SELECTIVE REFUSALS TO SELL PATENTED GOODS: THE RELATIONSHIP BETWEEN PATENT RIGHTS AND ANTITRUST LAW Seungwoo Son* On the issue of whether a patent right includes the right to selec- tively refuse to sell, differing viewpoints have been taken among the Circuits, in addition to, the Federal Trade Commission ("FTC"), on whether such refusals violate antitrust law. This article takes the posi- tion that patent rights are limited to the extent of balancing the pro- motion of a competitive marketplace and granting incentives for con- tinued development of intellectual property ("IP"). The article analyzes its position in the context of technologically innovative mar- kets. The articlef irst provides a background on antitrust law on re- fusals to deal outside the context of IP rights. Next, a study is made of the effects of changing technology on the patent system. This is done by first looking at the first-sale, repair,a nd patent misuse doctrines. An economic analysis and empirical study is then made looking spe- cifically at innovation and competition within the context of the patent system. From the perspective of high-technology markets, studies have shown that innovation is generally driven more by competition that by patent rights. The author therefore suggests that a patent holder's right to refuse should be redefined when viewing high- technology markets. An alternativea pproach is proposedf or redefin- ing a patent holder's rights of refusal by looking to the first-sale and repair doctrines, actual business reliance, dynamic competition and public interest arguments. This alternative approach is then applied to the case law with the intention of reconciling the differing view- points among the courts and the FTC to provide a clear line between circumstances where refusals to deal by an IP holder will and will not be subject to antitrust scrutiny. The article finally offers what a proper remedy would be in the case of an unlawful unilateralr efusal SJD candidate, M.L.I. 2000, LL.M. 2001, University of Wisconsin, [email protected]. The author gratefully acknowledges the generous guidance of Professor Peter C. Carstensen of the University of Wisconsin Law School and his contributions to many of the ideas in this article. The au- thor also would like to thank Professors John Kidwell and Pilar N. Ossorio for their helpful comments and criticism. This article is based on the author's LL.M. thesis. JOURNAL OF LAW, TECHNOLOGY & POLICY [Vol. 2002 to license by a patent holder. This includes looking at some of the po- tential remedies used to restore competition in the case of illegal re- fusals to deal such as trebling of damages, injunctive relief, compul- sory licensing, price regulation,d uties to deal and non-discriminatory selling. The author concludes that pure refusals to deal by an IP holder will as a general rule promote innovation and competition. An IP holder will be scrutinized from an antitrust perspective, how- ever, where it engages in conditionalo r selective refusals to deal. I. INTRODUCTION The interface of antitrust laws and intellectual property laws ("IP laws") has always presented obvious tension because the former curbs anti-competitive conduct and fosters a competitive marketplace, while the latter promotes innovation by granting a patent or copyright holder the right to limit competition.1 Nevertheless, both antitrust and IP laws share a common economic goal: maximizing consumer welfare and en- couraging innovation and competition.2 A significant conflict between these two bodies of law has recently arisen in cases where an IP holder selectively refuses to sell or license a patent or copyright, thereby harming the competitive process in down- stream or related markets.' The general antitrust rule is that firms are free to refuse to do business with anyone they choose, absent the pur- pose or effect of monopolizing.4 However, if a patent holder exploits its dominant position in one market to expand its monopoly into another, 1. See United States v. Westinghouse Elec. Corp., 648 F.2d 642, 646-47 (9th Cir. 1981); HERBERT HOVENKAMP, FEDERAL ANTITRUST POLICY: THE LAW OF COMPETITION AND ITS PRACTICE § 5.5(a), at 239 (2d ed. 1999); Louis Kaplow, The Patent-Antitrust Intersection: A Reap- praisal, 97 HARV. L. REV. 1813, 1817 (1984); David McGowan, Network and Intention in Antitrust and Intellectual Property, 24 J. CORP. L. 485,485-86 (1999). 