Copyrights and Patents

Clause 8. The Congress shall have Power *** To 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.


Scope of the Power

This clause is the foundation upon which the national patent and copyright laws rest, although it uses neither of those terms. So far as patents are concerned, modern legislation harks back to the Statute of Monopolies of 1624, whereby Parliament endowed inventors with the sole right to their inventions for fourteen years.1419 Copyright law, in turn, traces back to the English Statute of 1710, which secured to authors of books the sole right of publishing them for designated periods.1420 These English statutes curtailed the royal prerogative in the creation and bestowal of monopolistic privileges, and the Copyright and Patent Clause similarly curtails congressional power with regard both to subject matter and to the purpose and duration of the rights granted.32 Its power is limited with regard both to subject matter and to the purpose and duration of the rights granted. Only the writings and discoveries of authors and inventors may be protected, and then only to the end of promoting science and the useful arts.1422 The concept of originality is central to copyright, and it is a constitutional requirement Congress may not exceed.1423 While Congress may grant exclusive rights only for a limited period, it may extend the term upon the expiration of the period originally specified, and in so doing may protect the rights of purchasers and assignees.1424

The constitutional limits, however, do not prevent the Court from being highly deferential to congressional exercise of its power. “It is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors,” the Court has said.33 “Satisfied” in Eldred v. Ashcroft that the Copyright Term Extension Act did not violate the “limited times” prescription, the Court saw the only remaining question as whether the enactment was “a rational exercise of the legislative authority conferred by the Copyright Clause.”34 The Act, the Court concluded, “reflects judgments of a kind Congress typically makes, judgments we cannot dismiss as outside the Legislature’s domain.” Moreover, the limitation on the duration of copyrights and patents is largely unenforceable. The protection period may extend well beyond the life of the author or inventor.35 Congress may extend the duration of existing copyrights and patents, and in so doing may protect the rights of purchasers and assignees.36 The copyright and patent laws do not have, of their own force, any extraterritorial operation.1425

1419 Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 17, 18 (1829).

1420 Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 656, 658 (1834).

32 Graham v. John Deere Co., 383 U.S. 1, 5, 9 (1966).

1422 Kendall v. Winsor, 62 U.S. (21 How.) 322, 328 (1859); A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950).

1423 Feist Publications v. Rural Telephone Service Co., 499 U.S. 340 (1991) (publisher of telephone directory, consisting of white pages and yellow pages, not entitled to copyright in white pages, which are only compilations). “To qualify for copyright protection, a work must be original to the author.... Originality, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses some minimal degree of creativity.... To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice.” Id. at 345. First clearly articulated in The Trade Mark Cases, 100 U.S. 82, 94 (1879), and Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58–60 (1884), the requirement is expressed in nearly every copyright opinion, but its forceful iteration in Feist was noteworthy, because originality is a statutory requirement as well, 17 U.S.C. § 102(a), and it was unnecessary to discuss the concept in constitutional terms.

1424 Evans v. Jordan, 13 U.S. (9 Cr.) 199 (1815); Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 548 (1852); Bloomer v. Millinger, 68 U.S. (1 Wall.) 340, 350 (1864); Eunson v. Dodge, 85 U.S. (18 Wall.) 414, 416 (1873).

33 Eldred v. Ashcroft, 537 U.S. 186, 205 (2003) (quoting Sony Corp. of America v. Universal City Studios, 464 U.S. 417, 429 (1984)).

34 537 U.S. at 204.

35 The Court in Eldred upheld extension of the term of existing copyrights from life of the author plus 50 years to life of the author plus 70 years. While the more general issue was not raised, the Court opined that this length of time, extendable by Congress, was “clearly” not a regime of “perpetual” copyrights. The only two dissenting Justices, Stevens and Breyer, challenged this assertion.

36 Evans v. Jordan, 13 U.S. (9 Cr.) 199 (1815); Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 548 (1852); Bloomer v. Millinger, 68 U.S. (1 Wall.) 340, 350 (1864); Eunson v. Dodge, 85 U.S. (18 Wall.) 414, 416 (1873).

