Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 1 of 27
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`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
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`ECF Case
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`Case No. 12-civ-1543-AJN
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`________________________________________
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`WNET, THIRTEEN, FOX TELEVISION
`STATIONS, INC., TWENTIETH CENTURY
`FOX FILM CORPORATION, WPIX, INC.,
`UNIVISION TELEVISION GROUP, INC., THE
`UNIVISION NETWORK LIMITED
`PARTNERSHIP, and PUBLIC
`BROADCASTING SERVICE,
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`Plaintiffs,
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` v.
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`AEREO, INC. f/k/a BAMBOOM LABS, INC.,
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`Defendant.
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`________________________________________
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`WNET PLAINTIFFS’ MEMORANDUM IN OPPOSITION TO
`AEREO’S MOTION FOR PARTIAL JUDGMENT ON THE PLEADINGS
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 2 of 27
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .................................................................................................... ii
`INTRODUCTION .....................................................................................................................1
`ARGUMENT .............................................................................................................................3
`I. The Copyright Act Preempts State Claims Only Where the Actionable Conduct,
`Standing Alone, Would Infringe One of the Exclusive Rights Specified in § 106. ............3
`II. Non-Public Performances, Standing Alone, Do Not Infringe One of the Exclusive
`Rights Specified in § 106 And Are Therefore Not Preempted. ...........................................9
`A. Established Second Circuit Law Makes Clear that Preemption Extends Only
`to Exclusive Rights Specified in § 106. .........................................................................9
`B. Aereo Ignores the Controlling Second Circuit Test. ....................................................12
`III. Plaintiffs’ Position Respects the Boundaries of Preemption Set by Congress and
`Preempted When There Is No Copyright Liability. ...........................................................19
`CONCLUSION ........................................................................................................................23
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`Recognizes That State Law Claims Are Frequently – But Not Always –
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 3 of 27
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`CASES
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`TABLE OF AUTHORITIES
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`Ad Hoc Telecommunication Users Committee v. FCC, 680 F.2d 790 (D.C. Cir.
`1982) ..................................................................................................................................11
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`Barclays Capital Inc. v. Theflyonthewall.com, Inc., 650 F.3d 876 (2d Cir. 2011) ...4, 5, 6, 7, 8,
` 10, 14, 15
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`Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir. 2004) ...........5, 8, 13, 14
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`Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) ..............10
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`Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195 (2d Cir.
`1983), rev’d on other grounds, 471 U.S. 539 (1985) ........................................................10
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`Kucana v. Holder, 130 S. Ct. 827 (2010) ................................................................................11
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`National Basketball Ass’n v. Motorola, 105 F.3d 841 (2d Cir. 1997) .............................6, 8, 21
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`Stadt v. Fox News Network LLC, 719 F. Supp. 2d 312 (S.D.N.Y. 2010) ................................15
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`United States ex rel. Eisenstein v. City of New York, 556 U.S. 928 (2009) ............................12
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`Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231 (2d Cir. 1983)...................15
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`STATUTES
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`8 U.S.C. § 1252(a) ..................................................................................................................11
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`17 U.S.C. § 102(a) .....................................................................................................................6
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`17 U.S.C. § 106(1) .....................................................................................................................2
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`17 U.S.C. § 106(4) ...............................................................................................................1, 10
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`17 U.S.C. § 107 ........................................................................................................................20
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`17 U.S.C. § 301 ..........................................................................................................................3
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`17 U.S.C. § 301(a) ...............................................................................................1, 4, 11, 12, 17
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`17 U.S.C. § 301(b) .....................................................................................................................4
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`17 U.S.C. § 301(b)(1) ............................................................................................................5, 6
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`17 U.S.C. § 301(b)(3) ............................................................................................1, 4, 5, 11, 22
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`LEGISLATIVE MATERIALS
`LEGISLATIVE MATERIALS
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`H.R. 4347, 89th Cong., 2d Sess. § 301(a) (1966) ....................................................................12
`H.R. 4347, 89th Cong., 2d Sess. § 301(a) (1966) .................................................................. ..12
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`H.R. Rep. No. 94-1476 (1976), reprinted in 1976 U.S.C.C.A.N. 5659 ....................4, 9, 16, 17
`H.R. Rep. No. 94-1476 (1976), reprinted in 1976 U.S.C.C.A.N. 5659 .................. ..4, 9, 16, 17
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`S. Rep. No. 94-473 (1975) .......................................................................................................18
`S. Rep. No. 94-473 (1975) ..................................................................................................... ..18
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`OTHER AUTHORITIES
`OTHER AUTHORITIES
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`Bruce P. Keller et al., Copyright Law: A Practitioner’s Guide (2012) ...................................19