2. DOJ & FTC, Antitrust Guidelines for the Licensing of Intellectual Property § 1 (1995) (cit- ing Atari Games Corp. v. Nintendo of America, Inc., 897 F.2d 1572, 1576 (Fed. Cir. 1990)). See also Charles F. Rule, Developments in Antitrust Law Relating to Intellectual Property: The Administration's Views: Antitrust Analysis After the Nine No-No's, 55 ANTITRUST 365, 369 (1986) (A technical eco- nomic observation does not mean that patents are inconsistent with antitrust law. Both antitrust and patent are designed to maximize wealth by enabling the production of consumer goods at the lowest price.); WARD S. BOWMAN, JR., PATENT & ANTITRUST LAW: A LEGAL & ECONOMIC APPRAISAL 1-14 (1973) (Bowman refutes the idea that antitrust and patent law stand in "diametric opposition" since they share "a common central economic goal: to maximize wealth by producing what consumers want at the lowest cost."); see also Paul Goldstein, The Competitive Mandate: From Sears to Lear, 59 CAL. L. REV. 873 (1971). 3. See Eastman Kodak Co. v. Image Technical Serv., Inc., 540 U.S. 451 (1992) [hereinafter Ko- dak I]; Image Technical Serv., Inc. v. Eastman Kodak Co., 125 F.3d 1195 (9th Cir. 1998) [hereinafter Kodak II]; Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147 (1st Cir. 1994); In re Indep. Serv. Org. Antitrust Litig., 203 F.3d. 1322 (Fed. Cir. 2000), cert. denied, 121 S.Ct. 1077 (Feb. 2001); Intergraph Corp. v. Intel Corp. 195 F.3d 1346 (Fed. Cir. 1999); In re Intel Corp., No. 9288 (F.T.C. June 8, 1998). 4. See e.g., Otter Tail Power Co. v. United States, 410 U.S. 366 (1973); Lorain Journal Co. v. United States, 342 U.S. 143 (1951); Eastman Kodak Co. v. So. Photo Materials Co., 273 U.S. 359 (1927); Paschall v. Kansas City Star Co., 727 F.2d 692 (8th Cir.) (en banc). No. 1] SELECTIVE REFUSALS TO SELL this action may give rise to antitrust liability.' In contrast, the right to ex- clude has been construed as granting patentees the right to refuse to sell patented goods even if that refusal allows the patentee to increase mo- nopoly profits.6 In four recent cases, courts have presented differing viewpoints re- garding whether the patent exclusive right includes the right to selec- tively refuse to sell as part of a scheme to monopolize.7 In Image Techni- cal Services, Inc. v. Eastman Kodak Co. [Kodak II],8 Kodak refused to sell its patented and copyrighted photocopier parts to independent ser- vice organizations ("ISOs"). The Ninth Circuit held that an IP holder's right of exclusion had limits. The court created a rebuttable presumption that an IP owner's desire to profit from leveraging its IP was presump- tively legitimate.9 Showing that the leveraging is a pretext hiding a sub- jective intent to monopolize could rebut the presumption.'° In contrast, despite the factual similarity to Kodak I and Kodak II, the Federal Cir- cuit in In re Indep. Serv. Org. Antitrust Litig. [Xerox]12 expressly declined to follow the Ninth Circuit's approach in Kodak II and affirmed the judgment of the district court that the IP owner was entitled to profits derived from denying its IP in as many markets as the denial was profit- able. 3 Similarly, in Intergraph Corp. v. Intel Corp., [Intergraph]1,4 the Fed- eral Circuit overturned a district court decision that had significantly 5. Image Tech. Servs., 540 U.S. at 480 n. 29; see also Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 136 (1969) (patentee may not "extend the monopoly of his patent to derive a bene- fit not attributable to use of the patent's teachings"); PHILIP E. AREEDA & HERBERT HOVENKAMP, ANTITRUST LAW 1 704.1, at 229 (Supp. 2000). 6.IP laws grant firms acting unilaterally the power to exclude others from the use of their property. See 35 U.S.C. § 154 (2001); 17 U.S.C. § 102 (1996). 7.Generally the term "scope" in patent law refers to the nature and number of items that will infringe on a patent claim. In this paper, however, the term "scope" denotes the number or type of markets in which the patentee should be allowed to exclude others from using its patented invention. 