Sears, Roebuck & Co. v. Stiffel Co. | |
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Argued January 16, 1964 Decided March 9, 1964 | |
Full case name | Sears, Roebuck & Co. v. Stiffel Co. |
Citations | 376 U.S. 225 ( more ) |
Case history | |
Prior | Judgment for plaintiff, U.S. District Court for the Northern District of Illinois; judgment affirmed, Stiffel Co. v. Sears, Roebuck & Co., 313 F.2d 115 (7th Cir. 1963); cert. granted, 374 U.S. 826(1963). |
Holding | |
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, but labeling or other precautions may be required by state law where appropriate to prevent deception as to source. | |
Court membership | |
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Case opinions | |
Majority | Black, joined by unanimous |
Concurrence | Harlan |
Laws applied | |
U.S. Const. art. 1 § 8 | |
This case overturned a previous ruling or rulings | |
International News Service v. Associated Press |
Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), was a United States Supreme Court case that limited state law on unfair competition when it prevents the copying of an item that is not covered by a patent. [1]
Justice Hugo Black wrote for a unanimous Court that the US Constitution reserved power over intellectual property such as patents to the federal government exclusively. Since the trial court had found Stiffel's patent invalid as insufficiently inventive, its product design was thus in the public domain and no state law could be used to prevent Sears from copying it.
The Supreme Court made a similar ruling in a companion case decided the same day, Compco Corp. v. Day-Brite Lighting, Inc. . [2]
The two cases were the first decisions of the Supreme Court that the Supremacy Clause of the Constitution prevents from states passing their own patent or patent-like laws. The issue had been raised but not decided in Gibbons v. Ogden , [3] in which Attorney General Wirt argued on behalf of the United States [4] for federal patent preemption of New York's grant of a steamboat patent to Robert Fulton. [5]
Stiffel Co. was a lamp manufacturer that had created a "pole lamp," a vertical tube standing upright between the floor and ceiling of a room with lamp fixtures along the outside of the tube. Stiffel Co. had secured a mechanical patent and a design patent, granted in 1957, on the pole lamp, and the lamp proved a "decided commercial success," according to the Supreme Court decision. [6]
Soon after Stiffel had brought the pole lamp to market, the Sears, Roebuck & Co. department store put on the market copies of the lamp. Stiffel Co. brought suit against Sears, for patent infringement and for unfair competition under Illinois law, the latter claim based on Sears' allegedly causing confusion in the trade as to the source of the lamps.
The United States District Court for the Northern District of Illinois held the patents invalid for "want of invention" but ruled Sears to be guilty of unfair competition because the lamps were "confusingly similar." It enjoined Sears from selling the identical lamps and ordered an award of monetary damages to Stiffel Co. [6]
The United States Court of Appeals for the Seventh Circuit affirmed by holding that under Illinois law, Stiffel had to prove only that there was a "likelihood of confusion as to the source of the products" due to the identical appearance of the lamps. [7] The US Supreme Court granted certiorari to consider whether this use of a state's unfair competition law was compatible with U.S. patent law. [6]
Justice Black, in the Court's opinion, reviewed the history of the patent monopoly in English and US law and wrote that when a patent expires or when an item is unpatentable, the item "is in the public domain and may be made and sold by whoever chooses to do so.". [8] The lower courts had erred by using Illinois unfair competition law to effectively give Stiffel Co. a patent monopoly on its unpatented lamp. [9]
The Court continued that "mere inability of the public to tell two identical articles apart is not enough to support an injunction against copying or an award of damages for copying that which the federal patent laws permit to be copied," [10] but it noted that a state may require that goods be labeled in order to prevent consumers from being misled as to the source of an article, but that is a trade dress issue, and that such state laws may not go so far as to prohibit the copying of the goods themselves: "What Sears did was to copy Stiffel's design and to sell lamps almost identical to those sold by Stiffel. This it had every right to do under the federal patent laws. That Stiffel originated the pole lamp and made it popular is immaterial." [11]
Justice Harlan concurred in the result but opined that states should be able to prohibit copying if the main purpose of the prohibition is to prevent "palming off" one company's goods as those of another. [12]
Stiffel was reaffirmed in Bonito Boats, Inc. v. Thunder Craft Boats, Inc. [13]
Stiffel Co. survived the setback of its loss in the case and continued its business until 2000, when it failed after 68 years in business. It was described as "the last full-line cast zinc lamp maker in the United States." [14] However, Stiffel Lamps appears to be doing business as recently as April 20, 2021, with the website http://stiffel.com/, where it reports to have been founded in 1932. [15]
A Symposium issue of the Columbia Law Review, Product Simulation: A Right or a Wrong, 64 Columb. L. Rev. 1178 (1964) was published containing articles on Sears and Compco after "the Editors of the Columbia Law Review [] invited several eminent scholars to comment upon the opinions."