Patentable Discoveries

The protection traditionally afforded by acts of Congress under this clause has been limited to new and useful inventions,1426 and while a patentable invention is a mental achievement,1427 for an idea to be patentable it must have first taken physical form.1428 Despite the fact that the Constitution uses the term “discovery” rather than “invention,” a patent may not be issued for the discovery of a hitherto unknown phenomenon of nature. “If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.”1429 As for the mental processes which have been traditionally required, the Court has held in the past that an invention must display “more ingenuity . . . than the work of a mechanic skilled in the art;”1430 and while combination patents have been at times sustained,1431 the accumulation of old devices is patentable “only when the whole in some way exceeds the sum of its parts.”1432 Though “inventive genius” and slightly varying language have been appearing in judicial decisions for almost a century,1433 “novelty” and “utility” has been the primary statutory test since the Patent Act of 1793.1434 With Congress’ enactment of the Patent Act of 1952, however, § 103 of the Act required that an innovation be of a “nonobvious” nature, that is, it must not be an improvement that would be obvious to a person having ordinary skill in the pertinent art.1435 This alteration of the standard of patentability was perceived by some as overruling previous Supreme Court cases requiring perhaps a higher standard for obtaining a patent,1436 but the Court itself interpreted the provision as codifying its earlier holding in Hotchkiss v. Greenwood,1437 in Graham v. John Deere Co.1438 The Court in this case said: “Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must ‘promote the Progress of ... useful Arts.’ This is the standard expressed in the Constitution and it may not be ignored.”1439 Congressional requirements on patentability, then, are conditions and tests that must fall within the constitutional standard. Underlying the constitutional tests and congressional conditions for patentability is the balancing of two inter-ests—the interest of the public in being protected against monopolies and in having ready access to and use of new items versus the interest of the country, as a whole, in encouraging invention by rewarding creative persons for their innovations. By declaring a constitutional standard of patentability, however, the Court, rather than Congress, will be doing the ultimate weighing. As for the clarity of the patentability standard, the three-fold test of utility, novelty and advancement seems to have been made less clear by the Supreme Court’s recent rejuvenation of “invention” as a standard of patentability.1440

1426 Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 549 (1871). Cf. Collar Company v. Van Dusen, 90 U.S. (23 Wall.) 530, 563 (1875); Reckendorfer v. Faber, 92 U.S. 347, 356 (1876).

1427 Smith v. Nichols, 89 U.S. (21 Wall.) 112, 118 (1875).

1428 Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874); Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 489 (1891).

1429 Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948). Cf. Dow Co. v. Halliburton Co., 324 U.S. 320 (1945); Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 89 (1941).

1430 Sinclair Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945); Marconi Wireless Co. v. United States, 320 U.S. 1 (1943).

1431 Keystone Mfg. Co. v. Adams, 151 U.S. 139 (1894); Diamond Rubber Co. v. Consol. Tire Co., 220 U.S. 428 (1911).

1432 A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). An interesting concurring opinion was filed by Justice Douglas for himself and Justice Black: “It is not enough,” says Justice Douglas, “that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.” Id. at 154–155. He then quotes the following from an opinion of Justice Bradley’s given 70 years ago:

“It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufacturers. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith. (Atlantic Works v. Brady, 107 U.S. 192, 200 (1882)).” at 155.

The opinion concludes: “The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents—gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge. A few that have reached this Court show the pressure to extend monopoly to the simplest of devices: [listing instances].” Id. at 156-58.

1433 “Inventive genius”—Justice Hunt in Reckendorfer v. Faber, 92 U.S. 347, 357 (1875); “Genius or invention”—Chief Justice Fuller in Smith v. Whitman Saddle Co., 148 U.S. 674, 681 (1893); “Intuitive genius”—Justice Brown in Potts v. Creager, 155 U.S. 597, 607 (1895); “Inventive genius”—Justice Stone in Concrete Appliances Co. v. Gomery, 269 U.S. 177, 185 (1925); “Inventive genius”—Justice Roberts in Mantle Lamp Co. v. Aluminum Co., 301 U.S. 544, 546 (1937); “the flash of creative genius, not merely the skill of the calling”—Justice Douglas in Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941).