`Bruce P. Keller et al., Copyright Law: A Practitioner’s Guide (2012) ................................. ..19
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`1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright (2011) ..........................15, 18
`1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright (2011) ........................ ..15, 18
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 5 of 27
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`INTRODUCTION
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`Aereo argues that § 301 of the Copyright Act preempts state law claims arising from
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`non-public performances. That is incorrect. Far from preempting such claims, Congress
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`expressly preserved them by providing in the Copyright Act that “[n]othing in this title
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`annuls or limits any rights or remedies under the common law or statutes of any State with
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`respect to . . . activities violating legal or equitable rights that are not equivalent to any of the
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`exclusive rights within the general scope of copyright as specified by section 106.” 17
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`U.S.C. § 301(b)(3). The exclusive rights within the general scope of copyright specified by
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`§ 106 include the right “to perform the copyrighted work publicly.” Id. § 106(4) (emphasis
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`added). Section 106 does not afford copyright owners any rights as to non-public
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`performances. Under the language of the statute and clear Second Circuit precedent, which
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`Aereo simply ignores, non-public performance rights are “not equivalent to any of the
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`exclusive rights within the general scope of copyright as specified by section 106.” Id. at §
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`301(a). Accordingly, state law claims arising from the invasion of such rights are preserved,
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`not preempted, by § 301.
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`As the Court is aware, in this case the WNET Plaintiffs’ state law unfair competition
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`claim for non-public performances is an alternative to their main claim under federal
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`copyright law based on public performances. See Initial Pre-hearing Memorandum on
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`WNET Plaintiffs’ Unfair Competition Claim, March 21, 2012, ECF No. 16. Plaintiffs
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`believe, and intend to establish, that Aereo’s simultaneous commercial performances to
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`countless users of course constitute public performances within the meaning of § 106(4), and
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`that Aereo is therefore liable under federal copyright law. Assuming the Court agrees that
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`Aereo’s performances are public, plaintiffs agree that their exclusive remedy is under federal
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`law. Public performance is one of the exclusive rights specified under § 106. Therefore,
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`state claims with respect to public performances are generally preempted under § 301.
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`However, Aereo argues that it is entirely beyond the reach of copyright law under the
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`fiction that its mass-marketed subscription transmissions of Plaintiffs’ copyrighted programs
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`to countless members of the public are, technically, not public performances within the
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`meaning of § 106. Plaintiffs emphatically believe that is incorrect. But in the event Aereo’s
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`performances were deemed to be non-public, and therefore outside the scope of federal
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`copyright law, then Aereo’s tortious conduct is not immune from New York unfair
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`competition law – because state laws relating to non-public performances are not preempted.
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`Aereo cannot have it both ways, arguing that its performances are non-public and therefore
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`outside the scope of copyright law as specified by § 106 for purposes of liability, but within
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`the scope of copyright law as specified by § 106 for purposes of preemption. Plaintiffs have
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`a remedy under federal copyright law if Aereo’s performances are (correctly) deemed public,
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`and a remedy under state unfair competition law if the performances are deemed non-public.1
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`Aereo attempts to escape this straightforward conclusion by attacking a straw man. It
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`contends that under Plaintiffs’ reading of § 301, states would be free to impose liability for
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`any activity for which there is no liability under federal copyright law, such as copying works
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`in the public domain, or fair use. But that is not Plaintiffs’ position, which rests on the plain
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`meaning of § 301 itself. By its terms, § 301 ties the limits of preemption to the exclusive
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`rights specified in § 106. Where an exclusive right is specified in § 106, such as for
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`1 Aereo characterizes Plaintiffs’ assertion of alternative remedies as “heads I win, tails you
`lose.’” Memorandum of Law in Support of Defendant Aereo, Inc.’s Motion for Partial
`Judgment on the Pleadings, ECF No. 33 (“Aereo Mem.”). And, indeed, Aereo is liable either
`way. But that should not be surprising; Congress plainly did not intend to give immunity to
`any kind of blatant commercial exploitation of Plaintiffs’ original works of authorship.
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`reproduction in copies, see 17 U.S.C. § 106(1), then state causes of action are generally
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`preempted, whether or not there is copyright liability. Thus, adhering to the plain language
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`of § 301, states generally cannot impose liability for activities such as reproducing works in
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`the public domain, or reproduction that constitutes fair use, because reproduction is within
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`the general scope of copyright specified in § 106. Congress drew the boundaries of
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`preemption so as to immunize such conduct from liability under both federal and state law.
