘particular article’ sold, it leaves
untouched the patentee’s ability to prevent a buyer from making new copies of the patented
2019] THE RIGHT TO REPAIR 113
by patents and they need to be replaced in the course of repair, it is only the
patent holder who can make and supply those parts.
274
Registration of a
patent over a part of a product could, thus, be used to circumvent the
application of the exhaustion doctrine that would otherwise sanction repair
of the product.
275
Unfortunately, this is not a mere theoretical concern. In recent decades,
the U.S. Patent and Trademark Office (PTO) has increasingly granted design
patents to original equipment manufacturers for components of their
products.
276
This practice has risen since 1980, following In re Zahn,
277
in
which the Court of Customs and Patent Appeals held that even fragments of
parts of products can be protected by design patents.
278
Design patents are
not only granted—they are also successfully asserted in litigation. This
practice has attracted criticism in connection with motor vehicles, where
replacement parts (such as doors, headlights, bumpers, etc.) are often needed
to repair a car that was damaged in a collision.
279
The growth in registrations
of such partial-product exterior design patents has accelerated since 2005.
280
In response to this, a bipartisan group of lawmakers introduced the Promoting
Automotive Repair, Trade, and Sales Act of 2017 (PARTS Act) in
item” (citation omitted)); see also Julie E. Cohen & Mark A. Lemley, Patent Scope and
Innovation in the Software Industry, 89 C
ALIF. L. REV. 1, 31 (2001) (“The patentee retains the
rights to prevent anyone else, including the buyer, from making, using, or selling additional
copies of the patented item.”); Rinehart, supra note 119, at 484 n.4 (“Under current law, the
patent owner retains his right to exclude purchasers of the articles from making the patented
invention anew.”).
274. One of the arguments brought up in Automotive Body Parts Ass’n was that design
patents over components of a larger product are exhausted upon the first authorized sale of
such a product. 293 F. Supp. 3d. at 694. The court rejected this argument while refusing to
formulate a special exhaustion doctrine in design law that would be different than the one
employed in the context of utility patents. Id.
275. See Sarnoff, supra note 30, at 1–2 (“Partial-product and fragment design patents
effectively override the exhaustion doctrine . . . . They do so by prohibiting refurbishment or
new manufacture of parts that would be used to repair the overall products . . . .”).
276. See id. (noting the growing practice of granting partial-product design patents for
repair parts to original equipment manufacturers).
277. 617 F.2d 261 (C.C.P.A. 1980).
278. Id. at 268; see Sarnoff, supra note 30, at 11 (noting that the Court of Customs and
Patent Appeals “revised the common and widespread understanding that design patents were
limited to the entire appearance of entire products”).
279. See, e.g., Sarnoff, supra note 30, at 4 (noting that the practice of granting and asserting
partial product design patents “effectively overrides” the right to repair pursuant to the
exhaustion doctrine); Dennis Crouch, Design Patents and Repair Parts, P
ATENTLY-O (Mar.
22, 2010), https://patentlyo.com/patent/2010/03/design-patents-and-repair-parts.html [https://
perma.cc/RF44-ZRFK] (noting that “many automobile body parts are protected through
design patent” and “[t]his allows the original manufacturers control over the repair-parts
market as well”). Surely, design patents for small parts of larger products were registered and
asserted in other industries as well. For examples, see Sarah Burstein, Costly Designs, 77
O
HIO ST. L.J. 107, 123 n.95 (2016).
280. K
EEP AUTO PARTS AFFORDABLE, http://www.keepautopartsaffordable.org/
[https://perma.cc/6GBY-Q7S6] (last visited Aug. 22, 2019) (portraying a graph showing a
significant increase in the number of design patents on collision repair parts from 2005 to
2015).
114 FORDHAM LAW REVIEW [Vol. 88
Congress.
281
The PARTS Act would create a narrow exception from design
patent infringement for collision repair parts for cars.
282
Under the proposed
legislation, while limiting the possibility of enforcing partial-product design
patents against independent suppliers of parts or parties who use those parts
for legitimate repairs, the patent owner could still assert the patent against
competitors who incorporate the design into their own cars.
This Article supports that proposed legislation. Such an exception from
patent infringement could also be useful in connection with other types of
products, including electronics. While competition in the market for
replacement parts is considered vital in the car industry, it should be
reinforced in nonautomotive replacement parts markets too.
An alternative course of action is to avoid granting patents for repair parts
at all. This measure, which may seem more radical than an exception from
infringement liability, could actually be implemented without the need to
amend the Patent Act. Two arguments could be made under the current
statutory scheme to support the exclusion of partial-product design
patents.
283
The first argument is that designs of partial products do not
qualify as subject matter protected under the Patent Act. Pursuant to 35
U.S.C. § 171(a), patent protection can only be awarded to a “design for an
article of manufacture.”
284
Arguably, a component of a larger product, which
is never sold to be used by itself and whose only value is for restoring the
original appearance of such larger product, should not be considered an
“article of manufacture” for purposes of the Act.
285
281. S. 812, 115th Cong. (2017); H.R. 1879, 115th Cong. (2017). Similar legislation was
introduced in the 114th Congress. S. 560, 114th Cong. (2015); H.R. 1057, 114th Cong. (2015);
see also K
EEP AUTO PARTS AFFORDABLE, supra note 280.
282. The bill proposes to reduce the period during which car companies can enforce their
design patents against sellers or users of such parts from fifteen years to thirty months from
the date the car is first placed on the market. Alternative suppliers could manufacture, test,
and import such components for legitimate repairs even during such thirty-month period
without it being considered infringing. S. 812, 115th Cong. § 2 (2017); H.R. 1879, 115th
Cong. § 2 (2017).
283. See generally Sarnoff, supra note 30, at 4–5 (arguing that Congress has never
authorized such patents).
284. 35 U.S.C. § 171(a) (2012).
