MCLE Article: Preemptive Strike
To avoid federal copyright law preemption, state causes of action
must survive a demanding two-part test
By Steven T. Lowe
Steven T. Lowe is a principal in the Los Angeles firm Lowe Law,
P.C., which specializes in entertainment and business litigation.
Lowe represented the defendant in Kabehie v. Zoland. He thanks Abhay
Khosla for his assistance in writing this article.
By reading this article and answering the accompanying test questions,
you can earn one MCLE credit. To apply for credit, please follow
the instructions on the test.
Copyright law protects a "bundle of rights" given to those
engaged in creative expression. Owners of a copyrighted work can
prevent the reproduction, distribution, performance, publication,
and display of their work without their consent. For a work to be
protected by copyright, the only requirements are that the work 1)
is one of authorship as contemplated by 17 USC Section 102(a), 2)
has a minimal amount of originality, and 3) is "fixed" in
a tangible medium of expression.1
The Copyright Act controls the field of copyright claims; thus,
there are no state law claims for copyright infringement. There are,
however, numerous state law claims that may relate to a work of authorship.
These claims raise significant preemption issues. Copyright preemption
forces the immediate dismissal of defective state law claims, whether
they are brought in state or federal court.
Prior to 1976, federal copyright law coexisted with state copyright
law.2 The technicalities of federal copyright law—for example, rigorous
notice and registration requirements—would often drive expressive
works into the public domain but for state copyright law.3 Congress
recognized the need for uniform national copyright laws, and in 1976
it accomplished this by adopting the 1976 Copyright Act and creating
a single federal system.4
The 1976 act expressly preempts all state copyright law, including
common law causes of action. The scope of this preemption, however,
is limited because it does not require the dismissal of all claims
that involve the subject matter of copyright.5 Instead, only state
law claims that assert rights equivalent to those rights protected
by Section 106 of the 1976 act, (including reproduction, distribution,
performance, publication, and display) are preempted; other state
law claims—even if the subject matter of the claim is an artistic
work eligible for copyright protection—survive.6
State and federal courts have addressed the issue of copyright preemption
in various ways. For example, California state courts and federal
courts have held that interference claims are preempted, while fraud
claims are never preempted. Central District courts have further
found unfair competition, conversion, and unjust enrichment causes
of action preempted. Breach of contract claims usually are not preempted
in state and federal courts, although two different theories have
led to that result. However, the implied contract cause of action,
a particularly important claim for artists, creates significant dissent
between state courts—where implied contract claims will usually survive—and
the Central District, which has begun a questionable trend towards
preemption.
Two-Part Preemption Test
State and federal courts have developed a two-part test to determine
whether a state law claim is preempted by the 1976 act. The first
part queries whether the plaintiff's claim concerns copyrightable
subject matter.7 If the answer to that is yes, the second part then
asks whether the right asserted in the state law claim is equivalent
to any of the exclusive rights given to the owner of a copyright
as enumerated in Section 106 of the 1976 act.
Determining what is copyrightable subject matter—the first part
of the test—requires an analysis of applicable copyright law. The
1976 act protects "original works of authorship fixed in any
tangible medium of expression, now known or later developed, from
which they can be perceived, reproduced, or otherwise communicated,
either directly or with the aid of a machine or device," including
literature, musical compositions and sound recordings, drama, pantomime
and choreography, pictures, graphics, sculpture, film, architecture,
and computer programs.8 When the subject matter of the state law
claim falls outside these parameters, copyright preemption will not
apply.
Ideas are not protected by copyright9—as opposed to the expression
of the idea10—but ideas may be protected under certain state law
causes of action.11 For example, in a 1986 California case, a claim
for breach of implied contract based upon the defendant's utilization
of the idea for a television "movie of the week" survived
a preemption defense.12 However, a series of recent cases in the
U.S. District Court for the Central District of California appear
to signal a trend in favor of preemption of claims based on implied
contract if the ideas are embodied in a copyrightable work; that
is, preemption will be found if the ultimate product is copyrightable,
even though the ideas embodied in the copyrighted work are not.
The second part of the test for preemption of state law claims requires
an analysis to determine whether the claim contains an "extra
element." If the subject of the state law claim comes within
the scope of copyright protection, then the rights asserted via the
state law claim must be examined to evaluate whether they are equivalent
to the exclusive rights given to the owner of a copyright, as defined
in Section 106 of the 1976 act. This requires essentially an element-by-element
comparison.