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`But, by the same token, as the Second Circuit has made clear, the reach of preemption
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`stops at the outer limits of the scope of copyright as specified in § 106. Where no copyright
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`liability arises because the conduct at issue is altogether outside the scope of copyright as
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`provided in § 106, then Congress did not immunize such conduct from state law, but rather
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`expressly preserved state remedies. That is a fairly narrow exception from preemption – but
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`as this case shows, a potentially important one. Congress’s decision not to preempt conduct
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`that is altogether outside the scope of copyright as specified in §106, but rather to preserve
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`state remedies relating to such conduct, must be respected.
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`ARGUMENT
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`I.
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`The Copyright Act Preempts State Claims Only Where the Actionable Conduct,
`Standing Alone, Would Infringe One of the Exclusive Rights Specified in § 106.
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`Congress chose to delimit the scope of copyright preemption through an express
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`preemption provision, 17 U.S.C. § 301. Accordingly, the starting point for any analysis of
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`copyright preemption is the language of that statutory section. It provides, in relevant part:
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`(a) 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
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`or equivalent right in any such work under the common law or statutes of
`any State.
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`(b) Nothing in this title annuls or limits any rights or remedies
`under the common law or statutes of any State with respect to —
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`(1) subject matter that does not come within the subject matter of
`copyright as specified by sections 102 and 103, including works of
`authorship not fixed in any tangible medium of expression; or . . . .
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`(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; . . . .
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`17 U.S.C. § 301(a), (b) (emphasis added).
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`By its terms, § 301 ties preemption to two statutory standards that are specified in
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`other sections of the Copyright Act. First, the rights must pertain to “works of authorship
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`that are fixed in a tangible medium of expression and come within the subject matter of
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`copyright as specified by sections 102 and 103” – the so-called “subject matter requirement.”
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`Id. at 301(a). Second, the rights must be “equivalent to any of the exclusive rights within the
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`general scope of copyright as specified by section 106” – the so-called “general scope
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`requirement.” Id. at 301(b)(3); see also, e.g., Barclays Capital Inc. v. Theflyonthewall.com,
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`Inc., 650 F.3d 876, 892 (2d Cir. 2011).
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`Notably, under both requirements, Congress chose to delimit the scope of preemption
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`by standards “specified” in other statutory provisions, rather than leaving courts to apply
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`vague standards or follow their intuition about congressional “intent.” Congress took that
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`approach because it wanted “to avoid the development of any vague borderline areas
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`between State and Federal protection.” H.R. Rep. No. 94-1476, at 130 (1976), reprinted in
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`1976 U.S.C.C.A.N. 5659, 5746. Further, Congress made clear that the “subject matter” and
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`“general scope” tests also define the outer limit of preemption by expressly providing in
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`§ 301(b) that state law is not preempted if it (a) does not come within the subject matter of
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`copyright under §§ 102 and 103, or (b) concerns activities that do not violate the exclusive
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`rights within the scope of copyright specified in § 106. 17 U.S.C. §§ 301(b)(1) & (3).
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`In addition to the statutory subject matter and general scope requirements, the Second
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`Circuit and other courts have inferred a third requirement for preemption, the so-called “extra
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`element” test. Under this third requirement, to be preempted “the state law claim must not
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`include any extra element that make it qualitatively different from a copyright infringement
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`claim.” Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir. 2004). As
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`explained further infra, the extra element test is related to the general scope requirement, but
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`the two are not the same – the extra element test is a third, “further” requirement, in addition
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`to subject matter and general scope. See Theflyonthewall.com, 650 F.3d at 892 (“17 U.S.C.
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`§ 301 . . . sets forth a two-part test to determine whether a state-law claim is preempted by
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`the Copyright Act, with a further ‘extra elements’ exception”); Briarpatch, 373 F.3d at 305
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`(extra element test is “[f]urther” requirement, on top of subject matter and general scope).
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`As we will show, state law claims arising from non-public performances, like the
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`WNET Plaintiffs’ unfair competition claim in this case, are expressly not preempted pursuant
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`to the second, statutory “general scope” requirement. Because all three requirements must be
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`met before a state claim will be preempted, failure under the general scope requirement
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`negates Defendant’s preemption defense, regardless of whether the other two requirements
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`are satisfied or not. It is therefore unnecessary to engage in a detailed application of the
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`subject matter or extra element requirements here. Nonetheless, it may be helpful to the
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`Court to outline briefly how the three requirements work together to delimit the scope of
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`copyright preemption under Plaintiffs’ plain language reading of § 301, which Aereo
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`substantially mischaracterizes in its briefing.
