Editorial Photocolor Archives, Inc. v. The Granger Collection, 61 N.Y.2d 517 (1984)
The Copyright Act of 1976 preempts state law claims that seek to protect rights equivalent to those protected by federal copyright law, thus federal courts have exclusive jurisdiction over such claims.
Summary
Editorial Photocolor Archives (EPA) and Scala sued The Granger Collection (Granger), alleging unfair competition, interference with contractual relations, and violation of New York’s anti-dilution law. EPA claimed Granger was wrongfully reproducing and selling Scala’s film transparencies, infringing on EPA’s exclusive rights to do so. The New York Court of Appeals held that the Copyright Act of 1976 preempts these state law claims because the rights EPA sought to protect were equivalent to those protected by federal copyright law. Therefore, state courts lacked jurisdiction, and the preliminary injunction against Granger was vacated.
Facts
EPA and Scala were in the business of maintaining archives of film transparencies and photographs, licensing them for reproduction. EPA had the exclusive right in North America to license Scala’s photos. Granger, a competitor, allegedly reproduced and sold Scala’s transparencies without permission. EPA discovered publications crediting Granger with images that appeared to be Scala’s and sued Granger, seeking a preliminary injunction to stop the unauthorized reproduction and sale.
Procedural History
EPA obtained a preliminary injunction against Granger when Granger failed to appear in court. Granger moved to vacate the injunction, arguing that the court lacked subject matter jurisdiction because the claims were preempted by federal copyright law. Special Term denied the motion, and the Appellate Division affirmed. Granger appealed to the New York Court of Appeals.
Issue(s)
Whether the Copyright Act of 1976 preempts state law claims for unfair competition, interference with contractual relations, and violation of New York’s anti-dilution law, when those claims are based on the unauthorized reproduction and sale of copyrighted material?
Holding
No, because the rights asserted by EPA are equivalent to the exclusive rights of use and reproduction granted by the federal copyright laws and are thus preempted.
Court’s Reasoning
The Court of Appeals reasoned that the Copyright Act of 1976 (specifically, 17 U.S.C. § 301) explicitly preempts state laws that grant equivalent rights to those within the scope of federal copyright law (17 U.S.C. § 106). The court examined EPA’s complaint and the preliminary injunction and determined that the rights EPA sought to protect (reproduction, sale, and licensing of the transparencies) were equivalent to the exclusive rights granted by federal copyright law. The court noted that the subject matter of the dispute, the transparencies and photographs, fell within the scope of copyright protection. The court emphasized that a state law claim is preempted even if it requires additional elements not necessary for copyright protection, as long as the underlying right is equivalent to a copyright right. As the court stated, “Plaintiffs could not, by miscasting their causes of action, secure the equivalent of copyright protection under guise of State law.” Since the cause of action accrued after January 1, 1978, and the rights were equivalent to copyright rights, the state court lacked subject matter jurisdiction. The court cited Lacks v. Lacks, stating that a judgment issued without subject matter jurisdiction is void and cannot be waived.