285. See Sarnoff, supra note 30, at 1, 5 (noting that Congress has authorized design patents
only for the overall appearance of “articles of manufacture” and not for parts of such articles,
and explaining that “[t]his is because ornamental designs for functional products are perceived
in their entirety as part of the overall functional products that they help to form”); see also
Sarah Burstein, The Patented Design, 83 T
ENN. L. REV. 161, 208 (2015) (noting that the
patented design should be conceptualized as the design as applied to a particular type of
product, while defining product as “something sold by an enterprise to its customers”). While
parts could be sold in the marketplace separately from the entire products they comprise, if
this is only done when needed to repair the larger product, such parts should not be considered
“articles of manufacture.”
2019] THE RIGHT TO REPAIR 115
The second argument could be that the design of a partial product is not
ornamental, as is required by the Act.
286
This is clearly the case when it
comes to designs for internal parts of a product, which no one buys for their
appearance.
287
Yet, this can also be true with respect to exterior parts. The
claim that partial-product designs lack ornamentality was recently made by
the Automotive Body Part Association (ABPA) in litigation against Ford.
288
The Eastern District of Michigan rejected this claim.
289
The ABPA argued
that when a car is damaged, its owner simply wants parts that would restore
the car to its original look.
290
As consumers that seek to repair their vehicles
do not select parts for their design, the design is not a “matter of concern”
and does not deserve patent protection.
291
The court rejected this argument,
noting that the “matter of concern” inquiry is not necessarily constrained to
the perspective of a vehicle owner at the time that she is buying a replacement
part—as opposed to the time she initially buys the car.
292
The ABPA also
argued that, as part of the ornamentality requirement, a design for an article
of manufacture could not be solely dictated by the function of the article; yet
designs of body parts are dictated by the need to both physically fit onto the
car and match its overall aesthetic.
293
The court rejected this argument as
well and refused to import the aesthetic-functionality doctrine from
trademark law to design law.
294
The court may have been too quick in rejecting the ABPA’s non-
ornamentality claim. A detailed analysis of the arguments made in this
litigation exceeds the scope of this Article, but two interrelated observations
are in order. First, the fact that parts are not sold as separate items in the
market other than for purposes of repair seems to be a relevant factor in the
inquiry, and the court may not have accorded it sufficient weight. Second, it
is not clear that, in interpreting the law, the court gave sufficient attention to
286. The requirement that a design would be ornamental is stated in 35 U.S.C. § 171(a):
“[w]hoever invents any new, original and ornamental design for an article of manufacture may
obtain a patent therefor, subject to the conditions and requirements of this title.”
287. See Burstein, supra note 279, at 135 (“No one buys a tractor because of the appearance
of its internal gears.”).
288. Auto. Body Parts Ass’n v. Ford Glob. Techs., LLC, 293 F. Supp. 3d 690, 699, 701
(E.D. Mich. 2018), aff’d, 930 F.3d 1314 (Fed. Cir. 2019). An alternative argument raised by
the ABPA was that the patents in question are “unenforceable . . . because the patent rights
are exhausted upon the first authorized sale of the vehicle.” Id. at 694. This argument was
rejected by the court for reasons explored above. See supra notes 272–75 and accompanying
text.
289. Auto. Body Parts Ass’n, 293 F. Supp. 3d at 699.
290. Id.
291. Id.
292. Id. at 699–701.
293. Id. at 701; cf. Registered Designs Act 1949, 12, 13 & 14 Geo. 6 c. 88 § 7 (Eng.)
(providing that the right in a registered design of a component part which may be used for the
purpose of the repair of a complex product so as to restore its original appearance is not
infringed by the use for that purpose of any design protected by the registration).
294. Auto. Body Parts Ass’n, 293 F. Supp. 3d at 702. The claim that the designs are dictated
by their need to physically fit the car was rejected on a factual basis, as there is a pool of
available designs that could fit. Id. at 703.
116 FORDHAM LAW REVIEW [Vol. 88
underlying policy considerations. In addition to the policy arguments made
above in support of competition in markets for repair parts, patent protection
for repair parts does not promote the decorative arts or provide other public
benefits. The original manufacturers have a strong incentive to develop new
designs for their products in order to induce buyers to choose them over the
alternatives at the purchase stage.
295
Moreover, once a design for a product
is disclosed to the public, so too is the design of each one of its parts.
296
Altogether, then, independent design protection for parts, on top of the
protection for the design of the entire product, “provides nothing more to the
public—it merely provides a windfall to the [product]’s manufacturer.”
297
Such protection, which results in increased prices and insurance premiums,
comes at the expense of consumers, who have already paid “patented prices”
when they purchased their original products.
298
2. Trademark Law Implications
Like their overuse of patent law, manufacturers have also overused
trademark law to protect replacement parts, which can have similarly stifling
effects on competition for such parts or for repair services. This occurs where
manufacturers obtain trademarks on parts themselves, such as grilles on the
front of vehicles.
299
Another use of trademark law to stifle competition in
the repair market is the practice of claiming that refurbished replacement
parts are counterfeits when they are actually authentic parts.
300
a. Repair Parts as Registered Trademarks
In the instances where manufacturers have obtained trademarks on parts
of products, this Article makes a simple recommendation: do not grant the
trademark.
301
In order to be registered as trademarks, product parts require
evidence that consumers view the product part as a source indicator (and not
295. See Sarnoff, supra note 30, at 20 (“[P]atent law provides its incentives to produce
improved designs, through the first sale of the entire purchased product that embodies a
partial-product or fragment design patent.”).
296. See Burstein, supra note 279, at 137 (demonstrating this with respect to a car design,
which once disclosed to the public, also discloses the design of the car’s fender).
297. See id. (noting that design patents for repair parts are undoubtedly valuable to their
owners but have low or negative social value).
