Origins and Scope of the Power

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.

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This clause is the foundation upon which the national patent and copyright laws rest, although it uses neither of those terms. As to patents, modern legislation harks back to the Statute of Monopolies of 1624, whereby Parliament endowed inventors with the sole right to their inventions for fourteen years.¹⁵¹⁵ Copyright law, in turn, traces back to the Statute of Anne of 1710, which secured to authors of books sole publication rights for designated periods.¹⁵¹⁶ These English statutes curtailed the royal prerogative to bestow monopolies to Crown favorites over works and products they did not create and many of which had long been enjoyed by the public.¹⁵¹⁷ Informed by these precedents and colonial practice, the Framers restricted the power to confer monopolies over the use of intellectual property through the Copyright and Patent Clause. For example, the “exclusive Right” conferred to the writings of authors and the discoveries of inventors must be time limited. Another fundamental limitation inheres in the phrase “[t]o promote the Progress of Science and useful Arts”: To merit copyright protection, a work must exhibit originality, embody some creative expression;¹⁵¹⁸ to merit patent protection, an invention must be an innovative advancement, “push back the frontiers.”¹⁵¹⁹ Also deriving from the phrase “promotion of science and the arts” is the issue of whether Congress may only provide for grants of protection that broaden the availability of new materials.¹⁵²⁰

Acting within these strictures, Congress has broad leeway to determine how best to promote creativity and utility through temporary monopolies. “It is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors,” the Court has said.¹⁵²¹ “Satisfied” in Eldred v. Ashcroft that the Copyright Term Extension Act did not violate the “limited times” prescription, the Court saw the only remaining question to be whether the enactment was “a rational exercise of the legislative authority conferred by the Copyright Clause.”¹⁵²² The Act, the Court concluded, “reflects judgments of a kind Congress typically makes, judgments we cannot dismiss as outside the Legislature’s domain.”¹⁵²³ Moreover, the duration of copyrights and patents may be prolonged and, even then, the limits may not be easily enforced. The protection period may extend well beyond the life of the author or inventor.¹⁵²⁴ Also, in extending the duration of existing copyrights and patents, Congress may protect the rights of purchasers and assignees.¹⁵²⁵

The copyright and patent laws do not, of their own force, have any extraterritorial operation.¹⁵²⁶

The protection traditionally afforded by acts of Congress under this clause has been limited to new and useful inventions,¹⁵²⁷ and, although a patentable invention is a mental achievement,¹⁵²⁸ for an idea to be patentable it must have first taken physical form.¹⁵²⁹ Despite the fact that the Constitution uses the term “discovery” rather than “invention,” a patent may not be issued for the discovery of a previously unknown phenomenon of nature. “If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.”¹⁵³⁰ In addition to refusing to allow patents for natural phenomena and laws of nature, the Court has held that abstract ideas and mathematical formulas may not be patented,¹⁵³¹ for these are the “basic tools of scientific and technological work”¹⁵³² that should be “free to all men and reserved to none.”¹⁵³³

As for the mental processes that traditionally must be evidenced, the Court has held that an invention must display “more ingenuity . . . than the work of a mechanic skilled in the art;”¹⁵³⁴ and, though combination patents have been at times sustained,¹⁵³⁵ the accumulation of old devices is patentable “only when the whole in some way exceeds the sum of its parts.”¹⁵³⁶ Though “inventive genius” and slightly varying language have been appearing in judicial decisions for over a century,¹⁵³⁷ “novelty and utility” has been the primary statutory test since the Patent Act of 1793.¹⁵³⁸ Section 103 of the Patent Act of 1952, however, required that an innovation be of a “nonobvious” nature; that is, it must not be an improvement that would be obvious to a person having ordinary skill in the pertinent art.¹⁵³⁹ This alteration of the standard of patentability was perceived by some as overruling previous Supreme Court cases requiring perhaps a higher standard for obtaining a patent,¹⁵⁴⁰ but, in Graham v. John Deere Co.,¹⁵⁴¹ the Court interpreted the provision as having codified its earlier holding in Hotchkiss v. Greenwood.¹⁵⁴² The Court in Graham said: “Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must ‘promote the Progress of . . . useful Arts.’ This is the standard expressed in the Constitution and it may not be ignored.”¹⁵⁴³ Congressional requirements on patentability, then, are conditions and tests that must fall within the constitutional standard. Underlying the constitutional tests and congressional conditions for patentability is the balancing of two interests—the interest of the public in being protected against monopolies and in having ready access to and use of new items versus the interest of the country, as a whole, in encouraging invention by rewarding creative persons for their innovations. By declaring a constitutional standard of patentability, however, the Court, rather than Congress, will be doing the ultimate weighing. As for the clarity of the patentability standard, the three-fold test of utility, novelty and advancement seems to have been made less clear by the Supreme Court’s rejuvenation of “invention” as a standard of patentability.¹⁵⁴⁴

