2. Federal & State IP Laws The Preemption Doctrine Victor H. Bouganim WCL, American University

3. Victor H. Bouganim, WCL, American University, Spring 2001 Intellectual Property Regimes Copyright Act Patent Act Trademarks (Lanham) Act Preemption IP State Laws

4. Victor H. Bouganim, WCL, American University, Spring 2001 Constitutional Framework US Constitution, Section 8 F 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; F The Congress shall have power... F To regulate commerce with foreign nations, and among the several states, and with the Indian tribes;

5. Victor H. Bouganim, WCL, American University, Spring 2001 The Supremacy Clause US Constitution, Art. VI F 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.

6. Victor H. Bouganim, WCL, American University, Spring 2001 Tenth Amendment F 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.

7. Victor H. Bouganim, WCL, American University, Spring 2001 State Intellectual Property Law F Under the Tenth Amendment and the Supremacy Clause, states retain a concurrent power to regulate intellectual property F 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 F State law is rooted in statute or common law F States have been a major force in expanding the boundaries of intellectual property law

8. Victor H. Bouganim, WCL, American University, Spring 2001 Class Discussion F What distinguishes a permissible from an impermissible state law in the field of IP? F Does congressional exclusions of certain subject matters merit a determination that they should be in the public domain? F Are state intellectual property laws frustrate the balance of rights created in federal laws ? F Is preemption a good idea?

9. Victor H. Bouganim, WCL, American University, Spring 2001 Some State IP-Related Laws F “Common Law” Copyright F Protection for Idea Submission F Publicity Rights F State Moral Rights –Resale Royalties - “Droit de Suite” F Trade Secrets F Misappropriation & Unfair Competition F “Anti-Dilution” of trademarks Acts

10. Victor H. Bouganim, WCL, American University, Spring 2001 Federal Preemption F The U.S. Constitution, Art. 1, Sec. 8, Clause 8, expressly provides Congress the authority to grant patents and copyrights F The Commerce Clause authorizes Congress to regulate trademarks and acts of unfair competition in interstate commerce F 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” F Much uncertainty surrounding test for preemption

11. Victor H. Bouganim, WCL, American University, Spring 2001 Federal Preemption in IP Law F Copyright Preemption F Patent Preemption F Trademark Preemption

12. Victor H. Bouganim, WCL, American University, Spring 2001 Copyright Preemption F 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 F The 1976 Act unified copyright protection and brought it under the exclusive control of Congress F Federal protection commences upon fixation of a work in tangible form, and Section 301 provides that state common-law claims are preempted

13. Victor H. Bouganim, WCL, American University, Spring 2001 17 U.S.C. Section 301 F 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 F Under Section 301, state laws can provide remedies outside copyright, but not equivalent to copyright

14. Victor H. Bouganim, WCL, American University, Spring 2001 Example: Moral Rights F Certain States provides moral right to authors F 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 F Resale Royalties - “Droit de Suite” - is it related to the moral rights of attribution, and therefore would be preempted?

15. Victor H. Bouganim, WCL, American University, Spring 2001 Patent Preemption F In drafting patent laws, Congress attempted to balance encouragement of invention and promotion of a competitive market F The compromise by Congress was to provide limited monopolies for novel and non-obvious inventions F All other inventions would remain in the public domain F A state law that provides protection to these other inventions would frustrate the intent of Congress and, thus, must be preempted

16. Victor H. Bouganim, WCL, American University, Spring 2001 Trademark Preemption F Because the Lanham Act was passed under the Commerce Clause, the analysis for trademark preemption differs from that for patents and copyrights F 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 F Early cases held that the Lanham Act preempted all state trademark law; this view has changed

17. Victor H. Bouganim, WCL, American University, Spring 2001 Cases on Misappropriation & Unfair Competition F INS v AS, S. Ct, 1918 –Copying competitor’s news (news are unprotected information) F Sears v Stiffel, S. Ct., 1964 –Copying competitor’s lamp (when the lamp design and the invention is unpatentable) F Bonito Boats v Thunder Crafts, S. Ct., 1989 –Preemption of state law attempting to protect unpatentable designs