298. See Sarnoff, supra note 30, at 1, 3.
299. See, e.g., The mark consists of a configuration of a vehicle grille, Registration No.
3,453,754 (Ford Motor Company registration for the design of an automobile grille); The mark
consists of a configuration of a vehicle taillight design, Registration No. 3,440,628 (Volvo Car
Corporation registration for the design of car taillights) (cancelled due to lack of renewal).
300. Koebler, supra note 56.
301. This Article is not suggesting a full exemption of car parts from trademark protection
but rather a more circumspect examination of such trademarks.
2019] THE RIGHT TO REPAIR 117
simply a car part).
302
Based on a review of PTO actions for Ford’s grille
design and Volvo’s back taillight design, trademark examiners appear to be
skeptical of claims of product parts’ distinctiveness as trademarks and their
lack of functionality.
303
As the document files of these two trademark
registrations indicate, the trademark examiners initially rejected the
applications.
304
In both instances, however, the trademarks were eventually
granted after a lengthy back-and-forth between the manufacturers and the
trademark examiners.
305
While it is unclear how often the manufacturers
enforce their registered parts trademarks against makers of compatible
products, it is clear that some are doing so.
306
If successful, manufacturers
can claim exclusivity over a replacement part for as long as the manufacturer
continues to use the part because trademark rights exist indefinitely as long
as the parts are used in commerce.
307
Further, having a registered trademark
assists the manufacturers in keeping competitive look-alike parts from
entering the country with the help of the U.S. Customs and Border Protection
(CBP) as discussed next.
b. Claiming That Parts Are Counterfeit Goods
Manufacturers use trademark law to prevent the importation of
replacement parts that contain manufacturers’ trademarks or appear similar
to the part that is registered as a trademark. In these instances, it is the
government that is enforcing the trademark on behalf of the manufacturers,
but it is no less problematic for the repair industry. For example, the CBP
routinely seizes replacement parts manufactured by LKQ Corporation, an
302. In trademark law parlance, this is called “acquired distinctiveness.” Product
configurations fall into the category of requiring proof of acquired distinctiveness. See Wal-
Mart Stores, Inc. v. Samara Bros. 529 U.S. 205, 211 (2000).
303. See The mark consists of a configuration of a vehicle grille, U.S. Trademark
Application Serial No. 78/759,403 (filed Nov. 22, 2005), Office Action Outgoing, June 1,
2006, http://tsdr.uspto.gov/documentviewer?caseId=sn78759403&docId=OOA20060601142
531#docIndex=22&page=1 [https://perma.cc/TQ34-FLTA] (denying trademark registration
because Ford’s proposed mark is not inherently distinctive); The mark consists of a
configuration of a vehicle taillight design, U.S. Trademark Application Serial No. 78/759,251
(filed Nov. 22, 2005), Office Action Outgoing, May 26, 2006,
http://tsdr.uspto.gov/documentviewer?caseId=sn78759251&docId=OOA20060526222322#d
ocIndex=18&page=1 [https://perma.cc/8SZQ-K6N9] (denying Volvo’s trademark application
because the mark appears to be functional).
304. See The mark consists of a configuration of a vehicle grille, Registration No.
3,453,754; The mark consists of a configuration of a vehicle taillight design, Registration No.
3,440,628.
305. See The mark consists of a configuration of a vehicle grille, Registration No.
3,453,754; The mark consists of a configuration of a vehicle taillight design, Registration No.
3,440,628.
306. See, e.g., Chrysler Corp. v. Vanzant, 44 F. Supp. 2d 1062, 1071–72 (C.D. Cal. 1999).
307. See B
ARTON BEEBE, TRADEMARK LAW: AN OPEN-SOURCE CASEBOOK 282 (6th ed.
2018) (“The registration may be renewed indefinitely provided that the registrant complies
with the requirements of Lanham Act §§ 8 & 9, 15 U.S.C. §§ 1058 & 1059.”).
118 FORDHAM LAW REVIEW [Vol. 88
automobile parts supplier, on the basis that the parts are “counterfeit.”
308
LKQ manufactures replacement parts that look like those of Ford, Honda,
and other car manufacturers. Some of these parts also happen to be registered
as trademarks, which provides the CBP the authority to detain the imports.
309
LKQ recently filed a lawsuit against the Department of Homeland Security
(the department that oversees the CBP), arguing that these seizures, which
negatively impact its business, were made on an incorrect application of
trademark law.
310
LKQ argued that the CBP detained shipments that were
not counterfeit even though the original manufacturers claimed that they
were.
311
Unfortunately, LKQ’s suit was eventually dismissed, in part based
on a lack of jurisdiction by the federal district court.
312
The CBP has also detained and seized refurbished replacement products
imported into the United States by independent repair shops on the grounds
that they are counterfeit.
313
However, refurbished replacement parts or
products are generally not considered counterfeit, as they are goods that have
been previously sold and then repaired to extend their utility.
314
The
Supreme Court has held that refurbished parts or products, to the extent that
they do not mislead consumers into thinking they are new and original, are
acceptable uses of another’s trademark.
315
This has not stopped the CBP from detaining such products at the border.
And even after such seizures occur, the manufacturers are seemingly not
educating the CBP that the seized products are not counterfeit.
316
In these
instances, if manufacturers were not granted registered trademarks on
product parts, the CBP would likely not seize similar-looking imported parts
(at least when they do not bear some other trademark).
317
In any event, a
practical approach to resolving this particular issue, as long as such
308. See LKQ Corp. v. U.S. Dep’t of Homeland Sec., 369 F. Supp. 3d 577, 587 (D. Del.
2019) (listing the plaintiff’s allegations).
309. See, e.g., The mark consists of a configuration of a vehicle grille, Registration No.
3,453,754; The mark consists of a configuration of a vehicle taillight design, Registration No.
3,440,628.
310. Tiffany Hu, Auto Parts Supplier Sues CBP for Seizing “Lawful” Parts, L
AW360 (Feb.