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 10 of 27
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`Theflyonthewall.com provides a recent, thorough, and methodical walk through the
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`application of the three requirements. Like an earlier case, National Basketball Ass’n v.
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`Motorola, Inc., 105 F.3d 841 (2d Cir. 1997) (“NBA”), Theflyonthewall.com concluded that
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`state law claims were preempted against a service that copied, distributed, and publicly
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`displayed certain facts taken from copyrighted works.
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`Theflyonthewall.com first determined that the conduct at bar satisfied the subject
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`matter requirement for preemption. In this first step, the question is whether the copied
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`“work as a whole satisfies the subject matter requirement,” Theflyonthewall.com, 650 F.3d at
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`892 (emphasis added), i.e., whether it is an “original work[] of authorship fixed in any
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`tangible medium of expression,” 17 U.S.C. § 102(a); see also id. § 301(b)(1) (state claims are
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`not preempted when they relate to “works of authorship not fixed in any tangible medium of
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`expression”) (emphasis added). Because the subject matter requirement focuses on the work
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`as a whole, it is met even when the particular material that is copied from an original work of
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`authorship is not itself protected by copyright, such as the facts taken from copyrighted
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`works that were at issue in Theflyonthewall.com and NBA. See Theflyonthewall.com, 650
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`F.3d at 892 (“‘Section 301 preemption bars state law misappropriation claims with respect to
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`uncopyrightable as well as copyrightable elements,’ if the work as a whole satisfies the
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`subject matter requirement”) (quoting NBA, 105 F.3d at 849). Likewise, the subject matter
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`requirement is satisfied even though works have fallen into the public domain, or have
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`otherwise failed to meet the requirements for protection under federal copyright law, as long
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`as they are original works of authorship fixed in tangible form and thereby meet the subject
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`matter requirements of §§ 102 and 103. See NBA, 105 F.3d at 849 (quoting H.R. Rep. 94-
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`1476, at 131). Thus, the subject matter requirement generally prevents states from outlawing
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 11 of 27
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`the copying of uncopyrighted materials like facts or works in the public domain, as long as
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`the work as a whole is an original work of authorship within the subject matter of copyright.
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`Turning next to the general scope requirement – the requirement that is directly at
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`issue on this motion –Theflyonthewall.com explained that under longstanding Second Circuit
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`law reflecting the plain language of § 301, the Copyright Act “‘preempts only those state law
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`rights that “may be abridged by an act which, in and of itself, would infringe one of the
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`exclusive rights” provided by federal copyright law’” under § 106. 650 F.3d at 893
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`(emphasis added) (quoting Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d
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`Cir. 1992) (quoting Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d 195, 200 (2d
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`Cir. 1983), rev’d on other grounds, 471 U.S. 539 (1985)). The Second Circuit further
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`observed that § 106 expressly defines “the general scope of copyright, [in that it] ‘affords a
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`copyright owner the exclusive right to: (1) reproduce the copyrighted work; (2) prepare
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`derivative works; (3) distribute copies of the work by sale or otherwise; and, with respect to
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`certain artistic works, (4) perform the work publicly; and (5) display the work publicly. See
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`17 U.S.C. 106(1)-(5).’” 650 F.3d at 893 (emphasis added) (quoting Computer Assocs., 982
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`F.2d at 716). Applying these standards, the court explained that the general scope
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`requirement was readily met in both Theflyinthewall.com and NBA, because the defendants in
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`those cases were reproducing, distributing, and (publicly) displaying material taken from the
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`plaintiffs’ works, id. – i.e., the defendants were engaged in conduct that “in and of itself,
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`would infringe one of the exclusive rights” specified in § 106.
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`Completing its preemption analysis, Theflyonthewall turned to the “extra elements”
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`requirement, which it characterized as creating an exception to preemption even when the
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`subject matter and general scope requirements are satisfied. See 650 F.3d at 892, 892-93.
