Re: Preemption

I thank Dan L Burk and Gloria C. Phares for referring to the Fifth Circuit affirmance of Vault v. Quaid. It was a little sloppy of me not to cite it, but perhaps not so sloppy as citing cases without any reference to where they appear, Dan. However, I omitted to discuss the affirmance because it does not question the validity of the District Court reasoning, and, in fact, specifically affirms "for the reasons set forth by the district court" as well as Sears/Compco reasons (847 F2d at 270). The point still remains that the case simply stands for the proposition, which no one has questioned, that state claims which overlap the federal copyright scheme are pre-empted. It says nothing about contract defences.

Dan Burk <burkdanl[_at_]shu.edu> also wrote:
>
> BTW, I do reserve the right to question your claim/defense
> distinction. I tend to think it's immaterial for preemption
> purposes.

Really?! Section 301(a) merges in the federal scheme "all legal and equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106" and specifically pre-empts "any such right or equivalent right ... under the common law or statutes of any State." Not a word about defences.

As for Lear v. Adkins, I would be happy to discuss it with you, albeit it was (a) a patent case and (b) was decided seven years before enactment (and nine years before the effective date) of the current Copyright Act. It would help if you told us what specifically about this case advances your argument.

Of course, I do not question that states are limited in their ability to erect barriers to enforcement of the federal scheme. But that follows from the Supremacy Clause, not sec. 301. The issue in each case is the extent to which a state created defence is "an end run around federal copyright policy," in Dan's brilliant figure of speech. I for one don't believe there are many instances in which a consensual arrangement in which an arguable copyright interest is given up for some other bargained for consideration will meet this standard. After all, every license grants away at least a part of the statutory owner's "exclusive rights" granted by section 106, and often even denies them to the copyright owner itself. Surely, Dan isn't saying that licenses are unenforceable, or is he?

Nor, for that matter, has Dan actually said that a license is ineffective to the extent it purports to grant a right which the licensee has anyway under sec. 107. He merely evades the issue, by saying

> Wrong questions yield wrong answers, grasshopper.

Grasshopper?

But its a perfectly good question, even if it doesn't happen to be the one Dan wants to think about right now. If anyone else would like to offer an answer, please chime in.

Larry Weiss
<pgw[_at_]idt.net> Received on Tue Dec 29 1998 - 17:09:15 GMT