The standard of patentability is a constitutional standard, and the question of the validity of a patent is a question of law.¹⁵⁴⁵ Congress may authorize the issuance of a patent for an invention by a special, as well as by general, law, provided the question as to whether the patentee’s device is in truth an invention is left open to investigation under the general law.¹⁵⁴⁶ The function of the Commissioner of Patents in issuing letters patent is deemed to be quasi-judicial in character. Hence an act granting a right of appeal from the Commission to the Court of Appeals for the District of Columbia is not unconstitutional as conferring executive power upon a judicial body.¹⁵⁴⁷ The primary responsibility, however, for weeding out unpatentable devices rests in the Patent Office.¹⁵⁴⁸ The present system of “de novo” hearings before the Court of Appeals allows the applicant to present new evidence that the Patent Office has not heard,¹⁵⁴⁹ thus making somewhat amorphous the central responsibility.

The leading case on the nature of the rights that Congress is authorized to “secure” under the Copyright and Patent Clause is Wheaton v. Peters.¹⁵⁵⁰ Wheaton was the official reporter for the Supreme Court from 1816 to 1827, and Peters was his successor in that role. Wheaton charged Peters with having infringed his copyright in the twelve volumes of “Wheaton’s Reports” by reprinting material from Wheaton’s first volume in “a volume called ‘Condensed Reports of Cases in the Supreme Court of the United States’”;¹⁵⁵¹ Wheaton based his claim on both common law and a 1790 act of Congress. On the statutory claim, the Court remanded to the trial court for a determination of whether Wheaton had complied with all the requirements of the act.¹⁵⁵² On the common law claim, the Court held for Peters, finding that, under common law, publication divests an author of copyright protection.¹⁵⁵³ Wheaton argued that the Constitution should be held to protect his common law copyright, because “the word secure . . . clearly indicates an intention, not to originate a right, but to protect one already in existence.”¹⁵⁵⁴ The Court found, however, that “the word secure, as used in the constitution, could not mean the protection of an acknowledged legal right,” but was used “in reference to a future right.”¹⁵⁵⁵ Thus, the exclusive right that the Constitution authorizes Congress to “secure” to authors and inventors owes its existence solely to acts of Congress that secure it, from which it follows that the rights granted by a patent or copyright are subject to such qualifications and limitations as Congress sees fit to impose. The Court’s “reluctance to expand [copyright] protection without explicit legislative guidance” controlled its decision in Sony Corp. v. Universal City Studios,¹⁵⁵⁶ which held that the manufacture and sale of video tape (or cassette) recorders for home use do not constitute “contributory” infringement of the copyright in television programs. Copyright protection, the Court reiterated, is “wholly statutory,” and courts should be “circumspect” in extending protections to new technology. The Court refused to hold that contributory infringement could occur simply through the supplying of the devices with which someone else could infringe, especially in view of the fact that VCRs are capable of substantial noninfringing “fair use,” e. g., time-shifting of television viewing.

Congress was within its powers in giving to authors the exclusive right to dramatize any of their works. Even as applied to pantomime dramatization by means of silent motion pictures, the act was sustained against the objection that it extended the copyright to ideas rather than to the words in which they were clothed.¹⁵⁵⁷ But the copyright of the description of an art in a book was held not to lay a foundation for an exclusive claim to the art itself. The latter can be protected, if at all, only by letters patent.¹⁵⁵⁸ Because copyright is a species of property distinct from the ownership of the equipment used in making copies of the matter copyrighted, the sale of a copperplate under execution did not pass any right to print and publish the map which the copperplate was designed to produce.¹⁵⁵⁹ A patent right may, however, be subjected, by bill in equity, to payment of a judgment debt of the patentee.¹⁵⁶⁰

Letters patent for a new invention or discovery in the arts confer upon the patentee an exclusive property in the patented invention that cannot be appropriated or used by the government without just compensation.¹⁵⁶¹ Congress may, however, modify rights under an existing patent, provided vested property rights are not thereby impaired,¹⁵⁶² but it does not follow that it may authorize an inventor to recall rights that he has granted to others or reinvest in him rights of property that he had previously conveyed for a valuable and fair consideration.¹⁵⁶³ Furthermore, the rights the present statutes confer are subject to the antitrust laws, though it can hardly be said that the cases in which the Court has endeavored to draw the line between the rights claimable by patentees and the kind of monopolistic privileges that are forbidden by those acts are entirely consistent in their holdings.¹⁵⁶⁴

Congress has the power to pass copyright laws that, in its political judgment, will serve the ends of the Copyright Clause. Congress may “promote the Progress of Science” (i. e., the creation and dissemination of knowledge and learning) not only by providing incentives for new works, but also by conferring copyright protection to works in the public domain.¹⁵⁶⁵ The Copyright Clause also broadly empowers Congress to extend the terms of existing copyrights, so long as the extended terms are for determinable periods.¹⁵⁶⁶

