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.


Annotations

Origins and Scope of the Power

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

Patentable Discoveries

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

Procedure in Issuing Patents

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.

Nature and Scope of the Right Secured for Copyright

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

Power of Congress Over Patents and Copyrights

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

Copyright and the First Amendment

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

State Power Affecting Patents and Copyrights

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

Trade-Marks and Advertisements

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


1515 Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 17, 18 (1829).

1516 Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 656, 658 (1834).

1517 Cf. Graham v. John Deere Co., 383 U.S. 1, 5, 9 (1966). See also Golan v. Holder, 565 U.S. ___, No. 10–545, slip op. at 3 (2012) (Breyer, J., dissenting).

1518 Feist Publications v. Rural Telephone Service Co., 499 U.S. 340 (1991) (publisher of telephone directory, consisting of white pages and yellow pages, not entitled to copyright in white pages, which are only compilations). “To qualify for copyright protection, a work must be original to the author. . . . Originality, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses some minimal degree of creativity. . . . To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice.” Id. at 345. First clearly articulated in The TradeMark Cases, 100 U.S. 82 (1879), and Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58–60 (1884), the requirement is expressed in nearly every copyright opinion, but its forceful iteration in Feist was noteworthy, because originality is a statutory requirement as well, 17 U.S.C. § 102(a), and it was unnecessary to discuss the concept in constitutional terms.

1519 A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). In a concurring opinion, Justice Douglas wrote, for himself and Justice Black: “Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. . . . It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.” 340 U.S. at 154–55 (Justice Douglas concurring).

1520 Kendall v. Winsor, 62 U.S. (21 How.) 322, 328 (1859) (“[T]he inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public, comes not within the policy or objects of the Constitution or acts of Congress.”). In Golan v. Holder, publishers and musicians challenged a law that allowed for copyright protection of certain foreign works theretofore in the public domain, in conformance with international practice. Plaintiffs alleged the provision was invalid because, inter alia, it failed to give incentives for creating new works. Though this view found support in Justice Breyer’s dissent, the majority held the Copyright Clause does not require that every provision of copyright law be designed to encourage new works. Rather, Congress has broad discretion to determine the intellectual property regime that, in its judgment, best serves the overall purposes of the Clause, including broader dissemination of existing and future American works. 565 U.S. ___, No. 10–545, slip op. at 21 (2012).

1521 Eldred v. Ashcroft, 537 U.S. 186, 205 (2003) (quoting Sony Corp. of America v. Universal City Studios, 464 U.S. 417, 429 (1984)).

1522 537 U.S. at 204.

1523 537 U.S. at 205.

1524 The Court in Eldred upheld extension of the term of existing copyrights from life of the author plus 50 years to life of the author plus 70 years. Although the more general issue was not raised, the Court opined that this length of time, extendable by Congress, was “clearly” not a regime of “perpetual” copyrights. The only two dissenting Justices, Stevens and Breyer, challenged this assertion.

1525 Evans v. Jordan, 13 U.S. (9 Cr.) 199 (1815); Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 548 (1852); Bloomer v. Millinger, 68 U.S. (1 Wall.) 340, 350 (1864); Eunson v. Dodge, 85 U.S. (18 Wall.) 414, 416 (1873).

1526 Brown v. Duchesne, 60 U.S. (19 How.) 183, 195 (1857); see also Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 531 (1972) (“Our patent system makes no claim to extraterritorial effect . . . .”); Quality King Distrib., Inc. v. L’Anza Research Int’l, Inc., 523 U.S. 135, 154 (1998) (Justice Ginsburg concurring) (“Copyright protection is territorial”); Microsoft Corp. v. AT&T, 550 U.S. 437, 454–55 (2007) (“The presumption that United States law governs domestically but does not rule the world applies with particualr force in patent law”.). It is, however, the ultimate objective of many nations, including the United States, to develop a system of patent issuance and enforcement which transcends national boundaries; it has been recommended, therefore, that United States policy should be to harmonize its patent system with that of foreign countries so long as such measures do not diminish the quality of the United States patent standards. President’s Commission on the Patent System, To Promote the Progress of Useful Arts, Report to the Senate Judiciary Committee, S. Doc. No. 5, 90th Cong., 1st sess. (1967), recommendation XXXV. Effectuation of this goal of transnational protection of intellectual property was begun with the United States agreement to the Berne Convention (the Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886), and Congress’s conditional implementation of the Convention through legislation. The Berne Convention Implementation Act of 1988, Pub. L. 100–568, 102 Stat. 2853, 17 U.S.C. §§ 101 and notes.

1527 Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 549 (1871). Cf. Collar Company v. Van Dusen, 90 U.S. (23 Wall.) 530, 563 (1875); Reckendorfer v. Faber, 92 U.S. 347, 356 (1876).

