A recent appellate decision in Illinois addresses the situations in which state copyright provisions may be preempted by the federal copyright laws. The decision serves as a reminder to businesses facing copyright issues that state laws purporting to protect intellectual property may, in reality, be unenforceable because they are preempted by federal law.
Paul Williams allegedly visited a Cook County laundromat and attempted to sell CDs and DVDs from a suitcase to patrons. A laundromat attendant activated a panic button and alerted the police. After approximately 10 minutes of surveillance, the police reported that they observed 2 transactions where Williams and an individual exchanged money for what appeared to be CDs. The police discovered that Williams had between 250 to 300 CDs and DVDs perceived to be fake. At trial, an expert identified exhibits showing CDs and DVDs Williams had in his possession. There was also testimony at trial that Williams was in possession of a DVD titled “The Passion of Christ” (at the time the movie was still in theatres), and CDs by rap artists such as Too Short, Ja Rule, and various tracks from Ludacris and R. Kelly. Williams was convicted on two counts of unlawful use of recorded sounds or images, and two counts of unlawful use of identified sound or audio visual recordings, both violations of Illinois Criminal Code Statues.
In Illinois v. Williams, 2007 WL 2597661 (Ill. App. 2007), the Appellate Court of Illinois, First District, reversed on one count based on preemption but affirmed the second count, concluding that it was not preempted by federal law.
At issue were sections 16-7 and 16-8 of the Illinois Criminal Code. Section 16-7, entitled “Unlawful use of recorded sounds or images,” states in part that
“(a) a person commits unlawful use of recorded sounds or images when he
- intentionally, knowingly or recklessly transfers or causes to be transferred without the consent of he owner, any sounds or images recorded on any sound or audio visual recording with the purpose of selling or causing to be sold, or using or causing to be used for profit the article to which such sounds or recordings of sound are transferred.
- Intentionally, knowingly or recklessly sells, offers for sale, advertises for sale, uses or causes to be used for profit any such article described in subsection 17-7(a)(1) without consent of the owner.”
Section 16-7 is entitled “Unlawful use of unidentified sound or audio visual recordings,” and in part states “(a) a person commits unlawful use of unidentified sound or audio visual recordings when he intentionally, knowingly, recklessly or negligently for profit manufactures, sells, distributes, vends, circulates, performs, leases or otherwise deals in and with unidentified sound or audio visual recordings or causes the manufacture, sale, distribution, vending, circulation, performance, lease or other dealing in and with unidentified sound or audio visual recordings.”
Williams contended that the federal Copyright Act expressly preempts Illinois’ regulation of the conduct with which he was charged him and that his convictions are therefore null at void. The court construed section 301(a) of the Copyright Act as requiring the preemption of state claims when two conditions were present – “(1) the works at issue are fixed in tangible form and fall within the ‘subject matter of copyright’ . . . and (2) the legal or equitable rights granted under the state law are equivalent to the exclusive rights set forth in section 106 of the Act.” Because the recordings at issue were unquestionably fixed in tangible form, the first subject matter prong was met. In evaluating the equivalency prong, the court applied what it described as the “extra element test,” which asks whether the state law requires an additional element that is qualitatively different from those necessary for copyright infringement. In evaluating section 16-7(a)(2), the court acknowledged that this section does require a criminal mental state, which is not within the general scope of copyright, but concluded that requiring a criminal mental state for conviction does not qualify as an “extra element.” The court concluded that because section 16-7, which criminalized the sale of any sound recording without the consent of the owner, did not include any extra element beyond what was required to violate the federal law, it was preempted by the federal Copyright Act.
With respect to section 16-8, the court reached a different conclusion. In prosecuting an offender under section 16-8, the state was required to prove that the defendant was dealing in “unidentified” CDs – that is, recordings that did not include the name and address of the actual manufacturer or that listed a manufacturer that was not the true manufacturer of the recording. This critical element was not part of section 106 of the Copyright Act. Because section 16-8 incorporated an “extra element” beyond those encompassed in the federal law, it was not preempted.