class 23 copyright, winter, 2010 state law claims randal c. picker leffmann professor of commercial...

Class 23Copyright, Winter, 2010

State Law ClaimsRandal C. PickerLeffmann Professor of Commercial Law

The Law School

The University of Chicago

773.702.0864/[email protected] © 2005-10 Randal C. Picker. All Rights Reserved.

April 19, 2023 Copyright © 2005-10 Randal C. Picker 2

Sec. 301. Preemption with respect to other laws

(a) On and after January 1, 1978, all legal or equitable

rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title.


Sec. 301

Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.


Sec. 301

(b) Nothing in this title annuls or limits any

rights or remedies under the common law or statutes of any State with respect to

(1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or …


Sec. 301

(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 …

(d) Nothing in this title annuls or limits any

rights or remedies under any other Federal statute.


Owning Data

Hypo Illinois passes a law providing that “no

person may copy the data in telephone books distributed by phone companies.”

Entrant wants to copy incumbent’s phone book

Can the entrant do so?


Is This the Answer?

H.R. Rep. No. 94-1476: As long as a work fits within one of the

general subject matter categories of sections 102 and 103, the bill prevents the States from protecting it even if it fails to achieve Federal statutory copyright because it is too minimal or lacking in originality to qualify, or because it has fallen into the public domain.

Dance Choreography

Hypo George B. creates dances for a living He writes down those dances using an

understandable dance notation Photographer P takes photos of dance

Does George have a copyright in the dance? Does P infringe?


Answer

Answer Choreography specifically covered in the

statute; see 102(a)(4), 106(4), 106(5) Need to have standard OWA fixed in a TME

but writing down the dance on paper should suffice (as would recording it)

George B should have a good copyright in the dance


Answer

Answer Does P infringe? See Horgan v. MacMillan, 789 F.2d 157

(1986) (possibly)


Playing Jazz Flute

Hypo James Newton, a jazz flautist, puts on a show He plays many of his musical compositions but

at one point he plays an improvised song, meaning one that he creates as he plays it

What is the copyright status of the improvised song? Does it matter if it is recorded?


Answer

Answer If the work is unfixed, state law could

protect it The legislative history to Sec. 301 is clear

that this is the type of work left to the states under 301(b)(1)

If the work is recorded, then we have OWA fixed in a TME and full copyright


Coaching the Lakers

Hypo Phil Jackson writes down on paper a play for the

Lakers to execute The play works as planned A photographer, P, takes a photo of part of the

play Does Jackson have a copyright in the play?

Does P infringe? Does it matter if Kobe improvises?



NBA v. Motorola

Core Facts NBA plays games Those games are broadcast on radio or TV Motorola runs SportsTrax

Motorola employees to watch basketball broadcast

Type in basic factual info about the state of the game


NBA v. Motorola

SportsTrax distributes those accounts to pagers using wirelines, satellites and FM radio spectrum

NBA alleges copyright violations and state law misappropriation

Who wins?

Possible Copyrights

Try Three The underlying game The broadcast of the game The facts of the game



Copyrighting the Game

NBA Claim NBA games are copyrightable, as such,

independent of whether those games are broadcasted, so long as the games are fixed in some fashion

How should we assess this? Are games different from improvisational comedy or jazz? Are those copyrightable?


Copyrighting the Game

What would be the consequences of giving the NBA copyrights in the game?


Copyrighting the Broadcast

Broadcasting an NBA Game Many games, one set of images transmitted

to the world What is the work? How is it classified? Is it

copyrightable?


Answer

Yes The work is the set of transmitted images Will be classified as a motion picture (see

102(a)(6)) “Motion pictures” are audiovisual works

consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any.


Answer

“Audiovisual works” are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied.


Answer

Fix through simultaneous recording at time of broadcast A work consisting of sounds, images, or

both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.

Copyrighting the Facts

The NBA’s Claim These are facts created by us, just like the

facts created in the Seinfeld Aptitude Test case These are not facts that just exist out there

somewhere waiting to be discovered We should hold a copyright in the underlying

facts of the game just like the SAT Yes? No?



The Misappropriation Claim

Key Question Under what circumstances, if any, should a

state be able to create additional protections?


Legis History H.R. Rep. No. 94-1476

“Misappropriation” is not necessarily synonymous with copyright infringement, and thus a cause of action labeled as “misappropriation” is not preempted if it is in fact based neither on a right within the general scope of copyright as specified by section 106 nor on a right equivalent thereto. For example, state law should have the flexibility to afford a remedy (under traditional principles of equity) against a consistent pattern of unauthorized appropriation by a competitor of the facts (i.e., not the literary expression) constituting “hot” news, whether in the traditional mold of International News Service v. Associated Press, 248 U.S. 215 (1918), or in the newer form of data updates from scientific, business, or financial data bases.


2nd Cir Test in Motorola

Five Elements Plaintiff gathers info at a cost Info is time-sensitive Defendant free-rides on plaintiff’s efforts Defendant’s service competes with that offered by

plaintiff Free-riding would “substantially threaten” plaintiff’s

incentives to produce the product in question


Identifying the Relevant Products

Three Possibilities NBA Games TV and Radio Broadcasts of NBA Games Additional Add-On Products, such as

SportsTrax


Court’s Final Answer

Yes, time-sensitive, and yes NBA has directly competing service, Gamestats

But: SportsTrax does not compete with games or

broadcasts No free-riding by Motorola on Gamestats;

Motorola gets info on its own from broadcasts

Motorola wins


ProCD v. Zeidenberg

Core Facts CD of 3000 telephone directories Assumed not copyrightable after Feist License attempted to segregate users into

serious business users and casual consumer users


Basic Structure of Interaction

Forming the Contract ProCD sells CD Box states software comes with license Running software triggers appearance of

license In normal course, must click “yes” to get

access to the software Disagree? Return software for full refund


Possible Views

Z. and the Lower Court CD in box on shelf constitutes offer Purchase constitutes acceptance License irrelevant?

7th Circuit View Offer not made at store, rather made at point

of click-through Click-through constitutes acceptance


Contract Questions

Key Question Was a contract formed? When? On what terms?

Not Today


The Value of Price Discrimination in IP Goods

Cost Structure of IP Goods Substantial fixed costs, here more than $10

million to create database Next to zero marginal costs

Need Pricing Mechanism to Cover Fixed Costs


Assume Contract

Does 301 preempt it?


Writing 301(b)(3)

Starts with Nothing in this title annuls or limits any

rights or remedies under the common law or statutes of any State with respect to …


Writing 301(b)(3) The Adopted Version

(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106;

A Prior Draft Version (3) activities violating rights that are not equivalent

to any of the exclusive rights within the general scope of copyright as specified by section 106, including breaches of contract, breaches of trust, invasion of privacy, defamation, and deceptive trade practices such as passing off and false representation.


Legis History on Draft Version

H.R. Rep. No. 94-1476 Nothing in the bill derogates from the rights

of parties to contract with each other and to sue for breaches of contract; however, to the extent that the unfair competition concept known as “interference with contract relations” is merely the equivalent of copyright protection, it would be preempted.


Easterbrook’s Key Point on Equivalence

Copyright v. Contract Copyrights are rights good against the world Contractual rights usually only bind the

contracting parties The ProCD restrictions limit Zeidenberg, but

not third parties Hence not “equivalent” to copy rights, hence

not preempted

class 23 copyright, winter, 2010 state law claims randal c. picker leffmann professor of commercial...

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