Respondent, whose design and mechanical patents are invalid for
want of invention, cannot, under a state unfair competition law,
obtain an injunction against copying its product or an award of
damages for such copying, as such use of state law conflicts with
the exclusive power of the Federal Government to grant patents only
to true inventions, and then only for a limited time. An unpatented
article, being in the public domain, may be freely copied, though
labeling or other precautions may be required by state law where
appropriate to prevent deception as to source. Pp.
376 U. S.
225-233.
313 F.2d 115, reversed.
MR. JUSTICE BLACK delivered the opinion of the Court.
The question in this case is whether a State's unfair
competition law can, consistently with the federal patent laws,
impose liability for or prohibit the copying of an article which is
protected by neither a federal patent nor a copyright. The
respondent, Stiffel Company, secured design and mechanical patents
on a "pole lamp" -- a vertical
Page 376 U. S. 226
tube having lamp fixtures along the outside, the tube being made
so that it will stand upright between the floor and ceiling of a
room. Pole lamps proved a decided commercial success, and, soon
after Stiffel brought them on the market, Sears, Roebuck &
Company put on the market a substantially identical lamp, which it
sold more cheaply, Sears' retail price being about the same as
Stiffel's wholesale price. Stiffel then brought his action against
Sears in the United States District Court for the Northern District
of Illinois, claiming in its first count that, by copying its
design, Sears had infringed Stiffel's patents, and, in its second
count, that, by selling copies of Stiffel's lamp, Sears had caused
confusion in the trade as to the source of the lamps, and had
thereby engaged in unfair competition under Illinois law. There was
evidence that identifying tags were not attached to the Sears
lamps, although labels appeared on the cartons in which they were
delivered to customers, that customers had asked Stiffel whether
its lamps differed from Sears', and that, in two cases, customers
who had bought Stiffel lamps had complained to Stiffel on learning
that Sears was selling substantially identical lamps at a much
lower price.
The District Court, after holding the patents, invalid for want
of invention, went on to find as a fact that Sears' lamp was "a
substantially exact copy" of Stiffel's, and that the two lamps were
so much alike, both in appearance and in functional details, "that
confusion between them is likely, and some confusion has already
occurred." On these findings, the court held Sears guilty of unfair
competition, enjoined Sears from "unfairly competing with [Stiffel]
by selling or attempting to sell pole lamps identical to or
confusingly similar to" Stiffel's lamp, and ordered an accounting
to fix profits and damages resulting from Sears' "unfair
competition."
Page 376 U. S. 227
The Court of Appeals affirmed. [
Footnote 1] 313 F.2d 115. That court held that, to make
out a case of unfair competition under Illinois law, there was no
need to show that Sears had been "palming off" its lamps as Stiffel
lamps; Stiffel had only to prove that there was a "likelihood of
confusion as to the source of the products" -- that the two
articles were sufficiently identical that customers could not tell
who had made a particular one. Impressed by the "remarkable
sameness of appearance" of the lamps, the Court of Appeals upheld
the trial court's findings of likelihood of confusion and some
actual confusion, findings which the appellate court construed to
mean confusion "as to the source of the lamps." The Court of
Appeals thought this enough under Illinois law to sustain the trial
court's holding of unfair competition, and thus held Sears liable
under Illinois law for doing no more than copying and marketing an
unpatented article. [
Footnote
2] We granted certiorari to consider whether this
Page 376 U. S. 228
use of a State's law of unfair competition is compatible with
the federal patent law. 374 U.S. 826.
Before the Constitution was adopted, some States had granted
patents either by special act or by general statute, [
Footnote 3] but when the Constitution was
adopted, provision for a federal patent law was made one of the
enumerated powers of Congress because, as Madison put it in The
Federalist No. 43, the States "cannot separately make effectual
provision" for either patents or copyrights. [
Footnote 4] That constitutional provision is Art.
I, § 8, cl. 8, which empowers Congress
"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."
Pursuant to this constitutional
Page 376 U. S. 229
authority, Congress in 1790, enacted the first federal patent
and copyright law, 1 Stat. 109, and, ever since that time, has
fixed the condition upon which patents and copyrights shall be
granted,
see17 U.S.C. §§ 1-216; 35 U.S.C. §§ 1-293. These
laws, like other laws of the United States enacted pursuant to
constitutional authority, are the supreme law of the land.
See
Sperry v. Florida, 373 U. S. 379
(1963). When state law touches upon the area of these federal
statutes, it is "familiar doctrine" that the federal policy "may
not be set at naught, or its benefits denied" by the state law.
Sola Elec. Co. v. Jefferson Elec. Co., 317 U.
S. 173,
317 U. S. 176
(1942). This is true, of course, even if the state law is enacted
in the exercise of otherwise undoubted state power.
