Article I, Section 8, Clause 8 — Intellectual Property

ArtI.S8.C8.1 Overview of Congress’s Power Over Intellectual Property

The Intellectual Property Clause¹ (IP Clause) empowers Congress to grant authors and inventors exclusive rights in their writings and discoveries for limited times. This clause provides the foundation for the federal copyright² and patent³ systems, with a parallel construction that divides into two parts, one for each form of intellectual property.⁴ As to copyrights, Congress may grant “Authors” exclusive rights to their “Writings” in order to “promote the Progress of Science.” (The “Progress of Science,” at the time of the Framing, referred to “the creation and spread of knowledge and learning.”⁵) As to patents, Congress may grant “Inventors” exclusive rights to their “Discoveries” in order to “promote the Progress of . . . useful Arts”—that is, to encourage technological “innovation, advancement, or social benefit.”⁶ Relying on the IP Clause, Congress has protected copyrights and patents in some form under federal law since 1790.⁷

Under the IP Clause, copyrights and patents are based on a utilitarian rationale that exclusive rights are necessary to provide incentives to create new artistic works and technological inventions.⁸ Without legal protection, competitors could freely copy such creations, denying the original creators the ability to recoup their investments in time and effort, reducing the incentive to create in the first place.⁹ The IP Clause thus reflects an “economic philosophy” that the “encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors.”¹⁰

The Framers included the IP Clause in the Constitution to facilitate a uniform, national law governing patent and copyrights.¹¹ In the Framers’ view, the states could not effectively protect copyrights or patents separately.¹² Under the patchwork state-law system that prevailed in the Articles of Confederation period, creators had to obtain copyrights and patents in multiple states under different standards, a difficult and expensive process that undermined the purpose and effectiveness of the legal regime.¹³

The IP Clause is “both a grant of power and a limitation.”¹⁴ Two such limitations apply to both copyrights and patents. First, the Clause’s plain language requires that the exclusive rights can only persist for “limited Times.” Thus, although the term of protection may be long, Congress cannot provide for a perpetual copyright or patent term.¹⁵ Second, the exclusive rights must promote the progress of science or useful arts. Courts are broadly deferential to Congress, however, as to the means that it uses to achieve this goal.¹⁶

Other constitutional limitations of the IP Clause are specific to either copyright or patent law. For example, only works that are original are copyrightable, because copyright extends only to the “Authors” of “Writings.”¹⁷ In the context of patent law, only inventions that are novel and nonobvious are patentable “Discoveries” of “Inventors”;¹⁸ furthermore, patentable inventions must have some substantial utility to promote the progress of the “useful Arts.”¹⁹

ArtI.S8.C8.2.1 English Origins of Intellectual Property Law

The Intellectual Property Clause was written against the “backdrop” of English law and practice.¹ Patent law traces its origins to the English Parliament’s 1623 Statute of Monopolies.² Prior to this law, many patents were “little more than feudal favors,”³ a royal privilege granted by the Crown “to court favorites in goods or businesses which had long before been enjoyed by the public.”⁴ Parliament curtailed this practice in the Statute of Monopolies, which declared that “all monopolies and all commissions, grants, licences, charters and letters patents . . . are altogether contrary to the laws of the realm . . . and shall be utterly void and of none effect.”⁵ The statute contained an exception, however, that is the ancestor of modern patent law. Section 6 provided that the general prohibition on monopolies “shall not extend to any letters patents . . . for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm to the true and first inventor . . . of such manufactures.”⁶

Copyright, too, has its origins in English law.⁷ The 1710 Statute of Anne, which was styled “[a]n act for the encouragement of learning,”⁸ was also enacted against a background of monopolistic privileges granted by the Crown—in particular, the Stationers’ Company’s exclusive control over book printing.⁹ To encourage the creation of new books, the Statute of Anne granted authors the exclusive right to copy their works for an initial term of fourteen years, renewable for another term of fourteen years if the author was still living.¹⁰ For already published books, the Statute of Anne replaced the perpetual rights claimed by booksellers with a single twenty-one-year term.¹¹