The Copyright Clause nominally restricts free speech by allowing for an author’s monopoly to market his original work. The Court has “recognized that some restriction on expression is the inherent and intended effect of every grant of copyright.”¹⁵⁶⁷ However, that the Copyright Clause and the First Amendment were adopted close in time reflects the Framers’ belief that “copyright’s limited monopolies are compatible with free speech principles.”¹⁵⁶⁸ “[T]he Framers intended copyright itself to be the engine of free expression. By establishing a marketable right to the use of one’s expression, copyright supplies the economic incentive to create and disseminate ideas.”¹⁵⁶⁹

The Court has noted on several occasions that the copyright law contains two important First Amendment safeguards: (1) limiting copyright protection to an author’s creative expression of ideas, but prohibiting protection of ideas in and of themselves; and (2) permitting fair use of a copyrighted work in certain circumstances, including for purposes of criticism, teaching, comment, news reporting, and parody. These traditional contours of copyright protection have foreclosed heightened First Amendmebnt scrutiny of copyright laws.¹⁵⁷⁰

Displacement of state police or taxing powers by federal patent or copyright has been a source of considerable dispute. Ordinarily, rights secured to inventors must be enjoyed in subordination to the general authority of the states over all property within their limits. A state statute requiring the condemnation of illuminating oils inflammable at less than 130 degrees Fahrenheit was held not to interfere with any right secured by the patent laws, although the oil for which the patent was issued could not be made to comply with state specifications.¹⁵⁷¹ In the absence of federal legislation, a state may prescribe reasonable regulations for the transfer of patent rights, so as to protect its citizens from fraud. Hence, a requirement of state law that the words “given for a patent right” appear on the face of notes given in payment for such right is not unconstitutional.¹⁵⁷² Royalties received from patents or copyrights are subject to nondiscriminatory state income taxes, a holding to the contrary being overruled.¹⁵⁷³

State power to protect things not patented or copyrighted under federal law has been buffeted under changing Court doctrinal views. In two major cases, the Court held that a state could not use unfair competition laws to prevent or punish the copying of products not entitled to a patent. Emphasizing the necessity for a uniform national policy and adverting to the monopolistic effects of the state protection, the Court inferred that, because Congress had not extended the patent laws to the material at issue, federal policy was to promote free access when the materials were thus in the public domain.¹⁵⁷⁴ But, in Goldstein v. California,¹⁵⁷⁵ the Court distinguished the two prior cases and held that the determination whether a state “tape piracy” statute conflicted with the federal copyright statute depended upon the existence of a specific congressional intent to forbid state protection of the “writing” there involved. Its consideration of the statute and of its legislative history convinced the Court that Congress in protecting certain “writings” and in not protecting others bespoke no intention that federally unprotected materials should enjoy no state protection, only that Congress “has left the area unattended.”¹⁵⁷⁶ Similar analysis was used to sustain the application of a state trade secret law to protect a chemical process, that was patentable but not patented, from use by a commercial rival, which had obtained the process from former employees of the company, all of whom had signed agreements not to reveal the process. The Court determined that protection of the process by state law was not incompatible with the federal patent policy of encouraging invention and public use of patented inventions, inasmuch as the trade secret law serves other interests not similarly served by the patent law and where it protects matter clearly patentable it is not likely to deter applications for patents.¹⁵⁷⁷

subject mously, in Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,¹⁵⁷⁸ reasserted that “efficient operation of the federal patent system depends upon substantially free trade in publicly known, unpatented design and utilitarian conceptions.”¹⁵⁷⁹ At the same time, however, the Court attempted to harmonize Goldstein,Kewanee, and other decisions: there is room for state regulation of the use of unpatented designs if those regulations are “necessary to promote goals outside the contemplation of the federal patent scheme.”¹⁵⁸⁰ What states are forbidden to do is to “offer patent-like protection to intellectual creations which would otherwise remain unprotected as a matter of federal law.”¹⁵⁸¹ A state law “aimed directly at preventing the exploitation of the [unpatented] design” is invalid as impinging on an area of pervasive federal regulation.¹⁵⁸²

In the famous Trade-Mark Cases,¹⁵⁸³ decided in 1879, the Supreme Court held void acts of Congress that, in apparent reliance upon this clause, extended the protection of the law to trademarks registered in the Patent Office. “The ordinary trade mark,” Justice Miller wrote for the Court, “has no necessary relation to invention or discovery”; nor is it to be classified “under the head of writings of authors.” It does not “depend upon novelty, invention, discovery, or any work of the brain.”¹⁵⁸⁴ Not many years later, the Court, again speaking through Justice Miller, ruled that a photograph may be constitutionally copyrighted,¹⁵⁸⁵ and still later the Court held a circus poster to be entitled to the same protection. In answer to the objection of the circuit court that a lithograph that “has no other use than that of a mere advertisement” would not be within the meaning of the Constitution, Justice Holmes summoned forth the shades of Velasquez, Whistler, Rembrandt, Ruskin, Degas, and others in support of the proposition that it is not for the courts to attempt to judge the worth of pictorial illustrations outside the narrowest and most obvious limits.¹⁵⁸⁶