1528 Smith v. Nichols, 89 U.S. (21 Wall.) 112, 118 (1875).

1529 Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507 (1874); Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 489 (1891).

1530 Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948); Diamond v. Diehr, 450 U.S. 175, 187 (1981) (“[A]n application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”.) (emphasis in original). Cf. Dow Co. v. Halliburton Co., 324 U.S. 320 (1945); Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 89 (1941).

1531 Gottschalk v. Benson, 409 U.S. 63 (1972); Bilski v. Kappos, 561 U.S. ___, No. 08–964, slip op. (2010); Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 566 U.S. ___, No. 10–1150, slip op. (2012).

1532 Gottschalk v. Benson, 409 U.S. 63, 67 (1972).

1533 Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948).

1534 Sinclair Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945); Marconi Wireless Co. v. United States, 320 U.S. 1 (1943).

1535 Keystone Mfg. Co. v. Adams, 151 U.S. 139 (1894); Diamond Rubber Co. v. Consol. Tire Co., 220 U.S. 428 (1911).

1536 A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). An interesting concurring opinion was filed by Justice Douglas for himself and Justice Black: “It is not enough,” says Justice Douglas, “that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.” Id. at 154– 155. He then quotes the following from an opinion of Justice Bradley’s given 70 years earlier: “It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufacturers. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith. (Atlantic Works v. Brady, 107 U.S. 192, 200 (1882)).” Id. at 155. The opinion concludes: “The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents—gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge. A few that have reached this Court show the pressure to extend monopoly to the simplest of devices: [listing instances].” Id. at 156–58.

1537 “Inventive genius”—Justice Hunt in Reckendorfer v. Faber, 92 U.S. 347, 357 (1875); “Genius or invention”—Chief Justice Fuller in Smith v. Whitman Saddle Co., 148 U.S. 674, 681 (1893); “Intuitive genius”—Justice Brown in Potts v. Creager, 155 U.S. 597, 607 (1895); “Inventive genius”—Justice Stone in Concrete Appliances Co. v. Gomery, 269 U.S. 177, 185 (1925); “Inventive genius”—Justice Roberts in Mantle Lamp Co. v. Aluminum Co., 301 U.S. 544, 546 (1937); “the flash of creative genius, not merely the skill of the calling”—Justice Douglas in Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941).

1538 Act of February 21, 1793, ch. 11, 1 Stat. 318. See Graham v. John Deere Co., 383 U.S. 1, 3–4, 10 (1966).

1539 35 U.S.C. § 103.

1540 E.g., A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950); Jungerson v. Ostby & Barton Co., 335 U.S. 560 (1949); and Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941).

1541 383 U.S. 1 (1966).

1542 52 U.S. (11 How.) 248 (1850).

1543 383 U.S. at 6 (first emphasis added, second emphasis by Court). For a thorough discussion, see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146–52 (1989).

1544 Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969). “The question of invention must turn on whether the combination supplied the key requirement.” Id. at 60. But the Court also appeared to apply the test of nonobviousness in the same decision: “We conclude that the combination was reasonably obvious to one with ordinary skill in the art.” Id. See also McClain v. Ortmayer, 141 U.S. 419, 427 (1891), where, speaking of the use of “invention” as a standard of patentability the Court said: “The truth is the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.”

1545 A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950); Mahn v. Harwood, 112 U.S. 354, 358 (1884). In Markman v. Westview Instruments, Inc., 517 U.S. 348 (1996), the Court held that the interpretation of terms in a patent claim is a matter of law reserved entirely for the courts. The Seventh Amendment does not require that such issues be tried to a jury.

1546 Evans v. Eaton, 16 U.S. (3 Wheat.) 454, 512 (1818).

1547 United States v. Duell, 172 U.S. 576, 586–89 (1899). See also Butterworth v. United States ex rel. Hoe, 112 U.S. 50 (1884).

1548 Graham v. John Deere Co., 383 U.S. 1, 18 (1966).

1549 In Jennings v. Brenner, 255 F. Supp. 410, 412 (D.D.C. 1966), District Judge Holtzoff suggested that a system of remand be adopted.

1550 33 U.S. (8 Pet.) 591 (1834).

1551 33 U.S. (8 Pet.) at 595.

1552 33 U.S. (8 Pet.) at 657–58. The Court noted that the same principle applies to “an individual who has invented a most useful and valuable machine. . . . [I]t has never been pretended that the latter could hold, by the common law, any property in his invention, after he shall have sold it publicly.” Id.

1553 33 U.S. (8 Pet.) at 667.

1554 33 U.S. (8 Pet.) at 661; Holmes v. Hurst, 174 U.S. 82 (1899). The doctrine of common-law copyright was long statutorily preserved for unpublished works, but the 1976 revision of the federal copyright law abrogated the distinction between published and unpublished works, substituting a single federal system for that existing since the first copyright law in 1790. 17 U.S.C. § 301.