ArtI.S8.C8.2.2 Framing and Ratification of Intellectual Property Clause

Under the Articles of Confederation, the Federal Government lacked power to grant copyrights or patents.¹ Recognizing the limits on its authority, the Continental Congress passed a resolution in May 1783 calling upon the state legislatures to enact copyright legislation.² All of the then-existing states except Delaware adopted such laws, with varying scope and terms of protection.³ Similarly, to the extent patent rights existed at all during this period, such rights derived from varying state laws.⁴

This patchwork of state-by-state protection created difficulties for authors and inventors: obtaining multiple state copyrights or patents was “time consuming, expensive, and frequently frustrating.”⁵ In April 1787, James Madison deplored the “want of uniformity in the laws concerning . . . literary property,” though he conceded that the issue was of “inferior moment” compared to other concerns facing the early Republic.⁶ Perhaps for this reason, neither the early plans of government presented at the Constitutional Convention nor the first draft of the Constitution mentioned intellectual property.⁷

On August 18, 1787, Madison and Charles Pinckney of South Carolina each proposed additions to the draft Constitution that would grant Congress power over intellectual property.⁸ These proposals would have granted Congress the power to, among other things: (i) “secure to literary authors their copy rights for a limited time”; (ii) “encourage, by proper premiums and provisions, the advancement of useful knowledge and discoveries”; and (iii) “grant patents for useful inventions.”⁹ The matter was referred to the Committee of Eleven, who combined elements of these proposals to produce the language that would become the Intellectual Property (IP) Clause on September 5, 1787.¹⁰ The Convention approved the IP Clause without objection or any recorded debate.¹¹

In the Federalist No. 43, Madison explained the IP Clause’s purpose:

The utility of this power will scarcely be questioned. The copyright of authors has been

solemnly adjudged, in Great Britain, to be a right of common law. The right to useful

inventions seems with equal reason to belong to the inventors. The public good fully

coincides in both cases with the claims of individuals. The States cannot separately

make effectual provisions for either of the cases, and most of them have anticipated the

decision of this point, by laws passed at the instance of Congress.¹²

Madison’s view of the IP Clause’s utility was not universally held. Thomas Jefferson, learning of the IP Clause in Paris, wrote to Madison on July 31, 1788, suggesting that the proposed Bill of Rights include a provision “to abolish . . . Monopolies, in all cases.”¹³ Acknowledging this “may lessen[ ] the incitements to ingenuity,” Jefferson argued “the benefit even of limited monopolies is too doubtful to be opposed to that of their general suppression.”¹⁴ Jefferson later tempered his views, proposing a constitutional amendment that “Monopolies may be allowed to persons for their own productions in literature, & their own inventions in the arts, for a term not exceeding—years, but for no longer term & no other purpose.”¹⁵ Congress did not act on Jefferson’s proposal, but his views on intellectual property have influenced the Supreme Court.¹⁶

Following the ratification of the Constitution, the first Congress invoked its power under the IP Clause to enact national copyright and patent laws in 1790.¹⁷ Protections for patents and copyrights have been a part of federal law ever since.¹⁸

ArtI.S8.C8.3.1 Authorship, Writings, and Originality

In 1834, the Supreme Court established in its first copyright case, Wheaton v. Peters, that federal copyright is purely a creation of statutory law—not federal common law.¹ Wheaton arose out of the reporting of the decisions of the Supreme Court itself; Wheaton, who published the annotated decisions of the Court from 1816 to 1827, sued a competing reporter.² Because it appeared that Wheaton had not complied with all of the statutory requirements for a copyright, he alternatively asserted a common law right in his publications.³

The Supreme Court held that although common law rights may exist in an unpublished manuscript under state law, after publication, federal protection for the work was available “if at all, under the acts of Congress.”⁴ The Court rejected the argument that the word “secure” in the Intellectual Property (IP) Clause was intended not “to originate a right, but to protect one already in existence.”⁵ Thus, copyright did not vest in the author unless he substantially complied with the statutory requirements imposed by Congress.⁶