8, 2018, 3:31 PM), https://www.law360.com/articles/1010399/auto-parts-supplier-sues-cbp-
for-seizing-lawful-parts [https://perma.cc/R9JR-UDPV].
311. LKQ Corp., 369 F. Supp. 3d at 582.
312. See id. at 580 (granting the motion to dismiss based on lack of jurisdiction and failure
to state a claim).
313. See Koebler, supra note 9.
314. See Nitro Leisure Prods., L.L.C. v. Acushnet Co., 341 F.3d 1356, 1362 (Fed. Cir.
2003) (discussing the differences between new and refurbished goods: “[t]here is an
understanding on the part of consumers of used or refurbished products that such products will
be degraded or will show signs of wear and tear and will not measure up to or perform at the
same level as if new”).
315. Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 129 (1947).
316. See Koebler, supra note 9 (citing a CBP public affairs officer who related that the
normal process after an initial detention by the CBP is to check with the trademark owners to
confirm whether the goods are counterfeit); see also LKQ Corp., 369 F. Supp. 3d at 587.
317. See Leah Chan Grinvald, Resolving the IP Disconnect for Small Businesses, 95 M
ARQ.
L. REV. 1491, 1543–47 (2012).
2019] THE RIGHT TO REPAIR 119
trademarks are being registered, could perhaps be for CBP officers to demand
that manufacturers provide more concrete evidence that refurbished products
are infringing—either that they are materially different and are likely to cause
confusion or that they are counterfeit.
318
The burden should be on the
manufacturer to make a compelling case, not on the importer.
319
D. Mandating Disclosure of Repair Information and Supply of
Replacement Parts
The fourth circle deals with certain affirmative duties that should be placed
on original manufacturers in order to ensure an effective implementation of
the right to repair. This is perhaps the most controversial component of the
right to repair and is the focus of the model state legislation. Under section
3(a) of the proposed model legislation, “an original equipment manufacturer
shall make available, for purposes of diagnosis, maintenance, or repair . . .
on fair and reasonable terms, documentation, parts, and tools, inclusive of
any updates to information or embedded software.”
320
The reason that this
provision might be controversial is that it mandates affirmative action on the
part of manufacturers that could run counter to their intellectual property
rights. The question is whether the proposed legislation, even if it passes, is
sufficient without a provision for these legal measures in intellectual property
law as well. This section will examine this question—first, with respect to
replacement parts and then with respect to repair information.
1. Replacement Parts
To the extent that the measures proposed in Part III.C are not implemented
in full—i.e., repair parts are not excluded from patent or trademark protection
and there is no applicable exemption from infringement liability—there is a
risk that the supply of parts by the manufacturer would be insufficient to meet
demand and the parts that are supplied would not be offered at competitive
prices. This is where the proposal included in the model state legislation
becomes relevant. As noted above, the proposed bill would impose a duty
on original manufacturers to make parts available on fair and reasonable
terms, so long as such parts are available.
321
Notably, this proposal is drafted
broadly, without regard to whether the parts are protected by patents or
trademarks. Perhaps it could be limited to parts that are subject to patent or
318. Emails filed in the LKQ lawsuit show that some manufacturers provide little more
than conclusive statements as to the counterfeit nature of the imported products. See Marquez
Exhibit 1, LKQ Corp. v. U.S. Dep’t of Homeland Sec., 369 F. Supp. 3d 577 (D. Del. 2019)
(1:18-cv-00225-GMS), ECF No. 11-1.
319. Of course, if such a proposal were adopted, the details of this would need to be further
thought through, for example, to ensure that counterfeiters could not easily abuse this
exemption.
320. Model State Right-to-Repair Law, supra note 21, § 3(a).
321. Id. (“Nothing in this section requires an original equipment manufacturer to make
available a part if the part is no longer available to the original equipment manufacturer.”).
120 FORDHAM LAW REVIEW [Vol. 88
trademark protection, provided that in other cases independent suppliers
would have sufficient information to manufacture parts on their own.
However, mandating supply of patented parts may be in direct conflict
with the basic notions of patent law. As the Supreme Court held in
Continental Paper Bag Co. v. Eastern Paper Bag Co.,
322
excluding others is
the essence of the patent, and the patent holder is not required to license its
invention to others, even if it does not practice the invention on its own.
323
Thus, even if the duty to supply parts would be construed broadly—as
allowing the patentee to license others to make and sell parts, rather than
necessarily doing it all on its own—such duty does not align with the
privilege that the patentee has under patent law to determine the extent to
which it wishes to work its invention.
324
This direct conflict between the proposed state legislation and patent
policy may pose a difficulty in passing the legislation. Furthermore, even if
the legislation passes in some states, it could be subject a constitutional
challenge under the federal preemption doctrine.
325
However, as noted
above, California state law already requires manufacturers to provide such
parts in certain circumstances (albeit interpreted narrowly by the Ninth
Circuit to mean that such parts are required to be provided only to authorized
repair networks).
326
Another route to ensure supply of patented parts is through compulsory
licenses. However, the United States has been, for many years, a vigorous
opponent of compulsory licenses in patent law.
327
This is not likely to change
322. 210 U.S. 405 (1908).
323. Id. at 425; see also 35 U.S.C. § 271(d) (2012) (instructing the courts not to deny
infringement remedies to a patentee for a refusal “to license or use any rights to the patent”).
324. A patentee’s refusal to sell or license could nevertheless count as an antitrust violation
in certain circumstances. See, e.g., Image Tech. Servs., Inc. v. Eastman Kodak Co., 125 F.3d
1195 (9th Cir. 1997) (finding that Kodak’s refusal to sell replacement parts to independent
service organizations constitutes an illegal attempt to monopolize the market for service of
Kodak photocopiers). Most importantly, in an earlier round of the litigation, the Supreme
Court held that even though an equipment manufacturer lacked significant market power for
its equipment, it could have sufficient market power in the secondary market for repair parts
to be liable under the antitrust laws for its anticompetitive conduct in the aftermarket. See
Eastman Kodak Co. v. Image Tech. Servs., Inc., 504 U.S. 451, 465–71 (1992). In his dissent,
Justice Antonin Scalia reasoned that once customers are committed to the particular brand by
having purchased a product, they are “locked in” and no longer have any realistic alternative
to turn to for repair parts. Id. at 496 (Scalia, J., dissenting). But see generally In re Indep.