If the state law claim has an extra element—for example, the wrongful
act upon which the claim is based consists of something other than
the reproduction, distribution, performance, publication, or display
of a copyrightable work—then the claim is not preempted.13 A technical
extra element, however, is insufficient. To survive copyright preemption,
a state law claim must not only have an extra element; that extra
element must transform the state law claim so that it is qualitatively
different from a copyright infringement claim.14 This extra element
test15 was adopted recently in California by the California Court
of Appeal in Kabehie v. Zoland16 and has been the test for the Ninth
Circuit for some time.17
The difficulty that has plagued the courts is not, however, whether
the extra element test is applicable but whether an extra element
is contained within a particular state cause of action. Indeed, courts
have reached significantly varied results in their application of
the test. Contract claims especially have resulted in divergent and
inconsistent decisions. Some causes of action, however, are never
preempted.
Claims for breach of contract usually survive preemption defenses.18
Copyright owners frequently license their artistic works to third
parties in exchange for the payment of royalties. Preemption is not
a defense to a claim for breach of contract based upon the failure
to pay royalties required by a written agreement.19 Two very different
theories, however, lead to this result.
The majority of federal and state courts that have addressed preemption
defenses to breach of contract claims have required a fact-specific
analysis that inquires whether the promise underlying the contract
is essentially nothing more than a promise not to violate federal
copyright law.20 If so, the breach of the promise is copyright infringement,
and the breach of contract claim is preempted.21 For example, in
Kabehie, the court of appeal affirmed the dismissal of 10 out of
14 state law claims based upon copyright preemption.22 The plaintiff
had alleged that music copyrights were assigned to him by contract
and that the contract was breached by the defendants' continued exploitation
of the music. The Kabehie court adopted the majority view and held
that five of the plaintiff's breach of contract causes of action
were preempted because they were in essence disguised claims for
copyright infringement.23
Under the majority view, the breach of contract cause of action
should be examined for an extra element, such as a covenant "independent" of
copyright rights.24 In Kabehie, for example, two causes of action
for breach of contract survived preemption attacks because the plaintiff
alleged the existence of an independent covenant and its breach:
the defendant failed to deliver master recordings.25
The minority viewpoint states that breach of contract causes of
action are never preempted.26 The rationale is that every contract
inherently has a promise to perform that contract. Thus, under the
minority view, the contractual promise is always an extra element.27
The Central District has adopted the majority view.28 In Kabehie,
the California Court of Appeal did so as well, explicitly rejecting
the minority viewpoint.29
Breach of Implied Contract
California has long recognized that an implied contract may be created
when one party submits his or her creative ideas to another party.30
Disclosure of a valuable idea is considered a conferred benefit that
is sufficient to constitute consideration for an implied in fact
contract.31
This is an important right for artists, because copyright law does
not protect ideas.32 Especially in California, where people commonly
pitch their concepts for films and television programs to others
in the entertainment industry, protection against misappropriation
of ideas is necessary—and it appears to be available under California
common law.33
In recent cases from the Central District, however, courts have
held that implied contract claims based upon idea submissions that
are embodied in written form are preempted.34 This is troubling because
ideas are frequently submitted in the form of a writing, and without
a writing there is an absence of important evidence. The most common
example in the entertainment industry occurs when an idea is communicated
in the form of a "treatment."35
Since ideas are not protected by copyright law, although they are
protected by California common law,36 it would seem that the first
part of the two-part preemption test is not met. Several Central
District courts, however, have held that while the ideas embodied
in written form may not be protected by copyright law, they nonetheless
fall under the subject matter of copyright law for preemption purposes.37
The Ninth Circuit has not resolved whether ideas communicated in
writing are within the subject matter of copyright law and thus satisfy
part one of the two-part preemption test. The Central District decisions
that have resolved that issue in the affirmative have relied upon
United States ex rel. Berge v. Board of Trustees of University of
Alabama, a Fourth Circuit decision, in holding that ideas submitted
in writing are within the subject matter of copyright.38
Section 102 of the Copyright Act defines the subject matter of copyright
and excludes ideas from the purview of its protection. Copyright
law protects the expression of ideas, not the ideas themselves. Based
on the reference to ideas in Section 102, the Berge court concluded
that ideas expressed in a writing are within the subject matter of
copyright, even though not within its protection. Thus the Berge
court held that federal preemption may apply to ideas embodied in
written form.39
As a practical matter in the entertainment industry, the disclosure
of an idea can be valuable consideration, even if the idea itself
cannot be independently protected by copyright. A breach of an implied
contract is about a breach of an agreement between parties, not the
wrongful plagiarism of ideas.