The IP Clause empowers Congress to grant copyright to the “Authors” of “Writings.” The term “Writings” has long been interpreted more broadly than merely “script or printed material.”⁷ In 1884, the Supreme Court held in Burrow-Giles Lithographic Co. v. Sarony that Congress could constitutionally provide for copyright in photography.⁸ The Court defined an “Author” as “he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.”⁹ “Writings,” in turn, encompassed “all forms of writing, printing, engravings, etchings, etc., by which the ideas in the mind of the author are given . . . expression.”¹⁰ Applying these definitions, the Court had “no doubt” that the IP Clause was broad enough to authorize copyright in photographs.¹¹ Indeed, under current law, copyright generally covers any original work of authorship, including literary works; musical works; dramatic works; choreography; audiovisual works; pictorial, graphic, and sculptural works; sound recordings; and architectural works.¹²

Having established that photography was copyrightable in general, Burrow-Giles turned to whether the photograph at issue possessed the requisite level of originality. The subject of the lawsuit was a portrait of Oscar Wilde taken by the photographer Napoleon Sarony.¹³ The Court noted that Sarony conceived the portrait, posed Wilde in front of the camera, and arranged the subject and the lighting, all to evoke a desired expression.¹⁴ On these facts, the Court concluded the photograph was more than a “mechanical reproduction,” but “an original work” that could be copyrighted.¹⁵ Indeed, so long as a work is original—and meets all statutory requirements—copyright is available irrespective of the aesthetic or social value of the work.¹⁶

A century later, in Feist Publications v. Rural Telephone Service Co., the Supreme Court confirmed that originality is a constitutional requirement and more precisely defined what originality requires.¹⁷ The issue in Feist was whether a telephone directory listing the names, addresses, and telephone numbers of people in a particular geographic area was copyrightable.¹⁸ The Supreme Court held that originality, the “sine qua non of copyright,”¹⁹ requires “that the work was independently created by the author” and “that it possesses at least some minimal degree of creativity.”²⁰ On this standard, facts—such as names and telephone numbers arranged alphabetically—are neither original nor copyrightable because facts “do not owe their origin to an act of authorship.”²¹ That said, a compilation of facts may be copyrightable, but only if the selection and arrangement of facts is independently created and minimally creative.²² Because the telephone directory in Feist simply listed names and telephone numbers alphabetically by surname, it lacked the minimal creativity necessary for copyright.²³

Along with being original, a copyrightable work must be recorded or embodied in some physical form to be a copyrightable “Writing.” Current law requires that the work be “fixed in any tangible medium of expression, now known or later developed, from which [it] can be perceived, reproduced, or otherwise communicated.”²⁴ Although the Supreme Court has never squarely held that fixation is a constitutional requirement, it appears to be implicit in the Court’s definition of “Writings” as “any physical rendering of the fruits of creative [activity].”²⁵ Courts have thus generally assumed that, under the IP Clause, copyright cannot protect unfixed works, such as unrecorded live musical performances.²⁶

ArtI.S8.C8.3.2 Limited Times for Copyrights and the Progress of Science

Even if a work is copyrightable, Congress may only grant copyright for limited times. Throughout American history, Congress has repeatedly lengthened copyright terms, with those extensions usually applying both prospectively and retroactively to works still under copyright.¹ In Congress’s first Copyright Act of 1790, as under the Statute of Anne, copyright persisted for fourteen years, with the possibility of a fourteen-year renewal term.² Under current law, copyright in a work created by an individual author lasts for the life of that author, plus an additional seventy years.³

In Eldred v. Ashcroft, the Court addressed whether the 1998 Copyright Term Extension Act (CTEA), which retroactively extended existing copyright terms by twenty years, violated the Intellectual Property (IP) Clause’s “limited Times” requirement.⁴ Eldred held that a term of life of the author plus seventy years was a “limited” time, which required only that the term be “confine[d] within certain bounds,” and not that the term must be fixed once granted.⁵ On this point, the Court relied heavily on the historical practice of retroactive copyright extensions to inform its interpretation of the IP Clause.⁶