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 12 of 27
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`Pursuant to this requirement, “if an ‘extra element’ is required instead of or in addition to the
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`acts of reproduction, performance, distribution or display, in order to constitute a state-
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`created cause of action, then the right does not lie ‘within the general scope of copyright,’
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`and there is no preemption.” Id. at 893 (quotation marks and citations omitted). As this
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`formulation makes clear, the extra element requirement is derived from the general scope
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`requirement, but they are not the same. As explained in the previous paragraph, the general
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`scope requirement asks whether the state law targets conduct which, standing alone, is
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`enough to violate a § 106 right. If the answer is no, there is no preemption. If the answer is
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`yes, then the extra element requirement asks a further question: even though the conduct
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`would violate a § 106 right, does the state law require proof of something in addition to
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`establish a claim? These are opposing ways of establishing that a state right is not equivalent
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`to a § 106 right: in the first case (which applies here), because the state law is targeting
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`conduct that does not constitute a § 106 violation, and in the second case because the state
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`law targets conduct above and beyond what is required for a § 106 violation.
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`Beyond this basic distinction, the extra element requirement is not always easy to
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`apply in practice. Courts must determine which extra elements are enough to take a state
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`claim outside the scope of copyright, and which are not. See, e.g., Briarpatch, 373 F.3d at
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`306 (attempting to distinguish between those extra elements that make a state law claim
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`qualitatively different and those that do not). In Theflyonthewall.com and NBA, for example,
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`the Second Circuit concluded that the Plaintiffs had not pled the extra elements that might
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`save a “hot news” claim, and that their state law claims against the copying, distribution, and
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`public display of facts taken from their copyrightable works were therefore preempted.
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`Theflyonthewall.com, 650 F.3d at 905-06; NBA, 106 F.3d at 853-54. Fortunately, in this case
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 13 of 27
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`it is not necessary to canvass the complexities of the Second Circuit’s “extra elements”
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`jurisprudence, because Aereo’s claim of preemption fails at the second stage of the analysis
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`under the more fundamental – and express statutory – general scope requirement.
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`II.
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`Non-Public Performances, Standing Alone, Do Not Infringe One of the Exclusive
`Rights Specified in § 106 And Are Therefore Not Preempted.
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`Here, Plaintiffs’ state law unfair competition claim is not preempted, because the
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`general scope requirement of § 301 is not satisfied: non-public performances fall outside the
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`general scope of copyright as specified in § 106.2
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`A.
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`Established Second Circuit Law Makes Clear that Preemption Extends
`Only to Exclusive Rights Specified in § 106.
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`Whether state remedies for non-public performances are preempted under the general
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`scope requirement appears to be a question of first impression. That is not surprising,
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`because Congress intended the Copyright Act’s definition of the public performance right to
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`capture “all conceivable forms and combinations of wired or wireless communications
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`media.” H.R. Rep. 94-1476, at 64, reprinted in 1976 U.S.C.C.A.N. at 5678. The very idea
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`that a mass-marketed subscription service for performing copyrighted works might arguably
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`fall outside the ambit of the public performance right under § 106 would have been
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`inconceivable to Congress. Moreover, few preemption cases focus on the application of the
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`general scope requirement in any context, because its applicability is so straightforward. In
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`2 Because the general scope requirement is not satisfied, Plaintiffs’ unfair competition claim
`is not preempted, regardless of whether the other two requirements are met. Thus, while it is
`plainly correct that the “subject matter” requirement is satisfied here – Aereo’s wrongful
`conduct arises from its commercial exploitation of Plaintiffs’ works, which are not only
`within the subject-matter of copyright, but are in fact copyrighted – that is insufficient for
`preemption where, as here, the general scope requirement is not met. As for the extra
`element requirement, the Court need not reach the question of whether it is satisfied in this
`case, since preemption would not result even if that third requirement were met.
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 14 of 27
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`the Second Circuit’s cases, for example, the difficulties all arise in applying either the subject
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`matter requirement or the extra elements requirement – not the general scope requirement.
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`Nonetheless, the legal standards that govern the general scope requirement are clearly
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`established in the Second Circuit, and they clearly remove claims arising from non-public
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`performances from preemption. As explained in Section I, the Second Circuit has
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`consistently held that under the general scope requirement, the Copyright Act “preempts only
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`those state law rights that may be abridged by an act which, in and of itself, would infringe
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`one of the exclusive rights provided by federal copyright law” under § 106. E.g.,
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`Theflyonthewall.com, 650 F.3d at 893 (emphasis added; quotation marks omitted); see also
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`Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992); Harper & Row
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`Publishers, Inc. v. Nation Enters., 723 F.2d 195, 200 (2d Cir. 1983), rev’d on other grounds,
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`471 U.S. 539 (1985). Applying this straightforward test – which Aereo nowhere
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`acknowledges, much less grapples with – it is incontestable that state law claims arising from
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`non-public performances are not preempted. Section 106 defines the general scope of
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`copyright as covering specified exclusive rights, including the right “to perform the
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`copyrighted work publicly.” 17 U.S.C. § 106(4). But it clearly does not include any
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`exclusive right to perform a work non-publicly. Therefore, a non-public performance is not
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`“an act which, in and of itself, would infringe one of the exclusive rights provided by federal
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`copyright law.” 650 F.3d at 893 (quotation marks omitted). Indeed, that is Aereo’s entire
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`defense to Plaintiffs’ copyright claim: Aereo argues that its performances are not public, and
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`therefore they are altogether outside the scope of copyright law, as specified in the exclusive
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`rights enumerated in § 106.
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 15 of 27
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`The Second Circuit’s rule is compelled by the language of § 301 itself. The statute
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`provides that there is preemption only as to “legal or equitable rights that are equivalent to
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`any of the exclusive rights within the general scope of copyright as specified by section 106.”
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`17 U.S.C. § 301(a) (emphasis added); see also id. § 301(b)(3) (providing that state laws are
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`not preempted with respect to “activities violating legal or equitable rights that are not
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`equivalent to any of the exclusive rights within the general scope of copyright as specified by
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`section 106”) (emphasis added). Congress’s choice of language, including the words
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`“equivalent” and “specified,” makes clear that, while state claims might apply many different
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`labels, preemption is judged by whether the conduct at issue is the same as one of the
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`exclusive rights actually enumerated in § 106.3 By its plain language, the statute does not
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`allow preemption through mere relatedness.
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`Indeed, Congress initially considered language that might have allowed preemption
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`based on a looser connection to the exclusive rights actually specified in § 106. But
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`Congress ultimately rejected that language in favor of § 301 as enacted. In an earlier version
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`of the bill, § 301(a) would have preempted “all rights in the nature of copyright”; instead,
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`Congress changed that language to “all legal or equitable rights that are equivalent to any of
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`3 “Equivalent” means “‘corresponding or virtually identical in effect or function’” and
`“expresses the notion that two terms, be they abstract or tangible, each possess virtually all of
`the qualities or attributes of the other.” Ad Hoc Telecomms. Users Comm. v. FCC, 680 F.2d
`790, 801 & n.6 (D.C. Cir. 1982) (Mackinnon, J., concurring) (quoting Webster’s Third New
`International Dictionary (1963)). “Hence, to say that two terms are ‘equivalent’ expresses
`the same idea commonly intended by the statement that two things are ‘identical.’” Id. at 801
`(footnotes omitted). “‘[S]pecify’ means ‘to name or state explicitly or in detail.’ ” Kucana v.
`Holder, 130 S. Ct. 827, 834 n.10 (2010) (quoting Webster’s New Collegiate Dictionary 1116
`(1974)). Thus, for example, when a statute refers to a “decision or action of the Attorney
`General . . . the authority for which is specified under this subchapter to be in the discretion
`of the Attorney General,” 8 U.S.C. § 1252(a)(2)(B)(ii) (emphasis added), the Supreme Court
`has explained that the word “specified” does not mean “implied” or “anticipated,” but rather
`means expressly named in the statute. Kucana, 130 S. Ct. at 834 & n.10.
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`11
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`Case 1:12-cv-01543-AJN Document 58 Filed 04/16/12 Page 16 of 27
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`the exclusive rights within the general scope of copyright as specified by Section 106,”
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`which is the language as enacted. Compare H.R. 4347, 89th Cong., 2d Sess. § 301(a) (1966),
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`with 17 U.S.C. § 301(a). Arguably, the original language, “all rights in the nature of
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`copyright,” might have included rights that are merely similar – but not equivalent – to those
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`specified in § 106. But Congress rejected that language, and adopted the more exacting
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`standard. See also infra at 17-18 (also discussing this change of language). Under this
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`standard, non-public performances are outside the general scope of copyright law, and there
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`is no preemption.
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`B.
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`Aereo Ignores the Controlling Second Circuit Test.
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`In arguing for the opposite result, Aereo makes no attempt to apply the Second
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`Circuit’s “general scope” test (which Aereo fails even to mention), nor to explain how its
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`position can be squared with the actual language of § 301. Indeed, Aereo’s interpretation of
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`§ 301 would effectively render the general scope test in § 301(a) and (b)(3) a nullity, finding
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`preemption whenever the “subjec