Preempted State IP Laws and Their Constitutionality
The Constitution’s Supremacy Clause gives Congress the power to preempt state laws through legislation. Preemption is a perennial issue in IP cases because patents and copyrights have traditionally been matters of federal law, but trademarks and trade secrets have traditionally been matters of state law. The Supreme Court has analyzed the preemptive effect of federal intellectual property laws in cases like Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (1989) and Sears, Roebuck & Co. v. Stiffel Co. (1964).
Because Congress’s power to preempt state law flows from the Supremacy Clause, some opinions seem to state that preemption is a type of unconstitutionality. See Biotech. Indus. v. District of Columbia, 496 F.3d 1362, 1366 (Fed. Cir. 2007) (discussing district court determination than an act was “preempted and therefore facially unconstitutional”). This view is common but incorrect.
Preemption and unconstitutionality are distinct legal concepts. Fla. Lime & Avocado Growers, Inc. v. Jacobsen, 362 U.S. 73, 82 (1960) (discussing difference between “conflict with the United States Constitution” and “conflict with the Federal Agricultural Marketing Agreement Act” as examples of distinct constitutional and preemption-based challenges to a state statute); In re Buder, 271 U.S. 461, 466 (1926) (holding that a claim of conflict between a state statute and a federal statute is not a constitutional challenge); see also Lemke v. Farmers’ Grain Co. of Embden, N.D., 258 U.S. 50, 51, 62 (1922) (separately analyzing attacks on a state statute on (1) grounds that it was unconstitutional and (2) that it conflicted with a federal statute).
When examining whether a state law is preempted, courts will compare that law with a federal law—not with the Constitution itself. The Supremacy Clause tells us nothing about whether federal copyright law preempts state trade regulations. Federal copyright law, however, does control whether a given state law is preempted. In the absence of federal IP statutes, states would be free (or more free) to enact their own IP laws. Until then, many state IP laws may be preempted, but those laws are not—strictly speaking—unconstitutional.