In applying the second part of the preemption test, most courts
have found an extra element in implied contract cases involving written
submission of an idea. Indeed, most courts have held that claims
for breach of implied in fact contract actions are not preempted.40
The rationale for these holdings is obvious: implied in fact contracts
necessarily contain a promise to pay, which constitutes an extra
element, not unlike the promise to pay royalties.41 Kabehie v. Zoland,
in dicta, appears to affirm this conclusion,42 as does Firoozye v.
Earthlink Network, a case from the U.S. District Court of the Northern
District of California.43
Beginning in 1997, however, with Worth v. Universal Pictures, Inc.,
the Central District took a different path that may have the effect
of depriving creative persons of this important state law cause of
action.44 Worth concerned a typical Hollywood scenario: the plaintiff
submitted a screenplay to a film studio, and the screenplay was rejected.
The plaintiff claimed that a later-produced film incorporated ideas
from his screenplay. The court in Worth held that implied contracts
were a species of quasi contract and, based on a passage in Nimmer
on Copyright, held that because quasi contracts are always preempted,
so too was the plaintiff's cause of action for implied contract.45
Worth has been followed in two recent Central District cases: Endemol
Entertainment B.V. v. Twentieth Television, Inc.46 and Selby v. New
Line Cinema Corporation.47
These decisions, however, misunderstand the crucial distinction
between quasi contracts and contracts implied in fact, a difficult
distinction which Nimmer, in fact, discusses in a later passage:
Unfortunately, many courts in dealing with idea cases fail to distinguish
between a contract implied in law and a contract implied in fact.
An action in quasi contract is not a true contract since "'quasi
contracts, unlike true contracts, are not based upon the apparent
intention of the parties to undertake the performances in question,
nor are they promises. They are obligations created by law for reasons
of justice'"….An implied in fact contract on the other hand
is a consensual agreement presenting the same elements as are found
in an express contract except that in an implied in fact contract
the promise is not expressed in words but is rather implied from
the promisor's conduct.48
Selby involved the same Hollywood scenario as Worth—a claim that
a film studio misappropriated a screenplay. The Selby court held
that the alleged extra element was only a promise not to use the
material, and therefore the claim was simply a copyright infringement
claim.49 However, Selby relied in part on a Michigan district court
decision, later overturned by a Sixth Circuit decision that explicitly
recognized the error in Worth's misidentification of implied contract
as quasi contract and held instead that the promise to pay in fact
constitutes the extra element.50
These Central District decisions would appear to be erroneous: A
contract implied in fact clearly requires the extra element of the
implied promise to pay for use (and provide appropriate credit, if
applicable), which is a promise implied from conduct.51 An implied
promise to use only if the defendant pays the plaintiff and/or credits
the plaintiff confers the extra element,52 not unlike cases concerning
the failure to pay royalties—and those cases are never preempted.
Artists and others with ideas, after all, do not usually wish to
prevent the use of their ideas. Quite the contrary, they desire the
realization and expression of their ideas in the marketplace. They
simply want to be compensated and credited for the use of their ideas
pursuant to an implied understanding commensurate with what is customary
in the entertainment industry.
A breach of a promise in the context of implied contract would appear
to be virtually identical to breach of written contract cases in
which the defendant has failed to pay contractual royalties.53 Granting
a license in return for royalties and credit replaces the right of
the grantor to sue the licensee for copyright infringement.54 An
implied contract is exactly such a license, only one whose terms
are implied by conduct. Parties are not seeking copyright remedies,
such as injunctions, but contract remedies, such as the benefit of
the bargain.
Central District courts that look for explicit promises to pay will
of course be disappointed. If such a promise were explicit, the contract
would not be implied from conduct but simply an oral agreement. As
Nimmer states:
Occasionally…some courts will find that because the precise compensation
to be paid…was not agreed upon, no implied contract will lie. There
appears to be no reason why courts should not apply a standard of
reasonableness.…Indeed, were the courts to consistently require an
agreed upon compensation…very few implied contract actions could
succeed.55
The reasoning of the Central District thus seems questionable.
While the Central District decisions claim to limit their holdings
to the facts, one author has concluded that virtually every reported
decision in California dealing with the protection of ideas on an
implied contract theory would be preempted if the cases were decided
today.56 With the Ninth Circuit still silent on this issue, practitioners
seeking to raise a claim of breach of implied contract might prefer
to file their actions in state court or the Northern District of
California. However, state court may prove insufficient if defendants
successfully remove the case to a Central District federal court.57
Because the Central District sits in the heart of the entertainment
industry, these cases pose a danger for future plaintiffs and possibly
provide an unfair advantage to more powerful studios and production
companies. Moreover, they appear to bring state law—which has recognized
implied contract claims for almost 50 years58—into direct conflict
with federal law.
Other Causes of Action
Courts have applied the two-part preemption test in the context
of other claims, and preemption is frequently the result. This is
not so in fraud claims, which are never preempted by federal copyright
law since fraud inherently involves the extra element of misrepresentation.59
Consequently, the second part of the test for copyright preemption
is not met. This is the law in the Ninth Circuit and California.60
In Kabehie, for example, the court found that the fraud cause of
action included "allegations that [the defendant] misrepresented
its ownership of the rights to the music compositions and falsely
promised to deliver master recordings."61
However, claims of intentional interference with obligation of contract,
intentional interference with economic relations, and negligent interference
with prospective economic advantage involving copyrightable subject
matter are often found to be preempted by federal copyright law.62
When the claimed interference involves the reproduction or distribution
of a copyrighted work, the interference claim is preempted.63 However,
in one case in which a defendant's alleged interference caused the
plaintiff to lose a pending deal, the interference claim survived.64
Thus the exact identification of the interference becomes essential
to determining whether the claim is preempted. As with breach of
contract causes of action, the court looks at the wrongful act or
the act of breach to determine whether the claim is preempted.65
If the wrongful act constitutes a violation of one of the rights
given to the owner of a copyright, such as reproduction or performance,
the claim will be preempted. In Kabehie, for example, the court dismissed
all three of the plaintiff's interference claims because the interfering
conduct was merely the reproduction of the music.66 Courts in the
Central District have reached the same conclusion.67
Unfair competition causes of action are often found to be preempted.68
This is, in part, based on considerations of policy. The Ninth Circuit
has specifically stated that states might encroach on copyright rights
through the guise of unfair competition.69 Thus, several courts have
emphasized that not only must the elements of an unfair competition
claim be different from a copyright infringement cause of action—as
they are likely to be in an unfair competition cause of action—but
they must be qualitatively different.70 A Central District court,
for example, preempted an unfair competition claim based on a song
parody because the "essence" of the plaintiff's complaint
was the unauthorized reproduction of a copyrighted work.71
However, unfair competition claims based on a "passing off" theory—the
practice of selling goods or services using a mark that is likely
to cause confusion as to source, sponsorship, or approval of those
goods or services—generally are found to be qualitatively different
and thus not preempted by federal copyright law.72 Thus, litigants
retain their federal unfair competition causes of action under the
Lanham Act free of the preemption defense.73
Most courts, including the Ninth Circuit, have concluded that the
claim of unjust enrichment protects rights that are essentially equivalent
to rights protected by the Copyright Act.74 Accordingly, unjust enrichment
claims involving the copying of copyrighted material usually are
preempted.75
Conversion claims deal with tangible property. To the extent that
a conversion claim alleges the misappropriation of only tangible
property and not the underlying copyrighted work, it is not preempted.76
Conversion of a copyrighted work clearly is copyright infringement
and is therefore preempted.77
Since the determination of the ownership of copyrights typically
requires the application of state contract law, and a declaratory
relief claim is not equivalent to the assertion of any exclusive
right provided by the Copyright Act, declaratory relief causes of
action are never preempted.78
Copyright preemption requires the dismissal of improper state law
claims, whether they are brought in state or federal court. Thus,
preemption trends have serious consequences in intellectual property
litigation. The disconcerting line of cases in the Central District
finding preemption of implied contract claims may have a drastic
effect on the entertainment industry. Whether an implied contract
cause of action still exists for any practical purpose remains uncertain
under the current climate of copyright preemption.79 Indeed, preemption
in implied contract cases may leave plaintiffs without a remedy for
misappropriation. Until further guidance is given by the Ninth Circuit,
copyright preemption poses a continuing and serious challenge to
these claims.