Satisfied that the CTEA complied with the “limited Times” requirement, the Court held that further judicial review was limited to whether the CTEA was “a rational exercise of the legislative authority conferred by the Copyright Clause.”⁷ In this determination, the Court “defer[red] substantially” to “congressional determinations and policy judgments.”⁸ Applying that standard, the Court found Congress’s desire to conform American copyright terms to international norms sufficed as a rational basis.⁹ Eldred further rejected arguments that the CTEA “effectively” amounted to a perpetual copyright, protected non-original works, or failed to promote the progress of science,¹⁰ reiterating “it is generally for Congress, not the courts, to decide how best to pursue the Copyright Clause’s objectives.”¹¹

In 2012, Golan v. Holder extended Eldred’s deferential approach to the IP Clause’s limitations.¹² Golan addressed whether Congress could, consistent with the IP Clause, grant copyright to works already in the U.S. public domain.¹³ Motivated by compliance with international copyright treaties, Congress passed the Uruguay Round Agreements Act (URAA)¹⁴ in 1994 to “restore” copyright to certain foreign works that had never been protected by copyright in the United States.¹⁵

The Supreme Court rejected the argument that the URAA failed to “promote the Progress of Science” because it did not encourage the creation of new works.¹⁶ The Court held that providing incentives for new works was “not the sole means” Congress may use to advance the spread of knowledge, and Congress could rationally conclude that a “well-functioning international copyright system” would encourage the dissemination of existing works.¹⁷ Ultimately, Golan held that it is for Congress to “determine the intellectual property regimes that, overall, in that body’s judgment, will serve the ends of the [IP] Clause.”¹⁸

ArtI.S8.C8.3.3 Copyright and the First Amendment

Copyright, by its nature, may restrict speech—it operates to prevent others from, among other things, reproducing and distributing creative expression without the copyright holder’s permission.¹ The Supreme Court has thus recognized that “some restriction on expression is the inherent and intended effect of every grant of copyright.”² Even so, the restrictions on speech effected by copyright are not ordinarily subject to heightened scrutiny.³

The Supreme Court has reasoned that, because the Intellectual Property (IP) Clause and the First Amendment were adopted close in time, the Framers believed that “copyright’s limited monopolies are compatible with free speech principles.”⁴ The Framers intended copyright to be “the engine of free expression” by providing “the economic incentive to create and disseminate ideas.”⁵ As a result, so long as Congress maintains the “traditional contours” of copyright protection, copyright laws are not subject to heightened First Amendment scrutiny.⁶

The traditional contours of copyright law include two important “built-in First Amendment accommodations.”⁷ The first is the idea-expression distinction, which provides that copyright does not “extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”⁸ For example, copyright in a nonfiction essay extends only to the particular creative expression used to describe its ideas; others remain free to communicate the same ideas in their own words.⁹ Because of this distinction, copyright’s impact on free expression is reduced because “every idea, theory, and fact in a copyrighted work becomes instantly available for public exploitation at the moment of publication.”¹⁰

Copyright law’s other First Amendment accommodation is the fair use doctrine. Fair use is a privilege that permits certain uses of a copyrighted work, for purposes such as “criticism, comment, news reporting, teaching[,] scholarship, or research,” without the copyright holder’s permission.¹¹ Courts assess whether a particular use is fair using a multifactor balancing test that looks to, among other considerations, the purpose and character of the use; the nature of the copyrighted work; the amount and substantiality of the portion used; and the economic impact of the use on the market for the original work.¹² Fair use also considers whether a use is “transformative”—that is, whether it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”¹³ Fair use serves First Amendment purposes because it “allows the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances.”¹⁴

ArtI.S8.C8.4.1 Inventorship and Utility

To be patentable, an invention must be new, nonobvious, useful, and directed at patent-eligible subject matter.¹ Each of these four requirements are long-standing features of patent law, rooted in the Intellectual Property (IP) Clause.²

First, because only “Inventors” may secure patent rights under the IP Clause, a patent application cannot claim exclusive rights to an alleged discovery that is not novel. “Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available” to the public.³ In other words, if every element of the claimed invention is already disclosed in the “prior art”—that is, information known or available to the public—then the alleged inventor “has added nothing to the total stock of knowledge,” and no valid patent may issue to the individual.⁴

