1999 BEYOND PREEMPTION rights statute to a consumer protection statute 6 The most obvious way in which these limits will be tested is through ederal preemption, either of particular provisions of state contract law or of rticular contract terms enforced by state courts. A number of commentators have ussed the nature and limits of intellectual property preemption, both in general? and in the specific context of state contract terms. 8 Indeed, some of the contributions to this Symposium address precisely this subject. 9 What one intellectual property preemption, and that the law of preemption is a mess to eral discern from this scholarship is that there are several different approaches to federal I want to suggest something a little different In this Article, I argue that the influence of intellectual property law and policy on contract enforcement is not solely a function of the complex and arcane rules of federal preemption. Three more nuanced doctrines can also influence contract enforcement: (1)copyright misuse (2)federal public policy that requires resolution of at least some intellectual property questions on intellectual property rather than contract terms, and (3) similar mandatory rules of state intellectual property law. These public policy limits certainly won't prevent the enforcement of all license terms, or even of all tted upright, not the eretectmen p, and indeed charged that the 如24出eh oncept of =m:H器m出 mer and improver riot出eBmg四sB 7 See, e. g, Howard B. Abrams, Copyright, Misappropriation, and Preemption: Constitutional Circle, 1974 Sup. Ct. Rev. 81; Paul Heald, Federal Intellectual Economics m joan shepardwlei e, Bono oats 7 informed it %andaor) Feeeranapte paod Heasainunona estriction on the Scope of state Law, 54U. ChL. L. Rev. 1411(1987)thereinafter 8 See, e.g,Dennis S. Karjala, Federal Preemption of shrinkwrap and On-Line Licenses, 22 U C0mN3如 greer iands3u ip itolicgev eder o2 0e gg2) of Sofware License Prohibitions c763R知4 mits of art icle 2b of the uniform commercial code on the future of information Commerce( ke has made a similar point. See Maureen A. O Rourke, Ce resolve nding consistent ther property preemption decisions1999] BEYOND PREEMPTION rights statute to a consumer protection statute.6 The most obvious way in which these limits will be tested is through federal preemption, either of particular provisions of state contract law or of particular contract terms enforced by state courts. A number of commentators have discussed the nature and limits of intellectual property preemption, both in general7 and in the specific context of state contract terms.8 Indeed, some of the contributions to this Symposium address precisely this subject.9 What one can discern from this scholarship is that there are several different approaches to federal intellectual property preemption, and that the law of preemption is a mess.10 I want to suggest something a little different. In this Article, I argue that the influence of intellectual property law and policy on contract enforcement is not solely a function of the complex and arcane rules of federal preemption. Three more nuanced doctrines can also influence contract enforcement: (1) copyright misuse; (2) federal public policy that requires resolution of at least some intellectual property questions on intellectual property rather than contract terms; and (3) similar mandatory rules of state intellectual property law. These public policy limits certainly won’t prevent the enforcement of all license terms, or even of all 6 .See Whit Diffie, Address at the American Committee for Interoperable Systems Meeting (Feb. 18, 1998). Glynn Lunney has made a similar point. See Glynn Lunney, Protecting Digital Works: Copyright or Contract? (1998) (unpublished manuscript at 3-4, on file with author) (“For preemption to become not only a part of copyright, but in some sense the central part, would require a radical reconception of copyright. We would have to view copyright, not as a means for providing protection, but as a means for limiting the protection permitted.”). Jane Ginsburg has objected to this development, and indeed charged that the entire concept of “user rights” in copyright is loaded and largely undesirable. See Jane C. Ginsburg, Authors and Users in Copyright, 45 J. Copyright Soc’y (USA) 1, 2-3 (1997). Ginsburg makes her argument in part by redefining “user rights” to include only rights to make superseding and not transformative copies. See id. at 3-4. I think that this distinction is unreasonable because it seems both to restrict the concept of “users” of copyrighted works to only the subclass of consumers and to ignore the wholesale elimination of consumer and improver rights that is occurring across the board in copyright today. 7 .See, e.g., Howard B. Abrams, Copyright, Misappropriation, and Preemption: Constitutional and Statutory Limits of State Law Protection, 1983 Sup. Ct. Rev. 509; Paul Goldstein, Kewanee Oil Co. v. Bicron Corp: Notes on a Closing Circle, 1974 Sup. Ct. Rev. 81; Paul Heald, Federal Intellectual Property Law and the Economics of Preemption, 76 Iowa L. Rev. 959 (1991) [hereinafter Heald, Economics]; John Shepard Wiley, Jr., Bonito Boats: Uninformed but Mandatory Federal Preemption Policy, 1989 Sup. Ct. Rev. 283; Paul Heald, Comment, Unfair Competition and Federal Law: Constitutional Restrictions on the Scope of State Law, 54 U. Chi. L. Rev. 1411 (1987) [hereinafter Heald, Unfair Competition]. 8 .See, e.g., Dennis S. Karjala, Federal Preemption of Shrinkwrap and On-Line Licenses, 22 U. Dayton L. Rev. 511 (1997); Ramona L. Paetzold, Contracts Enlarging a Copyright Owner’s Rights: A Framework for Determining Unenforceability, 68 Neb. L. Rev. 816 (1989); David A. Rice, Public Goods, Private Contract, and Public Policy: Federal Preemption of Software License Prohibitions Against Reverse Engineering, 53 U. Pitt. L. Rev. 543, 602-04 (1992). 9 .See David Nimmer et al., The Metamorphosis of Contract into Expand , 87 Calif. L. Rev. 17, 40-76 (1999); see also J.H. Reichman & Jonathan A. Franklin, Privately Legislated Intellectual Property Rights: The Limits of Article 2B of the U.C.C., Address Before the Berkeley Center for Law & Technology’s Conference, Intellectual Property and Contract Law for the Information Age: The Impact of Article 2B of the Uniform Commercial Code on the Future of Information and Commerce (Apr. 24, 1998). 10 .Maureen O’Rourke has made a similar point. See Maureen A. O’Rourke, Copyright Preemption After the ProCD Case: A Market-Based Approach , 12 Berkeley Tech. L.J. 53, 76 (1997) (“The confusion and inconsistency of preemption law makes preemption issues notoriously difficult to resolve.”). But see Heald, Economics, supra note , at 959 (finding consistent themes in intellectual property preemption decisions)