Serv. Orgs. Antitrust Litig., 203 F.3d 1322 (Fed. Cir. 2000) (rejecting the imposition of
antitrust liability on Xerox for refusing to sell patented parts and license patented and
copyrighted software to independent service organizers that compete with Xerox in the
aftermarket); Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147 (1st Cir. 1994)
(declining to impose antitrust liability on a computer manufacturer for its refusal to license its
diagnostic software to third-party maintenance providers).
325. See supra notes 107–10 and accompanying text.
326. See C
AL. CIV. CODE § 1793.03 (West 2019); Bahr v. Canon U.S.A., Inc., 656 F. App’x
276, 277 (9th Cir. 2016).
327. See Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S. 176, 215 n.21 (1980) (noting
that “[c]ompulsory licensing of patents often has been proposed, but it has never been enacted
2019] THE RIGHT TO REPAIR 121
in the near future and, thus, the prospect of implementing this measure is
rather slim. At the very least, courts should exercise their discretion under
eBay Inc. v. MercExchange, L.L.C.
328
to avoid granting injunctions in
infringement actions against alternative parts providers or users.
In contrast to patent law, trademark law requires the manufacturer to
continue using the mark in commerce if the replacement part is to remain
protected by a trademark.
329
This means that the manufacturer is required to
make the products that include the part or else the manufacturer will lose the
trademark.
330
If the manufacturer continues to produce trademarked parts,
then state legislation could be quite helpful to compel manufacturers, on
anticompetitive and consumer protection grounds, to make their parts
available to independent repair shops and consumers on a reasonable
basis.
331
2. Information
The federal and state governments mandate disclosure of information on a
routine basis, particularly where there are concerns of anticompetitive or
deceptive practices—or on the grounds of consumer protection.
For
example, securities law mandates the disclosure of certain information when
offering any type of investment to the public.
332
Another example that is
more relevant to the model right to repair legislation is the Massachusetts
Automotive Repair Law,
333
which requires all motor vehicle manufacturers
who sell cars in the state to provide the same diagnostic and repair
on a broad scale”); WILLIAM CORNISH & DAVID LLEWELYN, INTELLECTUAL PROPERTY:
PATENTS, COPYRIGHT, TRADE MARKS AND ALLIED RIGHTS 296 (6th ed. 2007) (noting the
hostility of the United States with respect to compulsory licensing); John H. Barton, Patents
and Antitrust: A Rethinking in Light of Patent Breadth and Sequential Innovation, 65
A
NTITRUST L.J. 449, 458 (1997) (noting that the idea of compulsory licensing is strongly
opposed in the United States); Howard F. Chang, Patent Scope, Antitrust Policy, and
Cumulative Innovation, 26 RAND
J. ECON. 34, 43 n.18 (1995) (noting that compulsory
licensing “remains disfavored in patent law”); Donna M. Gitter, International Conflicts over
Patenting Human DNA Sequences in the United States and the European Union: An
Argument for Compulsory Licensing and a Fair-Use Exemption, 76 N.Y.U.
L. REV. 1623,
1681 (2001) (describing the “traditional antipathy in U.S. law toward any incursions on a
patent holder’s monopoly”). Nevertheless, there are a few concrete compulsory license
arrangements in various contexts—for example with respect to the exploitation of certain
inventions in the field of atomic energy. See 42 U.S.C. § 2183 (2012).
328. 547 U.S. 388 (2006).
329. 15 U.S.C. § 1127 (2012).
330. Id.
331. Cf. M
ASS. GEN. LAWS ch. 93K (2019) (requiring car manufacturers to provide
diagnostic repair information and tools for repair to independent repair facilities).
332. For an example, see Updated Investor Bulletin: Crowdfunding for Investors, U.S.
SEC. & EXCHANGE COMMISSION (May 10, 2017), https://www.sec.gov/oiea/investor-alerts-
bulletins/ib_crowdfunding-.html [https://perma.cc/S2DX-HBM8].
333. G
EN. ch. 93K § 2.
122 FORDHAM LAW REVIEW [Vol. 88
information to owners and independent repair shops (for a reasonable
price).
334
The biggest roadblock here, in terms of intellectual property law, is trade
secret law. A trade secret is defined as information that: (1) its owner has
taken reasonable steps to keep secret, and (2) derives an actual or potential
independent economic value from being a secret.
335
Trade secret law is
unique in intellectual property law in that, until recently, trade secret
protection relied solely on state law.
336
In 2016, Congress enacted the
Defend Trade Secrets Act
337
(DTSA), but the legislation does not preempt or
displace state law.
338
This means that state-based definitions of a trade secret
(either through legislation or through judicial interpretation) can continue to
coexist with a federal definition.
339
The implications of trade secret law are directly acknowledged by the
model legislation in section 5(a), according to which: “[n]othing in this Act
shall be construed to require an original equipment manufacturer to divulge
a trade secret to an owner or an independent service provider except as
necessary to provide documentation, parts, and tools on fair and reasonable
terms.”
340
The model legislation refers to the definition of “trade secret” in
the applicable state legislation (or in its absence, to the federal definition).
The language of section 5(a) appears to treat information that is related to
diagnostics, maintenance, or repair as information that cannot be protected
as trade secrets and, therefore, can be released to independent repair shops.