Second, a patentable invention, even if novel in the narrowest sense, cannot be obvious in light of the prior art. In 1851, Hotchkiss v. Greenwood articulated a standard of “invention” that required more than just novelty.⁵ The patent in Hotchkiss claimed an improvement in making door knobs, where the only new element was “the substitution of a knob of a different material” over the material previously employed in making the knob.⁶ The Supreme Court held this improvement too minor to be patentable; unless the discovery required “more ingenuity and skill” than that “possessed by an ordinary mechanic,” it was not the work of an inventor.⁷

In Graham v. John Deere Co. of Kansas City, the Court concluded that Congress had codified the holding of Hotchkiss and its progeny in the 1952 Patent Act’s “nonobviousness” requirement for patentability.⁸ Under this test, “the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.”⁹ When an invention does no more than combine “familiar elements according to known methods,” yielding only “predictable results,” it is likely to be obvious.¹⁰

In addition to being novel and nonobvious, an invention must be useful to be patentable—that is, it must have a specific and substantial utility.¹¹ The utility requirement derives from the IP Clause’s command that patent law serve to “promote the Progress of . . . useful Arts.”¹² Justice Joseph Story, in an oft-quoted 1817 decision, interpreted the utility requirement narrowly, stating that to be “useful” an invention need only “not be frivolous or injurious to the well-being, good policy, or sound morals of society.”¹³ In 1966, the Supreme Court moved away from this standard in Brenner v. Manson, holding that the constitutional purpose of patent law requires a “benefit derived by the public from an invention with substantial utility,” where the “specific benefit exists in currently available form.”¹⁴ Thus, in Brenner itself, a novel chemical process yielding a compound with no known use other than as “an object of scientific research” was not patentable because it lacked the requisite utility.¹⁵

ArtI.S8.C8.4.2 Patent-Eligible Subject Matter

In addition to the novelty, nonobviousness, and utility requirements, the claimed invention must be directed at patent-eligible subject matter.¹ By statute, an inventor may patent “any new and useful process, machine, manufacture, or composition of matter.”² The Supreme Court has observed that Congress intended “anything under the sun that is made by man” to be patentable.³ Nonetheless, despite the broad statutory language, the Court has held that three types of discoveries are categorically nonpatentable: “laws of nature, natural phenomena, and abstract ideas.”⁴ The Court has reasoned that to permit a patent monopoly on the “‘basic tools of scientific and technological work’ . . . might tend to impede innovation more than it would tend to promote it.”⁵

For example, a person who discovers a previously unknown product of nature (say, a plant with medicinal properties) cannot obtain a patent on this discovery.⁶ On the other hand, a genetically engineered bacterium with “markedly different characteristics than any found in nature” may be patented.⁷ Similarly, laws of nature—basic physical principles, like Einstein’s mass-energy equivalence (E=mc2) or the law of gravity—are not patentable, even if newly discovered and useful.⁸ However, a new and useful application of a law of nature, such as the use of a physical law in a novel process for molding uncured rubber, may be patentable,⁹ so long as the application is not “conventional or obvious.”¹⁰ Lastly, abstract ideas are not patentable. For example, the Supreme Court has held that patents on a method for converting binary-coded decimal numerals into pure binary numerals¹¹ and a business method for hedging risk against price fluctuations¹² claimed nonpatentable abstract ideas.

In the 2010s, the Supreme Court decided a trio of cases that set forth the modern standards for patentable subject matter. These cases established a two-step test. The court first “determine[s] whether the claims at issue are directed to” ineligible subject matter such as a law of nature, natural phenomenon, or abstract idea.¹³ If so, the claimed invention is nonpatentable unless the patent claims have an “inventive concept” that transforms the nature of the claim to a patent-eligible application, with elements “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”¹⁴

In Mayo Collaborative Services v. Prometheus Laboratories, the Court addressed the scope of the “law of nature” exception.¹⁵ The patent in Mayo claimed a method for measuring metabolites in the blood to calibrate the dosage of thiopurine drugs in the treatment of autoimmune disorders.¹⁶ The Court found the patent claims were directed to a law of nature: “namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm.”¹⁷ Because the claims were little “more than an instruction to doctors to apply the applicable laws when treating their patients,” the patent lacked any inventive concept and the Court held it to be patent ineligible.¹⁸