8.125 F.3d 1195 (9th Cir. 1998). ISOs brought action against Kodak, alleging that the manufacturer used its monopoly in the market for its parts to create a monopoly in related service markets, in viola- tion of the Sherman Act. The United States District Court for the Northern District of California ini- tially granted a summary judgment for Kodak. Image Tech. Serv., Inc. v. Eastman Kodak Co., 1988 WL 156332 (N.D. Cal. 1988). The Court of Appeals reversed, 903 F.2d 612 (1990), the Supreme Court affirmed denial of summary judgment, and action was remanded, 504 U.S. 451 (1992). On remand in the district court, the plaintiffs withdrew their Section 1 tying and conspiracy claims before closing arguments. Upon the jury verdict for ISOs, the District Court entered a permanent injunction requir- ing the manufacturer to sell "all parts" to ISOs, Image Tech. Serv., 1996 WL 101173 (N.D. Cal. 1996), and the manufacturer appealed. 9. Image Technical Services Inc. v. Eastman Kodak Co., 125 F.3d at 1218. 10. Id. at 1219-20. 11. The Supreme Court held that a single brand of a product or service could be a relevant product market by noting that other makers' parts could not be used to repair a Kodak machine. 504 U.S. at 451. The decision was an important one for many points of tying law, and is worth reviewing in some detail for understanding the Ninth Circuit's resolution on Kodak II. It adopted most of the Su- preme Court's decisions in resolving the refusals to deal case involving intellectual property. 12. 203 F.3d 1322, 1329-1330, (Fed. Cir. 2000), cert. denied, 121 U.S. 1077 (2001). 13. See In re Indep. Svc. Org. Antitrust Litigation, 989 F. Supp. 1131, 1134-39 (D. Kan. 1997). 14. 195 F.3d 1346 (Fed. Cir. 1999). JOURNAL OF LAW, TECHNOLOGY & POLICY [Vol. 2002 widened the reach of antitrust laws in curtailing an IP holder's freedom to refuse to deal.5 On the other hand, in 1998, the Federal Trade Com- mission ("FTC") instituted an action against Intel, claiming that this conduct constituted unlawful monopolization, unlawful attempts to mo- nopolize, and unfair methods of competition, in violation of Section 5 of the Federal Trade Commission Act ("VTCA").6 The FTC alleged that Intel used its monopoly power in the microprocessor market to force at least three customers to grant Intel royalty-free licenses to microproces- sor-related technology developed and owned by its customers.7 Because the selective refusal to deal had chilled innovation in the microprocessor field,8 the litigation resulted in a consent decree which prevented Intel from unlawfully withholding information from the customers when there was an intellectual property dispute9. Most cases involving unilateral refusal to deal claims decided before the 1980's deferred to analysis under the lens of IP law when construing an IP right to exclude in relation to antitrust duty to deal." This deferral is consistent with the recognition that the short-term burdens of protec- tion are justified by the long-term benefits of disclosure and widespread access to ideas.2' As we learned from the Microsoft22 and Amazon.com cases23 how- ever, the recently excessive protectionism of IP powered by the legal sys- tem has created a significant problem of monopoly power,24 and this ex- 15. Intergraph Corp. v. Intel Corp., 3 F. Supp. 2d 1255 (N.D. Ala. 1998). 16. In re Intel Corp., No. 9288 (F.T.C. June 8, 1998), Complaint (last visited Nov. 13, 2001) at http://www.ftc.gov/os/1998/9806/intelfin.cmp.htm. 17. See Complaint I 11, In re Intel Corp., No. 9288 (F.T.C. June 8, 1998). 18. See Complaint 1 39. 19. See In re Intel Corp. No. at 88 (F.T.C. June 8, 1998), Agreement Containing Consent Order, § II(A), at http://www.ftc.gov/os/1999/9903/dO9288intelagreement.htm. 20. See, e.g., Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100 (1969); Special Equip. Co. v. Coe, 324 U.S. 370 (1945); Fox Film Corp. v. Doyal, 286 U.S. 123 (1932): Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 (1908); Miller Instituform, Inc. v. Instituform of North America, Inc., 830 F.2d 606 (6th Cir. 1987); United States v. Westinghouse Elec. Corp., 648 F.2d 642 (9thCir. 1981); SCM Corp. v. Xerox Corp., 645 F.2d 1195 (2d Cir. 1981). 21. See Brian F. Ladenburg, Unilateral Refusals to Deal in Intellectual Property After Image Technical Services, Inc. v. Eastman Kodak Co., 73 WASH. L. REV. 1079, 1105 (1998). 22. United States v. Microsoft Corp., 147 F.3d 935 (D.C. Cir. 1998). 23. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 73 F. Supp. 2d 1228 (W.D. Wash. 1999). 