Copyright (c) 1999 California Law Review
                                        California Law Review

                                           January, 1999

                                         87 Calif. L. Rev. 17

   LENGTH: 36003 words

   SYMPOSIUM: The Metamorphosis of Contract into Expand

   David Nimmer, Elliot Brown, Gary N. Frischling*
 
 

   Copyright © 1999 David Nimmer, Elliot Brown, and Gary N. Frischling.

   * The authors practice copyright law at Irell & Manella LLP in Los Angeles.

   SUMMARY:
   ... Article 2B of the Uniform Commercial Code (U.C.C.) provides model rules to govern transactions in the digital
   domain, such as the licensing of software and electronic contracting. ... When a copyright owner distributes
   its software, it is free to grant a license extending only to specified uses, while excluding others. ... At least
   for the modes of software distribution used today, copyright law provides all the teeth a publisher needs to
   control use and dissemination of her work. ... Since the distribution right is an exclusive right in copyright law,
   distributions outside the license infringe the copyright. ... If, however, the copyright owner elected a licensing
   framework, given the structure of the transactions, the end user's right to "use" (e.g., copy) the software
   depends on the end user license. ... The contract at issue in ProCD, Inc. v. Zeidenberg differs from the
   foregoing examples in the one respect relevant to nonstatutory preemption: it contravenes one of the core
   policies of the Copyright Act by extending quasi-copyright protection to works that do not qualify as "original."
   ... Although the Act limits the copyright owner's rights to "public" distribution, publishers who follow the logic
   of ProCD, Inc. v. Zeidenberg may amplify their statutory rights simply by wrapping books in cellophane, subject
   to the limitation that the buyer is barred from passing the purchased copy on to a friend. ...
 

   TEXT:
 

   Article 2B of the Uniform Commercial Code (U.C.C.) provides model rules to govern transactions in the digital
   domain, such as the licensing of software and electronic contracting. By addressing fundamental contract
   issues in the burgeoning world of digital commerce, it provides a salutary update to extant provisions of the
   U.C.C. dealing with traditional goods sold in traditional modes of commerce. However, to the extent that
   Article 2B aspires to protect copyright owners from improper uses of copyrighted works, it solves a
   non-problem. Copyright owners already enjoy robust and adequate protections under the Copyright Act. Far
   more troubling than solving this non-problem, however, is the possibility that Article 2B will be used to upset
   copyright law's "delicate balance" between the rights of copyright owners and copyright users. This balance is
   disrupted when state law is permitted to enlarge the rights that copyright owners enjoy.

   Attempts to alter the "delicate balance" through contract should fail under the doctrine of preemption. Article
   2B assumes a pose of neutrality on the extent to which copyright law preempts contractual encroachment,
   yet it facilitates emerging practices designed to alter the balance and place the burden of defending the
   proper bounds of copyright on copyright users. In this Article, the authors argue that if Article 2B is to be
   enacted, it must proscribe contracting practices that seek to extend copyright protection beyond its current
   scope.

   The Death of Copyright: n1 A Short, Cautionary Tale

   The year is 2010. With the closure of the last B&N-Walden-Borders-Broadway superstore in Upton, California,
   no more off-line retail content stores remain in the United States (apart from the Scholar's Palazzo in
   Disneyland). Theaters, music venues, and movie houses have all but disappeared in the wake of in-home - not
   to mention implantable - content delivery. Funding for public libraries and the arts has been diverted into
   providing each person in America with access to the all-purpose device for accessing anything - Microsquish
   Audiovisual Utilization System (MAUS).

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   n1. With apologies to Professor Grant Gilmore, author of The Death of Contract (1974). Rumors of contract's
   death proved, of course, to be greatly exaggerated, as will be evident from the analysis herein. Moreover, the
   true specter confronted today is not so much the death of copyright per se, but rather copyright as we know
   it - a law striking a balance between the rights of copyright owners and the rights of the public. Cf. David
   Nimmer, The End of Copyright, 48 Vand. L. Rev. 1385 (1995) (arguing that new trade discipline has
   eviscerated traditional notions of autonomy in the copyright arena).

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   Now, anyone who wishes to read poetry, browse great works of art, enjoy a novel, watch an epic feature film
   (or humble television show), or experience any other work of authorship can, as a practical matter, do so only
   through the instrumentality of the MAUS. To access any work through the MAUS, the user must first click "OK"
   (or, in the case of implantable access, blink a cortical acknowledgment) on the ubiquitous authorization
   screen. That screen lets the user acknowledge that she agrees to be obligated to abide by all terms and
   provisions of <http://www.contracts.com / usurious perpetual adhesive overreaching / 2001$ $ $ £
   <yen>.html>. This file (colloquially known as the "Gates from Hell Agreement") contains a hundred pages of
   boilerplate initially setting forth the text of Title17, United States Code, in haec verba, but thereafter subject
   to innumerable accretions, modifications, and revisions designed to magnify the rights of proprietors.

   Some companies had initially expressed reluctance at committing their works to protection under the foregoing
   regime; they were concerned that end users would find a way to circumvent the click-wrap contemplated
   above. However, with a nod to Ovid, the MYRRHA Encryption/Subversion Systems furnished the answer.
   Thanks to MYRRHA, it has been conclusively proven that no one anywhere can ever obtain access to any
   protected works in any form whatsoever without personally clicking on the omnipresent authorization screen.
   In addition, proprietors take heart from the fact that to buy any current equipment capable of accessing
   content, users must sit down for a half-hour tutorial at the appliance store and personally and meticulously
   agree to the Gates from Hell Agreement. The user's assent is, in each instance, routinely recorded on DCDVDB
   crystal, capturing for  posterity not only the user's facial expression and utterances, but also her brain
   state manifesting willing and voluntary assent.