The grant of a patent is the grant of a statutory monopoly;
[
Footnote 5] indeed, the grant
of patents in England was an explicit exception to the statute of
James I prohibiting monopolies. [
Footnote 6] Patents are not given as favors, as was the
case of monopolies given by the Tudor monarchs,
see The Case of
Monopolies (Darcy v. Allein), 11 Co.Rep. 84b, 77 Eng.Rep. 1260
(K.B.1602), but are meant to encourage invention by rewarding the
inventor with the right, limited to a term of years fixed by the
patent, to exclude others from the use of his invention. During
that period of time, no one may make use, or sell the patented
Page 376 U. S. 230
product without the patentee's authority. 35 U.S.C. § 271. But,
in rewarding useful invention, the "rights and welfare of the
community must be fairly dealt with and effectually guarded."
Kendall v.
Winsor, 21 How. 322,
62 U. S. 328
(1859). To that end, the prerequisites to obtaining a patent are
strictly observed, and, when the patent has issued, the limitations
on its exercise are equally strictly enforced. To begin with, a
genuine "invention" or "discovery" must be demonstrated, "lest, in
the constant demand for new appliances, the heavy hand of tribute
be laid on each slight technological advance in an art."
Cuno
Engineering Corp. v. Automatic Devices Corp., 314 U. S.
84,
314 U. S. 92
(1941);
see Great Atlantic & Pacific Tea Co. v. Supermarket
Equipment Corp., 340 U. S. 147,
340 U. S.
152-153 (1950);
Atlantic Works v. Brady,
107 U. S. 192,
107 U. S.
199-200 (1883). Once the patent issues, it is strictly
construed.
United States v. Masonite Corp., 316 U.
S. 265,
316 U. S. 280
(1942), it cannot be used to secure any monopoly beyond that
contained in the patent,
Morton Salt Co. v. G. S. Suppiger
Co., 314 U. S. 488,
314 U. S. 492
(1942), the patentee's control over the product when it leaves his
hands is sharply limited,
see United States v. Univis Lens
Co., 316 U. S. 241,
316 U. S.
250-252 (1942), and the patent monopoly may not be used
in disregard of the antitrust laws,
see International Business
Machines Corp. v. United States, 298 U.
S. 131 (1936);
United Shoe Machinery Corp. v. United
States, 258 U. S. 451,
258 U. S.
463-464 (1922). Finally, and especially relevant here,
when the patent expires, the monopoly created by it expires, too,
and the right to make the article -- including the right to make it
in precisely the shape it carried when patented -- passes to the
public.
Kellogg Co. v. National Biscuit Co., 305 U.
S. 111,
305 U. S.
120-122 (1938);
Singer Mfg. Co. v. June Mfg.
Co., 163 U. S. 169,
163 U. S. 185
(1896).
Thus, the patent system is one in which uniform federal
standards are carefully used to promote invention
Page 376 U. S. 231
while at the same time preserving free competition. [
Footnote 7] Obviously a State could
not, consistently with the Supremacy Clause of the Constitution,
[
Footnote 8] extend the life of
a patent beyond its expiration date or give a patent on an article
which lacked the level of invention required for federal patents.
To do either would run counter to the policy of Congress of
granting patents only to true inventions, and then only for a
limited time. Just as a State cannot encroach upon the federal
patent laws directly, it cannot, under some other law, such as that
forbidding unfair competition, give protection of a kind that
clashes with the objectives of the federal patent laws.
In the present case, the "pole lamp" sold by Stiffel has been
held not to be entitled to the protection of either a mechanical or
a design patent. An unpatentable article, like an article on which
the patent has expired, is in the public domain, and may be made
and sold by whoever chooses to do so. What Sears did was to copy
Stiffel's design and to sell lamps almost identical to those sold
by Stiffel. This it had every right to do under the federal patent
laws. That Stiffel originated the pole lamp and made it popular is
immaterial.
"Sharing in the goodwill of an article unprotected by patent or
trademark is the exercise of a right possessed by all -- and in the
free exercise of which the consuming public is deeply
interested."
Kellogg Co. v. National Biscuit Co., supra, 305 U.S. at
305 U. S. 122.
To allow a State by use of its law of unfair competition to prevent
the copying of an article which represents
Page 376 U. S. 232
too slight an advance to be patented would be to permit the
State to block off from the public something which federal law has
said belongs to the public. The result would be that, while federal
law grants only 14 or 17 years' protection to genuine inventions,
see 35 U.S.C. §§ 154, 173, States could allow perpetual
protection to articles too lacking in novelty to merit any patent
at all under federal constitutional standards. This would be too
great an encroachment on the federal patent system to be
tolerated.
Sears has been held liable here for unfair competition because
of a finding of likelihood of confusion based only on the fact that
Sears' lamp was copied from Stiffel's unpatented lamp and that,
consequently, the two looked exactly alike. Of course, there could
be "confusion" as to who had manufactured these nearly identical
articles. But mere inability of the public to tell two identical
articles apart is not enough to support an injunction against
copying or an award of damages for copying that which the federal
patent laws permit to be copied. Doubtless a State may, in
appropriate circumstances, require that goods, whether patented or
unpatented, be labeled, or that other precautionary steps be taken
to prevent customers from being misled as to the source, just as it
may protect businesses in the use of their trademarks, labels, or
distinctive dress in the packaging of goods so as to prevent
others, by imitating such markings, from misleading purchasers as
to the source of the goods. [
Footnote 9] But because of the federal patent laws, a
State may not, when the article is unpatented and uncopyrighted,
prohibit the
Page 376 U. S. 233
copying of the article itself or award damages for such copying.