The second decision in the trilogy, Association for Molecular Pathology v. Myriad Genetics, Inc., concerned the applicability of the “natural phenomena” exception to the patentability of DNA.¹⁹ The inventor in Myriad discovered the precise location and genetic sequence of two human genes associated with an increased risk of breast cancer.²⁰ Based on this discovery, the patentee claimed two molecules associated with the genes: (1) an isolated DNA segment; and (2) a complementary DNA (cDNA) segment, in which the nucleotide sequences that do not code for amino acids were removed.²¹

Myriad held that isolated DNA segments were nonpatentable products of nature because the patent claimed naturally-occurring genetic information.²² The Court held, however, that cDNA, as a synthetic molecule distinct from naturally-occurring DNA, was patentable even though the underlying nucleotide sequence was dictated by nature.²³

Lastly, Alice Corp. v. CLS Bank International examined the scope of the “abstract idea” category of nonpatentable subject matter.²⁴ Alice concerned a patent on a system for mitigating settlement risk (i.e., the risk that only one party will pay) using a computer.²⁵ The Court first held that the invention was directed at “the abstract idea of intermediated settlement.”²⁶ Although the invention in Alice was implemented on a computer (which is, of course, a physical machine), the patent lacked an inventive concept because the claims merely “implement[ed] the abstract idea of intermediated settlement on a generic computer.”²⁷

ArtI.S8.C8.4.3 Constitutional Constraints on Congress’s Power Over Granted Patents

Early Supreme Court cases suggest that Congress has “plenary” power to enlarge patent rights retrospectively.¹ The extent to which patent rights can be limited retrospectively, consistent with the Intellectual Property (IP) Clause and constitutional protections for property, is an unsettled area of law.

The Supreme Court has presumed that patents, once granted, are property rights subject to the Due Process Clause of the Fifth and Fourteenth Amendments.² The Court has repeatedly suggested that patents are “private property” the government cannot take without just compensation under the Fifth Amendment’s Takings Clause.³ The Court has not had occasion to decide the applicability of the Takings Clause to patents, however, because Congress has long provided by statute that a patent holder may sue for “reasonable and entire compensation” if the Federal Government uses or manufactures a patented invention without a license.⁴

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,⁵ the Court distinguished these precedents regarding the nature of a patent as private property. Oil States held that because the grant of a patent was a “public right” (not a private right) under Article III of the Constitution, determinations of patent validity can be made by an administrative agency and need not be decided by an Article III court.⁶ Although this holding is in some tension with the Court’s earlier characterizations of patents as private property, Oil States emphasized “the narrowness of [its] holding”; the Court specifically noted that “our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.”⁷

ArtI.S8.C8.5 Federal Power Over Trademarks

Congress’s power over trademarks, another form of intellectual property, does not derive from the Intellectual Property (IP) Clause. In The Trade-Mark Cases,¹ decided in 1879, the Supreme Court held that Congress lacked power under the IP Clause to provide for trademark protection because trademarks need not be original, creative, novel, nor inventive.² As a result, the Court was “unable to see any such power [to protect trademarks] in the constitutional provision concerning authors and inventors, and their writings and discoveries.”³ In the twentieth century, however, courts have sustained federal trademark legislation as an exercise of Congress’s power under the Commerce Clause.⁴

As with other forms of intellectual property, Congress’s power over trademarks cannot be used in ways that infringe the constitutional rights of individuals. For example, because trademarks are considered private speech under the First Amendment, the government generally cannot engage in viewpoint discrimination in trademark registration decisions.⁵

ArtI.S8.C8.6 State Regulation of Intellectual Property

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 Thus, state safety regulations are not void because they limit or preclude the practice of an invention protected by a federal patent.² Similarly, a state may prescribe reasonable regulations on the transfer of intellectual property rights to protect its citizens from fraud.³ States may tax royalties received from patent or copyright licenses as income.⁴

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 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 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 States may also provide trade secret protections for economically valuable information that is kept secret, even if that information constitutes patentable subject matter.⁸

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 Indeed, a core purpose of the IP Clause’s inclusion in the Constitution was to provide national uniformity in intellectual property law.¹⁰ 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 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 or create a patent-like regime that prohibits the copying of certain unpatented industrial designs.¹³ 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