   Overview

   In a commercial world burgeoning with transactions involving software and other electronically-delivered
   copyrighted works, an oft-expressed concern arises that traditional rules of commercial contract law - which
   evolved to address trade in goods - will prove ill-suited to address the peculiar needs of trade in digital
   products. The Uniform Commercial Code, after all, arose to address the paradigm of a sale of goods, a context
   that typically involves, at least in part, a negotiated contract between buyer and seller and where the value
   lies in the physical object exchanged. The typical software transaction, by contrast, does not involve a direct
   sale between the software proprietor and the end user; rather, it involves a non-negotiated license (otherwise
   known as a "shrinkwrap" contract) governing uses of the intangible asset (for example, software) embodied in
   a tangible thing that is sold (for example, the diskette or CD-ROM) - or even absent the nominal sale of a
   tangible thing (for example, delivery directly over the Internet). It is natural to suspect that the law for
   widgets may be inadequate for digits. n2

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   n2. "A body of law tailored to transactions whose purpose is to pass title to tangible property can not be
   simply applied to transactions whose purpose was to convey rights in intangible property and information."
   U.C.C. art. 2B, Preface at 4 (Draft, Mar. 1998). [All versions of Article 2B are available on the Internet. See
   National Conference of Commissioners on Uniform State Laws, Drafts of Uniform and Model Acts Official Site
   (last modified Sept. 2, 1998) <http://www.law.upenn.edu/library/ulc/ulc.htm>. The Official Site offers the
   Article 2B drafts in several file formats, among which the pagination is inconsistent. In this Article and
   throughout this issue of the California Law Review, page references are to the pages as they are numbered in
   the Acrobat PDF file format. Only the prefaces to the drafts are cited by page number; all other material is
   cited by section number. The draft of August 1, 1998, has no page numbers in its on-line versions, and
   therefore the preface of that draft is cited without page references. Ed.]

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   It is here that Article 2B of the Uniform Commercial Code comes to the rescue. The proposed model law
   addresses many of the questions on which traditional commercial contract law is silent, for instance, whether
   a digital signature constitutes adequate consent to a contract, n3 what warranties attach to digital products,
   n4 what choice-of-law rules apply in transactions over the Internet, n5 what rules govern the transferability
   of a license, and how notions of mitigation, consequential damages, releases, inspection, etc., operate in the
   context of digital products. n6 In sum, it provides some measure of certainty to electronic contracting.

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   n3. See U.C.C. 2B-113 (Draft, Mar. 1998).

   n4. See id. 2B-401-409.

   n5. See id. 2B-107.

   n6. See id. 2B-502, 608, 701-716.

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   Because Article 2B accommodates contracts over copyrightable subject matter, it is relevant to both the
   federal and state law planes of legal discourse. As discussed below, the symbiosis between federal
   copyright protection and state contract law is ancient, inevitable, and fully consonant with the purposes of
   copyright. In developing the law of contracts for the "digital era," Article 2B therefore represents a salutary
   update to the U.C.C. that can benefit both buyers and sellers of digital goods by providing clear rights and
   guidance in matters beyond the experience and imagination of the drafters of the current U.C.C. n7 Article 2B
   thus carries on the role that state contract law has traditionally occupied in shaping commerce in copyrighted
   works.

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   n7. Although fashioned for the needs of digital commerce, Article 2B theoretically allows proprietors of
   traditional copyrighted works (such as books) to "opt-in" to its framework as an alternative to the classic
   structure of Article 2. See U.C.C. 2B-103(c) (Draft, Mar. 1998). As will be discussed below, applying Article 2B
   to old-fashioned copyrighted works creates a potential for mischief.

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   But harmony is not the end of the symphony. n8 When examined in light of its potential impact on copyright
   law's "delicate balance," n9 Article 2B presents the specter of becoming an unwelcome meddler. On the one
   hand, Article 2B might erroneously be imagined to solve a fundamental problem that does not need solving -
   protecting the rights of copyright proprietors insofar as third parties exploit the intangible expression
   underlying their works. On the other hand, Article 2B ignores and potentially weakens the rights of copyright
   users. These two phenomena are interrelated.

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   n8. Part of the dissonance stems from Microsoft v. Harmony, 846 F. Supp. 208 (E.D.N.Y. 1994), discussed
   infra in Section II.B.

   n9. The metaphor of a delicate balance or equilibrium is widespread. As one court has articulated it: "The
   copyright law seeks to establish a delicate equilibrium. On the one hand, it affords protection to authors as an
   incentive to create, and, on the other, it must appropriately limit the extent of that protection so as to avoid
   the effects of monopolistic stagnation. In applying the federal act to new types of cases, courts must always
   keep this symmetry in mind." Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 696 (2d Cir. 1992). We
   will refer to this "delicate balance" often, tracing its genealogy through Supreme Court cases and to Chief
   Judge Crabb's opinion in ProCD, Inc. v. Zeidenberg, 908 F. Supp. 640 (W.D. Wis.), rev'd, 86 F.3d 1447 (7th Cir.
   1996), treated at length below.

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   As discussed below, n10 Article 2B solves a non-problem to the extent that it aspires to protect the exclusive
   rights of authors granted under the Copyright Act from improper uses of digital products by end users. The
   rights of copyright proprietors are already fully protected by the Copyright Act without the need for bilateral
   contracts, and thus a fortiori without the need for any provisions under the U.C.C. validating mass market
   contracts.

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   n10. See infra Part II.

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   Solving a non-problem for copyright proprietors may do no harm, but Article 2B's framework threatens to
   create new problems for copyright users. As further discussed below, n11 the copyright laws are designed
   to achieve a "delicate balance" between the rights of copyright proprietors and copyright users. This
   balance is disrupted when state law is permitted to enlarge the rights of copyright proprietors at the expense
   of copyright users. Although attempts at altering the delicate balance struck by copyright law should fail under
   the doctrine of preemption, a recent decision from the Seventh Circuit n12 illustrates that courts sometimes
   fail to appreciate the preemptive force of copyright, even when the subject contract is intended to defeat
   users' rights validated by on-point United States Supreme Court precedent.

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   n11. See infra Part IV.

   n12. ProCD, 86 F.3d 1447. See discussion infra Part III.

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   Article 2B purports to remain "neutral" on questions of federal preemption based on encroachments by contract
   on copyright doctrine. However, by making provisions of software licenses presumptively enforceable while
   providing no limitations on overreaching contract terms that proprietors may unilaterally decide to impose,
   Article 2B facilitates known practices designed to alter the "delicate balance" and places the costs of
   defending the proper bounds of copyright on copyright users. This result is neither desirable nor necessary.

   Article 2B can help maintain rather than undo the delicate balance that lies at the core of copyright by giving
   some guidance as to which types of constraints are at odds with copyright and therefore preempted. But
   absent appropriate corrections to its current instantiation, it is likely to result in the use of contracts - backed
   up by the force of the U.C.C. - systematically to displace the rights of users. It is important to appreciate
   that such resort to contract does not represent the election of contract protection in lieu of copyright.
   Instead, it represents the use of contract to distort copyright, grotesquely at times. Proprietors who might
   take advantage of Article 2B do not opt out of copyright protection; they enjoy all of its benefits plus all of
   the benefits that can be accorded by contracts diminishing the rights of users. We suggest, accordingly, that
   if Article 2B is to be enacted, it first be amended to evince greater sensitivity towards proscribing certain
   contracting practices that are inconsistent with sound copyright policy.

