Federal Preemption

• Author: Robert A. Gorman
• Profession: University of Virginia School of Law
• Pages: 115

When relief is sought under state law against unauthorized use of literary, artistic or musical creations, a question arises as to the compatibility of state relief with the federal Copyright Act. For a state to forbid copying permitted under federal law, or for a state to permit copying that federal law proscribes, would equally raise questions of compliance with the Supremacy Clause of the Constitution, Article VI, Clause 2.

In a number of significant cases that arose prior to the 1976 Copyright Act, the Supreme Court dealt with claims that state anti-copying laws were preempted because of their incompatibility with either the patent or copyright law of the United States. In the well-known Sears and Compco cases,200 companion cases decided in 1964, the Court overturned, as inconsistent with federal patent law, the application of a state unfair competition law which would have forbidden the copying and marketing of lighting fixtures for which utility and design patents were unavailable or had expired. The Court stated its holding in broad terms:

[W]hen an article is unprotected by a patent or a copyright, state law may not forbid others to copy that article. To forbid copying would interfere with the federal policy, found in Art. I, ~ 8, cl. 8, of the Constitution and in the implementing federal statutes, of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain.201.

The Court made clear that it had no objection to state law "which requires those who make and sell copies to take precautions to identify their products as their own," i.e., state labeling law forbidding unfair competition in the form of "passing off."

In a later decision pointing in a somewhat different direction, the Court upheld a state law making it a crime to "pirate" (by directly dubbing sounds from) recordings manufactured by others, at a time when the federal Copyright Act had not yet extended copyright protection to "sound recordings." In Goldstein v. California,202 decided in 1973, the Court concluded that Congress's omission of sound recordings was not intended to prevent states from enacting anti-piracy laws, because much potentially copyrightable subject matter is amenable to "local" regulation and because Congress had (in the time period pertinent to the case) left the matter of protection for sound recordings "unattended."

Congress did not leave the general issue of preemption of state anticopying laws unattended for long. In the 1976 Copyright Act, Congress incorporated elaborate preemption provisions in section 301. Section 301(a) provides:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether...