Ideas; Publicity

Intro to IP – Prof Merges

4.20.09

Agenda

• Idea submissions– Desny v. Wilder– Compare NY and California rules

• Right of publicity

– Introduction; Bette Midler case

Nadel v. Play by Play

• Specific to NY State law: the role of novelty in “theft of idea” cases

• General (vs. specific) novelty: applied by District Court to bar Nadel’s claims

• District Court: true for (1) misappropriation and (2) breach of K causes of action

Apfel (NY Case)

• Distinguished “novelty to the buyer” from “originality”

• Consideration argument rejected

Property vs contract

• Cases on “property-based” vs.

• “Contract-based” causes of action

Held

• Reversed and remanded

• Question of novelty to be determined below

Idea Submissions

• Legal theories

– Implied K

– Misappropriation

Desny

• Facts

• Procedural history

– SJ for Defendant Wilder

Basic contract law

• Enforceable K requires bargained-for consideration

– Promise to disclose idea in exchange for promise to pay for it (if used)

Problems with K theory here

• Agency: was Wilder’s secty empowered to bind Paramount Pictures Corp?

• Was the exchange a true bargain? If not, what was it? (Gratuitous disclosure, and hope for a return gift? Moral consideration?)

On the other hand . . .

• An idea certainly may be the subject of a K

• Payment for disclosure: an enforceable K

• Policy: “theatrical producers” need outside ideas

K theory and novelty requirement

• Nadel and the NY rule: Novelty required only in a misappropriation case, not a K case

• CA and NY agree: no novelty required in case based on a K theory

• “The person who can and does convey a valuable idea to a producer who commercially solicits the service or who accepts it knowing that it is tendered for a price should … be entitled to recover.”

• P. 896

• “We are not oblivious to the concerns of the defendant and amici . . .”

• What might these be?

– Liability for allegations of unsolicited idea submissions leading to sucessful movies etc.

“[I]dea purveyor cannot prevail … unless (a) before or after disclosure he has obtained an express promise to pay, or (b) the circumstances preceding and attending disclosure, together with the conduct of the offeree acting with knowledge of the circumstances show a promise of the type usually referred to as ‘implied’ or ‘implied-in-fact.’”

- P. 896

Idea v synopsis

• Close distinction, bottom p. 896

Implied K cases

• Unspoken understanding: implied in fact K

• Implied in law K: unconscious patient example

– Restitution theory

Concurrence

• Emphasizes the implied in fact nature of the K situation

• Bargaining power of the parties

The nature of the publicity right

• Copyright?– No; license to song here (owner of composition –

“synch” license)

• Trademark/unfair competition

– TM, no: no “secondary meaning” in voice here

“We hold only that when a distinctive voice of a professional singer is widely known and is deliberately imitated to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California . . .”

P. 907

Kozinski dissent

• Too much property is a real concern

– Residential land analogy

• “Overprotection stifles the very creatives forces it’s supposed to nurture.”

Cal Civil Code 3344(a)

• Did Samsung use White’s “likeness”?

• Kozinski says no . . .

Majority

• California law protects any manifestation of “identity,” anything that “evokes” her personality

• Kozinski: idea/expression dichotomy proves that “stealing” something of value is not in and of itself wrong . . .

What is the downside to a robust right of publicity?

• Loss of “balance”

• Undermining federal scheme

• Preemption issues . . .