If states were to adopt this language, the law could be perceived as
modifying trade secret law. It is unsurprising, then, that many of the
proposed bills do not adopt this carve-out. Instead, they state: “[n]othing in
this Act shall be construed to require an original equipment manufacturer to
divulge a trade secret” (or similar language to this effect).
341
While the lack
of a carve-out may make the proposed law more politically palatable, it does
draw into question whether manufacturers can simply claim trade secret
334. Id.
335. See U
NIF. TRADE SECRETS ACT § 1(4) (amended 1985), 14 U.L.A. 538 (2005); see also
18 U.S.C. § 1839(3) (2012).
336. Sharon K. Sandeen & Christopher B. Seaman, Toward a Federal Jurisprudence of
Trade Secret Law, 32 B
ERKELEY TECH. L.J. 829, 833 (2017) (“The May 11, 2016 enactment
of the DTSA created a federal civil cause of action for trade secret misappropriation for the
first time. For over 175 years, state law governed civil trade secret principles in the
U.S. . . . .”).
337. Pub. L. No. 114-153, 130 Stat. 376 (2016) (codified as amended in scattered sections
of 18, 28, and 34 U.S.C.).
338. See 18 U.S.C. § 1838 (Supp. 2018).
339. Sandeen & Seaman, supra note 336, at 905 (noting that on its face, the federal
definition appears to be narrower in how it defines “information”).
340. Model State Right-to-Repair Law, supra note 21, § 5(a). The Massachusetts
Automotive Repair Law also excludes from its reach that which manufacturers claim to be a
trade secret. M
ASS. GEN. LAWS ch. 93K, § 3 (2019) (“Nothing in this chapter shall be construed
to require a manufacturer to divulge a trade secret.”).
341. See, e.g., H.R. 1649, 29th Leg., Reg. Sess. § 8 (Haw. 2018); H.R. 3030, 100th Gen.
Assemb., Reg. Sess. § 35 (Ill. 2017).
2019] THE RIGHT TO REPAIR 123
protection for all pertinent repair information. This would diminish the
effectiveness of right to repair laws. While there have been no official claims
of such occurrences under motor vehicle right to repair laws, such as the
Massachusetts Automotive Repair Law, allegations of such actions and the
potential for future actions have spurred conversations around amendments
to the law in Massachusetts.
342
Thus, even if states were successful in passing any such laws in the coming
years, the absence of a carve-out for repair information as a trade secret could
enable manufacturers to evade the legislation. Surely, to be classified as a
“trade secret,” the information must meet the applicable statutory
requirements, including that the owner has taken reasonable measures to
keep the information secret.
343
When information is readily shared with
authorized dealers (and their repair personnel) all over the country, a
plausible argument could be that the owner has not taken reasonable
measures to protect the secrets.
Unfortunately, repair shops that do not have information supplied to them
due to the manufacturers’ assertion of a trade secret exemption may not have
the means to initiate litigation challenging this assertion. The straightforward
way to resolve this would be to adopt the model legislation language
regarding trade secrets or to delete the exemption for trade secrets altogether,
as was proposed in California.
344
If the language regarding trade secrets
needs to remain as-is in order for states to pass the law, states could prevent
the abuse of this loophole by imposing civil liabilities on manufacturers who
knowingly violate the law. Thus, states might impose liability for
manufacturers who falsely assert that certain information is protected as a
trade secret.
345
For example, the 2018 proposed repair law in California
would have authorized city, county, and the state government to impose
increasingly higher civil fines on a daily basis per infraction.
346
Provisions
342. H.R. 293, 191st Gen. Court, 1st Sess. (Mass. 2019) (“An Act to enhance, update and
protect the 2013 Motor Vehicle Right to Repair Law and Consumer Rights.”); Murphy, supra
note 43.
343. See U
NIF. TRADE SECRETS ACT § 1 (amended 1985), 14 U.L.A. 537 (2005).
344. Assemb. 2110, 2017–2018 Leg., Reg. Sess. (as introduced by California Assembly,
Feb. 8, 2018).
345. Both the Defend Trade Secrets Act and the Uniform Trade Secrets Act (which has
served as the basis for trade secrets legislation in many states) include remedies provisions
that are designed to impose consequences for the wrongful assertion of trade secrets. See 18
U.S.C. § 1836(b)(3)(D) (2012) (awarding reasonable attorney’s fees); U
NIF. TRADE SECRETS
ACT § 3(b) (amended 1985), 14 U.L.A. 634 (2005) (awarding damages for “willful and
malicious misappropriation”). On whether such provisions actually deter bad faith assertions
of trade secrets, see Eric Goldman, Court Benchslaps Trade Secret Plaintiff and Counsel for
Bad Faith Litigation—RBC Bearings v. Caliber, T
ECH. & MARKETING L. BLOG (Aug. 18,
2016), https://blog.ericgoldman.org/archives/2016/08/court-benchslaps-trade-secret-plaintiff-
and-counsel-for-bad-faith-litigation-rbc-bearings-v-caliber.htm [https://perma.cc/EJ5L-
YAUD].
346. Some other proposed bills also include civil penalties that range from $500 to $5000
per violation—but authorize only the state attorney general to take action. See H.R. 3030,
100th Gen. Assemb., Reg. Sess. (Ill. 2017); H.R. 2122, 2017–2018 Leg., Reg. Sess. (Kan.
124 FORDHAM LAW REVIEW [Vol. 88
like this one might increase the likelihood that manufacturers would comply
with the law.
IV.
POTENTIAL CRITICISM
Part IV addresses a few potential lines of criticism against this Article’s
proposal to stop intellectual property law from sabotaging a right to repair.
Concerns regarding the quality of repair and an increase in counterfeiting or
piracy are drawn directly from arguments made by opponents of the repair
movement. This Article also addresses a potential criticism about the
economic loss for the original manufacturers in the event of an effective right
to repair regime. While opponents are likely driven by concerns about lower
profits, opponents never directly address this argument—but this Article
attempts to do so here.
