U.S. Federalism and Intellectual Property

2 Colum. J. Eur. L. 463 (1996)

Jane C. Ginsburg. Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia University School of Law. @ 1997, Jane C. Ginsburg.

The federal structure of the U.S. government presents interesting questions for intellectual property. Which government, national or state, exercises regulatory authority? Or do both governments play a significant role? Questions of this order cannot be addressed unless one first analyzes what the term “intellectual property” comprehends. Intellectual property includes well-recognized regimes of exclusive rights in inventions (patents), literary, artistic and musical creations (copyrights), and trademarks. But it also covers more elusive, and evolving, interests, such as exploitation of one’s personal name and image (right of publicity), trade secrets, and a generalized concern with prevention of acts amounting to unlicensed appropriation of another’s time, labor, and money. To which lawmakers and judges, state or federal, then, do claimants and users look to determine the existence and scope of protection for this capacious subject matter?

At first blush, one might assume that all these varieties of intellectual property fall under exclusive federal ordering. By nature, inventions, works of authorship, trade symbols, and such, resist confinement to local boundaries. When ideas and images range widely, their subjection to discrete, and potentially conflicting, territorial regimes can frustrate their effective dissemination, and can produce commercial uncertainty and insecurity. In the U.S. federal system, however, the national government is supposed to be of limited powers; it may not regulate an area simply because uniform national regulation seems good policy. More important than the legal dimensions of U.S. federalism are its political ones. Federal intervention needs justification, and, largely for historical reasons, significant areas are thought to reside with state governments. In the U.S., the general areas of property law, tort law, and contract law – all fields relating directly or indirectly to intellectual property – are traditionally considered the subject of state regulation.

Nonetheless, the U.S. Constitution proves quite accommodating to federal protection for many varieties of intellectual property. The document both authorizes and anticipates creation of a federal patent and copyright system, for it explicitly authorizes the national government “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.” The little available evidence of the Framers intent in including this authority indicates that they recognized the inefficacy of disparate state regulation of inventions and works of authorship: in Federalist No. 43, James Madison observed, “The utility of this power will scarcely be questioned . . . . The States cannot separately make effectual provision for either.. . [copyright or patent].”

Madison’s point would seem equally applicable to other varieties of intellectual property. Indeed, today, most commentators would acknowledge the national government’s authority to regulate all forms of intellectual property by virtue of the constitutional grant to Congress of the power “to regulate Commerce … among the several States.” But the existence of authority is one thing, its exercise quite another. Here the historical dynamics of American federalism are important. The vast domain of federal power has not been fully occupied, and accordingly, outside the realm of patent and copyright, the states do play a role in the regulation of intellectual property. Moreover, state-based protections have occasionally penetrated even these core federal areas. There are various reasons for continued state intervention in at least certain intellectual property areas. Some stem from the states’ established role in governing property rights and relations in general. Another, which forms one focus of this paper, derives from the U.S. tradition of looking to the states as “laboratories” for the development of the law and social policy. According to this tradition, state courts and legislatures experiment locally with evolving rights and modes of regulation. Subsequently, the local experience may form the basis for adoption of the same or similar laws by other states, and perhaps ultimately by the national legislature.

This paper has two parts. Part I considers the regulation of intellectual properties that come primarily within the federal domain. Part I first identifies the respective federal and state jurisdictions over various kinds of rights, and then examines some instances in which federal and state intellectual property interests may come into conflict. Part II addresses three examples of state-based intellectual property rights that were adopted into federal law.