Federal and state patent law goes hand-in-hand, State law is key to patent law

Occasionally, state and federal regulatory regimes may clash. That is, even though a state may not have deliberately erected a competing regime for regulating an area controlled by national law, application of state law in a given situation may produce results inconsistent with federal policy. For example, if, in order to prevent public confusion regarding the origin of the goods, a state attempts to forbid copying an article that is itself an insufficient advance over the prior art to merit a federal patent, the state intervention would accord an exclusivity that federal law has declined to extend.16 For American lawyers the crucial question then becomes whether the federal level (or lack) of protection sets the sole measure, or whether the federal law in effect establishes a minimum standard of protection, leaving the states free · to afford more than the national legislature has chosen to accord. 17 If the former, the state law is invalid - "preempted" in the American legal jargon. If the latter, there is no federal preemption. The foregoing example reveals an important feature of American federal-state relations: determination of whether state law has been preempted by federal law is not easy. Case law on this problem abounds in many areas, and the standard formulas employed by the Supreme Court often obscure rather than illuminate. The core idea is that of conflict, but the existence of a conflict is not selfevident. A judgment of this nature requires a precise assessment of the purposes and effects of both the federal and the state laws.18 In the intellectual property field, the extensive scope of federal regulation often does point to the conclusion that federal law should supply the sole measure of what interests are to be protected. Of course, one might always argue that the federal and state authorities are in fact regulating different activities. The copying example discussed above is a good illustration. One could maintain that federal law simply proscribes the act of copying, while forbidding copying is merely an incidental side effect of the state law prohibition, which proscribes acts that may confuse the public concerning the origin of the goods in question. Nonetheless, the conflict between the laws seems unmistakable. Federal law has pronounced that some objects can be copied; state law has stepped in to prevent the reproductions. At this point the purpose of the federal law becomes crucial. If one determines that the absence of federal protection indicates the national legislator's policy that no regime, state or federal, is to prohibit the copying of the object in question, application of the state law would frustrate federal objectives. In that case, the state law must yield to the national ·policy. But there are many instances where state law protection is entirely compatible with the federally prescribed regime. Suppose, for example, that one party federal statutes regulate patents,7 copyrights,8 and trademarks.9 Indeed, national legislation provides that only federal law may govern copyright subject matter,10 and that the federal courts alone may judge patent and copyright claims.11 In addition, the United States Supreme Court has emphasized exclusive federal authority to grant patents.12 By contrast, Congress has, in most instances, left trademarks to concurrent state and federal ordering, 13 although the national uniformity advantages of federal trademark registration and regulation are sufficiently great that congressional enactments set forth the dominant law in this realm. 14 State laws affect intellectual property in several ways. Some state laws create exclusive rights in subject matter not covered by .federal statutes. Examples include certain kinds of idea protection, and the exclusive right of performers and other celebrities to commercialize their names and images (in the U.S., this is called the right of publicity). 15 Other kinds of state laws touch federally regulated subject matter, but they purport to respond to a range of activities broader than or different from those proscribed by federal law. For example, federal patent and copyright laws essentially forbid use or copying; state unfair competition law may strike at a variety of unethical business practices, including deception of the public, breach of a trust relationship, and conversion. In so doing, however, the state law may also prohibit unauthorized uses and reproductions.