28 U.S.C. § 1338

Patents, plant variety protection, copyrights, mask works, designs, trademarks, and unfair competition

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(a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. For purposes of this subsection, the term “State” includes any State of the United States, the District of Columbia, the Commonwealth of Puerto Rico, the United States Virgin Islands, American Samoa, Guam, and the Northern Mariana Islands.(b) The district courts shall have original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent, plant variety protection or trademark laws.(c) Subsections (a) and (b) apply to exclusive rights in mask works under chapter 9 of title 17, and to exclusive rights in designs under chapter 13 of title 17, to the same extent as such subsections apply to copyrights.(June 25, 1948, ch. 646, 62 Stat. 931; Pub. L. 91–577, title III, § 143(b), Dec. 24, 1970, 84 Stat. 1559; Pub. L. 100–702, title X, § 1020(a)(4), Nov. 19, 1988, 102 Stat. 4671; Pub. L. 105–304, title V, § 503(b)(1), (2)(A), Oct. 28, 1998, 112 Stat. 2917; Pub. L. 106–113, div. B, § 1000(a)(9) [title III, § 3009(1)], Nov. 29, 1999, 113 Stat. 1536, 1501A–551; Pub. L. 112–29, § 19(a), Sept. 16, 2011, 125 Stat. 331.)Historical and Revision Notes

Based on title 28, U.S.C., 1940 ed., §§ 41(7) and 371(5) (Mar. 3, 1911, ch. 231, §§ 24, par. 7, 256, par. 5, 36 Stat. 1092, 1160).

Section consolidates section 41(7) with section 371 (5) of title 28, U.S.C., 1940 ed., with necessary changes in phraseology.

Words “of any civil action” were substituted for “all suits at law or in equity” and “cases” to conform section to Rule 2 of the Federal Rules of Civil Procedure.

Word “patents” was substituted for “patent-right” in said section 371 (Fifth) of title 28, U.S.C., 1940 ed.

Similar provisions respecting suits cognizable in district courts, including those of territories and possessions. (See section 34 of title 17, U.S.C., 1940 ed., Copyrights.)

Subsection (b) is added and is intended to avoid “piecemeal” litigation to enforce common-law and statutory copyright, patent, and trade-mark rights by specifically permitting such enforcement in a single civil action in the district court. While this is the rule under Federal decisions, this section would enact it as statutory authority. The problem is discussed at length in Hurn v. Oursler (1933, 53 S.Ct. 586, 289 U.S. 238, 77 L.Ed. 1148) and in Musher Foundation v. Alba Trading Co. (C.C.A. 1942, 127 F.2d 9) (majority and dissenting opinions).

Editorial NotesAmendments

2011—Subsec. (a). Pub. L. 112–29 substituted “No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. For purposes of this subsection, the term ‘State’ includes any State of the United States, the District of Columbia, the Commonwealth of Puerto Rico, the United States Virgin Islands, American Samoa, Guam, and the Northern Mariana Islands.” for “Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.”

1999—Pub. L. 106–113 substituted “trademarks” for “trade-marks” in section catchline and subsec. (a) and substituted “trademark” for “trade-mark” in subsec. (b).

1998—Pub. L. 105–304, § 503(b)(2)(A), inserted “designs,” after “mask works,” in section catchline.

Subsec. (c). Pub. L. 105–304, § 503(b)(1), inserted “, and to exclusive rights in designs under chapter 13 of title 17,” after “title 17”.

1988—Pub. L. 100–702, § 1020(a)(4)(B), amended section catchline generally, inserting “mask works,” after “copyrights,”.

Subsec. (c). Pub. L. 100–702, § 1020(a)(4)(A), added subsec. (c).

1970—Pub. L. 91–577 inserted references to “plant variety protection” in section catchline and in subsecs. (a) and (b).

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by Pub. L. 112–29 applicable to any civil action commenced on or after Sept. 16, 2011, see section 19(e) of Pub. L. 112–29, set out as a note under section 1295 of this title.

Effective Date of 1970 Amendment

Amendment by Pub. L. 91–577 effective Dec. 24, 1970, see section 141 of Pub. L. 91–577, set out as an Effective Date note under section 2321 of Title 7, Agriculture.

Notes of Decisions

Cited in 3,413 cases (325 in the last 5 years), 1948–2026 · leading case: Vanda Pharm. Inc. v. West-Ward Pharm., 887 F.3d 1117 (Fed. Cir. 2018).

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Vanda Pharm. Inc. v. West-Ward Pharm., 887 F.3d 1117 (Fed. Cir. 2018). · cites it 7× “5 (2012) (second and third alterations in original) (quoting 28 U.S.C. § 1338 (a)). Here, Vanda’s complaint alleged that West-Ward in- fringed the ’610 patent under 35 U.”