   This Article proceeds in four Parts. Part I reviews the existing relationship between federal copyright law and
   state contract doctrine. Part II argues that copyright law already provides adequate protection to copyright
   owners who distribute software, and that attempts by copyright owners to enlarge their rights by contract
   conflicts with copyright law's concern for the rights of users. Part III undertakes a critical discussion of the
   Seventh Circuit's decision in ProCD, which upheld a "shrinkwrap" license that extended contractual protection
   against copying to subject matter that the Supreme Court has already declared uncopyrightable. Finally, Part
   IV critiques the failure of Article 2B, under a guise of "neutrality," to take into account the rights of
   information users and the demands of federal law.

   I The Inevitable Coexistence of Copyright and Contract

   A. Transfer

   Copyright is, at heart, a creature of the Constitution and the Copyright Act. But ownership and exploitation of
   copyright are structured at every turn by contract. Unlike the monistic copyright system of German law, under
   which authors may never separate themselves from ownership of the indivisible whole, U.S. copyright law
   follows a regime of infinite divisibility. n13 The statute itself contemplates transfers in the nature of "an
   assignment, mortgage...or any other conveyance, alienation, or hypothecation of a copyright or of any of the
   exclusive rights comprised in a copyright...." n14

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   n13. Compare Adolf Dietz, Germany 4[2][a], in International Copyright Law and Practice (Melville B. Nimmer &
   Paul Edward Geller eds., 1998) with 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 10.03 (1998)
   [hereinafter Nimmer on Copyright]. See generally Thomas F. Cotter, Pragmatism, Economics and the Droit
   Moral, 76 N.C. L. Rev. 1, 8-10 (1997) (contrasting German monistic system with U.S. copyright). The Act also
   explicitly contemplates that the copyright owner may transfer the copyright bundle or any piece of it by "any
   means of conveyance." 17U.S.C. 201(d)(1) (1994). An exception to the general rule of alienability is the very
   limited rights of visual artists, conferred by a 1990 amendment. See 17U.S.C. 106A(e)(1) (1994). To this highly
   circumscribed extent, U.S. law resembles the French notion of inalienability in the moral rights sphere. See 3
   Nimmer on Copyright, supra note 13, 8D.01[A], 8D.06[D]. Yet even here it departs from the French template
   of imprescriptibility, by allowing waivers of moral rights. See 17U.S.C. 106A(e) (1994).

   n14. 17 U.S.C. 101 (1994).

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   One salient feature of the terms just quoted is the failure of the Copyright Act to define any of them. Given
   that the United States Code nowhere contains an established common law as to what constitutes a
   "mortgage," resort to state law to determine the nature of that device, as well as like hypothecations of
   ownership, appears inevitable.

   Imagine for a moment that Atalanta transfers ownership of her copyright to Busiris, who gives it to Cadmus,
   who in turn mortgages it to Dindyma Bank, which then forecloses and sells out to Erigone. In a worst-case
   scenario for Erigone, her ownership of the copyright could be subject to challenge on the grounds that
   Atalanta was a minor who may disaffirm the contract because it was not confirmed by the state court of her
   domicile; n15 that Busiris (who had previously been declared insane and placed under the control of a
   conservator appointed by the courts of the state in which he lived) was not bound because his legal guardian
   failed to sign the purported grant; that Cadmus neglected to perfect the mortgage in the manner
   required by his own state's law; and that Dindyma Bank had previously dissolved, thereby rendering its
   purported transfer nugatory. n16

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   n15. See Cal. Fam. Code 6750-6751 (West 1994). See also Baez v. Fantasy Records, Inc., 144 U.S.P.Q. 537
   (Cal. Super. Ct. 1964) (disaffirming contract by minor reaching her majority).

   n16. "What if there is no "proprietor' at the time of renewal, because the corporation in which copyright vests
   has become defunct? Under general principles, it would seem necessary to trace disposition of assets under
   state corporate law to locate the proprietor in that instance." 3 Nimmer on Copyright, supra note 13, 9.03
   n.6.1.

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   In each of those particulars, the battle is waged primarily under state law. n17 To take the case of an
   individual committed to an insane asylum, for example, it is difficult to find any governing federal law, and thus
   to resist wholesale descent into the minutiae of the subject state's ordinance. In the balance of the other
   instances, federal law likewise does not directly speak to the question of who holds the capacity to enter into
   a contract. Erigone therefore faces the prospect of lengthy explorations of state law in order to validate her
   federal copyright claims. The best she can hope for is the application not of the particular law of the state in
   which Atalanta, Busiris, Cadmus, and the rest chanced to live, but instead a general notion of common law as
   applied throughout the several states. n18 But even that victory does not invoke the application of federal
   norms; instead, it looks to an abstract notion of state law. n19

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   n17. Another oft-litigated issue in the copyright sphere arises when a party to a copyright contract attempts
   to rescind it, for non-performance or otherwise. The determination of whether the combined circumstances
   warrant rescission arises either under the law of the state in which the contract was executed (or the parties
   were located) or more broadly under the general state common law of contracts. See 3 Nimmer on Copyright,
   supra note 13, 10.15[A] (collecting cases).

   n18. See id. at 9.03 n.6.1 (citing Fleming v. Charles L. Harney Constr. Co., 177 F.2d 65, 70 (D.C. Cir. 1949)
   (construing Surplus Property Act of 1944 such that corporate "dissolution cannot be distinguished from the
   death of a natural person," and following general common law rather than rule of state of incorporation)).

   n19. Whether the subject law tracks that of an individual state or a more generalized notion of state law is of
   no moment to the discussion that follows. Nonetheless, it strikes us that copyright law tends to focus on the
   "brooding omnipresence" of common law, rather than on the particulars enacted in any given jurisdiction. See,
   e.g., Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) (determining status of "employee"
   under Copyright Act by reference to the factors set forth in the Restatement (Second) Of Agency). Cf. Erie
   R.R. Co. v. Tompkins, 304 U.S. 64 (1938) (rejecting federal "general law" as rule of decision in diversity cases).
 

