Most people assume copyright protection is governed exclusively by the federal Copyright Act. For the most part, this is true. The Copyright Act does assert that federal copyright law preempts state copyright law:
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of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title.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.1
The statute, however, also disclaims any intention to preempt state laws and remedies with respect to:
(1) subject matter that does not come within the subject matter of copyright;
(2) any cause of action arising from undertakings commenced before January 1, 1978;
(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106;
(4) state and local landmarks, historic preservation, zoning, or building codes, relating to architectural works protected under section 102(a)(8);
(5) sound recordings fixed before February 15, 1972. Federal preemption with
respect to sound recordings fixed before then does not begin until February 15,
State law claims are preempted by the Copyright Act, then, only if they protect rights equivalent to the exclusive rights protected by federal copyright law. A claim is preempted only if it is of a kind that comes within the general scope of federal copyright law. If it doesn’t, then the claim is not preempted.
This has come to be known as the “extra element” test. If violation of the state law requires proof of some element in addition to or instead of the exclusive rights federal copyright law affords (i.e., rights to copy, adapt, distribute, display or perform a work), then the state law claim is not preempted by federal copyright law. For this reason, breach of a contract involving a copyrighted work is still actionable under state law.
If the contract is only an agreement not to infringe a copyright, then the state law claim would be preempted. A breach of that kind of contract would be the same thing as violating rights protected under federal law. A cause of action for breach of this kind of contract adds no additional element to an infringement claim.
If the contract provides for a royalty payment to the author in exchange for a publisher’s agreement to print and sell his book to the public, a breach of that contract would be actionable under state contract law. Federal copyright law does not guarantee royalties to authors. Because the royalty agreement is an “extra element,” the state law claim survives federal preemption.
Works not within the subject matter of federal copyright law
State law claims of intellectual property rights in works that are not within the subject matter of federal copyright also survive federal preemption. This is sometimes called the “subject matter” requirement of federal copyright preemption.
An example would be works that are not yet fixed in a tangible medium. Federal copyright law only protects works that are fixed in a tangible medium. An extemporaneous speech is an example of a work that is not fixed in a tangible medium. A sound recording of the speech, or a written transcription of it, would receive federal copyright protection, but an impromptu, unwritten, unrecorded spoken-word performance would not.
A band that comes up with a new song while jamming in the guitar player’s garage does not get federal copyright protection until they write it down on paper or record it in some tangible medium such as a tape recording or a digital recording of some kind.
State law may or may not provide a remedy for infringing these kinds of works. Federal law does not create or “approve” any particular state law remedies. It merely identifies what areas of the law states are still free to regulate. It is up to each state to decide whether, and in what way, it will protect intellectual property rights in works that are not of a kind that are protected by federal copyright law.
Pre-1972 sound recordings
Before 1972, sound recordings were not within the subject matter of federal copyright law. Accordingly, the federal Copyright Act provides that state law claims for infringement of rights in a pre-1972 sound recording may be pursued notwithstanding the general rule that federal copyright law preempts state copyright law.
The recent decision in Flo & Eddie, Inc. v. Sirius XM Radio, Inc.3 illustrates this rule. The musical group The Turtles recorded the song, “Happy Together” and a number of other songs in the 1960’s. Two of the founding members later created Flo & Eddie, Inc., which now owns all rights to The Turtles’ master sound recordings. Satellite radio and Internet broadcaster Sirius XM Radio, Inc. publicly performed some of these recordings. Flo & Eddie, Inc. had not granted it a license to do so. Since 1960’s sound recordings do not receive federal copyright protection, the Turtles would lose unless state law offered them some protection. As it turns out, California is one of a small number of states that provides statutory protection for intellectual property rights in pre-1972 sound recordings. California Civil Code § 980(a)(2) provides:
The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound recording.
The court interpreted the rights of “exclusive ownership,” as used in this statute, as giving the owner of a pre-1972 sound recording the exclusive right to publicly perform the recording.
It should be noted that the California statute only protects rights in the recording of the song, not rights in the song itself. A cover band could legally perform its own version of “Happy Together” and neither federal nor California state law would provide a remedy to the recording’s owner, Flo & Eddie, Inc. The cover band could still be liable to the songwriter, though, if the song has been fixed in tangible form, such as sheet music, and if the sheet music (as distinguished from a sound recording of a performance of it) is otherwise protected under federal copyright law.
It is a mistake to rely exclusively on the federal Copyright Act, as some practitioners do, to determine the extent of copyright protection to which a creative work may be entitled. Every copyright issue should involve a three-part analysis: (1) Does the federal Copyright Act protect the work? (2) What kinds of protection might state law provide? (3) Are state law protections preempted by federal law?
Postscript: Shortly after the California decision, Flo & Eddie, Inc. succeeded on a summary judgment motion against the same defendant in New York on the basis of New York state’s common law protection of copyrights.4