1 17 U.S.C. §102(a).
2 1-1 Nimmer on Copyright §1.01[B] (2002).
3 Kabehie v. Zoland, 102 Cal. App. 4th 513, 522 (2002).
4 H.R. Rep. No. 94-1476, 94th Cong., 2d Sess., at 129.
5 17 U.S.C. §301.
6 H.R. Rep. No. 94-1476, 94th Cong., 2d Sess., at 132.
7 Del Madera Props. v. Rhodes & Gardner, Inc., 820 F. 2d 973,
976 (9th Cir. 1987); Fleet v. CBS, Inc., 50 Cal. App. 4th 1911, 1918-19
(1996); KNG Enters. v. Matthews, 78 Cal. App. 4th 362, 369 (2000).
8 17 U.S.C. §102(a).
9 17 U.S.C. §102(b).
10 When an idea crosses the line into protected idea expression
has generated a significant amount of case law. See, e.g., 1-1 Nimmer
on Copyright §1.10 [B][2] (2002); 1-6 Nimmer on Copyright §6.07 (2002)("[I]f
authors A and B work in collaboration, but A's contribution is limited
to plot ideas that standing alone would not be copyrightable, and
B weaves the ideas into a completed literary expression, it would
seem that A and B are joint authors of the resulting work.").
11 Desny v. Wilder, 46 Cal. 2d 715, 729 (1956); 1 Witkin, Summary
of California Law, Contracts §12. See also Pierce O'Donnell and William
Lockard, You Have No Idea, Los Angeles Lawyer, Apr. 2000, at 32.
12 See, e.g., Rokos v. Peck, 182 Cal. App. 3d 604, 614-17 (1986).
13 1-1 Nimmer on Copyright §1.01[B][1] (2002).
14 Id.
15 Balboa Ins. Co v. Trans Global Equities, 218 Cal. App. 3d 1327,
1340 (1990).
16 Kabehie v. Zoland, 102 Cal. App. 4th 513 (2002).
17 Del Madera Props. v. Rhodes & Gardner, Inc., 820 F. 2d 973,
976 (9th Cir. 1987).
18 1-1 Nimmer on Copyright §1.01[B][1][a] (2002).
19 See, e.g., Graham v. James, 144 F. 3d 229, 235-37 (2d Cir. 1998);
Effects Assocs., Inc. v. Cohen, 908 F. 2d 555, 559 (9th Cir. 1990);
U.S. Naval Inst. v. Charter Communications, 936 F. 2d 692, 695 (2d
Cir. 1991).
20 See, e.g., National Car Rental v. Computer Assocs., 991 F. 2d
426, 429-30 (8th Cir. 1993) (breach of promise not to use computer
program to process third party's data); Lennon v. Seaman, 63 F. Supp.
2d 428, 438 (S.D. N.Y. 1999) (right under employee confidentiality
agreement to prevent disclosure of information); Chesler/Perlmutter
Prods. v. Fireworks Entm't, 177 F. Supp. 2d 1050, 1058 (C.D. Cal.
2001) (promises to pay specific amounts and hire particular employees);
Brignoli v. Balch Hardy and Scheinman, Inc., 645 F. Supp. 1201, 1205
(S.D. N.Y. 1986) (promise to pay).
21 Kabehie, 102 Cal. App. 4th 513, 528 (citing American Movie Classics
v. Turner Entm't Co., 922 F. Supp. 926, 931-32 (S.D. N.Y. 1996) (exclusive
exhibition rights violated)); Berkla v. Corel Corp., 66 F. Supp.
2d 1129, 1150 (E.D. Cal. 1999) (release of protected images to the
public); Smith v. Weinstein, 578 F. Supp. 1297, 1307 (E.D. Cal. 1999)
(copying of plaintiff's script); Wolff v. Institute of Elec. & Elecs.
Eng'rs, Inc., 768 F. Supp. 66, 69 (S.D. N.Y. 1991)(violation of one-time
use of photo on magazine cover).
22 Kabehie, 102 Cal. App. 4th at 528.
23 Id. at 529.
24 For example, the failure to pay royalties yields only a breach
of contract action. See, e.g., Graham, 144 F. 3d at 235-37; Effects
Assocs., Inc., 908 F. 2d at 559; U.S. Naval Inst., 936 F. 2d at 695.