24. For example, according to recent data from the NIHCM Foundation, the drug industries seem to take advantage of excessive IP protection because "[o]ver the past two decades, Congress has enacted a series of laws that have greatly increased the 'effective patent life' enjoyed by brand name prescription drugs." NAT'L INST. FOR HEALTH CARE MGMT. FOUND., PRESCRIPTION DRUGS AND INTELLECTUAL PROPERTY PROTECTION: FINDING THE RIGHT BALANCE BETWEEN ACCESS AND INNOVATION (Aug. 2000) at http://www.nihcm.org/prescription.pdf. 2000 Pipeline Drug Proposalsa re being considered by Congress to provide up to three years pat- ent extension to selected drugs. 1999 The Patent Term GuaranteeA uthority Act requires the federal Patent and Trademark Office (PTO) to compensate for delays of over three years in processing patents. 1997 The Food and Drug Administration Modernization Act (FDAMA) enables firms to reduce clinical study time and offers six months of additional IPP to drugs that companies test in chil- dren. No. 1] SELECTIVE REFUSALS TO SELL cessive monopoly has unnecessarily stifled competitive markets in the 21st century.25 The fundamental question is whether existing patent right paradigms can accommodate the high technologies which have changed quickly and are complicated in nature. In the high-tech industry, because of the mutual dependence of manufacturers or the so-called "network effect," inventions are not discrete; instead, technology advances through a succession of incremental improvements.26 Moreover, a product which encompasses a single patent has increasingly transformed to a multi- patent product. For example, some of the replacement parts for Kodak's photocopiers and micrographics equipment are patented, but others are not. As a result, innovations in such industries are less of a public good if a large number of distinct participants cannot employ the ideas simulta- neously. Because of this characteristic in high technology industries, an- titrust/patent tensions may be particularly acute. Many empirical studies and economic analyses on innovation and competition conclude that pro- tecting competition is unlikely to reduce innovation, but instead enhance 27 it. 1994 The Uruguay Round Agreements Act (URAA) changes term of all patents in U.S. from 17 years from the date of issue to 20 years from date of application. Allows longer of the two terms for some drugs already on the market. 1992 The Prescription Drug User Fee Act (PDUFA) authorizes user fee support for FDA's pre- market review program, and sets performance goals to reduce approval time. 1986 The Federal Technology Transfer Act authorizes federal agencies doing research to enter into formal cooperative agreements with private industry to help develop, market, and manufac- ture government inventions. 1984 The Drug Competition and Patent Term Restoration Act (Waxman Hatch) authorizes patent extensions of up to five years for new drugs and up to two years for drugs in development at the time. Provides three years of market exclusivity for qualifying drugs. Streamlines FDA review process for generic drugs. 1983 The Orphan Drug Act provides seven years of market exclusivity to drugs for rare diseases, and tax credits for 50% of the cost of researching and developing such drugs. Id.; See also Michael A. Heller & Rebecca S. Eisenberg, Can Patents Deter Innovation? The Anticom- mons in Biomedical Research, 280 SC. 698 (1998) (Regarding the problem of IP rights stacking, a pro- liferation of IP rights upstream might be stifling life-saving innovations further downstream in the course of research and product development.); Justin Gillis, Drug Companies, Gene Labs to join Forces, WASH. POST, Apr. 15, 1999, at E-1. (A group of pharmaceutical producers planned to fund a group of laboratories to do detailed studies of human genes and publish those results regularly. The excessive enclosure of a common pool of knowledge aims to insure that no one can patent any of these genes.) 25. See Peter Carstensen, Remedying the Microsoft Monopoly: Monopoly Law, the Rights of Buyers, and the Enclosure Movement in Intellectual Property, THE ANTITRUST BULLETIN (Fall 1999) at 577; Mark Lemley, Reconceiving patents in the age of venture capital, 4 J. SMALL & EMERGING BUS. L. 137 (Spring, 2000); James Gleick, Patently Absurd, N.Y. TIMES, Mar. 3,2000 § 6 at 44. 26. See Richard N. Langlois, Technological Standards, Innovation, and Essential Facilities: To- ward a Schumpeterian Post-Chicago Approach, Paper for the George Mason University Conference on Dynamic Competition and Antitrust, Dec. 16-17, 1998, at 24 (Dec. 1999) (on file with author). 