1434 Act of February 21, 1793, ch. 11, 1 Stat. 318. See Graham v. John Deere Co., 383 U.S. 1, 3–4, 10 (1966).

1435 35 U.S.C. § 103.

1436 E.g., A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950); Jungerson v. Ostby & Barton Co., 335 U.S. 560 (1949); and Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941).

1437 52 U.S. (11 How.) 248 (1850).

1438 383 U.S. 1 (1966).

1439 383 U.S. at 6 (first emphasis added, second emphasis by Court). For a thorough discussion, see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146–152 (1989).

1440 Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969). “The question of invention must turn on whether the combination supplied the key requirement.” Id. at 60. But the Court also appeared to apply the test of nonobviousness in the same decision: “We conclude that the combination was reasonably obvious to one with ordinary skill in the art.” Id. See also McClain v. Ortmayer, 141 U.S. 419, 427 (1891), where, speaking of the use of “invention” as a standard of patentability the Court said: “The truth is the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.”

Procedure in Issuing Patents

The standard of patentability is a constitutional standard, and the question of the validity of a patent is a question of law.1441 Congress may authorize the issuance of a patent for an invention by a special, as well as by general, law, provided the question as to whether the patentees device is in truth an invention is left open to investigation under the general law.1442 The function of the Commissioner of Patents in issuing letters patent is deemed to be quasi-judicial in character. Hence an act granting a right of appeal from the Commission to the Court of Appeals for the District of Columbia is not unconstitutional as conferring executive power upon a judicial body.1443 The primary responsibility, however, for weeding out unpatentable devices rests in the Patent Office.1444 The present system of “de novo” hearings before the Court of Appeals allows the applicant to present new evidence which the Patent Office has not heard,1445 thus making somewhat amorphous the central responsibility.

1441 A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950); Mahn v. Harwood, 112 U.S. 354, 358 (1884). In Markman v. Westview Instruments, Inc., 517 U.S. 348 (1996), the Court held that the interpretation of terms in a patent claim is a matter of law reserved entirely for the court. The Seventh Amendment does not require that such issues be tried to a jury.

1442 Evans v. Eaton, 16 U.S. (3 Wheat.) 454, 512 (1818).

1443 United States v. Duell, 172 U.S. 576, 586–589 (1899). See also Butterworth v. United States ex rel. Hoe, 112 U.S. 50 (1884).

1444 Graham v. John Deere Co., 383 U.S. 1, 18 (1966).

1445 In Jennings v. Brenner, 255 F. Supp. 410, 412 (D.D.C. 1966), District Judge Holtzoff suggested that a system of remand be adopted.

Nature and Scope of the Right Secured

The leading case on the nature of the rights that Congress is authorized to “secure” under the Copyright and Patent Clause is Wheaton v. Peters.37 Wheaton was the official reporter for the Supreme Court from 1816 to 1827, and Peters was his successor in that role. Wheaton charged Peters with having infringed his copyright in the twelve volumes of “Wheaton’s Reports” by reprinting material from Wheaton’s first volume in “a volume called ‘Condensed Reports of Cases in the Supreme Court of the United States’”;38 Wheaton based his claim on both common law and a 1790 act of Congress. On the statutory claim, the Court remanded to the trial court for a determination of whether Wheaton had complied with all the requirements of the act.39 On the common law claim, the Court held for Peters, finding that, under common law, publication divests an author of copyright protection.40 Wheaton argued that the Constitution should be held to protect his common law copyright, because “the word secure . . . clearly indicates an intention, not to originate a right, but to protect one already in existence.”41 The Court found, however, that “the word secure, as used in the constitution, could not mean the protection of an acknowledged legal right,” but was used “in reference to a future right.”42 Thus, the exclusive right that the Constitution authorizes Congress to “secure” to authors and inventors owes its existence solely to acts of Congress that secure it, from which it follows that the rights granted by a patent or copyright are subject to such qualifications and limitations as Congress sees fit to impose.43

