Misappropriation & Clickwraps I Intro to IP – Prof Merges

Agenda Overview: state protection, preemption INS v. AP Updating misappropriation doctrine Intro to Clickwrap contracts

Misappropriation: Overview State protection as remnant As leading edge As gap-filler

INS v AP Historical Background Facts – the heydey of competing newspapers Doctrine and developments

History Cast of characters Supreme Court and the progressive era

Justice Mahlon Pitney ( )

Oliver Wendell Holmes, Jr. ( )

OWD, Sr.; civil war experience

Louis D. Brandeis ( )

Brandeis’ career: Corporate law to reform Warren and Brandeis, Boston: the high- powered boutique of its era Progressive reform movement: “the People’s lawyer”

Nominated by President Wilson in 1916; four‐month confirmation battle, in which conservative forces within American industry and the bar fought furiously to defeat the nomination. Wilson stood by Brandeis, and reform groups of all varieties also backed the nomination, which the Senate finally approved in June.

Progressive reform and the loaded term “property” Gilded age (roughly ): “property” as unquestionable entitlement; suggested private ordering, resistance to regulation Progressive era (roughly 1890s – 1920s): dawn of the modern “administrative state”

“Prophets of Regulation”

INS v AP Facts – AP: Cooperative newsgathering agency/organization – Centralized news dissemination source

Majority – IPNTA 5 th p. 967 [I]t seems to us the case must turn upon the question of unfair competition in business. And, in our opinion, this does not depend upon any general right of property analogous to the common-law right of the proprietor of an unpublished work to prevent its publication without his consent; nor is it foreclosed by showing that the benefits of the copyright act have been waived.

“Not only do the acquisition and transmission of news require elaborate organization and a large expenditure of money, skill, and effort; not only has it an exchange value to the gatherer, dependent chiefly upon its novelty and freshness, the regularity of the service, its reputed reliability and thoroughness, and its adaptability to the public needs; but also, as is evident, the news has an exchange value to one who can misappropriate it.”

“The fault in the reasoning lies in applying as a test the right of the complainant as against the public, instead of considering the rights of complainant and defendant, competitors in business, as between themselves... [I]t is taking material that has been acquired by complainant as the result of organization and the expenditure of labor, skill, and money, and which is salable by complainant for money, and that defendant in appropriating it and selling it as its own is endeavoring to reap where it has not sown, and is appropriating to itself the harvest of those who have sown.”

Holmes, concurring If the plaintiff produces the news at the same time that the defendant does, the defendant's presentation impliedly denies to the plaintiff the credit of collecting the facts and assumes that credit to the defendant. If the plaintiff is later in Western cities it naturally will be supposed to have obtained its information from the defendant. The falsehood is a little more subtle, the injury, a little more indirect, than in ordinary cases of unfair trade, but I think that the principle that condemns the one condemns the other.

Brandeis, dissenting “If the property is private, the right of exclusion may be absolute; if the property is affected with a public interest, the right of exclusion is qualified. But the fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property.”

“The general rule of law is, that the noblest of human productions-knowledge, truths ascertained, conceptions, and ideas-become, after voluntary communication to others, free as the air to common use. Upon these incorporeal productions the attribute of property is continued after such communication only in certain classes of cases where public policy has seemed to demand it. These exceptions are confined...”

Updating INS: Online “Hot News” Barclays Capital Inc. v. Theflyonthewall.com,, 3/18/10), 2010 WL (SDNY No , March 18, 2010) An online financial news service that collected and redistributed portions of major financial firms' investment reports misappropriated the firms' “hot news”

Facts Equity Research Reports and Recommendations – prepared by plaintiffs at considerable expense Efforts to keep confidential: ”research reports contain standard prohibitions, such as “[t]his report or any portion hereof may not be reprinted, sold or redistributed without the written consent of [the Firm]” Defendant gets copies, posts

Fly posts the Recommendations by sixty-five investment firms' research analysts, including the three plaintiff Firms. A typical Fly headline from 2009 reflecting a Recommendation by one of the Firms is “EQIX: Equinox initiated with a Buy at BofA/Merrill. Target $110.”

Associated Press v. All Headline News Corp., 89 USPQ2d 2020 (S.D.N.Y. 2009) 89 USPQ2d 2020 Associated Press v. All Headline News Corp. U.S. District Court Southern District of New York No. 08 Civ. 323 (PKC) Decided February 17, 2009

Cause of action for misappropriation of hot news is viable under New York law and is not preempted by federal law, and such claim arises if plaintiff generates or gathers information at cost, information is time- sensitive, defendant's use of information constitutes “free riding” on plaintiff's efforts, defendant is in direct competition with product or service offered by plaintiff, and ability of other parties to free-ride on efforts of plaintiff or others would so reduce incentive to produce product or service that its existence or quality would be threatened

ProCD v. Zeidenberg

Judge Frank Easterbrook

SELECT PHONE is on 5 CDs, contains 90 million listings from both White and Yellow Pages of 77.8 million residential and 13.8 million businesses. You can search for listings on any field: name, address, city, state, ZIP, area code, business heading and SIC code. It offers reverse search capability, matches addresses or phone numbers with names and provides counts by business heading or SIC code. And its fast - just a second or two to search for the listing you want. In addition you have unlimited downloading of listings into a database, word processor, spreadsheet or contact management program. The value and utility of this should be apparent to any salespeople, fundraisers, research and market testing firms,...

SMALL FRY GO ONLINE – 11/1995 Technology lets even tiny businesses outmarket the giants Pro CD Inc., Database America, Cole Publications (a unit of MetroMail), and Dun & Bradstreet all sell nationwide telephone listings on compact disks, including names and addresses, for as little as $175. The CDs let you search by name, zip code, and, in some, by income or business type

Matthew Zeidenberg

District court holding Was there a K? What were its terms?

What term is at issue in ProCD?

“No commercial use”

7 th Circuit Holding When is K formed? Who is offeror? What is mode of acceptance?

Easterbrook: why is this good policy? Business motive “Freedom of K” Consumer benefits

Price Quantity Demanded (000s) D $5 100 $3 170 Total Revenue Price Discrimination

Price Quantity Demanded (000s) D $5 100 $3 170 Price Discrimination Hardcover Softcover

Total Revenue Without Price Discrimination With Price Discrimination $510$710

Price Quantity Demanded (000s) D $5 100 $3 170 Price Discrimination Commer- cial Users Non- commercial Users

Price Quantity Demanded (000s) D $5 100 $3 170 Price Discrimination Commer- cial Users Arbitrage!

Price Quantity Demanded (000s) D $5 100 $3 170 Total Revenue “Perfect Arbitrage” Arbitrageurs’ profits

Freedom of Contract in ProCD What happens if we prohibit “rolling K formation”?

Freedom of Contract in ProCD What happens if we prohibit “rolling K formation”?  All sorts of beneficial K’s will be prohibited; inconvenience for many buyers will result

K Analysis UCC policy: K may be formed in any manner : acceptance of goods (shows that terms in form Ks may not be the final step in acceptance) UCITA draft – not persuasive for Easterbrook

Preemption analysis K involves only 2 parties... Not “good against the world”