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   B. Works for Hire

   As the above hypotheticals demonstrate, the symbiotic relationship between copyright and contract continues
   throughout the life of a copyright. Moreover, it can begin even before copyright birth, the moment an original
   work of authorship is fixed for the first time in a tangible medium of expression. n20 In this guise, it arises as a
   factor in defining who the "author" is and thus in determining the identity of the initial "copyright
   owner." n21 Ordinarily, the author is the efficient cause of parturition, that is, the human being(s) who gave
   birth to the work. The Act departs from the default rule, however, when a preexistent contract applies to
   certain categories of specially commissioned works "if the parties expressly agree in a written instrument
   signed by them that the work shall be considered a work made for hire." n22 Thus, both at gestation and
   throughout its life, a copyright is owned according to a complex scheme deriving in large part from state law.

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   n20. See 17 U.S.C. 102(a) (1994).

   n21. "Initial Ownership - Copyright in a work...vests initially in the author or authors of the work." 17U.S.C.
   201(a) (1994).

   n22. 17U.S.C. 101 (1994). In the Seventh Circuit, the contract must indeed be prenatal. See Schiller&
   Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 413 (7th Cir. 1992). In the Second Circuit, a more ameliorative
   rule prevails. See Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 559 (2d Cir. 1995) (citing with approval 1
   Nimmer on Copyright, supra note 13, 5.03[B][2][b]).

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   C. Sale, Rental, Lease

   But it is not solely the question of ownership over which state law governs. Copyright exploitation, too, can
   often turn on distinctions that equally derive from state laws. In this respect, we depart from the intangible
   essence of the copyrightable work and move to the tangible good in which it may be embodied. n23 Consider
   that copyright owners enjoy the exclusive right "to distribute copies or phonorecords of the copyrighted work
   to the public by sale or other transfer of ownership, or by rental, lease, or lending." n24 Moreover, one in
   possession of a lawfully made copy "is entitled, without the authority of the copyright owner, to sell or
   otherwise dispose of the possession of that copy...." n25 As was the case with respect to "mortgage" and the
   rest, neither the Copyright Act itself nor other applicable features of federal law define when a "sale" or
   "rental" or act of "lending" of a physical item has taken place. For these questions as well, resort to state law
   appears inevitable. n26

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   n23. See 17 U.S.C. 202 (1994).

   n24. 17 U.S.C. 106(3) (1994).

   n25. 17 U.S.C. 109(a) (1994). This provision - imprecisely labeled the "first sale" doctrine - plays a large role
   below. See infra Section III.B.

   n26. One case apparently holds that perfume with a copyrighted label, although imported from abroad, was in
   fact "sold" within the United States under the pertinent provision of the Uniform Commercial Code. See
   Cosmair, Inc. v. Dynamite Enters., Inc., 226 U.S.P.Q. 344, 347 (S.D. Fla. 1985). That case treats gray market
   importation, a subject that the Supreme Court addressed in Quality King Distributors, Inc. v. L'Anza Research
   International, Inc., 118 S. Ct. 1125 (1998).

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   In sum, federal copyright doctrine leaves to state law the vast bulk of issues concerning contracts affecting
   copyright. It follows that state contract law (and cognate doctrines arising under state law) determine to a
   great extent the destiny of a copyrighted work and the physical object in which it is embodied. Those state
   rules play a critical role in maintaining the "delicate equilibrium" between the rights of copyright holders
   to reap the rewards of their intellectual property and the rights of the public to unimpeded advancement of
   knowledge and expression.

   D. Contract Formation

   Consonant with the traditional interplay between state contract law and federal copyright law, the U.C.C. can
   help define the mechanics of contract law in the context of contemporary transactions. For example, Article
   2B creates rules to govern electronic contracting and provides that the fact that a contract is in electronic
   form does not alter or reduce its effect, validity, or enforceability. It gives binding weight to electronic
   signatures, and it sets forth rules for determining who shall be held responsible for electronic messages. n27 All
   of these factors may arise in the context of an electronic license of copyrightable subject matter - an
   electronic contract for distribution rights in a book or motion picture, for example - which parties modify by
   e-mail and sign using digital signatures. Because federal copyright law, standing alone, is silent as to whether
   such a contract is enforceable, the U.C.C. can usefully fill the doctrinal gap in this and like instances. Article
   2B therefore can provide important support to the goal of maintaining copyright's "delicate equilibrium" in the
   digital age.

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   n27. See U.C.C. 2B-113-116 (Draft, Mar. 1998).

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   E. Limits of Contract Rights

   Nonetheless, federal abdication in favor of determinations of contract principles under state law has its limits.
   In certain particulars, the Copyright Act itself sets forth some governing parameters applicable to contracts
   and other matters typically reserved to determination under state law. When those circumstances obtain,
   federal law controls, notwithstanding contrary state doctrines. n28

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   n28. For a lengthy discussion of copyright contracts in contrast to state law doctrines of community property,
   see generally David Nimmer, Copyright Ownership By the Marital Community: Evaluating Worth, 36 UCLA L. Rev.
   383 (1988).

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   One example is so pronounced as to have virtually escaped notice. Undoubtedly the most well-known aspect
   of Anglo-American contract law is its requirement of a quid pro quo - the doctrine of consideration. n29 It is
   doubtful that the law of any state in the union dispenses with that general requirement. n30 Were it applicable
   to the copyright sphere, that doctrine would invalidate grants of copyright ownership unrequited by
   the grantee. n31 Yet "notwithstanding that feature of state law, no consideration is necessary under federal
   law to effectuate a transfer of copyright ownership that does not purport to require consideration." n32
   (Nonetheless, one must acknowledge that few, if any, cases have tested the boundary of consideration-less
   copyright grants, presumably because grantees of valuable copyrights invariably recite the delivery of "$ 10
   and other good and valuable consideration" in order to escape serving as a test case. n33)

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   n29. Thus, A's promise to B to pay $ 1000 if A cannot run a marathon in under 5 hours is a nullity. But B's
   agreement to give A a peppercorn if A timely completes the marathon probably resuscitates the contract. See
   Restatement (Second) of Contracts 17 (1979).

   n30. Of course, exceptions exist under state law. Thus, A's promise to pay $ 1000 to the United Way without
   any return obligation is often enforceable under an exception to the doctrine of consideration for promises to
   make charitable contributions.

   n31. Recall that Busiris gave the copyright hypothesized above to Cadmus gratis. Were a requirement of
   consideration applicable to copyrights, an additional quiver would accrue to the bow of Erigone's enemies.

   n32. 3 Nimmer on Copyright, supra note 13, 10.03[A][8].

   n33. See, e.g., id. Form21-21.