27. See John J. Flynn, Antitrust Policy, Innovation Efficiencies, and the Suppression of Technol- ogy, 66 ANTITRUST L.J. 487,496-97 (1998); ANNALEE SAXENIAN, REGIONAL ADVANTAGE: CULTURE AND COMPETITION IN SILICON VALLEY AND ROUTE 128 (1994); Special Report, 69 (BNA) Antitrust & Trade Reg. Rep. at 670 (Dec. 7, 1995); F.M. Scherer, Outline of FTC Testimony in Hearings on Global and Innovation-Based Competition Before The Federal Trade Commission, (Nov. 29, 1995), at http://www.ftc.gov/opp/global/scherer.htm (last visited Aug. 24, 2002). JOURNAL OF LAW, TECHNOLOGY & POLICY [Vol. 2002 This paper argues that the rights conferred on patent holders are limited rights. IP laws grant certain exclusive rights or monopoly privi- leges to creators or inventors, but the privileges are ultimately associated with public interests. Thus, courts and the legislature have seen the need to limit the scope of patent monopoly. The "first-sale doctrine"' and the "repair doctrine '29 reflect this need for limitations on IP rights. Accord- ing to the first-sale doctrine, the first authorized sale of a patented prod- uct exhausts the patent owner's exclusive rights, and a purchaser may thereafter make, use, and resell the product without violating the pat- entee's exclusive rights. The repair doctrine gives an owner who pur- chased a patented product the right to repair the product by replacing one or more worn, or otherwise unsatisfactory, parts of the product.3° The underlying rationale behind such doctrines is that IP rights must be limited to those necessary to provide the desired incentive and not en- durably harm a competitive marketplace. This article argues that even though the doctrine of first-sale and repair deals with a single patented product, it may also apply when a single machine contains many patented components. However, this is limited to an equal access claim and does not deny the right of the patent holder to be the exclusive source of those components. For these reasons, I suggest that the scope of a patent holder's rights to refuse be redefined in order to respond to the changing technologi- cally innovative environment and strike a balance between promoting a competitive marketplace and granting desirable incentives to IP holders. This article distinguishes between a "pure refusal" as addressed in Sec- tion 271(d)(4) of the Patent Act,31 and a "selective" or "conditional" re- fusal based on various public policy considerations, economic analysis of the patent system, and actual business reliance. In addition, market power, anticompetitive effects and a business justification for a patent holder's denial are relatively objective standards to determine whether a unilateral refusal to license or sell IP is absolutely immune from Section 2 of the Sherman Act. Section II briefly discusses the antitrust law governing refusals to deal where IP rights are not at issue. Section III examines the current patent system in an era of changing technology where the model is quite simple while innovation is very complex in diverse industries. As a 28. The first-sale doctrine is also known as the "doctrine of exhaustion" in patent, copyright and trademark law; Professor Adelman has assigned different meanings to the labels "doctrine of exhaus- tion" and "doctrine of first sale" in the patent context. See Martin J. Adelman, The Exhaustion Doc- trine in American Patent Law, MOLENGRAFICA EUROPEES PRIVAETRECHT 247 (1997). 29. See Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 346 (1961) (the Court held that replacing a worn out convertible top to be used with the mechanism purchased from the pat- entee was a permissible repair and not a direct infringement of the patent). 30. See Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U.S. 425 (1894). 31. 35 U.S.C. § 271(d)(4) (2000) (stating that it may not be deemed patent misuse if a patent owner has refused to license or use any rights to the patent). No. 1] SELECTIVE REFUSALS TO SELL methodology for this research, I apply economic analysis and empirical studies on innovation, competition and the patent system in order to prove that innovation is generally promoted by protecting competition, especially in the high technology industry. In this section I suggest that the scope of a patent holder's rights to refuse should be redefined in or- der to fit high technology industries. Section III also examines the first- sale doctrine and patent misuse doctrine which