Kewanee Revisited: Returning to First Principles of Intellectual Property Law to Determine the Issue of Federal Preemption

By Sandeen, Sharon K. | Marquette Intellectual Property Law Review, Summer 2008 | Go to article overview

Kewanee Revisited: Returning to First Principles of Intellectual Property Law to Determine the Issue of Federal Preemption


Sandeen, Sharon K., Marquette Intellectual Property Law Review


INTRODUCTION

I. THE HISTORICAL AND LEGAL CONTEXT OF KEWANEE
     A. The Sears/Compco Doctrine
     B. Applying the Sears/Compco Doctrine to Trade Secret Cases
II. KEWANEE DE-CONSTRUCTED
     A. Argument One: The Limited Scope of Trade Secret Law
     B. Argument Two: Constitutional Preemption
     C. Argument Three: Conflict Preemption
     D. Argument Four: The Partial Preemption Theory
     E. The Missing Analyses: Field Preemption and Free Competition
III. THE CHANGED ASSUMPTIONS OF KEWANEE
     A. Changes to Patent Law since 1974.
     B. Changes to Copyright Law since 1974
     C. Changes to Trade Secret Law since 1974
IV. KEWANEE REFRESHED
     A. Problem One: The Court's Preemption Analysis is Incomplete
        1. Express Preemption
        2. Field Preemption
     B. Problem Two: The Court's Conflict Preemption Analysis
        is Incomplete and Based upon Unsupported Factual
        Assumptions
     C. Problem Three: The Court's Failure to Articulate a Clear,
        Unifying Test for Intellectual Property Preemption
     D. Problem Four: The Court's Reluctance to Engage in an
        "As Applied" Analysis
V. GUARDING AGAINST THE ANTI-COMPETITIVE EFFECTS OF STATE LAWS
CONCLUSION

INTRODUCTION

In 1973, members of the American Bar Association (ABA), Section on Patent, Trademark and Copyright (hereinafter the PTC Section) faced a dilemma. For more than six years, they had written, scrutinized, debated, and re-worked a draft uniform law to govern trade secrets. (1) In August 1972, their efforts finally bore fruit when a draft law was read before the National Conference of Commissioners on Uniform State Laws (hereinafter NCCUSL). (2) At the time, and despite the U.S. Supreme Court's decisions in the Sears, Roebuck & Co. v. Stiffel Co. and Compco Corp. v. Day-Brite Lighting, Inc. (hereinafter Sears/Compco) cases, (3) it was thought that states could regulate in the area of trade secrets without interfering with federal patent policies. (4) With the decision of the Sixth Circuit Court of Appeals in Kewanee Oil Co. v. Bicron Corp., (5) however, this conclusion was called into question, and further consideration of a uniform trade secrets act was suspended pending clarification from the U.S. Supreme Court or an act of Congress. (6)

The PTC Section did not have to wait long for the clarification it needed. In its 1974 decision in Kewanee, a divided Supreme Court ruled that Ohio's trade secret law was not preempted by patent law. (7) Rejecting the fact-specific analysis that had been applied by the Sixth Circuit and calls for application of so-called "partial preemption," the Court concluded that trade secret protection did not "constitute too great an encroachment on the federal patent system to be tolerated." (8) Based upon this conclusion, the PTC Section resumed its efforts to enact a uniform law in early 1975, ultimately culminating in NCCUSL's approval of the Uniform Trade Secret Act (hereinafter the UTSA) in August 1979, and the subsequent adoption of the UTSA by forty-five states. (9)

While the decision of the Supreme Court in Kewanee is frequently cited for the proposition that state trade secret laws are not preempted by federal law, this broad proposition belies five aspects of the decision. First, Kewanee is based upon the Supreme Court's understanding of the trade secret law of the State of Ohio. (10) Although the Ohio common law governing trade secrets was found not to be preempted by federal patent policies, Kewanee is not a direct endorsement of the trade secret laws of all states. (11) Second, Kewanee was decided before the enactment of the UTSA, and the Court has not subsequently determined whether the UTSA is preempted by federal law. Third, Kewanee was decided based upon the Court's understanding of U.S. patent law in 1974 and does not reflect the significant changes in patent law that have occurred since that time. Fourth, due to changes that occurred in U. …

The rest of this article is only available to active members of Questia

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items

Items saved from this article

This article has been saved
Highlights (0)
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

Citations (0)
Some of your citations are legacy items.

Any citation created before July 30, 2012 will labeled as a “Cited page.” New citations will be saved as cited passages, pages or articles.

We also added the ability to view new citations from your projects or the book or article where you created them.

Notes (0)
Bookmarks (0)

You have no saved items from this article

Project items include:
  • Saved book/article
  • Highlights
  • Quotes/citations
  • Notes
  • Bookmarks
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Buy instant access to cite pages or passages in MLA, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited article

Kewanee Revisited: Returning to First Principles of Intellectual Property Law to Determine the Issue of Federal Preemption
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Help
Full screen

matching results for page

    Questia reader help

    How to highlight and cite specific passages

    1. Click or tap the first word you want to select.
    2. Click or tap the last word you want to select, and you’ll see everything in between get selected.
    3. You’ll then get a menu of options like creating a highlight or a citation from that passage of text.

    OK, got it!

    Cited passage

    Style
    Citations are available only to our active members.
    Buy instant access to cite pages or passages in MLA, APA and Chicago citation styles.

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

    1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

    Cited passage

    Thanks for trying Questia!

    Please continue trying out our research tools, but please note, full functionality is available only to our active members.

    Your work will be lost once you leave this Web page.

    Buy instant access to save your work.

    Already a member? Log in now.

    Oops!

    An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.