Cf. G. Ricordi & Co. v. Haendler, 194 F.2d 914, 916
(C.A.2d Cir. 1952). The judgment below did both, and, in so doing,
gave Stiffel the equivalent of a patent monopoly on its unpatented
lamp. That was error, and Sears is entitled to a judgment in its
favor.
Reversed.
[For concurring opinion of MR. JUSTICE HARLAN,
see
post, p.
376 U. S.
239.]
[
Footnote 1]
No review is sought here of the ruling affirming the District
Court's holding that the patent is invalid.
[
Footnote 2]
313 F.2d at 118 and nn. 6, 7. At least one Illinois case has
held in an exhaustive opinion that unfair competition under the law
of Illinois is not proved unless the defendant is shown to have
"palmed off" the article which he sells as that of another seller;
the court there said that
"[t]he courts in this State do not treat the 'palming off'
doctrine as merely the designation of a typical class of cases of
unfair competition, but they announce it as the rule of law itself
-- the test by which it is determined whether a given state of
facts constitutes unfair competition as a matter of law. . . . The
'palming off' rule is expressed in a positive, concrete form which
will not admit of 'broadening' or 'widening' by any proper judicial
process."
Stevens-Davis Co. v. Mather & Co., 230 Ill.App. 45,
65-66 (1923). In spite of this, the Court of Appeals, in its
opinions both in this case and in
Day-Brite Lighting, Inc. v.
Compco Corp., 311 F.2d 26,
rev'd post, p.
376 U. S. 234,
relied upon one of its previous decisions in a tradename case,
Independent Nail & Packing Co. v. Stronghold Screw
Products, 205 F.2d 921 (C.A.7th Cir. 1953), which concluded
that, as to use of tradenames, the
Stevens-Davis rule had
been overruled by two subsequent Illinois decisions. Those two
cases, however, discussed only misleading use of trade names, not
copying of articles of trade. One prohibited the use of a name so
similar to that of another seller as to deceive or confuse
customers, even though the defendant company did not sell the same
products as the plaintiff and so, in one sense, could not be said
to have palmed off its goods as those of a competitor, since the
plaintiff was not a competitor.
Lady Esther, Ltd., v. Lady
Esther Corset Shoppe, Inc., 317 Ill.App. 451, 46 N.E.2d 165
(1943). The other Illinois case on which the Court of Appeals
relied was a mandamus action which held that, under an Illinois
statute, a corporation was properly denied registration in the
State when its name was "deceptively similar" to that of a
corporation already registered.
Investors Syndicate of America,
Inc., v. Hughes, 378 Ill. 413, 38 N.E.2d 754 (1941). The Court
of Appeals, by holding that, because Illinois forbids misleading
use of tradenames, it also forbids as unfair competition the mere
copying of an article of trade without any palming off, thus
appears to have extended greatly the scope of the Illinois law of
unfair competition beyond the limits indicated in the Illinois
cases and beyond any previous decisions of the Seventh Circuit
itself. Because of our disposition of these cases, we need not
decide whether it was correct in doing so.
[
Footnote 3]
See I Walker, Patents (Deller ed. 1937), § 7.
[
Footnote 4]
The Federalist (Cooke ed. 1961) 288.
[
Footnote 5]
Patent rights exist only by virtue of statute.
Wheaton v.
Peters, 8 Pet. 591,
33 U. S. 658
(1834).
[
Footnote 6]
The Statute of Monopolies, 21 Jac. I, c. 3 (1623), declared all
monopolies "contrary to the Laws of this Realm" and "utterly void
and of none Effect." Section VI, however, excepted patents of 14
years to "the true and first Inventor and Inventors" of "new
Manufacturers" so long as they were
"not contrary to the Law, nor mischievous to the State, by
raising Prices of Commodities at home, or Hurt of Trade, or
generally inconvenient. . . ."
Much American patent law derives from English patent law.
See Pennock v.
Dialogue, 2 Pet. 1,
27 U. S. 18
(1829).
[
Footnote 7]
The purpose of Congress to have national uniformity in patent
and copyright laws can be inferred from such statutes as that which
vests exclusive jurisdiction to hear patent and copyright cases in
federal courts, 28 U.S.C. § 1338(a), and that section of the
Copyright Act which expressly saves state protection of unpublished
writings, but does not include published writings, 17 U.S.C. §
2.
[
Footnote 8]
U.S.Const., Art. VI.
[
Footnote 9]
It seems apparent that Illinois has not seen fit to impose
liability on sellers who do not label their goods. Neither the
discussions in the opinions below nor the briefs before us cite any
Illinois statute or decision requiring labeling.