The leading case bearing on the nature of the rights which Congress is authorized to secure is that of Wheaton v. Peters. Wheaton charged Peters with having infringed his copyright on the twelve volumes of “Wheaton’s Reports,” wherein are reported the decisions of the United States Supreme Court for the years from 1816 to 1827 inclusive. Peters’ defense turned on the proposition that inasmuch as Wheaton had not complied with all of the requirements of the act of Congress, his alleged copyright was void. Wheaton, while denying this assertion of fact, further contended that the statute was only intended to secure him in his pre-existent rights at common law. These at least, he claimed, the Court should protect. A divided Court held in favor of Peters on the legal question. It denied, in the first place, that there was any principle of the common law that protected an author in the sole right to continue to publish a work once published. It denied, in the second place, that there is any principle of law, common or otherwise, which pervades the Union except such as are embodied in the Constitution and the acts of Congress. Nor, in the third place, it held, did the word “securing” in the Constitution recognize the alleged common law principle Wheaton invoked. The exclusive right which Congress is authorized to secure to authors and inventors owes its existence solely to the acts of Congress securing it,1446 from which it follows that the rights granted by a patent or copyright are subject to such qualifications and limitations as Congress, in its un-hampered consultation of the public interest, sees fit to impose.1447

37 33 U.S. (8 Pet.) 591 (1834).

38 33 U.S. (8 Pet.) at 595.

39 33 U.S. (8 Pet.) at 667.

40 33 U.S. (8 Pet.) at 657-58. The Court noted that the same principle applies to “an individual who has invented a most useful and valuable machine… [I]t has never been pretended that the latter could hold, by the common law, any property in his invention, after he shall have sold it publicly.” Id.

41 33 U.S. (8 Pet.) at 661; Holmes v. Hurst, 174 U.S. 82 (1899). The doctrine of common-law copyright was long statutorily preserved for unpublished works, but the 1976 revision of the federal copyright law abrogated the distinction between published and unpublished works, substituting a single federal system for that existing since the first copyright law in 1790. 17 U.S.C. § 301.

42 33 U.S. (8 Pet.) at 661.

43 33 U.S. (8 Pet.) at 662; Evans v. Jordan, 13 U.S. (9 Cr.) 199 (1815). A major limitation of copyright law is that “fair use” of a copyrighted work is not an infringement. Fair use can involve such things as quotation for the use of criticism and reproduction for classroom purposes, but it may not supersede the use of the original work. See Harper & Row, Publishers v. Nation Enterprises, 471 U.S. 539 (1985) (an unauthorized 510 U.S. 569 (1994).

The Court’s “reluctance to expand [copyright] protection without explicit legislative guidance” controlled its decision in Sony Corp. v. Universal City Studios,1448 in which it held that the manufacture and sale of video tape (or cassette) recorders for home use do not constitute “contributory” infringement of the copyright in television programs. Copyright protection, the Court reiterated, is “wholly statutory,” and courts should be “circumspect” in extending protections to new technology. The Court refused to hold that contributory infringement could occur simply through the supplying of the devices with which someone else could infringe, especially in view of the fact that VCRs are capable of substantial noninfringing “fair use,” e.g., time shifting of television viewing.

In giving to authors the exclusive right to dramatize any of their works, Congress did not exceed its powers under this clause. Even as applied to pantomine dramatization by means of silent motion pictures, the act was sustained against the objection that it extended the copyright to ideas rather than to the words in which they were clothed.1449 But the copyright of the description of an art in a book was held not to lay a foundation for an exclusive claim to the art itself. The latter can be protected, if at all, only by letters patent.1450 Since copyright is a species of property distinct from the ownership of the equipment used in making copies of the matter copyrighted, the sale of a copperplate under execution did not pass any right to print and publish the map which the copperplate was designed to produce.1451 A patent right may, however, be subjected, by bill in equity, to payment of a judgment debt of the patentee.1452

