January 11, 2007
Nearly three decades after Congress eliminated the dual state and federal protection of copyright claims by including Section 301 in the Copyright Revision Act of 1976, it often remains difficult to determine whether a particular claim will or will not be preempted. Preemption issues arise with regard to a variety of state law claims, but recent decisions concerning right of publicity claims highlight the difficulties.
In Toney v. L’Oreal U.S.A., Inc., 406 F.3d 905 (7th Cir. 2005), the Court of appeals for the Seventh Circuit held that the plaintiff’s claim for violating her right of publicity under the Illinois Right of Publicity Act was not preempted. The decision is notable because, just a year earlier, the same court had concluded that Toney’s claim was preempted because it was “qualitatively indistinguishable” from the rights protected under the Copyright Act. See, Toney v. L’Oreal U.S.A., Inc., 384 F.3d 486 (7th Cir. 2004), rehearing granted by, vacated by Toney v. L’Oreal U.S.A., Inc., 400 F.3d 964 (7th Cir. 2005); different results reached on rehearing at, remanded by Toney v. L’Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005).
In its 2005 decision, the court held that Toney’s claim was not preempted because protection of Toney’s identity, i.e., her persona, is not equivalent to any of the exclusive rights protected by copyright. Toney v. L’Oreal U.S.A., Inc., 406 F.3d at 910. This is consistent with other cases that have found right of publicity claims not preempted.
However, a right of publicity claim can still be preempted under the right circumstances. For example, in Stanford v. Caesars Entertainment, Inc., 430 F. Supp. 2d 749 (W.D. Tenn. 2006), the court found plaintiff’s right of publicity claim was preempted. The court distinguished Toney and other decisions that found no preemption on the ground that plaintiff’s claims did not involve exploiting his persona as a human being, but rather his portrayal of a fictional character in advertising.
This article discusses the standards used by the courts to decide whether a claim is preempted to assist practitioners in navigating this often thorny issue.
Section 301
Section 301(a) of the Copyright Act provides as follows:
On or 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 … are governed exclusively by this title. 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.
By enacting Section 301(a), Congress made clear that federal law dominated in the copyright field. Historically, this supremacy was not always the case. Prior to the passage of the 1976 Copyright Act, the United States maintained a dual state-federal system of copyright protection. With the enactment of Section 301, this dichotomy was eliminated and most “new” copyright works began to and now come under the scope of federal law. With the enactment of Section 301(a), courts no longer wrestle with whether federal law is applicable to copyright matters pursuant to the U.S. Constitution’s Supremacy Clause. Instead, the analysis is governed by application of Section 301(a), with the focus of most courts’ analyses being on which particular causes of action are preempted.
The Extra Element Test
In determining whether a state law claim will be preempted, many courts apply the “extra element” test. Essentially, a state law claim will not be preempted if it includes any extra elements that make it qualitatively different from a copyright claim. Briarpatch Ltd., LP. V. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir. 2004). To determine whether a claim is qualitatively different, courts look at “what [the] plaintiff seeks to protect, the theories in which the matter is thought to be protected and the rights sought to be enforced.” Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d. Cir. 1992) quoting, 1 Roger M. Milgrim, Milgrim on Trade Secrets §2.06A[3], at 2-150 (1992).
Awareness or intent are not generally sufficient to make a state law claim qualitatively different. Id. at 717. See also, Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F. Supp. 1523, 1535 (S.D.N.Y. 1985) (an action “will not be saved from preemption by elements such as awareness or intent, which alter ‘the action’s scope but not its nature’”).
Section 301(a) calls for a two-part analysis to determine whether state statutory or common law may conflict with the Copyright Act. See, Harper & Row, Publishers, Inc. v. Nation Enterprises, 723 F.2d 195 (2d Cir. 1983) rev’d on other grounds, 471 U.S. 539 (1985); Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir. 1998). The Copyright Act preempts a state claim when:
The extra element test is useful in analyzing both the subject matter requirement and the general scope requirement.
To satisfy the subject matter requirement, the state law claim in question must pertain to “original works of authorship fixed in any tangible medium of expression,” “within the ambit of one of the categories of copyrightable works.” See, 17 U.S.C. §102(a); Briarpatch, 373 F.3d at 305. Generally, the court examines whether the sate law claim implicates one of the exclusive rights under copyright (i.e., acts of reproduction, adaptation, performance, distribution or display), or is based on an “extra element” beyond those of a copyright claim. Id.
