The “Intellectual Property” Clause

What is this “Intellectual Property” Clause you speak of?

Well, what you might think of as “Intellectual Property,” is typically broken down into three categories: Copyrights, Patents, and then the distant cousin “Trademarks.” Article 1, Section 8, Clause 8, of the U.S. Constitution, grants Congress the power “[t]o 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 also known as the: “Intellectual Property” Clause. Essentially, this Clause is the reason original works of authorship are granted rights and protections under the Copyright Act. Specifically, 17 U.S. Code Section 106, subject to Sections 107 through 122, gives the owners exclusive rights, such as to (with some additional protections granted under Section 106(a) not listed below):

  • Reproduce the work;
  • Prepare derivative work;
  • Distribute copies;
  • Perform the work publicly (when applicable);
  • Display the work publicly (when applicable); and
  • Public Digital Audio Transmission (when applicable)

In addition, the Clause provides Congress with the power to grant Patent rights and protections to inventors. Under 35 U.S.C. Section 101: “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain patent therefor, subject to the conditions and requirements of this title.” So, copyright and patent laws were created by Congress because the U.S. Constitution grants Congress the power to promote science and art. However, when it comes to Trademarks – same concept, different story.

Trademark rights and protections are not mentioned in the U.S. Constitution. So where do they come from? To make a boring story even more boring, Article 1 of the U.S. Constitution grants Congress several powers, one being: the Commerce Clause (Article 1, Section 8, Clause 3), which grants Congress the power “to regulate commerce with foreign nations, and among the several states, and with the Indian Tribes.” In other words, the Commerce Clause, with a little help from the “Supremacy Clause,” provides Congress with the ability to exclusively enact laws that regulate interstate commerce (i.e., transportation and business between states). Therefore, state laws that conflict with federal law – those created by Congress that are “necessary and proper” to execute the powers granted to Congress – will be struck down because they violate the Supremacy Clause. If that didn’t make sense, all you need to know is – in some circumstances, federal and state laws can coexist.

Jurisdictionally speaking, 28 U.S. Code Section 1338 subsection (a) provides: “[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.” Note that the statute is written in such a way that Trademarks are not exclusive to federal Courts (pay close attention to the second part of the sentence). For this reason, state courts may not only hear state Trademark cases, but also federal Trademark cases.

With these constitutional powers, Congress enacted the Federal Lanham Act (Title 15, Chapter 22 of the U.S. Code) in 1946, which grants federal Trademark rights and protections. Within the Lanham Act, 15 U.S.C. Section 1127 provides: “[t]he term “trademark” includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Further, Section 1127 applies the same principles to “service marks”.

In sum, Copyright/Patent rights and protections derive from the “Intellectual Property” Clause in the U.S. Constitution, and are exclusive to the federal domain. On the other hand, Trademarks are not exclusive to federal law because federal Trademark rights and protections were not granted to the Federal government in the Constitution. But before you file your state trademark, make sure you read my blog on Federal Trademarks.

With this in mind, next time you are at a party, you can tell your friends you know where Intellectual Property rights come from. And, whether you are a business or an individual, always consider consulting privately with an Intellectual Property attorney before investing and/or developing your brand. Get it right the first time!


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