347
A. Quality of Repair
As part of their objection to the proposed right to repair legislation, original
manufacturers expressed concern that the quality of repairs would be
compromised if performed by consumers and independent repair shops.
348
Hence, a potential criticism of this Article’s thesis could be that strengthening
the right to repair in the manners recommended herein would ultimately
decrease the quality of repairs.
This concern is not substantiated because repairs under the proposed
legislation would be made in a competitive market. Consumers would likely
switch to alternative repair services, such as repair services offered by the
original manufacturer or its authorized agents, if independent repair shops
could not make quality repairs.
349
Absent any concrete market failures, the
invisible hand of the market can presumably be trusted in this context. In
fact, opening repair markets for competition could result in the development
of new repair tools and methods as well as in better diffusion of repair
information, which could very well increase quality of independent repairs.
It is likely that the more the original manufacturers support repair businesses
rather than fighting them—for example, by offering replacement parts and
repair manuals under fair and reasonable terms—the better the quality of
repairs would be.
2017). As one of us has argued in a previous article, it may be difficult to obtain assistance
from the state attorney general unless one is able to bring complaints from a large number of
repair shops in that particular state. See Grinvald, supra note 195, at 448.
347. Andy Metzger, Proposal Expands ‘Right to Repair’ Movement to Electronics in
Mass.,
TELEGRAM.COM (Sept. 27, 2017, 10:41 AM), https://www.telegram.com/news/
20170927/proposal-expands-right-to-repair-movement-to-electronics-in-mass
[https://perma.cc/7FTC-SESL] (“They have a very strong economic interest in monopolizing
repair . . . .” (quoting Gay Gordon-Byrne, executive director of the Repair Association)).
348. See, e.g., Letter from Rick Habben to David Harris, supra note 46.
349. There are a number of resources consumers may use to ensure that they are using
reputable, quality repair shops, including Better Business Bureau ratings and other consumer
reviews.
2019] THE RIGHT TO REPAIR 125
In any event, even to the extent that the concern regarding the quality of
repairs is valid, it does not mean that the right to repair should be curtailed.
To a large extent, the manufacturers’ argument in this context is paternalistic,
and consumers should be allowed to choose “bad repairs” for lower prices
over “good repairs” for higher prices.
350
Original manufacturers can
decrease the cost of their repair services to make them more attractive to
consumers, or they can make authorized repair services more available.
Inasmuch as repair of certain products implicates safety concerns—for
instance, when the repairs are not made in a controlled environment—this
can be addressed in the legislation itself, through tort law, or by direct
regulation of the relevant practices.
B. Economic Loss for Manufacturers
Another criticism of the legislation and this Article’s proposals could be
that they would result in economic loss for the original equipment
manufacturers, which would ultimately negatively impact their incentives to
innovate and create new products for the benefit of society.
Maintaining control over the markets for repair services and replacement
parts most likely serves the economic interests of original manufacturers, at
least in the short run. Yet, we should not deviate from the principle of fair
competition and simply grant manufacturers exclusive control over such
markets. Absent a strong justification to deviate from society’s default norm,
competition must be preserved in repair and replacement parts markets. Such
a justification does not seem to exist. In particular, there is no indication that
manufacturers would not profit at a level that provides them sufficient
incentive to invent and create new products absent control of the aftermarket
for their goods.
Where the costs of research and development exceed the primary market
profits for a specific product, perhaps such a product should never have been
developed to begin with. In these cases, there is no justification to promote
development of the product through the promise of rent-seeking in the
aftermarket. In any event, costs of research and development should be
reflected in the pricing of the product rather than recovered in other markets.
Manufacturers should not be allowed to predatorily price their products low
and their repair services and replacement parts high to recoup on the
unnaturally low product price.
351
350. Clearly, though, consumers may not always get to decide on these matters. With
respect to auto parts, for instance, insurance companies may play a large role in choosing the
quality level of repairs.
351. See, e.g., Predatory or Below-Cost Pricing, F
ED. TRADE COMMISSION,
https://www.ftc.gov/tips-advice/competition-guidance/guide-antitrust-laws/single-firm-
conduct/predatory-or-below-cost [https://perma.cc/5TTW-PC2Q] (last visited Aug. 22, 2019)
(“Consumers are harmed only if below-cost pricing allows a dominant competitor to knock its
rivals out of the market and then raise prices to above-market levels for a substantial time.”).
To be sure, some companies may increase product prices to make up for lost revenues in the
markets for repair and replacement parts. It is hard to predict the economic effects of
126 FORDHAM LAW REVIEW [Vol. 88
Notably, a business that makes efforts to facilitate repairs by its customers
may actually experience a growth in business in the long run, inasmuch as
the ability to repair a product is an important factor in consumers’ market
choices. As a side note, any decline in profits as a result of maintaining
competition in the markets for repair services and replacement parts may
push manufacturers to find other creative ways, which are simultaneously
beneficial to society, to boost their profits. Finally, it is important to
remember that the connection between the scope of intellectual property
protection and the level of incentives provided by the system is not
necessarily linear.
352
Thus, even though some of the proposals made in this
Article may narrow the scope of certain intellectual property rights in limited
contexts, this would not necessarily result in a corresponding decrease in
incentives to innovate.
C. Increase in Counterfeiting or Theft of Intellectual Property
Another criticism of the repair legislation is that its enactment will enable
an increase in counterfeiting or the theft of intellectual property. For
example, in its letter to Illinois legislators, Wahl Clipper Corporation stated,
Our manufacturing location helps us protect our confidential information
and provides a competitive advantage. If our competitors, who mainly
make their clippers in Asia, obtained this confidential information because
of [the proposed repair law], it would impact our ability to compete on a
global scale and diminish an advantage of manufacturing in Illinois. . . . As
you can see, [intellectual property] is a very critical issue for us.