redefine the rights to re- fuse intellectual property. These doctrines will be applied to the case analysis in Section IV. Section IV proposes an alternative approach that redefines a patent holder's rights to deny by applying an expanded first- sale doctrine, the doctrine of repair, actual business reliance, dynamic competition and public interests. The proposed standard will be applied to several refusals to license or sell contexts such as (a) the Kodak or Xerox situation, (b) Intergraph,a nd (c) SCM & Data General in order to resolve the issue of whether refusals to sell or license by a patent holder should be condemned by antitrust liability. This approach draws a clear line to define the circumstances under which a refusal to license should be permissible or impermissible. Finally, Section V explores what consti- tutes a proper remedy in the context of an unlawful unilateral refusal to license by a patent holder in order to reconcile intellectual property and antitrust law. II. ANTITRUST REFUSALS TO DEAL A. Refusals to Deal in GeneralR ule Section 2 of the Sherman Act interdicts efforts to "monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce among the several states. 32 The offense of monopoly under Section 2 of the Sherman Act requires proof of two elements: (1) the possession of "mo- nopoly power" in the relevant market, and (2) "exclusionary conduct" such as the willful acquisition or maintenance of that power as distin- guished from growth or development as a consequence of a superior product, business acumen, or historic accident.33 Monopoly power, often defined as the ability to control prices or exclude competition, is deter- mined based on market share in a relevant market and other factors such as barriers to entry.34 Exclusionary conduct refers to the use of monop- oly power to foreclose competition or otherwise gain a competitive ad- vantage." Therefore, unilateral refusals to deal by a dominant firm could 32. 15 U.S.C. § 2 (2000). 33. United States v. Grinnell Corp., 384 U.S. 563, 570-71 (1966). 34. See United States v. E.I. du Pont de Nemours & Co., 351 U.S. 377, 391 (1956); Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147,1181-82 (1st Cir. 1994). 35. See Image Technical Servs., Inc. v. Eastman Kodak Co., 504 U.S. 451,482-83 (1992). JOURNAL OF LAW, TECHNOLOGY & POLICY [Vol. 2002 constitute exclusionary conduct, and the dominant firm may be found to have violated the antitrust law against monopolization, or attempted monopolization, if it engages in that type of behavior. Monopoly leveraging has been viewed as a type of "monopolizing" or "attempting to monopolize." Monopoly leveraging occurs when a competitor holds a lawful monopoly in one market and wields that mo- nopoly power to monopolize or gain a competitive advantage in a sepa- rate market.36 This practice could be illegal either as a tying arrange- ment37 or an instance of monopoly leveraging. Tying the sale of a second product to a patented product is generally considered an illegal trade- restraining device or monopolistic exploitation.38 Monopoly leveraging can be connected to unilateral refusals to deal in some situations, such as when a monopolist, using power in one mar- ket, refuses to sell a product to its competitors in another market, thereby precluding competition in the second market and monopolizing both markets.39 "Unilateral refusals to deal, unlike tying, do not neces- sarily involve coercion, but may achieve the same effect."4 In effect, a monopolist can leverage the condition of the sale of one commodity on the sale of another by unilateral refusals to deal, without requiring an explicit agreement or coercing any buyer's choice.4' For example, con- sider a situation in which a monopolist in a primary market excludes competition in a complementary market by preventing competitors in that market from accessing its primary product. In such cases, the mo- nopolist essentially requires buyers of the primary product to also buy the complementary product from it because the refusal leaves buyers with no other choice.42 36. See Berkey Photo, Inc. v. Eastman Kodak Co., 603 F.2d 263, 276 (2d Cir. 1979); Alaska Air- lines Inc. v. United Airlines Inc., 948 F.2d 536, 547 (9th Cir. 1991); Barry E. Hawk, Attempts to Mo- nopolize -Specific Intent as Antitrust's Ghost in the Machine, 58 CORNELL L. REV. 1121, 1156 (1973); Louis Kaplow, Extension of Monopoly Power Through Leverage, 85 COLUM. L. REV. 515, 516 (1985). (stating that, "[tiraditional leverage theory claims that a monopolist's use of its power in its own mar- ket to control activities in another market typically represents an attempt to spread its power to the other market."); 9 PHILIP E. AREEDA, ANTITRUST LAW I 1700d, at 6 (1991) (noting that the House Report explaining the enactment of Section 3 of the Clayton Act clearly expressed fear of the power of a monopolist to leverage into a second market). 