Compco Corp. v. Day-Brite Lighting, Inc.
1964 U.S. LEXIS 2366, 11 L. Ed. 2d 669, 376 U.S. 234 (1964)
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Rule of Law:
Under the Supremacy Clause, federal patent law preempts state unfair competition law that prohibits the copying of an unpatented or uncopyrighted article, even if that article's design has acquired a secondary meaning.
Facts:
- Day-Brite Lighting, Inc. (Day-Brite) manufactured and sold fluorescent lighting fixtures.
- In 1955, Day-Brite secured a design patent from the U.S. Patent Office for a reflector with distinctive cross-ribs.
- Day-Brite's application for a mechanical patent on the same device was denied.
- After Day-Brite began selling its fixture, Compco Corp.'s (Compco) predecessor started making and selling lighting fixtures with a nearly identical cross-ribbed design.
- The public and the trade had come to associate the particular cross-ribbed design with Day-Brite, giving the design a 'secondary meaning'.
- Compco clearly labeled its fixtures and the containers they were shipped in with its own name.
- A single instance of confusion was noted, where a plant manager asked Day-Brite to service Compco fixtures three years after they were installed, mistakenly believing them to be Day-Brite products.
Procedural Posture:
- Day-Brite Lighting, Inc. sued Compco Corp. in U.S. District Court for design patent infringement and unfair competition under Illinois law.
- The District Court held Day-Brite's design patent to be invalid.
- The District Court found Compco guilty of unfair competition, concluding that its fixture was confusingly similar to Day-Brite's design, which had acquired a secondary meaning.
- The District Court enjoined Compco from selling the fixtures and ordered an accounting for damages.
- Compco, as appellant, appealed the unfair competition ruling to the U.S. Court of Appeals for the Seventh Circuit.
- The Court of Appeals affirmed the District Court's judgment, holding that the finding of likely confusion was sufficient to support an unfair competition claim under Illinois law.
- The U.S. Supreme Court granted certiorari.
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Issue:
Does a state's unfair competition law, which grants relief against the copying of an unpatented industrial design that has acquired a secondary meaning, conflict with federal patent law?
Opinions:
Majority - Mr. Justice Black
Yes. A state's unfair competition law cannot prevent the copying of an unpatented article, as this would interfere with the federal policy of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain. When an article is not protected by a federal patent or copyright, it is in the public domain and can be copied in every detail. The fact that a design has acquired a 'secondary meaning' or is 'nonfunctional' is irrelevant; these factors cannot be used as a basis to prohibit the act of copying itself. While states retain the power to require labeling or other precautions to prevent consumers from being deceived about the source of goods (i.e., 'palming off'), they cannot grant a monopoly on an unpatented design.
Concurring - Mr. Justice Harlan
Yes. While agreeing with the Court's judgment in this case, a state should have more leeway than the majority opinion allows. If there is evidence, other than the mere act of copying, that a company copied a design with the 'dominant purpose and effect of palming off' its goods as another's or confusing customers, a state should be able to impose reasonable restrictions on the act of copying itself. Federal interests do not require states to tolerate such 'predatory business practices.' However, since this case did not present such facts, the Court's reversal is appropriate.
Analysis:
This case, along with its companion case, Sears, Roebuck & Co. v. Stiffel Co., established the potent 'Sears-Compco doctrine' of federal preemption in intellectual property. The doctrine significantly curtails the ability of states to use unfair competition laws to protect unpatented product designs, effectively creating a zone of free competition for any article not covered by federal patent or copyright law. This decision forces creators to rely solely on federal protection for their designs, preventing them from using state law to create a de facto monopoly on an item that the federal system has left in the public domain. The only state-level recourse left is in cases of actual deception, such as fraudulent marketing or 'palming off', rather than the mere act of copying a design.
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