Sears, Roebuck Co v. Stiffel Company, No. 108

CourtUnited States Supreme Court
Writing for the CourtBLACK
Citation376 U.S. 225,84 S.Ct. 784,11 L.Ed.2d 661
Decision Date09 March 1964
Docket NumberNo. 108
PartiesSEARS, ROEBUCK & CO., Petitioner, v. STIFFEL COMPANY

376 U.S. 225
84 S.Ct. 784
11 L.Ed.2d 661
SEARS, ROEBUCK & CO., Petitioner,

v.

STIFFEL COMPANY.

No. 108.
Argued Jan. 16, 1964.
Decided March 9, 1964.
Rehearing Denied April 6, 1964.

See 376 U.S. 973, 84 S.Ct. 1131.

Will Freeman, Chicago, Ill., for petitioner.

Warren C. Horton, Chicago, Ill., for respondent.

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 ver-

Page 226

tical 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.'

Page 227

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

Page 228

use of a State's law of unfair competition is compatible with the federal patent law. 374 U.S. 826, 83 S.Ct. 1868, 10 L.Ed.2d 1050.

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 constitu-

Page 229

tional 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 consitutional authority, are the supreme law of the land. See Sperry v. Florida, 373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428 (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. 172, 173, 176, 63 S.Ct. 172, 173, 87 L.Ed. 165 (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 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. 84, b., 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

Page 230

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....

To continue reading

Request your trial
600 practice notes
  • Kimble v. Marvel Entm't, LLC, No. 13–720.
    • United States
    • United States Supreme Court
    • June 22, 2015
    ...and the right to make or use the article, free from all restriction, passes to the public. See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964).This Court has carefully guarded that cut-off date, just as it has the patent laws' subject-matter l......
  • Carson v. Here's Johnny Portable Toilets, Inc., No. 80-1720
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • February 1, 1983
    ...trademark. Lear, Inc. v. Adkins, 395 U.S. 653, 668, 89 S.Ct. 1902, 1910, 23 L.Ed.2d 610 (1969); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661, rehr'g denied, 376 U.S. 973, 84 S.Ct. 1131, 12 L.Ed.2d 87 (1964); Compco Corp. v. Day-Bright Lighting, Inc., 3......
  • Allied Artists Pictures Corp. v. Rhodes, No. C-2-78-1031.
    • United States
    • United States District Courts. 6th Circuit. United States District Courts. 6th Circuit. Southern District of Ohio
    • July 10, 1980
    ...or its benefits denied," by state law touching upon the area of the federal statutes. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229, 84 S.Ct. 784, 787, 11 L.Ed.2d 661 (1964). In other areas of federal concern the principle that the Supremacy Clause prohibits states from pl......
  • Lundy Elec. & Sys., Inc. v. Optical Recognition Sys., Inc., Civ. A. No. 141-72.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
    • June 15, 1973
    ...of the maximum value of the waveform. 21 Once a patent issues, it is strictly construed. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed. 2d 661 (1964), reh. denied, 376 U.S. 973, 84 S.Ct. 1131, 12 L.Ed.2d 87 (1964). Furthermore, improvement patents (e. g., Dyka......
  • Request a trial to view additional results
593 cases
  • Kimble v. Marvel Entm't, LLC, No. 13–720.
    • United States
    • United States Supreme Court
    • June 22, 2015
    ...too, and the right to make or use the article, free from all restriction, passes to the public. See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964).This Court has carefully guarded that cut-off date, just as it has the patent laws' subject-matter ......
  • Carson v. Here's Johnny Portable Toilets, Inc., No. 80-1720
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • February 1, 1983
    ...or trademark. Lear, Inc. v. Adkins, 395 U.S. 653, 668, 89 S.Ct. 1902, 1910, 23 L.Ed.2d 610 (1969); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661, rehr'g denied, 376 U.S. 973, 84 S.Ct. 1131, 12 L.Ed.2d 87 (1964); Compco Corp. v. Day-Bright Lighting, Inc., 37......
  • Allied Artists Pictures Corp. v. Rhodes, No. C-2-78-1031.
    • United States
    • United States District Courts. 6th Circuit. United States District Courts. 6th Circuit. Southern District of Ohio
    • July 10, 1980
    ...set at naught, or its benefits denied," by state law touching upon the area of the federal statutes. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229, 84 S.Ct. 784, 787, 11 L.Ed.2d 661 (1964). In other areas of federal concern the principle that the Supremacy Clause prohibits states f......
  • Lundy Elec. & Sys., Inc. v. Optical Recognition Sys., Inc., Civ. A. No. 141-72.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
    • June 15, 1973
    ...percentages of the maximum value of the waveform. 21 Once a patent issues, it is strictly construed. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed. 2d 661 (1964), reh. denied, 376 U.S. 973, 84 S.Ct. 1131, 12 L.Ed.2d 87 (1964). Furthermore, improvement patents (e. ......
  • Request a trial to view additional results
4 books & journal articles
  • Antitrust's “State Action” Doctrine and the Policy of the Commerce Clause
    • United States
    • Antitrust Bulletin Nbr. 39-3, September 1994
    • September 1, 1994
    ...priceof. . . gas bedetermined by market forces."65 Arguably, Congress made theidentical determination in enacting the antitrust laws.w59 376 U.S. 225 (1964).60 395 U.S. 653 (1969).61 489 U.S. 141 (1989).62 Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 479 (1974).63 474 U.S. 409 (1986).64 1......
  • Should a Trade Secrets Misappropriation Claim Lie in the Procrustean Antitrust Bed?
    • United States
    • Antitrust Bulletin Nbr. 22-1, March 1977
    • March 1, 1977
    ...(3d ed. 1974) and in Developments in theLaw: Competitive Torts, 77 Harv. 1. Rev. 888, 932-42 (1964).171 Sears Roebuck &Co. v.StiffelCo., 376 U.S. 225 (1964).172Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964).173Columbia Broadcasting Sys. v. DeCosta, 377 F.2d 315 (1st Cir.), ce......
  • United States Law and the Proposed Code of Conduct on the Transfer of Technology
    • United States
    • Antitrust Bulletin Nbr. 23-4, December 1978
    • December 1, 1978
    ...course, state laws cannot prohibitthecopying of articles which are unpatented and in the publicdomain. Cf. Sears, Roebuck &Co.v.StiffelCo.,376 U.S. 225(1964). Wherethesubjectmatterof a license is not a protecti-ble intellectual property right, there may be a failure ofconsideration which wi......
  • Antitrust Aspects of Anticompetitive Zoning
    • United States
    • Antitrust Bulletin Nbr. 24-3, September 1979
    • September 1, 1979
    ...so as to prevent others, by imitating such mark-ings, from misleading purchasers as to the source of thegoods.174170 [d. at 354.171 376 U.S. 225 (1964).172 [d. at 226·27.173 [d. at 231·32.174 [d. at ANTICOMPETITIVEZONING475Labels and "other precautionary steps" being thus viableless restric......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT