Preemption II
Intro to IP – Prof Merges
4.20.2012
Agenda
• Kewanee review
• Bonito Boats: review
• Preemption of publicity and trademark
claims
• Contractual preemption (revisited)
Kewanee Oil v. Bicron
The trade secret at the center of this case was a
process that would create 17-inch crystals useful
in detecting radiation. A division of the plaintiff
firm, Harshaw Chemicals, was involved in the
refining of uranium during World War II for the
Manhattan Project. This resulted in massive
ground pollution that is still a problem today.
Both companies involved in the case were later
bought out. Harshaw became a part of Engelhard
Corporation, while Bicron joined with SaintGobain Crystals and Detectors.
Kewanee Oil
• “Employee mobility” case
• Basic question: is TS law compatible with
federal statutory IP scheme?
Field vs conflict preemption
• IP: generally, conflict preemption (states may
not legislate/enforce common law so as to
conflict with purpose or goal of fed law)
• Case by case analysis
Easy cases
• Unpatentable trade secrets
• Those that are obvious, for example
• Or that fall outside all of the 101 categories
Harder cases – IPNTA 5th at 106667
• Inventions that could be patented but that
the inventor chooses to keep as Trade secrets
• Patent law: barrier
• Trade secret law: sieve
Open to state
protection ?
Intentionally
unprotected subject
matter
Subject matter
covered by
federal right
Kewanee holding:
• State trade secret law is not preempted by
federal IP scheme
– Long period of co-existence
– Congress has remained silent
Douglas dissent – 1067 +
• At war with Sears-Compco
• State unfair competition (TM) law can not
protect designs covered by invalid federal
patents
• “every article not covered by a valid patent is
in the public domain”
Bonito Boats
Boat molds
Bonito Boats
• Florida anti-molding statute
• Tennessee defendant
• Held: State statute pre-empted by federal law
Terms of Florida statute
• “unlawful for any person to use the direct
molding process to duplicate … any
manufactured vessel hull . . .” Fl St. §
559.94(2)
• Unlawful to “knowingly sell a vessel hull
made in violation of “ § (2)
Unfair competition (TM) law?
• No – direct protection of design itself
• Protection against only one form of
duplication – ok? No
• Undermines reverse engineering “privilege”
for unpatented goods
• “Florida statute endows the original boat hull
manufacturer with rights against the world,
similar in scope and operation to the rights
accorded a federal patentee.”
• -- IPNTA 5th ed. at p. 1070
Policy
• “Breaks with the tradition of peaceful
coexistence” between federal patent policy
and state market regulation
• Does this suggest that ubiquitous contractual
restrictions on reverse engineering would be
preempted?
Holding:
“[T]he [state] statute … so substantially
impedes the public use of the otherwise
unprotected design and utilitarian ideas
embodied in unpatented boat hulls as to run
afoul of [the Sears-Compco doctrine].”
-- IPNTA 5th ed. at p. 1070
Unprotected, but
open to state
protection
Intentionally
unprotected subject
matter
Subject matter
covered by
federal right
Aftermath of Bonito Boats
Congress passed the Vessel Hull Design Protection
Act as part of the Digital Millennium Copyright
Act. The VHDPA provides copyright protections
to hull designs, and many boat builders have
registered their designs. The law has been
incorporated into Chapter 13 of the Copyright
Act.
Extension of preemption doctrine
• Right of publicity
• Contracts providing IP-like protection
Copyright preemption
• IPNTA 5th ed. at p.
• See case/page citations in these slides
• [A]ll 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 section[] 102 ... 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.
• 13 17 U.S.C. § 301(a).
The 2 part preemption test
Claim preempted IF –
(1) the subject matter of the claim comes
within the “subject matter of copyright,” as
defined in sections 102 and 103 of the Act,
and (2) the rights granted under state law are
“equivalent” to any of the exclusive rights
within the general scope of copyright as
defined in section 106 of the Act
• BALTIMORE ORIOLES, INC. v. MAJOR LEAGUE
BASEBALL PLAYERS ASSOCIATION , 805 F. 2d
663 (7th Cir. 1986)
• Cited in ProCD, IPNTA 5th ed. at 994
• The district court concluded that the telecasts
were copyrightable works. We agree.
• The many decisions that must be made during the
broadcast of a baseball game concerning camera
angles, types of shots, the use of instant replays
and split screens, and shot selection similarly
supply the creativity required for the
copyrightablitiy of the telecasts.
See House Report at 52 (“When a football
game is being covered by four television
cameras, with a director the activities of the
four cameramen and choosing which of their
electronic images are sent to the public and
in which order, there is little doubt that what
the cameraman and the director are doing
constitutes ‘authorship.’”).
• Players’ aim is to share in the increasingly lucrative
revenues derived form the sale of television rights
for over-the-air broadcasts by local stations and
national networks and for distribution by
subscription and pay cable services. Contrary to
the Players’ contention, the effect of this decision
is not to grant the Clubs perpetual rights to the
Players’ performances. The Players remain free to
attain their objective by bargaining with the Clubs
for a contractual declaration that the Players own
a joint or an exclusive interest in the copyright of
the telecasts.
• The baseball clubs owned the copyrights in
the telecasts, and given that the players’
rights of publicity in their game-time
performances were not significantly different
from the rights conferred by the copyright
law, the players' rights of publicity in their
performances were preempted under §301.
• June Toney v. L’Oreal, 406 F.3d 905 (7th Cir. 2005)
– IPNTA 5th ed. at p. 1050 (Note)
• Toney authorized Johnson Products Company to
use her likeness on the packaging of a hairrelaxer product called "Ultra Sheen Supreme"
from November 1995 until November 2000. In
addition, Toney authorized the use of her
likeness in national magazine advertisements for
the relaxer from November 1995 until
November 1996.
Toney asserted that L'Oreal, Wella
Corporation, and Wella Personal Care of
North America, Inc., (collectively,
"defendants") used her likeness in
connection with the packaging and
promotion of the Ultra Sheen Supreme
relaxer product beyond the authorized time
period. Specifically, she claimed that the
defendants thereby violated (1) her right to
publicity in her likeness as protected under
the Illinois Right of Publicity Act, 765 Ill.
Comp. Stat. 1075/1-60 ("IRPA"), and (2) the
Lanham Trademark Act of 1946, 15 U.S.C. §
1125(a).
• The district court found that the IRPA-based
claim met the conditions set out in § 301 of
the Copyright Act ("Act"), 17 U.S.C. § 301,
and was therefore preempted.
The subject matter of such a claim
"is not a particular picture or
photograph of plaintiff. Rather,
what is protected by the right of
publicity is the very identity or
persona of the plaintiff as a
human being." J. Thomas
McCarthy, 2 RTS. OF PUBLICITY &
PRIVACY § 11:52 (2d ed.2004)
• We will first determine whether the
work at issue is fixed in a tangible
form and whether it comes within
the subject matter of copyright as
specified in § 102. Second, we
consider whether the right is
equivalent to the general copyright
protections which are set out in §
106.
Toney's identity is not fixed in a tangible medium of
expression. There is no "work of authorship" at issue
in Toney's right of publicity claim. A person's likeness
-- her persona -- is not authored and it is not fixed.
The fact that an image of the person might be fixed
in a copyrightable photograph does not change this.
From this we must also find that the rights protected
by the IRPA are not "equivalent" to any of the
exclusive rights within the general scope of copyright
that are set forth in § 106. Copyright laws do not
reach identity claims such as Toney's. Identity, as we
have described it, is an amorphous concept that is
not protected by copyright law; thus, the state law
protecting it is not preempted.
The Toney court sought to clarify the
distinctions between its holding and the
Baltimore Orioles opinion. The court said that
the earlier case does not simply stand for the
proposition that state right of publicity laws
are preempted in all instances by federal
copyright law. Rather, the case holds that
state laws that intrude on the domain of
copyright are preempted even if the
particular expression is neither copyrighted
nor copyrightable. Such a result is essential in
order to preserve the extent of the public
domain established by copyright law.
Therefore, states may not create rights in
material that was published more than 95
years ago, even though that material is not
subject to federal copyright. Also, states may
not create copyrightlike protections in
materials that are not original enough for
federal protection, such as a telephone book
with listings in alphabetical order.
Baltimore Orioles itself makes clear that a
player's right of publicity in his name or
likeness would not be preempted if a
company, without the consent of the player,
used the player's name to advertise its
product. Thus the plaintiff's claim under the
Illinois right of publicity statute is not
preempted by federal copyright law.
Unprotected, but
open to state
protection
Intentionally
unprotected subject
matter
Subject matter
covered by
federal right
Nimmer Treatise
A breach of contract action, whether such contract
involves a mere idea or a fully developed literary
work, is not predicated upon a right that is
equivalent to any of the exclusive rights within
the general scope of copyright… This [sic], for the
reason that a contract right may not be claimed
unless there exists an element in addition to the
mere acts of reproduction, performance,
distribution or display. The additional element is
a promise—express or implied—on the part of
the Defendant.