Transcript Federal & State IP Laws - The Preemption Doctrine

Federal & State IP Laws
The Preemption Doctrine
Victor H. Bouganim
WCL, American University
Intellectual Property Regimes
IP State Laws
Preemption
Copyright Act
Patent Act
Trademarks (Lanham) Act
Victor H. Bouganim, WCL, American University, Spring 2001
Constitutional Framework
US Constitution, Section 8
 The
Congress shall
have power ...


To regulate commerce
with foreign nations, and
among the several states,
and with the Indian
tribes;
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;
Victor H. Bouganim, WCL, American University, Spring 2001
The Supremacy Clause
US Constitution, Art. VI
 This
Constitution, and the Laws of the
United States which shall be made in
Pursuance thereof; and all Treaties made, or
which shall be made, under the Authority of
the United States, shall be the supreme Law
of the Land; and the Judges in every State
shall be bound thereby, any Thing in the
Constitution or Laws of any State to the
Contrary notwithstanding.
Victor H. Bouganim, WCL, American University, Spring 2001
Tenth Amendment
The
powers not delegated to the
United States by the
Constitution, nor prohibited by
it to the states, are reserved to
the states respectively, or to the
people.
Victor H. Bouganim, WCL, American University, Spring 2001
State Intellectual Property Law
Under the Tenth Amendment and the Supremacy
Clause, states retain a concurrent power to regulate
intellectual property
 Under the Supremacy Clause, state law is preempted
by federal law if Congress intended to preempt the
field or if the state law hinders the objectives of a
federal law
 State law is rooted in statute or common law
 States have been a major force in expanding the
boundaries of intellectual property law

Victor H. Bouganim, WCL, American University, Spring 2001
Class Discussion
 What
distinguishes a permissible from an
impermissible state law in the field of IP?
 Does congressional exclusions of certain
subject matters merit a determination that they
should be in the public domain?
 Are state intellectual property laws frustrate
the balance of rights created in federal laws ?
 Is preemption a good idea?
Victor H. Bouganim, WCL, American University, Spring 2001
Some State IP-Related Laws
 Trade
Secrets
 Misappropriation
& Unfair
Competition
 “Anti-Dilution”
of trademarks
Acts
“Common Law”
Copyright
 Protection for Idea
Submission
 Publicity Rights
 State Moral Rights

– Resale Royalties “Droit de Suite”
Victor H. Bouganim, WCL, American University, Spring 2001
Federal Preemption




The U.S. Constitution, Art. 1, Sec. 8, Clause 8, expressly
provides Congress the authority to grant patents and
copyrights
The Commerce Clause authorizes Congress to regulate
trademarks and acts of unfair competition in interstate
commerce
Pursuant to the Supremacy Clause, state law is preempted
if it is “an obstacle to the accomplishment and execution of
the full purposes and objectives of Congress”
Much uncertainty surrounding test for preemption
Victor H. Bouganim, WCL, American University, Spring 2001
Federal Preemption in IP Law
Copyright
Preemption
Patent
Preemption
Trademark
Preemption
Victor H. Bouganim, WCL, American University, Spring 2001
Copyright Preemption



Prior to the Copyright Act of 1976, the U.S. had a dual
system of copyright: unpublished writings were protected
under state common-law copyright and writings published
with proper notice were protected under federal statutory
copyright law
The 1976 Act unified copyright protection and brought it
under the exclusive control of Congress
Federal protection commences upon fixation of a work in
tangible form, and Section 301 provides that state
common-law claims are preempted
Victor H. Bouganim, WCL, American University, Spring 2001
17 U.S.C. Section 301
 Section
301 provides that “all legal or
equitable rights that are equivalent to any of
the exclusive rights within the general scope
of copyright” in “works of authorship that are
fixed in tangible form” will be preempted
 Under Section 301, state laws can provide
remedies outside copyright, but not
equivalent to copyright
Victor H. Bouganim, WCL, American University, Spring 2001
Example: Moral Rights
Certain States provides moral right to authors
 In the Visual Artists Rights Act of 1990, Congress
amended section 301 to add that state laws giving
rights equivalent to the moral rights of attribution
and integrity in works of visual art, would be
preempted

Royalties - “Droit de Suite” - is it
related to the moral rights of attribution, and
therefore would be preempted?
 Resale
Victor H. Bouganim, WCL, American University, Spring 2001
Patent Preemption
In drafting patent laws, Congress attempted to
balance encouragement of invention and promotion
of a competitive market
 The compromise by Congress was to provide limited
monopolies for novel and non-obvious inventions
 All other inventions would remain in the public
domain
 A state law that provides protection to these other
inventions would frustrate the intent of Congress
and, thus, must be preempted

Victor H. Bouganim, WCL, American University, Spring 2001
Trademark Preemption
Because the Lanham Act was passed under the
Commerce Clause, the analysis for trademark
preemption differs from that for patents and copyrights
 For trademark preemption, courts look to other
Commerce Clause cases, which focus on whether
Congress intended to preempt the field of trademark
law and on whether there is an actual or potential
conflict between the state and federal statutes
 Early cases held that the Lanham Act preempted all
state trademark law; this view has changed

Victor H. Bouganim, WCL, American University, Spring 2001
Cases on Misappropriation &
Unfair Competition
 INS
v AS, S. Ct, 1918
– Copying competitor’s news (news are
unprotected information)
 Sears
v Stiffel, S. Ct., 1964
– Copying competitor’s lamp (when the lamp
design and the invention is unpatentable)
 Bonito
Boats v Thunder Crafts, S. Ct., 1989
– Preemption of state law attempting to protect
unpatentable designs
Victor H. Bouganim, WCL, American University, Spring 2001