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   The most prominent example of federal contract requirements trumping contrary state doctrine that has
   received treatment in published decisions is the Act's requirement that any transfer of copyright ownership
   n34 "is not valid unless an instrument of conveyance...is in writing and signed by the owner of the rights
   conveyed...." n35 Even if state law validates oral grants - attested by the grantor before the mythical bench
   of fifty bishops, for example - that law must bow to the superior force of the federal enactment. n36

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   n34. Note that such transfers definitionally exclude nonexclusive licenses under copyright. See 17U.S.C. 101
   (1994).

   n35. 17U.S.C. 204(a) (1994).

   n36. See, e.g., Valente-Kritzer Video v. Pinckney, 881 F.2d 772, 775-76 (9th Cir. 1989) (holding preempted
   claims for breach of oral contract and tortious breach of contract); Marshall v. New Kids On The Block
   Partnership, 780 F.Supp. 1005, 1009 (S.D.N.Y. 1991) (rejecting claim as one for breach of an oral contract
   rather than for infringement of the copyright orally transferred); Library Publications, Inc. v. Medical Econs.
   Co., 548 F.Supp. 1231, 1234 (E.D. Pa. 1982) (finding unenforceable oral agreement for transfer of copyright
   ownership), aff'd, 714 F.2d 123 (3d Cir. 1983).

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   Another example of the same phenomenon - though this one has gone unlitigated - arises under copyright's
   termination-of-transfers doctrine, which allows authors a "second bite of the apple" for works that they long
   ago sold, gave away, or otherwise alienated. n37 In particular, the Act itself provides with respect to
   transfers of copyright ownership that, following the lapse of a set period, n38 "termination of the grant may be
   effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make
   any future grant." n39 Accordingly, a contract not to exercise an author's termination rights may be
   fully operational under state law, yet the superior force of federal law nonetheless bars its enforcement,
   effectively rendering it a nullity. n40

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   n37. See 17 U.S.C. 203, 304(c) (1994). More technically, the Supreme Court has labeled the
   reversion-of-renewals doctrine as a "second chance" and, correlatively, the termination-of-transfers device
   here under consideration a "third opportunity" for authors to profit from works that they had long ago
   alienated. Stewart v. Abend, 495 U.S. 207, 220, 225 (1990).

   n38. In brief, grants effectuated before 1978 are subject to termination following 56 years of the work's
   copyright subsistence; grants effectuated thereafter are subject to termination 35 years after the work's
   publication. See generally 3 Nimmer on Copyright, supra note 13, 11.05.

   n39. 17 U.S.C. 203(a)(5), 304(c)(5) (1994).

   n40. See generally 3 Nimmer on Copyright, supra note 13, 11.07.

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   Much confusion arises in attempting to reconcile these strands. n41 As an example, consider the ruling that
   when Congress used the term "children" in the context of termination of pre-1978 transfers n42 it intended to
   adopt antecedent state family law definitions as to who qualifies for that label, n43 whereas when Congress
   used the same word in the same Act to apply to termination of post-1978 transfers, it intended to adopt a
   federal definition incorporated into the Copyright Act itself. n44 The court reached that result by attempting
   to follow Congress's will in enacting a given provision of the Copyright Act. n45 As we shall see, that
   desideratum furnishes the touchstone for proper analysis in the journey that follows.

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   n41. As the drafters of Article 2B comment, "The relationship between federal law and state contract law is
   complex." U.C.C. 2B-105 reporter's note 1 (Draft, Mar. 1998). In our opinion, even the Courts of Appeals have
   erred on both sides of the issue under discussion, that is, state contract law control over disposition of
   copyrights. The Ninth Circuit misconstrued Congress's will in holding doctrines of state contract law preempted
   in Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir. 1993), criticized in 3 Nimmer on Copyright, supra note 13,
   11.01[B]. The Second Circuit, by contrast, inappropriately failed to advert to Congress' will to allow even oral
   grants of nonexclusive licenses, see infra note 47, by disallowing them under state law in Grappo v. Alitalia
   Linee Aeree Italiane, S.p.A., 56 F.3d 427, 431-32 (2d Cir. 1995), criticized in 3 Nimmer on Copyright, supra
   note 13, 10.03[A][8].

   n42. On the termination-of-transfer doctrine, see the preceding paragraph and its footnotes.

   n43. The rationale here stems from DeSylva v. Ballentine, 351 U.S. 570 (1956), which looked to state family
   law in the reversion of renewal context. Yet even this Supreme Court ruling is not unlimited, as the Court
   indicated that applicable state law would not be followed to the extent that it defined children "in a way
   entirely strange to those familiar with its ordinary usage." Id. at581.

   n44. See Stone v. Williams, 970 F.2d 1043, 1064-65 (2d Cir. 1992), cert. denied, 508 U.S. 906 (1993),
   discussed in 3 Nimmer on Copyright, supra note 13, 11.03[A][2][a].

   n45. The court followed the logic that the provision applicable to pre-1978 grants was intended to continue
   prior law on the subject, which had been subject to the Supreme Court's gloss in DeSylva. By contrast, the
   provision applicable to grants entered on January1, 1978, and thereafter was created out of whole cloth; in
   this instance, Congress presumably wished to apply the definition of "children" that it incorporated into the
   same new enactment. See Stone, 970 F.2d at 1064-65.

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   II Contract Need Play No Role in Protecting Copyright Rights

   Though Article 2B, as noted above, can usefully serve a complementary role to copyright, there is one
   significant function for which Article 2B is not needed: to protect the copyright interests of copyright
   proprietors, especially in the context of mass market distribution of software, one of the paradigmatic
   transactions under Article 2B. Contrary to the claim that Article 2B is needed to protect copyright interests in
   that context, existing copyright law adequately protects those owners when they distribute
   copyrighted mass market software, even in a world in which shrinkwrap agreements are not deemed
   enforceable contracts. n46 That conclusion follows because the exclusive rights granted under the copyright
   laws effectively preclude use of computer software - to the extent the Constitution and Congress accord a
   monopolytherein - without the express or implied permission of the copyright owner.

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   n46. Other interests of the copyright owner, such as the right to a royalty stream, limitations of liability, and
   limitations of warranties, may, by contrast, require enforceable contracts for protection. It is precisely these
   other interests that Article 2B properly serves.

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   A. Enforceability of Unilateral License Terms

   When a copyright owner distributes its software, it is free to grant a license extending only to specified uses,
   while excluding others. Moreover, any such license does not require a bilateral contract. A simple, unilateral
   statement by the copyright owner of the scope of its license suffices. n47 In most cases, use beyond the
   scope of that license constitutes actionable copyright infringement under existing copyright law. n48 To the
   extent that any such use beyond the scope of the unilateral license is not copyright infringement - for
   instance, because it constitutes fair use under section 107 - state contract law cannot produce a different
   result.

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   n47. See 3 Nimmer on Copyright, supra note 13, 10.03[A] (citing cases). Indeed, even an oral statement may
   be sufficient to grant a nonexclusive license. See id.

   n48. See, e.g., S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1088 (9thCir. 1989) ("Copyright licenses are
   assumed to prohibit any use not authorized.").

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   Several hypotheticals illustrate the ability of publishers to protect their intellectual property rights when
   engaging in mass distribution of software. First, Procne picks up the latest copy of SuperSmart321, a nifty
   spreadsheet program, at CompUSA. She purchases the program without opening the box and takes it home.
   Unlike most software products, SuperSmart321 contains no license terms of any kind.

   In this hypothetical, existing copyright law permits Procne to do exactly what a typical publisher and typical
   buyer would contemplate: use the software on a single computer and make a backup copy. Because Procne
   purchased a copy of the software, she clearly falls within the ambit of the statutory section securing rights to
   those owners. n49 She thus is entitled to copy the software onto her computer's hard drive in order to run it,
   n50 as well as to make a tangible backup copy. n51 Any further copying of the software - and thus,
   effectively, use on any other computer system - constitutes copyright infringement unless excused,
   for instance as a fair use. n52 Thus, copyright law alone affords the publisher of SuperSmart321 ample power
   to prevent Procne from making or distributing improper copies of the software, or even duplicating the
   software on multiple machines in her home or office. No bilateral contract is necessary to protect the software
   publisher's rights.

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   n49. See 17 U.S.C. 117 (1994) ("It is not an infringement for the owner of a copy of a computer program to
   make...another copy or adaptation of that computer program...as an essential step in the utilization of the
   computer program in conjunction with a machine....").

   n50. See 17 U.S.C. 117(1) (1994).

   n51. See 17 U.S.C. 117(2) (1994).

   n52. See 17 U.S.C. 107 (1994).

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   Second, Pandion picks up the latest copy of SuperSmart321 by purchasing it via the Internet. He pays for it
   with a credit card and downloads it to the hard drive of his computer. Once again, the results will be
   effectively the same as above, even without a written license agreement. Pandion still owns the copy of the
   computer program on his hard drive and is authorized to use it (but not reproduce it except for backup
   purposes) pursuant to the statutory sections invoked above. n53

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   n53. See 17 U.S.C. 117 (1994). One could argue in this context that Pandion is not the "owner of a copy of a
   computer program" under section 117 because a "copy" under the Copyright Act is a material object in which a
   work is fixed and Pandion did not purchase a material object (the hard disk), but only the data comprising the
   computer program. In light of the fact that Pandion was authorized to download the data to his hard drive (or
   to another conventional storage medium such as a diskette), it is more reasonable to conclude that Pandion
   has purchased a copy of the program, that is, a tangible medium in which the work is embodied. See, e.g.,
   MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 518-519 (9th Cir. 1993). See infra Section II.B. But
   even accepting the proposition that what is purchased must meet all the requisites of a "copy" before
   downloading begins, Pandion would seem to have a powerful argument that, by virtue of purchasing the
   software on-line, he received an implied license to use what he paid for. See, e.g., Effects Assocs., Inc. v.
   Cohen, 908 F.2d 555, 558-59 (9th Cir. 1990) (implying license from delivery, without restriction, of special
   effects footage for use in film). In the absence of any terms to the contrary communicated at the time of the
   license, Pandion should have the right to use the software for its ordinary and intended purpose, that is, on a
   single computer. For an extended treatment, see David Nimmer, Brains and Other Paraphernalia of the Digital
   Age, 10 Harv. J.L. & Tech. 1 (1996) [hereinafter Nimmer, Brains].

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   Third, Itys purchases a "10 User Pack" of Virulator, a software package that locates all computer viruses on a
   user's hard drive, removes them and e-mails them to Iraq. He installs the software on the network server in his
   office. The envelope containing the CD-ROM, as well as the install screen, inform Itys that: "This software
   product is licensed for installation on a network server, to be accessed by no more than 10users
   simultaneously. All other rights are reserved."

   Under existing copyright law, the manufacturer's 10-user limitation is enforceable regardless of whether state
   law treats the above notice as part of a binding bilateral contract. n54 A copyright owner may grant a
   non-exclusive license by any words or conduct tending to show such a license. n55 Thus, by virtue of the
   above language, the publisher of Virulator has expanded Itys's right to use his copy on a single machine n56 to include making one copy on a server and up to nine other copies in the random access memory (RAM) of client computers. If Itys were to allow 20 users to access the software, the copies existing in the  RAM of machines 11-20 would be unlicensed and hence infringing. n57 The publisher thus has the lever it needs to preclude unlicensed use, without obtaining Itys's enforceable promise via the U.C.C. not to use the software on more machines than authorized.

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   n54. The U.C.C. drafters lean in the same direction. See U.C.C. 2B-111 reporter's notes (Draft, Mar. 1998)
   (restricting usage for consumers only enforceable under copyright law without any requirement for assent).

   n55. See 3 Nimmer on Copyright, supra note 13, 10.03[A].

   n56. That is, the default right that Itys would have in the absence of the subject language under 17 U.S.C.
   117.

   n57. See MAI, 991 F.2d 511 (stating that loading a copy of software into computer's RAM constitutes creation
   of a "copy" under the Copyright Act).

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   Fourth, after her company's IPO, Philomela decides that she has grown bored with life in the Silicon Valley,
   exercises her stock options and moves for a year to Tahiti (after thrashing Thrace). Before she moves, she
   posts an ad on the Internet offering to rent her copy of MegaCAD 3D, an elaborate $ 10,000 software
   package. Tereus has an eight-month project for which he desperately needs MegaCAD. He spots Philomela's
   ad and jumps at her offer. Tereus pays $ 1,000 for a year's use of the disks. Can the publisher of MegaCAD
   prevent this transaction?

   Under existing copyright law, Philomela may not rent or lease her copy of the software. n58 Similarly, Tereus is
   not entitled to use the software, as to do so would involve copying the software into the computer's RAM,
   which constitutes infringement in the absence of a license. n59 Thus, the publisher has a viable copyright
   infringement claim against Philomela and Tereus. An enforceable promise by Philomela not to rent her software
   is unnecessary here, too.

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   n58. See 17 U.S.C. 109(b)(1)(A) (1994).

   n59. See, e.g., MAI, 991 F.2d 511. Tereus cannot avail himself of the benefits of section 117 because he is
   not the "owner" of the copy he wishes to use, having simply rented it. See 17U.S.C. 202 (1994).

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   Fifth, Bacchus needs software to help him manage a fleet of trucks for his party-hearty business. Like all good
   small businessmen, Bacchus is cost-conscious. He finds a shareware package on the Internet, OINOS, which
   looks like it will do the trick. Bacchus downloads the OINOS software, reads the license, which provides that
   he may use the software for his own business purposes, but cannot modify or redistribute it. He pays the $
   19.95 registration fee and uses the software. Two years later, Bacchus realizes he needs an integrated
   system to link his truck management software with the rest of his business. He hires an independent software
   consultant to build such a system. Because he loves OINOS so much, Bacchus specifically asks the consultant
   to make his new system work just the same way. The consultant, who is convinced he is underpaid, takes a
   shortcut and includes a modified version of some of the OINOS code in the system he has been
   fermenting. Ultimately, the new system is so successful that Bacchus markets it to other trucking businesses.

   Can the author of OINOS complain? Of course. It does not matter whether the license agreement that
   accompanied the OINOS software is deemed an enforceable contract. Under existing copyright law, Bacchus
   had no right to have the OINOS software modified or incorporated into another system, thereby creating
   unauthorized derivative works. n60 Nor did he have the right to reproduce it for distribution to others, whether
   as part of a new system or separately. Article 2B adds nothing of substance to the rights of OINOS's owner.

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   n60. See 17 U.S.C. 106(2) (1994).

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   One could spin out numerous other hypotheticals involving typical modes of software distribution and reach
   the same result. At least for the modes of software distribution used today, copyright law provides all the
   teeth a publisher needs to control use and dissemination of her work. No ersatz shark via contractual promise
   is necessary to enforce these rights.

   The conclusion that contract is not needed to protect copyright interests further pertains when we consider
   other forms of distribution in the digital realm. Consider, for example, the Divx (Digital Video Express)
   technology for distribution of movies, which may be upon us in the very near future. Divx operates like a DVD
   disk containing a movie, except that the encryption software included on the Divx disk limits the user to
   playing the movie for a set number of days following the first time she plays the disk. n61 Once the initial
   viewing period expires, the owner of a Divx disk can obtain additional play time, or in some cases convert the
   disk to unlimited play, for a fee. n62 What if a studio selling movies on Divx disks feels it needs an enforceable
   promise by the buyer not to attempt to circumvent the lockout technology built into the software?

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   n61. See Digital Video Express, LP, About Divx Technology (visited Sept. 13, 1998)
   <http://www.divx.com/about divx divxtechnology.htm>.

   n62. See id.

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   Although one can appreciate the desire of the studio to seek any and all legal protections it can, the copyright
   laws of today (and certainly those of tomorrow) should prove more than adequate to protect the studio's
   interest, even absent the proposed contract. n63 Modifying the Divx software to defeat the lockout
   (assuming, for the sake of argument, it were technically possible) likely would involve either unauthorized
   reproduction of at least a portion of the copyrighted work, or the creation of an unauthorized derivative work.
   Either way, copyright infringement liability would result. Moreover, any doubt about the impropriety of
   defeating anti-copying technology will likely be laid to rest by pending federal legislation. n64 Thus, even on
   the so-called bleeding edge of technology, we find it difficult to see a need for state law protection of
   copyright rights in connection with the mass-market distribution of copyrighted works.

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   n63. To a certain extent, the best protection for the studio will come from the quality of its technology.
   Regardless of whether copyright law or contract law forms the basis of a claim, suing individual buyers of
   movies for making illicit copies on behalf of relatives or friends is unlikely to be economically worthwhile, even if
   one somehow concluded that it were sound business practice. Pursuing large-scale pirates (including those
   who sell devices or software to defeat copy protection) can be done as effectively, if not more, under the
   copyright laws as under contract. See Cable/Home Communication Corp. v. Network Prods., Inc., 902 F.2d 829
   (11th Cir. 1990).

   n64. See WIPO Copyright Treaties Implementation Act, H.R. 2281, 105th Cong. (1997). See generally David
   Nimmer, Aus der Neuen Welt, 63 Nw. U. L. Rev. (forthcoming 1998).

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   B. The Conflation of Licensing with Distribution

   The considerations set forth above assimilate software contracts to traditional means of copyright
   exploitation. The Article 2B posits "two distinct frameworks" in this regard. n65 It is worth reviewing the
   drafters' view of the matter at some length:

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   n65. U.C.C. art.2B Preface at7 (Draft, Mar. 1998).

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   The first [framework] involves use of a master copy and is common in the movie industry and in software
   contracts. Under this framework, a "distributor" receives access to a single master copy of the information
   work and a license to make and distribute additional copies or to make and publicly perform a copy. For
   example, Correl Software may license a distributor to allow its software to be loaded into the distributor's
   computers or video games. The contract will contain a number of terms. Correl may limit the distributor to no
   more than 1,000 to be distributed only in the computers and only if subject to an end user license. Since both
   the making copies of and the distribution of copies are within the scope of the owner's copyright, acts that go
   outside the contractual limitations are infringements as well as contractual breaches.

   An alternative methodology uses actual copies of the software. Here, for example, Quicken may license a
   distributor to distribute its accounting software in packages provided to the distributor by Quicken. A license is
   used in the software industry here, although some other industries may sell copies to the distributor for resale.
   In the license, the distributor may be allowed to distribute copies to retailers, provided that certain conditions
   are met, such as terms of payment, retention of the original packaging, and making the eventual end user
   distribution occur subject to an end user license. Since the distribution right is an exclusive right in copyright
   law, distributions outside the license infringe the copyright.

   In both sequences, the information product eventually reaches an end user. If it does so in an ordinary
   chain of distribution complying with the distribution licenses, the end user is in rightful possession of a copy. If
   the distribution involved sales of copies, nothing more is required. The end user is the owner of the copy.
   Copyright law spells out limited rights that flow to the owner of the copy (e.g., to distribute it, make a
   back-up if it is software, make some changes essential to use if [sic] its software). There is no direct
   contractual relationship between the copyright owner and the "end user."

