Sears, Roebuck & Co. v. Stiffel Co.

Supreme Court of the United States · 1964 · Federal Courts

Federal CourtsPatent preemptionUnfair competitionSupremacy Clausepreemptionpatent lawunfair competitionpublic domain

Facts

Stiffel obtained design and mechanical patents on a pole lamp, but the district court later held those patents invalid for want of invention. Sears then marketed a substantially identical lamp at a lower price. The district court found Sears' lamp was a substantially exact copy and that confusion between the products was likely because the lamps looked and functioned alike. Based on that finding alone, the lower courts imposed liability under Illinois unfair competition law even though the lamp was unpatented.

Issue

May a State, through its unfair competition law, impose liability for or prohibit the copying of an article that is protected by neither a valid federal patent nor a copyright, when the only basis is that the copied article looks identical and may cause confusion as to source?

Rule

When an article is unpatented and uncopyrighted, it is in the public domain and may be made and sold by anyone. A State may not, consistently with the Supremacy Clause and the federal patent laws, forbid copying of the article itself or award damages for such copying, even if the copying creates source confusion because the products are identical; however, a State may in appropriate circumstances require labeling or other precautions to prevent purchasers from being misled as to source.

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In Columbus, Ohio, Mira Solis designed a minimalist metal bookshelf and sold it through her company, North Harbor Homeworks. After a court ruled Mira's patent invalid for lack of invention, a rival, Red Clay Furnishings, began selling an almost identical bookshelf at a lower price. Ohio customers sometimes could not tell which company made a particular shelf because the products looked the same.

If Mira sues under Ohio unfair competition law and seeks an injunction barring Red Clay from selling shelves identical to hers solely because the similarity is likely to confuse customers about source, what is the strongest argument for Red Clay?

Explanation. When an article is unpatented and uncopyrighted, it is in the public domain and may be made and sold by anyone. A state may not use unfair competition law to forbid copying of the article itself or award damages for that copying merely because identical appearance creates likely confusion as to source. Doing so would give patent-like protection that conflicts with federal patent policy. (Derived from Sears, Roebuck & Co. v. Stiffel Co. (1964).)