25 Kabehie, 102 Cal. App. 4th at 529.
26 Taquino v. Teledyne Monarch Rubber, 893 F. 2d 1488, 1501 (5th
Cir. 1990); Architechtronics, Inc. v. Control Sys., Inc., 935 F.
Supp. 425, 438-39 (S.D. N.Y. 1996).
27 Id.
28 Chesler/Perlmutter Prods. v. Fireworks Entm't, 177 F. Supp. 2d
1050, 1058 (C.D. Cal. 2001).
29 Kabehie, 102 Cal. App. 4th at 528.
30 Desny v. Wilder, 46 Cal. 2d 715, 729 (1956); 1 Witkin, Summary
of California Law, Contracts §12.
31 Id.
32 17 U.S.C. §102(b).
33 Rokos v. Peck, 182 Cal. App. 3d 604, 614-17 (1986).
34 See Worth v. Universal Pictures, Inc., 5 F. Supp. 2d 816 (C.D.
Cal. 1997); Endemol Entm't B.V. v. Twentieth Television, Inc., 48
U.S.P.Q. 2d (BNA) 1524 (C.D. Cal. 1998); Selby v. New Line Cinema
Corp., 96 F. Supp. 2d 1053 (C.D. Cal. 2000).
35 See, e.g., Metrano v. Fox Broad. Co., Inc., 2000 U.S. Dist. LEXIS
7662 (C.D. Cal. 2000) (preemption of implied contract claim for ideas
that were embodied in a treatment given to defendants).
36 Desny, 46 Cal. 2d at 729; 1 Witkin, Summary of California Law,
Contracts §12.
37 United States ex rel. Berge v. Board of Trs. of Univ. of Ala.,
104 F. 3d 1453, 1463 (4th Cir. 1997) (explained by Selby, 96 F. Supp.
2d at 1058); see also Endemol Entm't B.V., 48 U.S.P.Q. 2d (BNA) at
1526; Entous v. Viacom Int'l. Inc., 151 F. Supp. 2d 1150, 1159 (C.D.
Cal. 2001); Firoozye v. Earthlink Network, 153 F. Supp. 2d 1115,
1125 (N.D. Cal. 2001); Idema v. Dreamworks, Inc., 162 F. Supp. 2d
1129, 1189 (C.D. Cal. 2001); Chesler/Perlmutter Prods. v. Fireworks
Entm't, 177 F. Supp. 2d 1050, 1058 (C.D. Cal. 2001).
38 Berge, 104 F. 3d 1453, 1463.
39 Id.
40 Wrench LLC v. Taco Bell Corp., 256 F. 3d 446, 456 (6th Cir. 2001)("The
extra element is the promise to pay."); Firoozye, 153 F. Supp.
2d at 1127; Acorn Structures, Inc. v. Swantz, 846 F. 2d 923 (4th
Cir. 1988); Rokos v. Peck, 182 Cal. App. 3d 604, 614 (1986).
41 Id.
42 Kabehie v. Zoland, 102 Cal. App. 4th 513, 528 n.9 (2002).
43 Firoozye, 153 F. Supp. 2d at 1127.
44 Worth v. Universal Pictures, Inc., 5 F. Supp. 2d 816, 820 (C.D.
Cal. 1997).
45 Id. at 822 (citing 1-1 Nimmer on Copyright §1.01[B][1][g] (1997).
46 Endemol Entm't B.V. v. Twentieth Television, Inc., 48 U.S.P.Q.
2d (BNA) 1524 (C.D. Cal. 1998).
47 Selby v. New Line Cinema Corp., 96 F. Supp. 2d 1053 (C.D. Cal.
2000).
48 4-16 Nimmer on Copyright §16.03 (2002) (quoting Weitzenkorn v.
Lesser, 40 Cal. 2d 778, 794 (1953) (quoting Restatement of Contracts
§5, cmt. a)).
49 Selby, 96 F. Supp. 2d at 1061-62.
50 Id. at 1059 n.4 (citing Wrench LLC v. Taco Bell Corp., 51 F.
Supp. 2d 840 (W.D. Mich. 1999), subsequently reversed by Wrench LLC
v. Taco Bell Corp., 256 F. 3d 446 (6th Cir. 2001)).