Microsoft Corp. v. Geotag, Inc., 817 F.3d 1305 (Fed. Cir. 2016). · cites it 9× “Choice , of Law Before we address whether the District Court possessed subject matter jurisdiction over GeoTag’s patent infringement counterclaims pursuant to 28 U.S.C. § 1338 (a), we must first determine whether our law or that of the Third Circuit applies to the jurisdiction…”

Gunn v. Minton, 133 S. Ct. 1059 (2013). · cites it 3× “” 28 U. S. C. § 1338 (a). The question presented is whether a state law claim alleging legal malpractice in the handling of a patent case must be brought in federal court.”

Inspired Dev. Grp. v. Inspired Prods. Grp., LLC, 938 F.3d 1355 (Fed. Cir. 2019). · cites it 9× “The Eleventh Circuit transferred the case to this court to determine whether the parties’ claims “aris[e] under” the patent laws pursuant to 28 U.S.C. § 1338 (a). For the reasons below, we vacate and remand for dismissal of the lawsuit for lack of jurisdiction.”

Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002). · cites it 4× “Thus, if a case began as an antitrust case, but an amendment to the complaint added a patent claim that was pending or was decided when the appeal is taken, the jurisdiction of the district court would have been based "in part" on 28 U. S. C. § 1338 (a), and therefore §…”

Image Software, Inc. v. Reynolds & Reynolds Co., 459 F.3d 1044 (10th Cir. 2006). · cites it 5× “§ 1331 , which provides that “[t]he district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States;” 5 and 28 U.S.C. § 1338 (a), which further provides that “[t]he district courts shall have original…”

Get in Shape Franchise, Inc. v. TFL Fishers, LLC, 167 F. Supp. 3d 173 (D. Mass. 2016). · cites it 7× “Federal Question Jurisdiction Under 28 U.S.C. § 1338 , district courts “have original jurisdiction of any civil action arising under any Act of Congress relating to .”

Florida Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627 (1999). · cites it 6× “[13] And even if 28 U. S. C. § 1338 is amended or construed to permit state courts to entertain infringement actions when a State is named as a defendant, given the Court's opinion in Alden v.”

Cambridge Literary Props., Ltd. v. W. Goebel Porzellanfabrik G.M.B.H. & Co. Kg., 510 F.3d 77 (1st Cir. 2007). · cites it 8× “ince the Cambridge state-law accounting claim might require it to establish as a threshold matter that its predecessor-in-interest, Margarete Seemann, was an original co-owner of the copyright in Das Hummelbuch, the Cambridge claim thus "arises under" the Copyright Act for…”

Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403 (Fed. Cir. 2009). · cites it 6× “§ 1331 (conferring original jurisdiction to federal district courts over “all civil actions arising under the Constitution, laws, or treaties of the United States” (emphasis added)); 28 U.S.C. § 1338 (stating that U.S. district courts possess subject matter jurisdiction over…”

Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538 (2d Cir. 1956). · cites it 10× “§ 1121 and 28 U.S.C.A. § 1338 (a), while jurisdiction over the related unfair competition claim is based on 28 U.”

Creative Tech., Ltd., a Singapore Corp. v. Aztech Sys. Pte, Ltd, a Singapore Corp. Aztech Labs, Inc., a California Corp., 61 F.3d 696 (9th Cir. 1995). · cites it 7× “As a result, Creative contends that the forum non conveniens doctrine is inapplicable to its claim because 28 U.S.C. § 1338 (a) 3 invests the federal district courts with “exclusive” jurisdiction over claims arising under the United States Copyright Act.”

Show all 3,413 citing cases →

— 28 U.S.C. § 1338(a) — 26 cases

Bv Eng'g v. Univ. of California, Los Angeles, 858 F.2d 1394 (9th Cir. 1988).

Michael I. Kroll v. Frank A. Finnerty, Jr., Chief Couns. for the New York State Grievance Comm. for the Tenth Jud. Dist., 242 F.3d 1359 (10th Cir. 2001).

Adolph Coors Co. v. A. Genderson & Sons, Inc., 486 F. Supp. 131 (D. Colo. 1980).

Nat'l Pat. Dev. Corp. v. T.J. Smith & Nephew Ltd., 877 F.2d 1003 (D.C. Cir. 1989).

Altman v. Bayer Corp., 125 F. Supp. 2d 666 (S.D.N.Y. 2000).

— 28 U.S.C. § 1338(b) — 16 cases

Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538 (2d Cir. 1956). “§ 1121 and 28 U.S.C.A. § 1338 (a), while jurisdiction over the related unfair competition claim is based on 28 U.”

Pure Foods, Inc. v. Minute Maid Corp., 214 F.2d 792 (5th Cir. 1954).

John P. O'Brien v. Westinghouse Elec. Corp., 293 F.2d 1 (3rd Cir. 1961).

Skil Corp. v. Rockwell Int'l Corp., 375 F. Supp. 777 (N.D. Ill. 1974).

Mortellito v. Nina of California, Inc., 335 F. Supp. 1288 (S.D.N.Y. 1972).

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