37. A firm's use of its power in one market (the tying market) to affect competition in a complementary market (the tied market) by effectively coercing buyers of the tying product to also buy from it the tied product, regardless of the buyer's wishes. See Times-Picayune Publ'g Co. v. United States, 345 U.S. 594, 611 (1953) (stating that, "the essence of illegality in tying agreements is the wield- ing of monopolistic leverage; a seller exploits his dominant position in one market to expand his em- pire into the next."). 38. See Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917); Ward S. Bowman, Jr., Tying Arrangements and the Leverage Problem, 67 YALE L.J. 19 (1957). 39. See Marina Lao, Unilateral Refusals To Sell Or License Intellectual Property And The Anti- trust Duty To Deal, 9 CORNELL J. L. & PUB. POL'Y 193, 196 (Fall, 1999). 40. Id. 41. See Mark R. Patterson, When is Property Intellectual? The Leveraging Problem, 73 S.C AL. L. REV. 1133, 1151 (2000). 42. See Lao, supra note 39, at 196. No. 1] SELECTIVE REFUSALS TO SELL However, a monopolist's refusal to deal cannot be unlawful unless it extends, preserves, creates, or threatens to create significant market power in some market, which could be either the primary market in which the monopoly firm sells or a vertically related or collateral market. Refusals that do not accomplish at least one of these results do not vio- late Section 2 no matter how much they might harm the person or class of persons declined service. Nor are such refusals an "abuse" of monop- oly power in the sense of using power in one market as "leverage" to in- crease one's advantage in another market.43 In general, when customers do not pay or fail to honor contracts, refusals to deal are valid and le- gitimate business decisions even if the refusing party has a monopoly po- sition. " A monopolist has the right to deal or not to deal with whomever it likes, as long as it does so independently.45 If the reason for a refusal to deal is not directly related to competition, then even a refusal that is in- consistent with rational competitor conduct is still not a violation of anti- trust law.46 This is, thus, a very strict standard: only if the action is incon- sistent with "competition on the merits," is there a monopolization case,47 that is, only if the monopolist uses its power in an upstream market to se- cure a monopoly in a downstream or related market, is the action illegal. Except for intellectual property issues, the law on unilateral refusals to deal is relatively clear. When the leveraging products are protected by patent or copyright, however, the manufacturer will often claim that the leveraging is a permissible use of its IP rights. Unfortunately, the patent and copyright statutes do not articulate the scope of a patent or copyright grant beyond which the statutory right of exclusion would not apply.48 Thus, a core issue in cases of unilateral refusal to license an IP right is whether the unilateral refusal to license should be treated like any other refusal to deal by a monopolist if the practice does not merely bring about anticompetitive effects by eliminating competitors in a related market, but also restrains customers' freedom of choice. This approach distinguishes two types of refusals by patent holders - "conditional" or "selective" refusals and "pure" refusals. The latter category of refusals should be given more consideration in terms of antitrust scrutiny if a pat- entee has market power, excludes or substantially impairs the competi- tive capacity of a competitor, brings about anticompetitive effects in a re- lated market, or constrains customer choice directly or indirectly, unless the patentee proffers a valid reason to justify its refusal.49 43. PHILIP E. AREEDA & HERBERT HOVENKAMP, 3A ANTITRUST LAW I 770b, at 167 (1996). 