353
With respect to Wahl’s specific assertion of the increased ability to steal
its intellectual property, it is clear that Wahl is referring to its trade secrets in
how it manufactures its clippers. As a point of fact, this type of trade secret
is not contemplated as being within the ambit of the repair legislation as it is
not related to repairing clippers. The idea that information relating to repair,
along with parts and tools, would increase intellectual property theft is simply
a scare tactic and part of the rhetoric that does not seem to have a basis in
reality. While counterfeiting of all types of products is a reality, the repair
information will not increase what is already happening.
Counterfeiters could use repair information to improve the quality of their
counterfeits, as they will have access to a better understanding of how the
products work. However, this too is unlikely to happen. Counterfeiters are
maintaining competition in those markets. Yet, absent clear evidence that control of such
markets is vital for preserving an optimal level of incentives, one cannot defend the use of
intellectual property rights to suppress competition in repairs.
352. See Michal Shur-Ofry, IP and the Lens of Complexity, 54 IDEA 55, 96 (2013) (“The
expectations that each increase in the scope of IP will lead to a proportionate increase in the
level of innovation; that each limitation of that scope will result in a corresponding decrease
in innovation; or that we can promote external socially desired values simply by limiting or
calibrating the scope of intellectual property protection—are unrealistic.”).
353. Letter from Rick Habben to David Harris, supra note 46.
2019] THE RIGHT TO REPAIR 127
not interested in making high quality products.
354
The business model of
counterfeiting is premised on making products that are as minimally effective
as necessary to deceive consumers.
355
More investment is put into making
sure the product mimics the look of the real thing than in making sure it
functions like the real thing.
356
This way, counterfeiters can maximize their
return more effectively. In addition, counterfeiters decide which products to
counterfeit based on the demand for such products by consumers. In Wahl’s
case, the company claims to own 60 percent of the market share for
clippers.
357
If Wahl experiences any increase in counterfeiting of its clippers,
it is not due to releasing repair information but it is due instead to its clippers’
apparent popularity.
There is a purpose behind this rhetoric, aside from scare tactics. If
manufacturers, like Wahl, claim that there will be an increase in
counterfeiting, this assists in their conversations with the CBP. The CBP is
active in partnering with manufacturers and encourages continuous
manufacturer involvement by providing information and training.
358
This
type of narrative regarding a correlation between increased repair
information and an increase in counterfeits would give manufacturers an
additional tool to strengthen the basis on which the CBP already aggressively
detains and seizes replacement parts and other shipments.
359
C
ONCLUSION
The right to repair movement has been steadily gaining ground over the
last few years and it is the authors’ hope that the momentum continues. This
Article focuses on the interface between a right to repair and intellectual
property rights. This Article’s general thesis is that intellectual property law
should not prevent a right to repair from being fully implemented in the
United States. Indeed, the theoretical model developed in our Article
354. See Shane Hickey, Whether You’re Unaware or Don’t Care, Counterfeit Goods Pose
a Serious Threat, GUARDIAN (Dec. 2, 2018, 3:00 PM),
https://www.theguardian.com/technology/2018/dec/02/whether-youre-unaware-or-dont-care-
counterfeit-goods-pose-a-serious-threat [https://perma.cc/BJ8B-XFBT] (describing
counterfeit children’s toys that contained high levels of toxic chemicals).
355. See Thorsten Staake, Frederic Thiesse & Elgar Fleisch, Business Strategies in the
Counterfeit Market, 65 J.
BUS. RES. 658, 661–62 (2012) (describing five groups of
counterfeiters based on the types of counterfeit goods produced; four out of the five groups all
created counterfeits of high visual quality—meaning they looked like the original product—
but they had varying degrees of functional quality).
356. See id. at 663–64 (discussing the business strategies of each group of counterfeiters);
see also Hickey, supra note 354 (relating anecdotes regarding substandard functioning of
counterfeit products).
357. Letter from Rick Habben to David Harris, supra note 46.
358. See CBP,
CBP PUB. NO. 0136–0311, INTELLECTUAL PROPERTY RIGHTS ENFORCEMENT:
HOW BUSINESSES CAN PARTNER WITH CBP TO PROTECT THEIR RIGHTS 7,
https://www.cbp.gov/sites/default/files/assets/documents/2017-Jan/ipr_guide.pdf
[https://perma.cc/44K2-9FDG] (last modified on Jan. 31, 2018).
359. See id. at 2 (“CBP intercepts counterfeit and pirated goods that harm the U.S. economy
and threaten the security, health, and safety of Americans.”).
128 FORDHAM LAW REVIEW [Vol. 88
supports a right to repair and leads to the conclusion that the implementation
of such a right is fully consistent with intellectual property protection. In
fact, it can be justified by the very same policy considerations that are often
used to justify intellectual property rights. However, from a doctrinal point
of view, this Article’s analysis points out that the concept of a right to repair
and the proposed state legislation that seeks to secure it are not
accommodated by the United States’ far-reaching intellectual property
regime. This Article’s framing of a right to repair in four concentric circles
illustrates the specific areas where intellectual property law is implicated
by—and may impede—a right to repair. This Article has attempted to design
practical solutions to these potential hurdles, such as repair-friendly
interpretations of patent and trademark law doctrines. For example, the
courts could default in favor of repair in close cases of repair versus
reconstruction. Another beneficial measure could be to prevent intellectual
property owners from asserting design patents or trademarks over
replacement parts against those who are using them for repair purposes. This
Article also joins in the repair movement’s push to fix the DMCA by
removing the provisions prohibiting the circumvention of digital locks (and
in particular, the provisions that make transmission of relevant repair
information illegal). To supplement such reforms, this Article also
recommends certain fine-tuning of the proposed state legislation. For
instance, legislatures should include language voiding contract provisions
that negate a consumer’s right to repair her products. It is the authors’ hope
that all of this will assist in eliminating intellectual property law as a barrier
to implementing a nationwide right to repair.
