Everyone knows about copyright preemption. How about trademarks? Pamela Chestak has a great post that explains why yes one, and no the other. First, a refresher on preemption in copyright. Preemption, of course, refers to that status wherein a given legal subject matter — or more specifically, a category of legal claim — is preempted by the federal government, which is said to “occupy the field” entirely. That means you can’t prosecute a copyright claim, strictly speaking, in state court. It has to be done in federal court, as explained by the Government:
The federal preemption provision, codified at 17 U.S.C. § 301(a), states that: 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of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. 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. . . . “
Section 301 in effect establishes a two-pronged test to be applied in preemption cases.” Crow v. Wainwright, 720 F.2d 1224, 1225 (11th Cir. 1983), cert. denied, 469 U.S. 819 (1984). Under this preemption test, the states are precluded from enforcing penalties for copyright violations if the intellectual property at issue falls within the “subject matter of copyright” as defined by federal law and if the claimed property rights are “equivalent to” the exclusive rights provided by federal copyright law. Id. at 1225-26. Adopting this standard, the Eleventh Circuit has held that section 301 now precludes state criminal prosecutions for acts of copyright infringement. Id.
That’s a lot of preemption. That’s not to say, however, that a defendant can take advantage of preemption to remove any claim to federal court where the underlying subject matter could be the subject of a copyright but where the claim is not. For example, while the right of publicity may be implicated by the unauthorized use of a photograph, if the actual claim is not for copyright infringement but for infringing the plaintiff’s right of publicity, it stays in federal court. And there’s always the notorious “hot news exception” of New York, which is beyond the scope of this post, and even of this one.
Still and all, it is a lot of preemption — but, in terms of intellectual property, preemption is pretty much for copyrights and patents. So a person could look at this scheme and figure, okay, I get it: There’s a federal copyright statute, and there’s preemption. Patent? Statute, check; preemption, check. Right of publicity? No statute, no preemption!
This is simple! No. It’s not like that. Trademark is different: There is a statute. But there is not necessarily preemption. Not at all! Read More…