44. PETER CARSTENSEN, MONOPOLY ANALYSIS IN TELECOMMUNICATIONS STRUCTURE AND CONDUCT 8 (Oct 2-4) (paper presented at Antitrust in Telecommunication Markets Workshop at the University of Wisconsin-Madison School of Business) (copy on file with author). 45. See Laurel Sand & Gravel, Inc. v. CSX Transp., Inc., 924 F.2d 539, 542 (4th Cir. 1991). 46. See NYNEX Corp., et al. v. Discon, Inc., 525 U.S. 128 (1998). 47. See CARSTENSEN, supra note 44, at 8. 48. See Lao, supra note 39, at 198. 49. This issue is discussed in more detail in Section IV.2. JOURNAL OF LAW, TECHNOLOGY & POLICY [Vol. 2002 B. Diverse Approaches to Refusals to Deal In condemning refusals to deal, courts have applied two theoretical tests - "intent" and "essential facility."5 A combination of these two ap- proaches is also available.5' First, a prima facie case under Section 2 of the Sherman Act requires showing an intent to monopolize motivates the refusal to deal.52 In recent decisions, courts have come to evaluate not only subjective intent, but also the business justification for, and the competitive effect of, a monopolist's refusals to deal.3 Thus, the mo- nopolist's conduct is proscribed if it has an anticompetitive effect. The intent to monopolize can be rebutted by proffering legitimate business justifications for the refusal. As will be discussed in more detail in Section IV.B, applying the in- tent test may be inadequate in an antitrust case related to an IP holder's refusal to license or sell a patent or copyright because the IP owner's subjective motivation is always difficult to determine.54 In Kodak II, the court relied on evidence that "Kodak was not actually motivated by pro- tecting its intellectual property rights."55 In Xerox,56 the court rejected the Ninth Circuit's interpretation of the patent owner's intent and held that the owner was entitled to profits derived from denying access to its IP in as many markets as the denial was profitable. Furthermore, this approach is not incontestable because even if the motivation for creating 50. Kenneth L. Glazer & Abbott B. Lipsky, Jr., UnilateralR efusals to Deal under Section 2 of the Sherman Act, 63 ANTITRUST 749, 753-54 (1995). See generally James C. Burling, et al., The Antitrust Duty to Deal and Intellectual PropertyR ights, 24 J. CORP. L. 527 (1999). 51. See, e.g. Aspen Skiing Co. v. Aspen Highlands Skiing Corp., 472 U.S. 585 (1985). 52. The intent test is derived from United States v. Colgate & Co., 250 U.S. 300, 307 (1918) (ob- serving that a refusal to deal would run afoul of section 2 when a monopolist had exhibited an intent to establish or to maintain a monopoly) and Eastman Kodak Co. v. S. Photo Materials Co., 273 U.S. 359, 375 (1927) (focusing on Kodak's motivation, the Court determined that Kodak's refusal to sell whole- sale products to a competing retailer at the usual dealer discount could not be attributable to any mo- tive other than the intent to create a monopoly). 53. See, e.g., Rural Tel. Serv. Co. v. Feist Publ'ns, Inc., 957 F.2d 765, 768 (10th Cir. 1992) ("In determining whether a monopolist which has refused to deal with a competitor has acted lawfully or in violation of Section 2, we apply a two-part test. First, we look at the effects of the monopolist's con- duct. Second, we look at its motivation."); MCI Communications v. AT&T Co., 708 F.2d 1081, 1148 (7th Cir. 1982) (noting that the intent test requires courts to "focus on the intent and competitive ef- fect of the refusal to deal"). Some courts have found intent immaterial when the refusal to deal can be justified economically. See, e.g., Ocean State Physicians Health Plan, Inc. v. Blue Cross & Blue Shield of R.I., 883 F.2d 1101, 1113 (1st Cir. 1989) ("As long as Blue Cross's course of conduct was itself le- gitimate, the fact that some of its executives hoped to see Ocean State disappear is irrelevant."); Oahu Gas Serv., Inc. v. Pacific Resources, Inc., 838 F.2d 360, 370 (9th Cir. 1988) (holding that evidence of a legitimate business justification will protect a monopolist from Section 2 liability, even in light of a finding of anticompetitive intent). 54. The problem with the subjective test in Kodak H is that in non-IP monopolization cases, in- tent to obtain monopoly profits is not legitimate, while that is more or less the point in IP cases. 55. Image Technical Servs., Inc. v. Eastman Kodak Co., 125 F.3d 1195, 1219 (9th Cir. 1997). 56. In re Indep. Serv. Org. Antitrust Litig., 203 F.3d. 1322 (Fed. Cir. 2000). 57. See id. at 1327.