State Intellectual Property Law and Federal Preemption
> State Intellectual Property Law
- The Tort of Misappropriation
- State "Common Law" Copyright
- Idea Submissions
- Publicity Right
- State Moral Rights
- Patent Preemption
- Copyright Preemption
- Trademark Preemption
In Bowers v. Baystate, 203 F.3d 1316 (Fed. Cir. 2003), the Federal Circuit enforced a shrinkwrap license prohibiting reverese engineering. The court found that under First Circuit caselaw, Bowers' shrinkwrap license, which prohibited reverse engineering, was not preempted by federal copyright law, which permits reverse engineering as fair use.
The Federal Circuit held that "under First Circuit law, the Copyright Act does not preempt or narrow the scope of Mr. Bowers' contract claim." While recognizing that federal regulation may preempt private contract, the court found that "[t]he First Circuit does not interpret [the Copyright Act] to require preemption as long as a state cause of action requires an extra element, beyond mere copying, preparation of derivative works, performance, distribution or display." The court relied in part upon Data General v. Grumann, 36 F.3d 1147 (1st Cir. 1994), which held that the Copyright Act did not preempt state trade secret claims. The court also relied upon other Circuit cases, including ProCD v. Zeidenburg, 86 F.3d 1447 (7th Cir. 1996) which resolved shrink-wrap licenses and questions of Copyright Act preemption of "contractual constraints on copyrighted articles."
The court briefly mentioned two reverse engineering cases, with very little discussion. The court merely noted that Atari Games v. Nintendo, 975 F.2d 832, 24 USPQ 1015 (Fed. Cir. 1992), which held that reverse engineering is a fair use defense to copyright infringement, did not conflict with the current holding. The court also noted that Vault v. Quaid, 847 F.2d 1488 (5th Cir. 1988), which expressly found that the Copyright Act preempted a state law prohibiting copying of computer programs, did not affect "private contractual agreements supported by mutual assent and consideration." The court added that the First Circuit allows contractual parties to waive their affirmative defenses.
The court did not reach the merits of Bowers' copyright infringement claim, since it found that the contract infringement claim was valid, and it was reasonable for the judge to award only once where the underlying behavior was the same. Finally, the court held that the patent claims were invalid.
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