1. COPYRIGHT LAW 2003 Professor Fischer CLASS of April 14 2003: PREEMPTION

2. PREEMPTION Interplay between copyright and state law Copyright owners sometimes try to use contract to beef up copyright rights Copyright owners also sometimes supplement copyright law by asserting various state law claims

3. Supremacy Clause Article VI cl. 2 This Constitution, and the Laws of the United States which shall be made in pursuance thereof; and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any State to the contrary notwithstanding General idea – federal law supreme and preempts state law.

4. 3 kinds of federal preemption 1. Federal law expressly preempts particular state laws – does Copyright Act have an express preemption provision?

5. 3 kinds of federal preemption 1. Federal law expressly preempts particular state laws – does Copyright Act have an express preemption provision? Yes, in s. 301(a) – bars state law claims about subject matter “within the general scope of copyright” that are “equivalent” to copyright infringement claims. Preempted to the extent provided by statute

6. 3 kinds of federal preemption 2. Implied preemption – from federal statute’s scope, purpose and legislative history – “occupation of the field” – state regulation preempted entirely 3. Implied preemption - “conflict preemption”- preempted to the extent of the conflict Express and implied preemption can co-exist in the same statute It may be difficult to determine whether a court will, find implied preemption and which type it will choose

7. IP and Preemption Federal trademark statute permits states to continue to regulate trademarks in most areas However, both the federal patent law and the federal copyright law have some preemptive reach Copying information can violate many kinds of state laws – such as?

8. IP and Preemption Copying information can violate many kinds of state laws – such as? - trade secret, rights of publicity, unfair competition,misappropriation

9. Supreme Court and preemption A line of Supreme court cases has considered preemptive effects of federal intellectual property laws Are these cases, largely patent cases, transferable to copyright context?

10. Sears/Compco (1964) p. 607 What was the issue for the courts in these cases? Did the Supreme Court find the state unfair competition law preempted? Why”? Is the Sears/Compco view of the world too simplistic?

11. Goldstein ((1972) p. 609 Case arose under 1909 Act, which had no express preemption provision; also no federal copyright protection to sound recordings at issue (only those fixed after Feb. 15 1972) Petitioners were prosecuted and convicted under CA state statute that prohibited copying of sound recordings. Preemption? Is this consistent with Sears/Compco? Would this case have been decided differently if the case had arisen under the 1976 Act?

12. Kewanee (1974) – CB p. 613 Supreme Court upholds state trade secret law against preemption challenge by federal patent law. Why? Rejects occupation of the field preemption, but of course leaves conflict preemption Is Kewanee consistent with Goldstein? Do you agree with Chief Justice Burger’s analysis of the potential for conflict between patent and trade secret laws?

13. Bonito Boats Is this consistent with Goldstein and Kewanee? How was the Florida direct molding statute different from (a) state trade secret protection at issue in Kewanee (b) the CA record piracy statute at issue in Goldstein and © state labeling requirements as discussed in Sears/Compco? How does the Bonito Boats Court define the public domain?

14. 2 lines of cases emphasizing different objectives of patent law 1. Sears/Compco, Bonito – finds conflict with patent statute where state law prohibits copying/selling unpatented product. Bars inventor from getting state patent rights where cannot satisfy patent standards. Focuses on objective of balancing free competition with promotion of invention and thus need to protect public domain. 2. Kewanee – finds no conflict with patent statute by state trade secret on the basis that it did not conflict with the patent law policy of encouraging invention and requiring disclosure of the invention

15. Federal Law Can Congress use its power under the Commerce Clause to grant protection to intellectual goods that are not inventive or original if they touch on interstate commerce? See U.S. v. Moghadam, 175 F.3d 1269 (11 th Cir. 1999)

16. Express Preemption Under the 1976 Act S. 301- express wording Legislative history – Are state laws that give copyright-like or greater protection to unfixed works, like live performances, preempted by the copyright act? Are state laws that give copyright-like or greater protection to works that are not original – like facts, preempted by the copyright act?

17. Preemption Provision Copyright Act exclusively governs all rights that are: 1. Equivalent to s. 106 exclusive rights 2. In works of authorship fixed in a tangible medium of expression 3. Come within the scope of copyright as specified by s. 102 and s. 103

18. Justifications for Express Preemption What are the purposes of the preemption provision in the 1976 Copyright Act?

19. Justifications for Express Preemption What are the purposes of the preemption provision in the 1976 Copyright Act? 1. Promote national uniformity 2. Reduce chaotic situation re: publication 3. Implement “limited times” provision in Art. I s. 8 cl. 8 4. Improve international dealings in copyrighted material

20. Determining Whether a Right is Equivalent to s. 106 Rights How does a court do this?

21. Determining Whether a Right is Equivalent to s. 106 Rights How does a court do this? Extra element test - 1. Court determines whether the state right would be infringed by an act that would potentially infringe a federal copyright or whether infringement of the state right requires showing additional substantial ownership, e.g. a state law that prohibits fraudulently selling unauthorized copies of paintings See Harper & Row v. Nation, Dielsi v. Falk, list on pp. 627-28

22. Problem: What is “copyright- like”? Version of s. 301 originally had an illustrative list of state laws that Congress intended to preempt. This was taken out before bill enacted This makes preemption a difficult issue 2 areas of state law of particular difficulty: (1) misappropriation (2) rights of publicity

23. Right of Publicity What does a plaintiff generally have to show to sustain a cause of action for infringement of the right of publicity?

24. Right of Publicity What does a plaintiff generally have to show to sustain a cause of action for infringement of the right of publicity? 1. Right in an identity 2. Right infringed by unauthorized use likely to cause damages to identity’s commercial value

25. Baltimore Orioles v. Major League (7 th Cir. 1986) p. 630 Did the Copyright Act preempt the right of publicity claims alleging that Clubs owned exclusive rights to the televised performances of major league baseball players? Why or why not?

26. Brown v. Ames (5 th Cir. 2000) This case distinguishes Baltimore Orioles; on what basis? Was the court right to distinguish the Baltimore Orioles case?