51 Wrench LLC, 256 F. 3d at 458.
52 Id. at 459.
53 Graham v. James, 144 F. 3d 229, 235-37 (2d Cir. 1998); Effects
Assocs., Inc. v. Cohen, 908 F. 2d 555, 559 (9th Cir. 1990); U.S.
Naval Inst. v. Charter Communications, 936 F. 2d 692, 695 (2d Cir.
1991).
54 Id.
55 4-16 Nimmer on Copyright §16.05[E] (2002).
56 Glen L. Kulik, Copyright Preemption: Is This the End of Desny
v. Wilder, 21 Loy. L.A. Ent. L. Rev. 1 (2000).
57 See, e.g., Chesler/Perlmutter Prods. v. Fireworks Entm't, 177
F. Supp. 2d 1050 (C.D. Cal. 2001). Other Central District courts
may not follow this trend, however.
58 Desny v. Wilder, 46 Cal. 2d 715, 729 (1956).
59 Valente-Kritzer Video v. Pinckney, 881 F. 2d 772, 776 (9th Cir.
1989); Gladstone v. Hillel, 203 Cal. App. 3d 977, 987 (1988).
60 Id.
61 Kabehie v. Zoland, 102 Cal. App. 4th 513, 530 (2002).
62 See, e.g., Motown Record Corp. v. George A. Hormel & Co.,
657 F. Supp. 1236, 1240 (C.D. Cal. 1987); Harper & Row Publishers,
Inc. v. Nation Enters., 723 F. 2d 195 (2d Cir. 1983), rev'd on other
grounds, 471 U.S. 539 (1985); Chesler/Perlmutter Prods., Inc., 177
F. Supp. 2d at 1050.
63 Id.
64 PMC, Inc. v. Saban Entm't, Inc., 45 Cal. App. 4th 579, 594 n.8
(1996) (dismissed on other grounds).
65 See, e.g., Chesler/Perlmutter Prods., Inc., 177 F. Supp. 2d at
1050.
66 Kabehie, 102 Cal. App. 4th at 530.
67 Chesler/Perlmutter Prods., Inc., 177 F. Supp. 2d at 1050.
68 Del Madera Props. v. Rhodes & Gardner, Inc., 820 F. 2d 973,
977 (9th Cir. 1987); Fisher v. Dees, 794 F. 2d 432 (9th Cir. 1986);
Motown Record Corp., 657 F. Supp. at 1240.
69 Fisher, 794 F. 2d at 440.
70 Motown Record Corp., 657 F. Supp. at 1240 (citing Mayer v. Josiah
Wedgewood & Sons Ltd., 601 F. Supp. 1523 (S.D. N.Y. 1985)).
71 Id.
72 Video Pipeline, Inc. v. Buena Vista Home Entm't, Inc., 210 F.
Supp. 2d 552, 565 (D. N.J. 2002) (citing Wilson v. Mr. Tee's, 855
F. Supp. 679, 684 (D. N.J. 1994)) (passing off claim not preempted
by federal copyright law); Warner Bros., Inc. v. American Broad.
Cos., Inc., 720 F. 2d 231, 247 (2d Cir. 1983); Orth-O-Vision v. Home
Box Office, 474 F. Supp. 672, 684 n.12 (S.D. N.Y. 1979) ("Because
the element of deception inherent in 'palming off' is not an element
of copyright infringement claim, the 'passing off' cause of action
is not preempted by federal law.").
73 See Motown Record Corp., 657 F. Supp. at 1241.
74 Del Madera Props . v. Rhodes & Gardner, Inc., 820 F. 2d 973,
977 (9th Cir. 1987).
75 Id.
76 Video Pipeline, Inc., 210 F. Supp. 2d at 568-69 (citing 1 Nimmer
on Copyright §1.01[B][1][i] (2001)); Lennon v. Seaman, 63 F. Supp.
2d 428, 436 (S.D. N.Y. 1999); Ronald Litoff, Ltd. v. American Express
Co., 621 F. Supp. 981, 986 (S.D. N.Y. 1985).
77 United States ex rel. Berge v. Board of Trs. of Univ. of Ala.,
104 F. 3d 1453, 1465 (4th Cir. 1997).
78 T. B. Harms v. Eliscu, 339 F. 2d 823, 827 (1964).
79 See Kulik, supra note 56.
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