Copyright © 1997, 2001-2002 Jay M. Tyndall (Unless Indicated Otherwise)

United States Intellectual Property Law Overview

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Constitutional Authority for Federal Intellectual Property Legislation

U.S. Constitution, Article I, Section 8, clauses 3 and 8

(3) Interstate Commerce:

(8) Ability to Grant Exclusive Rights in Writings and Discoveries

U.S. Constitution, Article VI (Supremacy Clause)

Authority Given the States under the Constitution
U.S. Constitution, Amendment X

Brief Analysis for Determining Federal Preemption of State Law

Constitutional Authority in the Context of Patent Law:    In Relation to:
I.State Unfair Competition Law
II.State Statutory Protection of Trade Secrets
III.State Statutory Protection of Boat Hull Designs

Constitutional Authority in the Context of Copyright Law:   In Relation to:
I.State Statutory Protection of Sound Recordings

Constitutional Authority in the Context of Trademark Law:     In Relation to:
I.The Patent and Interstate Commerce Clauses
II.State Unfair Competition Law
III.Extraterritorial Application of the Trademark Act

Constitutional Authority and Federal Intellectual Property Law

In the Context of Patent Law:
Sears v. Stiffel, 376 U.S. 225 (1964)

Kewanee Oil Co. v. Bicron Corp. et al., 416 U.S. 470 (1974)

Bonito Boats Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989)

In the Context of Copyright Law:

Goldstein et al. v. California, 412 U.S. 546 (1973)

In the Context of Trademark Law:

In re Trade-Mark Cases, 100 U.S. 82 (1879)
  • In this case, the Court assessed the constitutionality of the Trade-Mark Act of 1876, which amended the 1870 Act of the same name.
    • At issue were indictments and an information arising from alleged violations of provisions in the 1876 Act criminalizing the fraudulent use, sale, and counterfeiting of trademarks registered under it.
  • The Court stated that laws regulating the use of trademarks were within the powers of the states and that any Federal law addressing this area must have a clear basis in the Constitution.
    • In addressing Article I, Section 8, clause 8 as a basis for Congressional authority, the Court found that trademarks could not be equated with or subsumed in the categories "Writings and Discoveries".
      • In comparing them to "Discoveries", it found that neither originality, invention, discovery,science, nor art were required in order to establish any of the rights which the Act granted based upon registration.
      • With regard to "Writings", even in construing the word liberally, it felt that original, creative works which were the fruits of intellectual labor, such as books, engravings, and the like, were intended to be protected by the type of Congressional legislation authorized, rather than the adoption in commercial use of a pre-existing symbol.
    • In addressing Article I, Section 8, clause 3 as a basis for Congressional authority, the Court stated that even giving the term "interstate commerce" a broad interpretation, the largest category of commerce in the country was likely that of commerce within the individual states, and it was beyond the legitimate control of Congress.
      • The Trade-Mark Act of 1876 provided:
          Any person or firm domiciled in the United States, and any corporation created by the authority of the United States, or of any State or Territory thereof, and any person, firm, or corporation resident of or located in any foreign country which by treaty or convention affords similar privileges to citizens of the United States, and who are entitled to the exclusive use of any lawful trade-mark, or who intend to adopt and use any trade-mark for exclusive use within the United States, may obtain protection for such lawful trade-mark, by complying with the following requirements: ...
      • In the Court's view, by failing in the above language or elsewhere to limit the Act's application to interstate commerce with regard to specification of goods, registration, protection of rights, or remedies, the Act did not appropriately distinguish the territorial character of trade or the residence of the mark's owner.
        • Because the Act lacked a basis under Article I, Section 8, clause 3 and the its wording required the Federal regulation of commerce which was purely intrastate in nature, the Trade-Mark Act of 1876 was declared by the Court to be unconstitutional.

United States Printing & Lithograph Co. v. Griggs, Cooper & Co., 279 U.S. 156 (1929)
  • This case involved the use by the defendant of the mark "Home" in states other than the Northwestern states in which the plaintiff used its mark "Home Brand". The plaintiff's mark had been registered under the Trade-Mark Act of 1905. Both uses were in relation to "grocers' goods".
    • The Ohio Supreme Court upheld the trial court's decision that the Trade-Mark Act of 1905 offered full protection to trademark registrants into all the states, even before trade was established in them.
  • In reversing the Ohio Supreme Court, the Court observed that the Trade-Mark Act of 1881 was enacted in response to the decision in In re Trade-Mark Cases, supra.
    • The 1881 Act granted registration and remedies only for wrongful use of a registered mark in foreign commerce or commerce with the Indian Tribes.
  • It stated that the Act of 1905 went further than the 1881 Act, in that it gave remedies against "reproduction, etc." of registered trademarks used "in commerce among the several States", as well as in foreign commerce and commerce with the Indian Tribes.
    • The Court held that the Trade-Mark Act of 1905 did not provide a remedy for infringement of a registered trademark "within the limits of a State" when neither interstate, foreign, nor Indian commerce was affected.
      • Additionally, the Court held that the 1905 Act could not enlarge rights under state law within a given individual state when a mark had not been used there.

Dad's Root Beer Co. v. Doc's Beverages, Inc. et al., 193 F.2d 77 (2nd Cir. 1951)

  • The plaintiff, using "Dad's Old Fashioned Root Beer", sold concentrate to the defendant bottler for resale under that same mark. The plaintiff paid for substantial marketing to facilitate retail sales. The defendant subsequently began marketing root beer under marks and trade dress similar to those in the plaintiff's marketing, labelling its product "Doc's Old Fashioned Root Beer".
    • The plaintiff sought, in response to the defendant's conduct subsequent to its effective date, the remedies available under the recently passed Lanham Trademark Act of 1946.
  • The court felt that the new Lanham Act "created rights uniform throughout the Union".
    • Any remediable infringement, however, was required to occur in "commerce" and"commerce" meant all commerce which may lawfully be regulated by Congress.
      • Infringers need not have acted within interstate commerce; their activities need only have caused some injury to a plaintiff's interstate business.
  • Based on the above reasoning and the plaintiff's interstate use, the court held that, subsequent to its effective date, the Trademark Act, where it applied, applied to the exclusion of state law.

Steele et al. v. Bulova Watch Co., 344 U.S. 280 (1952)

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Copyright ゥ 1997, 2001-2002 Jay M. Tyndall (Unless Indicated Otherwise)