Power of Congress Over Patents and Copyrights

Letters patent for a new invention or discovery in the arts confer upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the Government without just compensation.1453 Congress may, however, modify rights under an existing patent, provided vested property rights are not thereby impaired,1454 but it does not follow that it may authorize an inventor to recall rights that he has granted to others or re-invest in him rights of property that he had previously conveyed for a valuable and fair consideration.1455 Furthermore, the rights the present statutes confer are subject to the antitrust laws, though it can hardly be said that the cases in which the Court has endeavored to draw the line between the rights claimable by patentees and the kind of monopolistic privileges which are forbidden by those acts exhibit entire consistency in their holdings.1456

1448 464 U.S. 417, 431 (1984). Cf. Metro-Goldwin-Mayer Studios Inc. v. Grokster, Ltd, 545 U.S. 913 (2005) (active encouragement of infringement by distribution of software for sharing of copyrighted music and video files can constitute infringement).

1449 Kalem Co. v. Harper Bros., 222 U.S. 55 (1911). For other problems arising because of technological and electronic advancement see, e.g., Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968); Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984).

1450 Baker v. Selden, 101 U.S. 99, 105 (1880).

1451 Stevens v. Gladding, 58 U.S. (17 How.) 447 (1855).

1452 Ager v. Murray, 105 U.S. 126 (1882).

1453 James v. Campbell, 104 U.S. 356, 358 (1882). See also United States v. Burns, 79 U.S. (12 Wall.) 246, 252 (1871); Cammeyer v. Newton, 94 U.S. 225, 234 (1877); Hollister v. Benedict Manufacturing Co., 113 U.S. 59, 67 (1885); United States v. Palmer, 128 U.S. 262, 271 (1888); Belknap v. Schild, 161 U.S. 10, 16 (1896).

1454 McClurg v. Kingsland, 42 U.S. (1 How.) 202, 206 (1843).

1455 Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 553 (1852).

1456 See Motion Picture Co. v. Universal Film Co., 243 U.S. 502 (1917); Morton Salt Co. v. Suppiger Co., 314 U.S. 488 (1942); United States v. Masonite Corp., 316 U.S. 265 (1942); United States v. New Wrinkle, Inc., 342 U.S. 371 (1952), where the Justices divided 6 to 3 as to the significance for the case of certain leading precedents; and Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172 (1965).

State Power Affecting Patents and Copyrights

Displacement of state police or taxing powers by federal patent or copyright has been a source of considerable dispute. Ordinarily, rights secured to inventors must be enjoyed in subordination to the general authority of the States over all property within their limits. A state statute requiring the condemnation of illuminating oils inflammable at less than 130 degrees Fahrenheit was held not to interfere with any right secured by the patent laws, although the oil for which the patent was issued could not be made to comply with state specifications.1457 In the absence of federal legislation, a State may prescribe reasonable regulations for the transfer of patent rights, so as to protect its citizens from fraud. Hence, a requirement of state law that the words “given for a patent right” appear on the face of notes given in payment for such right is not unconstitutional.1458 Royalties received from patents or copyrights are subject to a nondiscriminatory state income tax, a holding to the contrary being overruled.1459

1457 Patterson v. Kentucky, 97 U.S. 501 (1879).

1458 Allen v. Riley, 203 U.S. 347 (1906); John Woods & Sons v. Carl, 203 U.S. 358 (1906); Ozan Lumber Co. v. Union County Bank, 207 U.S. 251 (1907).

1459 Fox Film Corp. v. Doyal, 286 U.S. 123 (1932), overruling Long v. Rockwood, 277 U.S. 142 (1928).

State power to protect things not patented or copyrighted under federal law has been buffeted under changing Court doctrinal views. In two major cases, the Court held that a State could not utilize unfair competition laws to prevent or punish the copying of products not entitled to a patent. Emphasizing the necessity for a uniform national policy and adverting to the monopolistic effects of the state protection, the Court inferred that because Congress had not extended the patent laws to the material at issue, federal policy was to promote free access when the materials were thus in the public domain.1460 But, in Goldstein v. California,1461 the Court distinguished the two prior cases and held that the determination whether a state “tape piracy” statute conflicted with the federal copyright statute depended upon the existence of a specific congressional intent to forbid state protection of the “writing” there involved. Its consideration of the statute and of its legislative history convinced the Court that Congress in protecting certain “writings” and in not protecting others bespoke no intention that federally unprotected materials should enjoy no state protection, only that Congress “has left the area unattended.”1462 Similar analysis was used to sustain the application of a state trade secret law to protect a chemical process, that was patentable but not patented, from utilization by a commercial rival, which had obtained the process from former employees of the company, all of whom had signed agreements not to reveal the process. The Court determined that protection of the process by state law was not incompatible with the federal patent policy of encouraging invention and public use of patented inventions, inasmuch as the trade secret law serves other interests not similarly served by the patent law and where it protects matter clearly patentable it is not likely to deter applications for patents.1463

