State v. Perry

• Decision Date: 19 August 1998
• Docket Number: No. 97-628,97-628
• Citation: 697 N.E.2d 624,83 Ohio St.3d 41
• Parties: , 1998 Copr.L.Dec. P 27,822, 48 U.S.P.Q.2d 1125 The STATE of Ohio, Appellant, v. PERRY, Appellee.
• Court: Ohio Supreme Court

Page 41

83 Ohio St.3d 41

697 N.E.2d 624, 1998 Copr.L.Dec. P 27,822, 48 U.S.P.Q.2d 1125

The STATE of Ohio, Appellant, v. PERRY, Appellee.

No. 97-628.

Supreme Court of Ohio.

Submitted March 3, 1998.

Decided Aug. 19, 1998.

Michael Perry was indicted under R.C. 2913.04 on two counts of unauthorized use, two counts of theft, and one count of possession of criminal tools in connection with his operation of a computer bulletin board. Perry filed a motion to dismiss the charges, claiming that prosecution of a violation of the unauthorized use statute is preempted by federal copyright laws. The trial court denied the motion. Subsequently, Perry pled no contest to the indictment and was found guilty on both counts of unauthorized use and not guilty on the remaining charges. ¹

Perry appealed the trial court's refusal to preempt the state criminal action. The appellate court reversed the trial court and remanded the cause to the trial court with instructions to grant the motion to dismiss. The appellate court reasoned that the federal Copyright Act, Section 106 et seq., Title 17, U.S.Code, preempted the state criminal charges of unauthorized use.

The cause is now before this court pursuant to the allowance of a discretionary appeal.

Joseph T. Deters, Hamilton County Prosecuting Attorney, and Steven W. Rakow, Assistant Prosecuting Attorney, for appellant.

Christine Y. Jones and Jay Clark, Cincinnati, for appellee.

Frost & Jacobs, L.L.P., and Stephen L. Gillen, Cincinnati, urging reversal for amicus curiae, Microsoft Corporation.

Sandra E. Pinkerton, Columbus, and Robert L. Berry, Cleveland, urging reversal for amicus curiae, Buckeye State Sheriffs Association.

MOYER, Chief Justice.

We hold that prosecution of state charges of unauthorized use that are based solely upon the unauthorized uploading, downloading, and posting of computer software on a computer bulletin board is preempted by the federal copyright laws.

I

The federal copyright laws expressly preempt any state law actions which govern "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 * * *." Section 301(a), Title 17, U.S.Code. The statute thus creates a two-part inquiry: (1) whether a work fixed in a tangible medium of expression is within the subject matter of copyright and (2) whether the rights addressed are equivalent to the exclusive copyright rights set out in Section 106, Title 17, U.S.Code.

Section 106 of the copyright statute gives owners of a copyrighted work exclusive rights to reproduce, prepare derivatives, perform, distribute, and display their work. Thus, "a right is equivalent to one of the rights comprised by a copyright if it 'is infringed by the mere act of reproduction, performance, distribution or display.' " Baltimore Orioles, Inc. v. Major League Baseball Players Assn. (C.A.7, 1986), 805 F.2d 663, 677 (quoting Nimmer, Nimmer on Copyright [1985], Section 1.01[B][I] ); Marobie-Fl, Inc. v. Natl. Assn. of Fire & Equip. Distrib. (N.D.Ill.1997), 983 F.Supp. 1167, 1180.

The preemption provisions of Section 301 of the Copyright Act are broad and absolute and are "stated in the most unequivocal language possible, so as to foreclose any conceivable misinterpretation of its unqualified intention that Congress shall act preemptively, and to avoid the development of any vague borderline areas between State and Federal protection." Notes of the Committee on the Judiciary, H.R.Rep. No. 94-1476, U.S.Code Cong. & Adm. News (1976) 5659, 5746. Federal courts have repeatedly recognized that allowing state claims where the core of the complaint centers on wrongful copying would render the preemption provisions of the Copyright Act useless. See, e.g., United States ex rel. Berge v. Bd. of Trustees of Univ. of Ala. (C.A.4, 1997), 104 F.3d 1453, 1464; Daboub v. Gibbons (C.A.5, 1995), 42 F.3d 285, 290, and fn. 8 ("[I]f the language of the act could be so easily circumvented, the preemption provision would be useless, and the policies behind a uniform Copyright statute would be silenced."). The same effect would arise where issues of wrongful distribution or display are the core of the state law claim, as these rights are also exclusively governed by federal copyright laws and are expressly preempted under Section 301 of the Copyright Act.

In order to survive a preemption challenge based on equivalency of protected rights, the state law claim must contain an extra element. Del Madera Properties v. Rhodes & Gardner, Inc. (C.A.9, 1987), 820 F.2d 973, 977. The extra element must not only distinguish the claim from a claim in copyright but also must change the state law so that it is "qualitatively different from a copyright infringement claim." (Emphasis in the original.) Berge at 1463 (citing Rosciszewski v. Arete Assocs., Inc. [C.A. 4, 1993], 1 F.3d 225, 229-230).

II

A plea of no contest constitutes an admission of the facts alleged in an indictment, as well as the facts set forth by the state in its explanation of the circumstances surrounding the charge, but does not admit that those facts lead to a legal conclusion of guilt. We recognize that because preemption is a jurisdictional bar to prosecution, a no contest plea, or even a guilty plea, cannot support a conviction on a state charge that is preempted by federal law. However, we must look to the facts established pursuant to the no contest plea entered by Perry in this case to determine whether the admitted facts established any unauthorized use which is not preempted by the federal Copyright Act and which could support Perry's conviction.

The indictment alleged that on or about June 16, 1995, Perry knowingly used or operated computer software belonging to Microsoft Corporation and knowingly used or operated computer software belonging to Clark Development Corporation, without the consent of the owner or person authorized to give consent. The state's explanation added the following relevant facts to those alleged in the indictment:

In reference to count two of the indictment, alleging unauthorized use of Microsoft software, the state explained that Perry had been running a bulletin board for people to share computer software. The prosecutor informed the court that Perry was "exchanging and moving" computer software, including the Microsoft software referred to in the indictment.

In reference to count four, alleging unauthorized use of Clark Development Corp. software, the state said, "The software or the fourth count of the indictment was the software that actually let his [Perry's] bulletin board work, so he was not only distributing that, but he was also using it to facilitate the distribution of other items * * *." (Emphasis added.)

None of the uses or attendant circumstances argued by the state is sufficient to satisfy the "extra element" requirement that would except the charge of unauthorized use in this case from the express preemption clause in the copyright statute. Section 301, Title 17, U.S.Code. The facts established in the record simply do not support a finding that Perry engaged in any unauthorized use other than that which is preempted by federal copyright laws.

The state has struggled to pinpoint which of Perry's activities are not preempted by federal copyright laws and has cited very little from the record to support its contentions. The state admits that charges based on unauthorized copying and unauthorized distribution are preempted by federal copyright laws and then argues without explanation that "copying" is something entirely different from "use."

Significantly, the state even concedes at the end of its brief that the record in this case does not reveal whether the nature of Perry's use of the software was that of copying or of some other use. Though conceding that it failed to establish any non-copying use on the record at the time the no contest plea was accepted, the state, on appeal to this court, now contends "that the offense consisted of use beyond the scope of [a license agreement that also was not established on the record], not the act of copying." Based on the current case law and the explicit language of the copyright preemption clause, we cannot agree that the activities proved by the state constitute uses that are qualitatively different from the exclusive copyright rights.

Uploading is copying. See, e.g., Sega Enterprises, Ltd. v. MAPHIA (N.D.Cal.1996), 948 F.Supp. 923, 931-932 (citing MAI Systems Corp. v. Peak Computer, Inc. [C.A.9, 1993], 991 F.2d 511, 518, certiorari dismissed [1994], 510 U.S. 1033, 114 S.Ct. 671, 126 L.Ed.2d 640); Playboy Ent., Inc. v. Frena (M.D.Fla.1993), 839 F.Supp. 1552, 1556. Downloading is also copying. See, e.g., Sega; Marobie-Fl at 1172. Unauthorized copying is an unauthorized use that is governed by the copyright laws. See, e.g., Dowling v. United States (1985), 473 U.S. 207, 217, 105 S.Ct. 3127, 3133, 87 L.Ed.2d 152, 160; Daboub at 290; Berge at 1464, fn. 4; Brignoli v. Balch, Hardy & Scheinman, Inc. (S.D.N.Y.1986), 645 F.Supp. 1201, 1205; Motown Record Corp. v. George Hormel & Co. (C.D.Cal.1987), 657 F.Supp. 1236, 1239-1240; 2 Nimmer, Nimmer on Copyright (1997), Section 8.08[A](1), at 8-113. Therefore, unauthorized uploading and unauthorized downloading are unauthorized uses governed by the copyright laws and prosecution of state charges of unauthorized use for uploading and downloading is preempted.

Posting software on a bulletin board where others can access and download it is distribution. See, e.g., Playboy. Unauthorized distribution is a use which is governed by the copyright laws. See, e.g., Dowling at 217, 105 S.Ct. at 3133, 87 L.Ed.2d at 160. Unauthorized posting may also be viewed as facilitating unauthorized downloading or copying by a third party...