376 U.S. 225 (1964), 108, Sears, Roebuck & Co. v. Stiffel Co.

Docket Nº:No. 108
Citation:376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661
Party Name:Sears, Roebuck & Co. v. Stiffel Co.
Case Date:March 09, 1964
Court:United States Supreme Court

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376 U.S. 225 (1964)

84 S.Ct. 784, 11 L.Ed.2d 661

Sears, Roebuck & Co.


Stiffel Co.

No. 108

United States Supreme Court

March 9, 1964

Argued January 16, 1964




Respondent, whose design and mechanical patents are invalid for want of invention, cannot, under a state unfair competition law, obtain an injunction against copying its product or an award of damages for such copying, as such use of state law conflicts with the exclusive power of the Federal Government to grant patents only to true inventions, and then only for a limited time. An unpatented article, being in the public domain, may be freely copied, though labeling or other precautions may be required by state law where appropriate to prevent deception as to source. Pp. 225-233.

313 F.2d 115, reversed.

BLACK, J., lead opinion

MR. JUSTICE BLACK delivered the opinion of the Court.

The question in this case is whether a State's unfair competition law can, consistently with the federal patent laws, impose liability for or prohibit the copying of an article which is protected by neither a federal patent nor a copyright. The respondent, Stiffel Company, secured design and mechanical patents on a "pole lamp" -- a vertical

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tube having lamp fixtures along the outside, the tube being made so that it will stand upright between the floor and ceiling of a room. Pole lamps proved a decided commercial success, and, soon after Stiffel brought them on the market, Sears, Roebuck & Company put on the market a substantially identical lamp, which it sold more cheaply, Sears' retail price being about the same as Stiffel's wholesale price. Stiffel then brought his action against Sears in the United States District Court for the Northern District of Illinois, claiming in its first count that, by copying its design, Sears had infringed Stiffel's patents, and, in its second count, that, by selling copies of Stiffel's lamp, Sears had caused confusion in the trade as to the source of the lamps, and had thereby engaged in unfair competition under Illinois law. There was evidence that identifying tags were not attached to the Sears lamps, although labels appeared on the cartons in which they were delivered to customers, that customers had asked Stiffel whether its lamps differed from Sears', and that, in two cases, customers who had bought Stiffel lamps had complained to Stiffel on learning that Sears was selling substantially identical lamps at a much lower price.

The District Court, after holding the patents, invalid for want of invention, went on to find as a fact that Sears' lamp was "a substantially exact copy" of Stiffel's, and that the two lamps were so much alike, both in appearance and in functional details, "that confusion between them is likely, and some confusion has already occurred." On these findings, the court held Sears guilty of unfair competition, enjoined Sears from "unfairly competing with [Stiffel] by selling or attempting to sell pole lamps identical to or confusingly similar to" Stiffel's lamp, and ordered an accounting to fix profits and damages resulting from Sears' "unfair competition."

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The Court of Appeals affirmed.1 313 F.2d 115. That court held that, to make out a case of unfair competition under Illinois law, there was no need to show that Sears had been "palming off" its lamps as Stiffel lamps; Stiffel had only to prove that there was a "likelihood of confusion as to the source of the products" -- that the two articles were sufficiently identical that customers could not tell who had made a particular one. Impressed by the "remarkable sameness of appearance" of the lamps, the Court of Appeals upheld the trial court's findings of likelihood of confusion and some actual confusion, findings which the appellate court construed to mean confusion "as to the source of the lamps." The Court of Appeals thought this enough under Illinois law to sustain the trial court's holding of unfair competition, and thus held Sears liable under Illinois law for doing no more than copying and marketing an unpatented article.2 We granted certiorari to consider whether this

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use of [84 S.Ct. 787] a State's law of unfair competition is compatible with the federal patent law. 374 U.S. 826.

Before the Constitution was adopted, some States had granted patents either by special act or by general statute,3 but when the Constitution was adopted, provision for a federal patent law was made one of the enumerated powers of Congress because, as Madison put it in The Federalist No. 43, the States "cannot separately make effectual provision" for either patents or copyrights.4 That constitutional provision is Art. I, § 8, cl. 8, which empowers Congress

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Pursuant to this constitutional

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authority, Congress in 1790, enacted the first federal patent and copyright law, 1 Stat. 109, and, ever since that time, has fixed the condition upon which patents and copyrights shall be granted, see17 U.S.C. §§ 1-216; 35 U.S.C. §§ 1-293. These laws, like other laws of the United States enacted pursuant to constitutional authority, are the supreme law of the land. See Sperry v. Florida, 373 U.S. 379 (1963). When state law touches upon the area of these federal statutes, it is "familiar doctrine" that the federal policy "may not be set at naught, or its benefits denied" by the state law. Sola Elec. Co. v. Jefferson Elec. Co., 317 U.S. 173, 176 (1942). This is true, of course, even if the state law is enacted in the exercise of otherwise undoubted state power.

The grant of a patent is the grant of a statutory monopoly;5 indeed, the grant of patents in England [84 S.Ct. 788] was an explicit exception to the statute of James I prohibiting monopolies.6 Patents are not given as favors, as was the case of monopolies given by the Tudor monarchs, see The Case of Monopolies (Darcy v. Allein), 11 Co.Rep. 84b, 77 Eng.Rep. 1260 (K.B.1602), but are meant to encourage invention by rewarding the inventor with the right, limited to a term of years fixed by the patent, to exclude others from the use of his invention. During that period of time, no one may make use, or sell the patented

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product without the patentee's authority. 35 U.S.C. § 271. But, in rewarding useful invention, the "rights and welfare of the community must be fairly dealt with and effectually guarded." Kendall v. Winsor, 21 How. 322, 328 (1859). To that end, the prerequisites to obtaining a patent are strictly observed, and, when the patent has issued, the limitations on its exercise are equally strictly enforced. To begin with, a genuine "invention" or "discovery" must be...

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