1. Ideas; Publicity Intro to IP – Prof Merges 4.17.12

2. Agenda Idea submissions – Desny v. Wilder – Compare NY and California rules Right of publicity – Introduction; Bette Midler case

5. The Apartment

6. Some Like it Hot

11. Desny Facts Procedural history – SJ for Defendant Wilder

12. Idea Submissions Legal theories – Implied K – Misappropriation

13. Basic contract law Enforceable K requires bargained-for consideration – Promise to disclose idea in exchange for promise to pay for it (if used)

14. Problems with K theory here Agency: was Wilder’s secty empowered to bind Paramount Pictures Corp? Was the exchange a true bargain? If not, what was it? (Gratuitous disclosure, and hope for a return gift? Moral consideration?)

15. On the other hand... An idea certainly may be the subject of a K Payment for disclosure: an enforceable K Policy: “theatrical producers” need outside ideas

16. K theory and novelty requirement Nadel and the NY rule: Novelty required only in a misappropriation case, not a K case CA and NY agree: no novelty required in case based on a K theory

17. “The person who can and does convey a valuable idea to a producer who commercially solicits the service or who accepts it knowing that it is tendered for a price should … be entitled to recover.” IPNTA 5 th at 1014

18. “We are not oblivious to the concerns of the defendant and amici...” What might these be? – Liability for allegations of unsolicited idea submissions leading to sucessful movies etc.

19. “[I]dea purveyor cannot prevail … unless (a) before or after disclosure he has obtained an express promise to pay, or (b) the circumstances preceding and attending disclosure, together with the conduct of the offeree acting with knowledge of the circumstances show a promise of the type usually referred to as ‘implied’ or ‘implied-in- fact.’” - IPNTA 5 th at 1015

20. Idea v synopsis Close distinction, bottom IPNTA 5 th at p. 1015

21. Implied K cases Unspoken understanding: implied in fact K Implied in law K: unconscious patient example – Restitution theory

22. Concurrence Emphasizes the implied in fact nature of the K situation Bargaining power of the parties

23. Updating Desny Some cases follow Desny; see, e.g., Grosso v. Miramax Film Corp. 383 F.3d 965 (9 th Cir. 2004) Held: Miramax’s use of script concept was NOT copyright infringement (not substantially similar) but may have been breach of implied K

24. Montz v. Pilgrim Films & Television, Inc. 649 F.3d 975 (9 th Cir. 2011) (en banc) (7-4) We again hold that copyright law does not preempt a contract claim where plaintiff alleges a bilateral expectation that he would be compensated for use of the idea, the essential element of a Desny claim that separates it from preempted claims for the use of copyrighted material.

26. O’Scannlain (dissenting) [A]n action to enforce a promise not to use or to disclose ideas embodied in copyrighted material without authorization asserts rights equivalent to those protected by the Copyright Act [and should therefore be preempted].

27. Preemption and Idea Submissions Wrench v Taco Bell, 256 F.3d 446 (6 th Cir. 2001) – reversing part of Dist Ct opinion, cited IPNTA 5 th at 1017 Idea submission claim NOT preempted: lack of equivalency to any of the exclusive rights within the general scope of copyright; remanded for factual findings; novelty not required under Michigan law

28. Wrench precedent Two elements of preemption analysis under 17 USC § 301: – Subject matter – Scope or equivalency

29. Subject matter This is not the same as copyrightable subject matter It means, “all the material that is within the potential scope of copyright, whether or not it is actually protected under current © law”

30. Equivalent rights This is also a complex area ProCD takes a very expansive view of contract as “not equivalent” to © But this is clearly wrong in some cases; extensions of IP protection terms e.g.

31. Also, some K’s implicate © directly See, e.g., Ritchie v. Williams, 395 F.3d 283 (6 th Cir. 2005) Promotion and © assignment agreement between “Kid Rock” and promoter is a K, but the real issue in the case is © infringement Is performer operating outside scope of agreement?

32. Right of Publicity General background Midler v. Ford Motor

33. Privacy Warren and Brandeis, "The Right to Privacy”, 4 Harvard Law Review 19 (1890)

34. Privacy and publicity appropriating the plaintiff's identity for the defendant's benefit placing the plaintiff in a false light in the public eye publicly disclosing private facts about the plaintiff unreasonably intruding upon the seclusion or solitude of the plaintiff

35. Dean Prosser, 'Privacy’ 48 California Law Review 38 (1960)

36. Bette Midler

39. The nature of the publicity right Copyright? – No; license to song here (owner of composition – “synch” license) Trademark/unfair competition – TM, no: no “secondary meaning” in voice here

40. “We hold only that when a distinctive voice of a professional singer is widely known and is deliberately imitated to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California...” IPNTA 5 th at 1025

41. White v. Samsung

43. Judge Kozinski

44. Kozinski dissent Too much property is a real concern – Residential land analogy “Overprotection stifles the very creatives forces it’s supposed to nurture.”

45. Cal Civil Code 3344(a) Did Samsung use White’s “likeness”? Kozinski says no...

46. Majority California law protects any manifestation of “identity,” anything that “evokes” her personality Kozinski: idea/expression dichotomy proves that “stealing” something of value is not in and of itself wrong...

47. What is the downside to a robust right of publicity? Loss of “balance” Undermining federal scheme Preemption issues...