The Power to Protect Patents and Copyrights

Patents and copyrights give the creator exclusive rights for a limited amount of time, each in a slightly different way. Congress's power over copyrights and patents is broad, so the Supreme Court has interpreted statutes but has not seen fit to extend protections without legislative guidance.

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Article I, Section 8, Clause 8:

[The Congress shall have Power . . . ] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Copyrights and Patents Under the U.S. Constitution

United States Library of Congress, The Constitution of the United States of America: Analysis and Interpretation

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.¹

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.² 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.³

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;⁴ to merit patent protection, an invention must be an innovative advancement, "push back the frontiers."⁵ 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.⁶

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.⁷

"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."⁸ The Act, the Court concluded, "reflects judgments of a kind Congress typically makes, judgments we cannot dismiss as outside the Legislature's domain."⁹ M

oreover, 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.¹⁰ Also, in extending the duration of existing copyrights and patents, Congress may protect the rights of purchasers and assignees.¹¹

The copyright and patent laws do not, of their own force, have any extraterritorial operation.¹²

What Can Be Patented?

The protection traditionally afforded by acts of Congress under this clause has been limited to new and useful inventions,¹³ and, although a patentable invention is a mental achievement,¹⁴ for an idea to be patentable it must have first taken physical form.¹⁵

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."¹⁶

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,¹⁷ for these are the "basic tools of scientific and technological work"¹⁸ that should be "free to all men and reserved to none."¹⁹

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;"²⁰ and, though combination patents have been at times sustained,²¹ the accumulation of old devices is patentable "only when the whole in some way exceeds the sum of its parts."²²

Though "inventive genius" and slightly varying language have been appearing in judicial decisions for over a century,²³ "novelty and utility" has been the primary statutory test since the Patent Act of 1793.²⁴ 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.²⁵

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,²⁶ but, in Graham v. John Deere Co.,²⁷ the Court interpreted the provision as having codified its earlier holding in Hotchkiss v. Greenwood.²⁸

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."²⁹ 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.³⁰

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.³¹

Learn More: Patent Infringement and Litigation

What Can Be Copyrighted?

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.³² 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.'"³³

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.³⁴ On the common law claim, the Court held for Peters, finding that, under common law, publication divests an author of copyright protection.³⁵

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."³⁶ 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."³⁷

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,³⁸ which held that the manufacture and sale of videotape (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.³⁹ But the copyright of the description of 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.⁴⁰

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.⁴¹ A patent right may, however, be subjected, by bill in equity, to payment of a judgment debt of the patentee.⁴²

Learn More: Copyright Ownership

Does Article I, Section 8, Clause 8 Cover Trademarks?

In the famous Trade-Mark Cases,⁴³ 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."⁴⁴

Not many years later, the Court, again speaking through Justice Miller, ruled that a photograph may be constitutionally copyrighted,⁴⁵ 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.⁴⁶

Learn More: Registering a Trademark

Footnotes:

1. Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 17, 18 (1829).
2. Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 656, 658 (1834).
3. 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).
4. 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 Trade-Mark 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.
5. 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).
6. 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).
7. Eldred v. Ashcroft, 537 U.S. 186, 205 (2003) (quoting Sony Corp. of America v. Universal City Studios, 464 U.S. 417, 429 (1984)).
8. 537 U.S. at 204.
9. 537 U.S. at 205.
10. 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.
11. 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).
12. 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. No. 100-568, 102 Stat. 2853, 17 U.S.C. §§ 101 and notes.
13. 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).
14. Smith v. Nichols, 89 U.S. (21 Wall.) 112, 118 (1875).
15. 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).
16. 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."). Cf. Dow Co. v. Halliburton Co., 324 U.S. 320 (1945); Cuno Corp. v. Automatic Devices Corp., 314 U.S. 84, 89 (1941).
17. 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).
18. Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
19. Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 (1948).
20. Sinclair Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945); Marconi Wireless Co. v. United States, 320 U.S. 1 (1943).
21. Keystone Mfg. Co. v. Adams, 151 U.S. 139 (1894); Diamond Rubber Co. v. Consol. Tire Co., 220 U.S. 428 (1911).
22. 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.
23. Inventive genius—Justice Hunt in Reckendorfer v. Faber, 92 U.S. 347, 357 (1876); 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).
24. Act of February 21, 1793, ch. 11, 1 Stat. 318. See Graham v. John Deere Co., 383 U.S. 1, 3–4, 10 (1966).
25. 35 U.S.C. § 103.
26. 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).
27. 383 U.S. 1 (1966).
28. 52 U.S. (11 How.) 248 (1850).
29. 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).
30. As to the nature of the reward to patentees, longstanding case law had defined a patent as the personal property of its holder, similar to title to land. See, e.g., Horne v. Dep't of Agric., No. 14-275, 576 U.S. ___, slip op. at 6 (2015) ("Nothing in this history [of the Takings Clause] suggests that personal property was any less protected against physical appropriation than real property. . . . '[A patent] confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser.' "(quoting James v. Campbell, 104 U.S. 356, 358 (1882))); see also McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 609 (1898) (concluding that a granted patent "become[s] the property of the patentee, and as such is entitled to the same legal protection as other property"); United States v. Am. Bell Tel. Co., 128 U.S. 315, 370 (1888) ("The United States, by issuing the patents . . . has taken from the public rights of immense value, and bestowed them upon the patentee. . . . This has been taken from the people, from the public, and made the private property of the patentee . . . ."); Brown v. Duchesne, 60 U.S. 183, 197 (1857) ("[B]y the laws of the United States, the rights of a party under a patent are his private property . . . .").More recently, however, in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 584 U.S. ___, No. 16-712, (2018), the Court called into question this precedent regarding the nature of a patent as private property, at least with respect to certain constitutional claims. In Oil States, the Court addressed whether inter partes review, a type of patent validity proceeding conducted by the U.S. Patent and Trademark Office (PTO), violates Article III or the Seventh Amendment of the Constitution. Id. at 1. In ruling that such proceedings do not violate either constitutional provision, the Court held that "[i]nter partes review falls squarely within the public-rights doctrine," reasoning "that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise." Id. at 6–7. Further, in addressing the precedent suggesting otherwise, the Court stated that these "cases d[id] not contradict [its] conclusion" because "[p]atents convey only a specific form of property right—a public franchise." Id. at 10. The Court, however, was careful to "emphasize the narrowness of [its] holding." Id. at 16. First, the Court specified that it ruled only on the constitutionality of inter partes review, and not "whether other patent matters, such as infringement actions, can be heard in a non-Article III forum." Id. Second, the Court indicated that its holdings were limited to "the precise constitutional challenges that Oil States raised," and therefore did not foreclose constitutional arguments related to "the retroactive application of inter partes review or a possible due process challenge." Id. at 16–17. Third, the Court 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." Id. at 17.
31. 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."
32. 33 U.S. (8 Pet.) 591 (1834).
33. 33 U.S. (8 Pet.) at 595.
34. 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.
35. 33 U.S. (8 Pet.) at 667.
36. 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.
37. 33 U.S. (8 Pet.) at 661.
38. 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).
39. 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).
40. Baker v. Selden, 101 U.S. 99, 105 (1880).
41. Stevens v. Gladding, 58 U.S. (17 How.) 447 (1855).
42. Ager v. Murray, 105 U.S. 126 (1882).
43. 100 U.S. 82 (1879).
44. 100 U.S. at 94.
45. Burrow-Giles Lithographic Co. v. Saroney, 111 U.S. 53 (1884).
46. Bleisten v. Donaldson Lithographing Co., 188 U.S. 239, 252 (1903).