1555 33 U.S. (8 Pet.) at 661.

1556 464 U.S. 417, 431 (1984). Cf. Metro-Goldwin-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (active encouragement of infringement by distribution of software for sharing of copyrighted music and video files can constitute infringement).

1557 Kalem Co. v. Harper Bros., 222 U.S. 55 (1911). For other problems arising because of technological and electronic advancement, see,e.g., Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968); Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984).

1558 Baker v. Selden, 101 U.S. 99, 105 (1880).

1559 Stevens v. Gladding, 58 U.S. (17 How.) 447 (1855).

1560 Ager v. Murray, 105 U.S. 126 (1882).

1561 James v. Campbell, 104 U.S. 356, 358 (1882). See also United States v. Burns, 79 U.S. (12 Wall.) 246, 252 (1871); Cammeyer v. Newton, 94 U.S. 225, 234 (1877); Hollister v. Benedict Mfg. Co., 113 U.S. 59, 67 (1885); United States v. Palmer, 128 U.S. 262, 271 (1888); Belknap v. Schild, 161 U.S. 10, 16 (1896).

1562 McClurg v. Kingsland, 42 U.S. (1 How.) 202, 206 (1843).

1563 Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 553 (1852).

1564 See Motion Picture Co. v. Universal Film Co., 243 U.S. 502 (1917); Morton Salt Co. v. Suppiger Co., 314 U.S. 488 (1942); United States v. Masonite Corp., 316 U.S. 265 (1942); United States v. New Wrinkle, Inc., 342 U.S. 371 (1952), where the Justices divided 6 to 3 as to the significance for the case of certain leading precedents; and Walker Process Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172 (1965).

1565 Golan v. Holder, 565 U.S. ___, No. 10–545, slip op. (2012).

1566 Eldred v. Ashcroft, 537 U.S. 186 (2003).

1567 Golan v. Holder, 565 U.S. ___, No. 10–545, slip op. (2012).

1568 Eldred v. Ashcroft, 537 U.S. 186, 219 (2003).

1569 Harper & Row Publishers, Inc., v. Nation Enterprises, 471 U.S. 539, 558 (1985).

1570 Eldred v. Ashcroft, 537 U.S. 186 (2003); Golan v. Holder, 565 U.S. ___, No. 10–545, slip op. (2012).

1571 Patterson v. Kentucky, 97 U.S. 501 (1879).

1572 Allen v. Riley, 203 U.S. 347 (1906); John Woods & Sons v. Carl, 203 U.S. 358 (1906); Ozan Lumber Co. v. Union County Bank, 207 U.S. 251 (1907).

1573 Fox Film Corp. v. Doyal, 286 U.S. 123 (1932), overruling Long v. Rockwood, 277 U.S. 142 (1928).

1574 Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964).

1575 412 U.S. 546 (1973). Informing the decisions were different judicial attitudes with respect to the preclusion of the states from acting in fields covered by the Copyright Clause, whether Congress had or had not acted. The latter case recognized permissible state interests, id. at 552–560, whereas the former intimated that congressional power was exclusive. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 228–31 (1964).

1576 In the 1976 revision of the copyright law, Congress broadly preempted, with narrow exceptions, all state laws bearing on material subject to copyright. 17 U.S.C. § 301. The legislative history makes clear Congress’s intention to overturn Goldstein and “to preempt and abolish any rights under the common law or statutes of a state that are equivalent to copyright and that extend to works coming within the scope of the federal copyright law.” H. Rep. No. 94–1476, 94th Congress, 2d Sess. (1976), 130. The statute preserves state tape piracy and similar laws as to sound recordings fixed before February 15, 1972, until February 15, 2067. (Pub. L. 105–298 (1998), § 102, extended this date from February 15, 2047.)

1577 Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974). See also Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979).

1578 489 U.S. 141 (1989).

1579 489 U.S. at 156.

1580 489 U.S. at 166. As examples of state regulation that might be permissible, the Court referred to unfair competition, trademark, trade dress, and trade secrets laws. Perhaps by way of distinguishing Sears and Compco, both of which invalidated use of unfair competition laws, the Court suggested that prevention of “consumer confusion” is a permissible state goal that can be served in some instances by application of such laws. Id. at 154.

1581 489 U.S. at 156 (emphasis added).

1582 489 U.S. at 158.

1583 100 U.S. 82 (1879).

1584 100 U.S. at 94.

1585 Burrow-Giles Lithographic Co. v. Saroney, 111 U.S. 53 (1884).

1586 Bleisten v. Donaldson Lithographing Co., 188 U.S. 239, 252 (1903).