Legal Definitions - Sears–Compco doctrine

The Sears–Compco doctrine is a fundamental legal principle that defines the boundaries between federal intellectual property (IP) laws and state laws. It establishes that federal laws governing patents, copyrights, and trademarks are supreme and generally prevent states from creating their own similar protections for ideas, designs, or information that are not, or are no longer, protected under federal IP law.

This doctrine reflects a deliberate policy choice by Congress: that the public generally benefits more from free access to innovations and creative works than from allowing individual states to grant exclusive rights over things that federal law has deemed ineligible for protection. In essence, if something doesn't qualify for a federal patent, copyright, or trademark, or if its federal protection has expired, states typically cannot step in and create an equivalent form of protection. Doing so would undermine the careful balance struck by federal law between encouraging innovation through limited monopolies and ensuring public access and competition.

• Example 1: A purely functional product design

  Imagine a company, "ErgoDesk Inc.," designs a highly ergonomic office desk with a unique, adjustable height mechanism and a specific, purely functional shape for cable management. This design is focused entirely on utility and efficiency, not on aesthetics or brand identification. ErgoDesk Inc. chooses not to pursue a design patent for the desk's shape or the mechanism, perhaps because it doesn't meet the strict novelty requirements or they simply didn't want to. Another company, "Utility Furniture Co.," begins manufacturing an identical desk, copying the functional shape and mechanism precisely. ErgoDesk Inc. attempts to sue Utility Furniture Co. under a state unfair competition law, arguing that Utility Furniture Co. is unfairly benefiting from their design efforts.

  How it illustrates the doctrine: The Sears–Compco doctrine would likely prevent ErgoDesk Inc. from succeeding. Since the desk's functional shape and mechanism are not protected by a federal patent (or perhaps not protectable at all under federal patent law), allowing a state law to prevent others from copying them would effectively create a state-level patent for a functional design. This would contradict the federal patent system, which only grants exclusive rights to novel, non-obvious, and useful inventions for a limited time, and generally does not protect purely functional aspects of a product from being copied once they are in the public domain or never patented.

• Example 2: An expired copyright on a creative work

  Consider a classic novel, "The Timeless Tale," written by an author in the early 20th century. The novel was originally protected by federal copyright, granting the author and their heirs exclusive rights for a specific period. Now, the copyright has expired, and "The Timeless Tale" has entered the public domain, meaning anyone is free to publish, adapt, or perform it. A small publishing house, "Classic Reads," decides to print and sell its own edition of the novel. The original author's estate attempts to sue Classic Reads under a state law that prohibits "misappropriation of literary works," arguing that Classic Reads is unfairly profiting from their ancestor's creation.

  How it illustrates the doctrine: The Sears–Compco doctrine would prevent the author's estate from using state law to extend its exclusive rights. Once a federal copyright expires, the work enters the public domain, making it freely available for public use. Allowing a state law to prevent copying after federal copyright protection has ended would undermine the federal copyright system's carefully balanced duration of protection, effectively creating an indefinite state-level copyright and hindering public access to cultural works.

• Example 3: A non-distinctive product packaging

  Imagine a company, "FreshBake Bakery," sells a popular line of cookies in a generic, clear plastic container with a standard rectangular shape. The packaging is purely functional, designed to display the cookies and keep them fresh, and it lacks any distinctive features that would identify it specifically with FreshBake Bakery (e.g., no unique colors, logos, or shapes that serve as a "trade dress"). Another bakery, "SweetTreats Co.," starts selling similar cookies in an identical, generic clear plastic container. FreshBake Bakery tries to sue SweetTreats Co. under a state unfair competition law, claiming that SweetTreats Co. is copying their product's "look and feel" and confusing customers.

  How it illustrates the doctrine: The Sears–Compco doctrine would likely prevent FreshBake Bakery from succeeding. Federal trademark law, specifically trade dress protection, requires packaging to be non-functional and distinctive to be protected. If the clear plastic container is purely functional and lacks any distinctive elements that consumers associate with FreshBake Bakery, it would not qualify for federal trade dress protection. Allowing a state law to protect such generic, functional packaging would create a state-level monopoly over common packaging elements, conflicting with federal policy that generally allows competitors to use functional designs and common packaging unless it has acquired distinctiveness as a brand identifier.