Origins and Scope of the Power

Article I, Section 8, Clause 8:

[The Congress shall have Power . . . ] 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.

This clause is the foundation upon which the national patent and copyright laws rest, although it uses neither of those terms. As to patents, modern legislation harks back to the Statute of Monopolies of 1624, whereby Parliament endowed inventors with the sole right to their inventions for fourteen years.1 Copyright law, in turn, traces back to the Statute of Anne of 1710, which secured to authors of books sole publication rights for designated periods.2 These English statutes curtailed the royal prerogative to bestow monopolies to Crown favorites over works and products they did not create and many of which had long been enjoyed by the public.3 Informed by these precedents and colonial practice, the Framers restricted the power to confer monopolies over the use of intellectual property through the Copyright and Patent Clause. For example, the “exclusive Right” conferred to the writings of authors and the discoveries of inventors must be time limited. Another fundamental limitation inheres in the phrase “[t]o promote the Progress of Science and useful Arts” : To merit copyright protection, a work must exhibit originality, embody some creative expression;4 (a), and it was unnecessary to discuss the concept in constitutional terms. to merit patent protection, an invention must be an innovative advancement, “push back the frontiers.” 5 Also deriving from the phrase “promotion of science and the arts” is the issue of whether Congress may only provide for grants of protection that broaden the availability of new materials.6

Acting within these strictures, Congress has broad leeway to determine how best to promote creativity and utility through temporary monopolies. “It is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors,” the Court has said.7 “Satisfied” in Eldred v. Ashcroft that the Copyright Term Extension Act did not violate the “limited times” prescription, the Court saw the only remaining question to be whether the enactment was “a rational exercise of the legislative authority conferred by the Copyright Clause.” 8 The Act, the Court concluded, “reflects judgments of a kind Congress typically makes, judgments we cannot dismiss as outside the Legislature’s domain.” 9 Moreover, the duration of copyrights and patents may be prolonged and, even then, the limits may not be easily enforced. The protection period may extend well beyond the life of the author or inventor.10 Also, in extending the duration of existing copyrights and patents, Congress may protect the rights of purchasers and assignees.11

The copyright and patent laws do not, of their own force, have any extraterritorial operation.12 ( “The presumption that United States law governs domestically but does not rule the world applies with particualr force in patent law” .). It is, however, the ultimate objective of many nations, including the United States, to develop a system of patent issuance and enforcement which transcends national boundaries; it has been recommended, therefore, that United States policy should be to harmonize its patent system with that of foreign countries so long as such measures do not diminish the quality of the United States patent standards. President's Commission on the Patent System, To Promote the Progress of Useful Arts, Report to the Senate Judiciary Committee, S. Doc. No. 5, 90th Cong., 1st sess. (1967), recommendation XXXV. Effectuation of this goal of transnational protection of intellectual property was begun with the United States agreement to the Berne Convention (the Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886), and Congress’s conditional implementation of the Convention through legislation. The Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853, 17 U.S.C. §§ 101 and notes.

Footnotes

1

Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 17, 18 (1829).

2

Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 656, 658 (1834).

3

Cf. Graham v. John Deere Co., 383 U.S. 1, 5, 9 (1966). See also Golan v. Holder, 565 U.S. ___, No. 10-545, slip op. at 3 (2012) (Breyer, J., dissenting).

4

Feist Publications v. Rural Telephone Service Co., 499 U.S. 340 (1991) (publisher of telephone directory, consisting of white pages and yellow pages, not entitled to copyright in white pages, which are only compilations). “To qualify for copyright protection, a work must be original to the author. . . . Originality, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses some minimal degree of creativity. . . . To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice.” Id. at 345. First clearly articulated in The Trade-Mark Cases, 100 U.S. 82 (1879), and Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58–60 (1884), the requirement is expressed in nearly every copyright opinion, but its forceful iteration in Feist was noteworthy, because originality is a statutory requirement as well, 17 U.S.C. § 102(a), and it was unnecessary to discuss the concept in constitutional terms.

5

A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). In a concurring opinion, Justice Douglas wrote, for himself and Justice Black: “Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. …It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end—the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance.” 340 U.S. at 154–55 (Justice Douglas concurring).

6

Kendall v. Winsor, 62 U.S. (21 How.) 322, 328 (1859) ( “[T]he inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public, comes not within the policy or objects of the Constitution or acts of Congress.” ).

In Golan v. Holder, publishers and musicians challenged a law that allowed for copyright protection of certain foreign works theretofore in the public domain, in conformance with international practice. Plaintiffs alleged the provision was invalid because, inter alia, it failed to give incentives for creating new works. Though this view found support in Justice Breyer's dissent, the majority held the Copyright Clause does not require that every provision of copyright law be designed to encourage new works. Rather, Congress has broad discretion to determine the intellectual property regime that, in its judgment, best serves the overall purposes of the Clause, including broader dissemination of existing and future American works. 565 U.S. ___, No. 10-545, slip op. at 21 (2012).

7

Eldred v. Ashcroft, 537 U.S. 186, 205 (2003) (quoting Sony Corp. of America v. Universal City Studios, 464 U.S. 417, 429 (1984)).

8

537 U.S. at 204.

9

537 U.S. at 205.

10

The Court in Eldred upheld extension of the term of existing copyrights from life of the author plus 50 years to life of the author plus 70 years. Although the more general issue was not raised, the Court opined that this length of time, extendable by Congress, was “clearly” not a regime of “perpetual” copyrights. The only two dissenting Justices, Stevens and Breyer, challenged this assertion.

11

Evans v. Jordan, 13 U.S. (9 Cr.) 199 (1815); Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 548 (1852); Bloomer v. Millinger, 68 U.S. (1 Wall.) 340, 350 (1864); Eunson v. Dodge, 85 U.S. (18 Wall.) 414, 416 (1873).

12

Brown v. Duchesne, 60 U.S. (19 How.) 183, 195 (1857); see also Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 531 (1972) ( “Our patent system makes no claim to extraterritorial effect ….” ); Quality King Distrib., Inc. v. L'Anza Research Int'l, Inc., 523 U.S. 135, 154 (1998) (Justice Ginsburg concurring) ( “Copyright protection is territorial” ); Microsoft Corp. v. AT&T, 550 U.S. 437, 454–55 (2007) ( “The presumption that United States law governs domestically but does not rule the world applies with particualr force in patent law” .). It is, however, the ultimate objective of many nations, including the United States, to develop a system of patent issuance and enforcement which transcends national boundaries; it has been recommended, therefore, that United States policy should be to harmonize its patent system with that of foreign countries so long as such measures do not diminish the quality of the United States patent standards. President's Commission on the Patent System, To Promote the Progress of Useful Arts, Report to the Senate Judiciary Committee, S. Doc. No. 5, 90th Cong., 1st sess. (1967), recommendation XXXV. Effectuation of this goal of transnational protection of intellectual property was begun with the United States agreement to the Berne Convention (the Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886), and Congress’s conditional implementation of the Convention through legislation. The Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853, 17 U.S.C. §§ 101 and notes.