Stiffel is widely cited for pre-emption of state product protection by the federal patent laws. [16]
Gibbons v. Ogden, 22 U.S. 1 (1824), was a landmark decision of the Supreme Court of the United States which held that the power to regulate interstate commerce, which is granted to the US Congress by the Commerce Clause of the US Constitution, encompasses the power to regulate navigation. The decision is credited with supporting the economic growth of the antebellum United States and the creation of national markets. Gibbons v. Ogden has since provided the basis for Congress' regulation of railroads, freeways and television and radio broadcasts.
In United States patent law, patent misuse is a patent holder's use of a patent to restrain trade beyond enforcing the exclusive rights that a lawfully obtained patent provides. If a court finds that a patent holder committed patent misuse, the court may rule that the patent holder has lost the right to enforce the patent. Patent misuse that restrains economic competition substantially can also violate United States antitrust law.
International News Service v. Associated Press, 248 U.S. 215 (1918), also known as INS v. AP or simply the INS case, is a 1918 decision of the United States Supreme Court that enunciated the misappropriation doctrine of federal intellectual property common law: a "quasi-property right" may be created against others by one's investment of effort and money in an intangible thing, such as information or a design. The doctrine is highly controversial and criticized by many legal scholars, but it has its supporters.
Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), is a case decided by the United States Supreme Court in which the Court reaffirmed the validity of the patent exhaustion doctrine. The decision made uncertain the continuing precedential value of a line of decisions in the Federal Circuit that had sought to limit Supreme Court exhaustion doctrine decisions to their facts and to require a so-called "rule of reason" analysis of all post-sale restrictions other than tie-ins and price fixes. In the course of restating the patent exhaustion doctrine, the Court held that it is triggered by, among other things, an authorized sale of a component when the only reasonable and intended use of the component is to engage the patent and the component substantially embodies the patented invention by embodying its essential features. The Court also overturned, in passing, that the exhaustion doctrine was limited to product claims and did not apply to method claims.
Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989), is a decision of the United States Supreme Court holding a state anti-plug molding law preempted because it partially duplicated and therefore interfered with the balance Congress had struck by federal patent law. The decision reaffirmed the Supreme Court's earlier decision in Sears, Roebuck & Co. v. Stiffel Co. (1964), which held a state unfair competition law preempted on the same ground.
An anti-plug molding law is a statute, usually a state law, that prohibits the use of an original product, such as a boat hull, as a "plug" for making a mold to use to make copies of the original product. The plug is the core around which the walls of the mold are formed and the contours of which the mold replicates in reverse.
Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964), was a United States Supreme Court decision that was a companion case to Sears, Roebuck & Co. v. Stiffel Co. that the Court decided on the same day. Like Sears, Compco held that state law that in effect duplicates the protections of the US patent law is pre-empted by federal law.
Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961), is a United States Supreme Court case in which the Court redefined the U.S. patent law doctrine of repair and reconstruction. The decision is sometimes referred to as Aro I because several years later the Supreme Court readdressed the same issues in a second case in 1964 involving the same parties—Aro II.
United States v. General Electric Co., 272 U.S. 476 (1926), is a decision of the United States Supreme Court holding that a patentee who has granted a single license to a competitor to manufacture the patented product may lawfully fix the price at which the licensee may sell the product.
A post-sale restraint, also termed a post-sale restriction, as those terms are used in United States patent law and antitrust law, is a limitation that operates after a sale of goods to a purchaser has occurred and purports to restrain, restrict, or limit the scope of the buyer's freedom to utilize, resell, or otherwise dispose of or take action regarding the sold goods. Such restraints have also been termed "equitable servitudes on chattels".
Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), is a United States Supreme Court case, in which the Court confirmed the application of and set out a test for contributory trademark liability under § 32 of the Lanham Act.
Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942), is a patent misuse decision of the United States Supreme Court. It was the first case in which the Court expressly labeled as "misuse" the Motion Picture Patent
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), is United States Supreme Court decision that is notable as an early example of the patent misuse doctrine. It held that, because a patent grant is limited to the invention described in the claims of the patent, the patent law does not empower the patent owner, by notices attached to the patented article, to extend the scope of the patent monopoly by restricting the use of the patented article to materials necessary for their operation but forming no part of the patented invention, or to place downstream restrictions on the articles making them subject to conditions as to use. The decision overruled The Button-Fastener Case, and Henry v. A.B. Dick Co., which had held such restrictive notices effective and enforceable.
The misappropriation doctrine is a U.S. legal theory conferring a "quasi-property right" on a person who invests "labor, skill, and money" to create an intangible asset. The right operates against another person "endeavoring to reap where it has not sown" by "misappropriating" the value of the asset. The quoted language and the legal principle come from the decision of the United States Supreme Court in International News Service v. Associated Press, 248 U.S. 215 (1918), also known as INS v. AP or simply the INS case.
The Button-Fastener Case, Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., also known as the Peninsular Button-Fastener Case, was for a time a highly influential decision of the United States Court of Appeals for the Sixth Circuit. Many courts of appeals, and the United States Supreme Court in the A.B. Dick case adopted its "inherency doctrine"—"the argument that, since the patentee may withhold his patent altogether from public use, he must logically and necessarily be permitted to impose any conditions which he chooses upon any use which he may allow of it." In 1917, however, the Supreme Court expressly overruled the Button-Fastener Case and the A.B. Dick case, in the Motion Picture Patents case.
Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), was a Supreme Court case, which decided that "a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated.” However, as a "bizarre conciliatory prize" the Court allowed patenting of complementary DNA, which contains exactly the same protein-coding base pair sequence as the natural DNA, albeit with introns removed.
National Lockwasher Co. v. George K. Garrett Co., 137 F.2d 255, is one of the earliest or the earliest federal court decision to hold that it is patent misuse for a patentee to require licensees not to use a competitive technology. Such provisions are known as "tie-outs."
United States v. United States Gypsum Co. was a patent–antitrust case in which the United States Supreme Court decided, first, in 1948, that a patent licensing program that fixed prices of many licensees and regimented an entire industry violated the antitrust laws, and then, decided in 1950, after a remand, that appropriate relief in such cases did not extend so far as to permit licensees enjoying a compulsory, reasonable–royalty license to challenge the validity of the licensed patents. The Court also ruled, in obiter dicta, that the United States had standing to challenge the validity of patents when a patentee relied on the patents to justify its fixing prices. It held in this case, however, that the defendants violated the antitrust laws irrespective of whether the patents were valid, which made the validity issue irrelevant.
In re Roslin Institute (Edinburgh), 750 F.3d 1333 (Fed. Cir. 2014), is a 2014 decision of the United States Court of Appeals for the Federal Circuit rejecting a patent for a cloned sheep known as "Dolly the Sheep"— the first mammal ever cloned from an adult somatic cell.
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