1460 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964).

1461 412 U.S. 546 (1973). Informing the decisions were different judicial attitudes with respect to the preclusion of the States from acting in fields covered by the patent and copyright clauses, whether Congress had or had not acted. The latter case recognized permissible state interests, id. at 552–560, whereas the former intimated that congressional power was exclusive. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 228–31 (1964).

1462 In the 1976 revision of the copyright law, Congress broadly preempted, with narrow exceptions, all state laws bearing on material subject to copyright. 17 U.S.C. § 301. The legislative history makes clear Congress’ intention to overturn Goldstein and “to preempt and abolish any rights under the common law or statutes of a state that are equivalent to copyright and that extend to works coming within the scope of the federal copyright law.” H. Rep. No. 94–1476, 94th Congress, 2d sess. (1976), 130. The statute preserves state tape piracy and similar laws as to sound recordings fixed before February 15, 1972, until February 15, 2047.

1463 Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974). See also Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979).

Returning to the Sears and Compco emphasis, the Court unanimously, in Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,1464 reasserted that “efficient operation of the federal patent system depends upon substantially free trade in publicly known, unpatented design and utilitarian conceptions.”1465 At the same time, however, the Court attempted to harmonize Goldstein, Kewanee, and other decisions: there is room for state regulation of the use of unpatented designs if those regulations are “necessary to promote goals outside the contemplation of the federal patent scheme.”1466 What States are forbidden to do is to “offer patent-like protection to intellectual creations which would otherwise remain unprotected as a matter of federal law.”1467 A state law “aimed directly at preventing the exploitation of the [unpatented] design” is invalid as impinging on an area of pervasive federal regulation.1468

Trade-Marks and Advertisements

In the famous Trade-Mark Cases,1469 decided in 1879, the Supreme Court held void acts of Congress, which, in apparent reliance upon this clause, extended the protection of the law to trademarks registered in the Patent Office. “The ordinary trade mark,” said Justice Miller for the Court, “has no necessary relation to invention or discovery;” nor is it to be classified “under the head of writings of authors.” It does not “depend upon novelty, invention, discovery, or any work of the brain.”1470 Not many years later the Court, again speaking through Justice Miller, ruled that a photograph may be constitutionally copyrighted,1471 while still more recently a circus poster was held to be entitled to the same protection. In answer to the objection of the circuit court that a lithograph which “has no other use than that of a mere advertisement ... (would not be within) the meaning of the Constitution,” Justice Holmes summoned forth the shades of Velasquez, Whistler, Rembrandt, Ruskin, Degas, and others in support of the proposition that it is not for the courts to attempt to judge the worth of pictorial illustrations outside the narrowest and most obvious limits.1472

1464 489 U.S. 141 (1989).

1465 489 U.S. at 156.

1466 489 U.S. at 166. As examples of state regulation that might be permissible, the Court referred to unfair competition, trademark, trade dress, and trade secrets laws. Perhaps by way of distinguishing Sears and Compco, both of which invalidated use of unfair competition laws, the Court suggested that prevention of “consumer confusion” is a permissible state goal that can be served in some instances by application of such laws. Id. at 154.

1467 489 U.S. at 156 (emphasis supplied).

1468 489 U.S. at 158.

1469 100 U.S. 82 (1879).

1470 100 U.S. at 94.

1471 Burrow-Giles Lithographic Co. v. Saroney, 111 U.S. 53 (1884).

1472 Bleisten v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903).

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