If a work fits within the general subject matter of Sections 102 (subject matter of copyright in general) and 103 (compilations and derivative works of copyright) of the Copyright Act then the requirement is satisfied—regardless of whether the work actually qualifies for copyright protection. Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 455 (6th Cir. 2001). As a number of circuit courts have held, for the purposes of preemption, the scope of the Copyright Act’s subject matter is broader than the scope of its protection. See, e.g., Id.(“the shadow cast by the [Copyright] Act’s preemption is notably broader than the wing of its protection.”)
To satisfy the general scope requirement, the threshold issue is usually whether the state law protects rights that are “qualitatively different” from the rights protected by copyright. See, e.g. Del Madera Properties v. Rhodes & Gardner, Inc., 820 F.2d 973, 977 (9th Cir. 1987). In other words, state law claims that are substantively redundant of Copyright Act claims are preempted. Sharp v. Patterson, 2004 U.S. Dist. LEXIS 22311 at 22 (S.D.N.Y. Nov. 3, 2004). “To satisfy the general scope requirement, ‘the state-created right must [be of the sort that would] be abridged by an act that would, by itself, infringe one of the exclusive rights provided by federal copyright law.” Id., quoting Briarpatch, 373 F.3d at 305.
Here again, the extra element test can be helpful. For example, in Nat’l Basketball Ass’n v. Motorola, Inc.,105 F.3d 841, 850 (2d Cir. 1997), the court held that real time game scores fell within a “narrow” category of misappropriation claims for “hot news.” Although the broadcast of the games would otherwise fall within the general scope of copyright, the misappropriation claim for the real time scores survived preemption because the following extra elements were present: the value of the information was highly time-sensitive, the defendant was free-riding on the plaintiff’s costly efforts to generate or collect the information, and the defendant’s acts posed a threat to the very existence of the product or service. Id. at 852-53.
Some Final Considerations
Exactly how one fares on the extra element test is important to both plaintiffs and defendants. Plaintiffs, depending on the facts of a particular case, may seek to include state claims in their complaints for any number of reasons, ranging from the ability to maintain a lawsuit should the copyright claim be dismissed to the possibility of prevailing on more than one claim. Defendants, on the other hand, depending on the strategy employed, may attempt to dismiss those claims without reaching the merits of the case to avoid the expense of protracted litigation and, of course, to minimize or eliminate liability.
Alternatively, a defendant may attempt to remove a state case to federal district court based on the “complete preemption” doctrine. Where a federal statute both preempts a state law and substitutes a federal remedy, a state law complaint that, for purposes of the well-pleaded complaint rule, establishes a federal claim can be removed to federal court. Briarpatch Ltd., v. Phoenix Pictures Inc., 373 F.3d 296, 305 (2d Cir. 2004). See also, Rosciszewski v. Arete Assocs., 1 F.3d 225, 232-33 (4th Cir. 1993) (“The grant of exclusive jurisdiction to the federal courts over civil actions arising under the Copyright Act, combined with the preemptive force of §301(a), compels the conclusion that Congress intended that state law actions preempted by §304(a) of the Copyright Act arise under federal law.”)
In short, the complete preemption doctrine “permits recharacterization of a plaintiff’s claim as a federal claim so that removal is proper,” even though the complaint may not mention a federal basis of jurisdiction. Ritchie v. Williams, 395 F.3d 283, 286 (6th Cir. 2005).
In view of the complexities, both plaintiff’s and defendants should carefully consider preemption issues whenever a claim bears resemblance to the subject matter or exclusive rights protected by the Copyright Act.
For more information on this article, or copyright issues in general, please contact a Thelen Intellectual Property attorney in your area, or any of the following:
| Peter Brown 212.895.2480 pbrown@thelen.com | Robert E. Krebs 408.282.1823 rkrebs@thelen.com |
| Richard Raysman 212.895.2360 rraysman@thelen.com | Nancy J. Mertzel 212.895.2012 nmertzel@thelen.com |
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©2007 by Thelen LLP. This article was originally published in the December 2006 edition of Intellectual Property Litigation Quarterly, ©2006 American Lawyer Media, and is here reposted with permission as an information service for clients and friends. Please recognize that the information is general in nature and must not be relied upon as legal advice. We would be pleased to discuss the information in this article, and its application to your specific situation, in greater detail. We welcome your comments and suggestions.
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