Article 1, Section 8, Clause 8 — State Regulation Of Intellectual Property

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Article I, Section 8, 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.

In the absence of preemptive federal legislation to the contrary, nondiscriminatory exercises of state police and taxing powers are not invalid just because such state laws affect federal copyrights and patents.[1](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn1art1 " Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979) ( “[S]tates are free to regulate the use of such intellectual property in any manner not inconsistent with federal law.” ). ") Thus, state safety regulations are not void because they limit or preclude the practice of an invention protected by a federal patent.[2](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn2art1 " Patterson v. Kentucky, 97 U.S. 501, 505–07 (1879). ") Similarly, a state may prescribe reasonable regulations on the transfer of intellectual property rights to protect its citizens from fraud.[3](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn3art1 " Allen v. Riley, 203 U.S. 347, 356 (1906); see also Aronson, 440 U.S. at 262 ( “State [contract] law is not displaced merely because the contract relates to intellectual property which may or may not be patentable . . . .” ). ") States may tax royalties received from patent or copyright licenses as income.[4](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn4art1 " Fox Film Corp. v. Doyal, 286 U.S. 123, 128, 131 (1932). ")

Furthermore, states may provide IP-like protections to material that Congress could regulate under the IP Clause, so long as these provisions are neither (i) expressly preempted by a valid act of Congress, nor (ii) in conflict with the purposes of, or the policy balance struck by, federal IP law.[5](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn5art1 " See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 152, 165 (1989). ") For example, before the Copyright Act of 1976, federal copyright law only applied to published works, and many states protected unpublished creative works under “common law” copyright.[6](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn6art1 " See Harper & Row, Publishers v. Nation Enters., 471 U.S. 539, 550–51 (1985); Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 657 (1834). ") Similarly, in Goldstein v. California, the Supreme Court ruled that states may use criminal law to penalize the unauthorized pirating of sound recordings that (although they are the writings of authors) were not protected by federal copyright law.[7](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn7art1 " 412 U.S. 546, 560–62 (1973). Congress later created federal protection for the pre-1972 sound recordings at issue in Goldstein. See Hatch-Goodlatte Music Modernization Act, Pub. L. No.

, tit. II, 132 Stat. 3676, 3728–37 (2018). ")

115-264

, tit. II, 132 Stat. 3676 , 3728–37 (2018). States may also provide trade secret protections for economically valuable information that is kept secret, even if that information constitutes patentable subject matter.[8](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn8art1 " Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 491 (1974). ")

However, states may not regulate in the field of copyrights and patents in a way that “conflict[s] with the operation of the laws in this area passed by Congress” or “clashes with the balance struck by Congress” in its IP laws.[9](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn9art1 " Id. at 479; Bonito Boats, 489 U.S. at 152. ") Indeed, a core purpose of the IP Clause’s inclusion in the Constitution was to provide national uniformity in intellectual property law.[10](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn10art1 " Bonito Boats, 489 U.S. at 162. ") Thus, states cannot offer patent-like protection to the subject matter of an expired patent or to “intellectual creations which would otherwise remain unprotected as a matter of federal law.” [11](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn11art1 " Id. at 152, 156. ") For example, states may not use unfair competition law to prevent the copying of items that are not patentable for a lack of novelty or nonobviousness,[12](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn12art1 " Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964); see also Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964). ") or create a patent-like regime that prohibits the copying of certain unpatented industrial designs.[13](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn13art1 " Bonito Boats, 489 U.S. at 157. ") Such state laws impermissibly interfere with the federal patent policy that “ideas once placed before the public without the protection of a valid patent are subject to appropriation [by the public] without significant restraint.” [14](https://www.law.cornell.edu/constitution-conan/article-1/section-8/clause-8/state-regulation-of-intellectual-property#fn14art1 " Id. at 156. ")

Footnotes

1

Aronson v. Quick Point Pencil Co., 440 U.S. 257 , 262 (1979) ( “[S]tates are free to regulate the use of such intellectual property in any manner not inconsistent with federal law.” ).

2

Patterson v. Kentucky, 97 U.S. 501 , 505–07 (1879).

3

Allen v. Riley, 203 U.S. 347 , 356 (1906); see also Aronson, 440 U.S. at 262 ( “State [contract] law is not displaced merely because the contract relates to intellectual property which may or may not be patentable . . . .” ).

4

Fox Film Corp. v. Doyal, 286 U.S. 123 , 128, 131 (1932).

5

See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 , 152, 165 (1989).

6

See Harper & Row, Publishers v. Nation Enters., 471 U.S. 539 , 550–51 (1985); Wheaton v. Peters, 33 U.S. (8 Pet.) 591 , 657 (1834).

7

412 U.S. 546 , 560–62 (1973). Congress later created federal protection for the pre-1972 sound recordings at issue in Goldstein. See Hatch-Goodlatte Music Modernization Act, Pub. L. No.

115-264

, tit. II, 132 Stat. 3676 , 3728–37 (2018).

8

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 , 491 (1974).

9

Id. at 479; Bonito Boats, 489 U.S. at 152.

10

Bonito Boats, 489 U.S. at 162.

11

Id. at 152, 156.

12

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

13

Bonito Boats, 489 U.S. at 157.

14

Id. at 156.