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CRS Annotated Constitution

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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.1369 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.1370 Royalties received from patents or copyrights are subject to a nondiscriminatory state income tax, a holding to the contrary being overruled.1371

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[p.301]the public domain.1372 But, in Goldstein v. California,1373 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.”1374 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.1375

Returning to the Sears and Compco emphasis, the Court unanimously, in Bonito Boats v. ThunderCraft Boats,1376 reasserted that “efficient operation of the federal patent system depends upon substantially free trade in publicly known, unpatented design and utilitarian conceptions.”1377 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[p.302]unpatented designs if those regulations are “necessary to promote goals outside the contemplation of the federal patent scheme.”1378 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.”1379 A state law “aimed directly at preventing the exploitation of the [unpatented] design” is invalid as impinging on an area of pervasive federal regulation.1380

Trade–Marks and Advertisements

In the famous Trade–Mark Cases,1381 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 trade–marks 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.”1382 Not many years later, the Court, again speaking through Justice Miller, ruled that a photograph may be constitutionally copyrighted,1383 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.1384

Cls. 9 and 10—Piracies and Felonies

Clause 9. The Congress shall have Power * * * To constitute Tribunals inferior to the supreme Court; (see Article III).[p.303]

Clause 10. The Congress shall have Power * * * To define and punish Piracies and Felonies committed on the high Seas, and Offences against the Law of Nations.


Origin of the Clause

“When the United States ceased to be a part of the British empire, and assumed the character of an independent nation, they became subject to that system of rules which reason, morality, and custom had established among civilized nations of Europe, as their public law. . . . The faithful observance of this law is essential to national character. . . .”1385 These words of the Chancellor Kent expressed the view of the binding character of international law that was generally accepted at the time the Constitution was adopted. During the Revolutionary War, Congress took cognizance of all matters arising under the law of nations and professed obedience to that law.1386 Under the Articles of Confederation, it was given exclusive power to appoint courts for the trial of piracies and felonies committed on the high seas, but no provision was made for dealing with offenses against the law of nations.1387 The draft of the Constitution submitted to the Convention of 1787 by its Committee of Detail empowered Congress “to declare the law and punishment of piracies and felonies committed on the high seas, and the punishment of counterfeiting the coin of the United States, and of offences against the law of nations.”1388 In the debate on the floor of the Convention, the discussion turned on the question as to whether the terms, “felonies” and the “law of nations,” were sufficiently precise to be generally understood. The view that these terms were often so vague and indefinite as to require definition eventually prevailed and Congress was authorized to define as well as punish piracies, felonies, and offenses against the law of nations.1389


1369 Patterson v. Kentucky, 97 U.S. 501 (1879).
1370 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).
1371 Fox Film Corp. v. Doyal, 286 U.S. 123 (1932), overruling Long v. Rockwood, 277 U.S. 142 (1928).
1372 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964); Compco Corp. v. Day–Brite Lighting, Inc., 376 U.S. 234 (1964).
1373 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., 552–560, whereas the former intimated that congressional power was exclusive. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 228–231 (1964).
1374 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. Sec. 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. Rept. 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.
1375 Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974). See also Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979).
1376 489 U.S. 141 (1989).
1377 Id., 156.
1378 Id., 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., 154.
1379 Id., 156(emphasis supplied).
1380 Id., 158.
1381 100 U.S. 82 (1879).
1382 Id., 94.
1383 Burrow–Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884).
1384 Bleisten v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903).
1385 1 J. Kent, Commentaries on American Law (New York: 1826), 1.
1386 19 Journals of the Continental Congress, 315, 361 (1912); 20 id. 762; 21 id. 1136–1137, 1158.
1387 Article IX.
1388 2 M. Farrand, The Records of the Federal Convention of 1787 (New Haven: Rev. ed. 1937), 168, 182.
1389 Id., 316.
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