   If, however, the copyright owner elected a licensing framework, given the structure of the transactions, the
   end user's right to "use" (e.g., copy) the software depends on the end user license. Typically, this is
   characterized as a license from the producer to the end user. It creates a direct contractual relationship that
   would not otherwise exist and which, in light of concepts of privity, might not be implied as between these
   parties. The contract, then, at this point, jumps past the chain of distribution and creates a direct link to the
   producer by the end user. It is also, in this sequence, the only contract that enables the end user to make
   copies of the software in its own machine. n66

   Given that, as the hypotheticals set forth in the previous subsection of this Article reveal, n67 copyright law
   itself regulates the activities of remote purchasers of software, why does Article 2B attempt to create "a
   direct link to the producer by the end user"? n68 The answer stems from the language italicized above.
   Through these various references, the draft posits a framework that falls short of a sale, constituting merely a
   license.

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   n66. Id. (emphases added, except for sixth emphasis ("these parties")).

   n67. See supra Section II.A.

   n68. Elsewhere, the draft goes even further: "The form establishes for the first time a relationship between
   the copyright owner and the end user that may be central to the end user's right to use the information."
   U.C.C. 2B-508 reporter's note 5 (Draft, Mar. 1998).

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   The first two paragraphs quoted above contrast "access to a single master copy" with the "alternative
   methodology [that] uses actual copies of the software." It is indeed possible to imagine access without making
   actual copies. For instance, instead of purchasing diskettes containing Microsoft Word 97 and loading it onto
   your hard drive, you could pay a monthly fee to log onto the Microsoft web site and create and edit
   documents there. At the end of each session, you would download your text and save it, but you would never
   obtain any copy of the computer program itself. That scenario indeed involves access without the alternative
   of obtaining actual copies. By contrast, if you do download Word 97 onto your hard drive, then you have
   already moved to the realm in which copyright law's first-sale doctrine applies. n69 This realm is
   entered, moreover, regardless of whether the label "license" applies to Microsoft's granting of rights in the
   copyright to the program.

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   n69. See 17 U.S.C. 109 (1994).

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   For these purposes, it is vital to differentiate between tangible and intangible property. n70 When a software
   publisher distributes its product, it certainly does not part with copyright ownership. n71 Instead, the only
   matter under examination is whether it has parted with ownership of the physical media incorporating that
   software. Article 2B evidently takes the view that a status short of sale exists - which it calls "licensing" -
   whereby end users nonetheless acquire full dominion over the tangible property that comes into their
   safekeeping.

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   n70. See 17 U.S.C. 202 (1994).

   n71. Only to the extent that the publisher assigns the copyright or exclusively licenses it (or engages in other
   hypothecations, such as mortgages) does a transfer take place. In a typical mass market situation, no such
   transfer of copyright interests has occurred.

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   One line of cases cited by the drafters of Article 2B apparently vindicates the existence of this type of
   "licensing" framework. It is exemplified by Microsoft Corp. v. Harmony Computers & Electronics, Inc., n72 which
   arose over the distribution of Microsoft's MS-DOS and Windows software. The facts in the case are unclear. It
   may be that some of the software at issue in the case was pirated. To that extent, the subject diskettes
   were clearly unauthorized, outside the safe harbor of the first-sale doctrine, n73 and thus rightfully subject to
   seizure and suppression. n74 On the other hand, the opinion can also be read to arise from a factual posture in
   which Microsoft produced copies of Windows software, which it then distributed to Original Equipment
   Manufacturers (OEMs). The OEMs then disposed of the copies in their possession, as they were entitled to do
   under the first-sale doctrine. To the extent that the case implicated the first scenario, it is uninteresting -
   counterfeit products are clearly not entitled to further distribution. But the second scenario is evidently the
   basis for the Article 2B drafters' citation to the case. n75 It is accordingly necessary to evaluate it from that
   standpoint.

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   n72. 846 F.Supp. 208 (E.D.N.Y. 1994), cited in U.C.C. 2B-508 reporter's note 5 (Draft, Mar. 1998).

   n73. See 17 U.S.C. 109 (1994) (limiting protection to copies "lawfully made under this title").

   n74. See Harmony, 846 F. Supp. at212. An additional problem for the defense in that case was an inability to
   trace its precise distributions back to initial productions by Microsoft. See id. Given that the request was for a
   preliminary injunction, it is not surprising that the factual record before the court at that time was sparse.

   n75. See U.C.C. 2B-508 reporter's note 2 (Draft, Mar. 1998).

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   Microsoft v. Harmony rejected the defendants' first-sale defense on the basis that "Microsoft only licenses and
   does not sell its Products." n76 What does that holding mean? To appreciate its import, the buzzwords
   "licenses" and "Products" must be unscrambled.

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   n76. 846 F.Supp. at213.

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   License of tangible medium. If the underlying facts were that Microsoft leased diskettes or CD-ROMs to
   end users and sent its agent to collect those physical media at a time specified in the lease, then no sale of
   those physical products occurred. Under those assumed facts, Microsoft had not parted with possession of a
   physical copy. On that basis, no sale occurred and copyright's first-sale doctrine does not come into play. n77
   That is one possible sense in which Microsoft may have "licensed" its "Product."

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   n77. See 17 U.S.C. 109 (1994). Note that the statute itself does not actually require a "sale" for the section's
   protections to be triggered; instead it applies to all "owners" of lawfully made copies.

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   License of copyrighted work embodied in tangible medium. By contrast, if the underlying facts were that
   Microsoft issued only a license to its MS-DOS and Windows products, but did so through the sale or other
   permanent disposition of tangible items embodying those products, then the first-sale implications are wholly
   different. Imagine, for example, that Microsoft gave OEMs diskettes with the intent that they would be
   distributed to end users who could discard the diskettes in the trash or erase and reuse them n78 - so long as
   the users did not reproduce the subject software. n79 Under this latter scenario, a sale of the physical
   medium has occurred, and its purchaser is clothed under the Copyright Act with the rights belonging to rightful
   owners of physical property, subject to all of the obligations under the Act that are reserved to Microsoft of
   exercising copyright dominion. This is the second sense in which Microsoft may be said to "license" its
   "Product."

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   n78. See Nimmer, Brains, supra note 53, at 22.

   n79. An exception to the copyright owner's exclusive reproduction right of course is coterminous with the
   rights secured to users to actually exploit the computer program, guaranteed to them under 17U.S.C. 117.

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   These two paradigms are illustrated by the evolution of motion-picture exploitation. Film owners have the
   option not to sell their works, but only to "license" them. For decades, the motion-picture studios followed
   exactly that course, jealously guarding ownership of the celluloid prints and only renting them to theaters for
   exhibition, retrieving the physical stock at the end of the theatrical run. n80 That course of action matches
   the first set of facts hypothesized above. Alternatively, motion-picture studios also have the option of
   distributing tangible copies of their films - as they have done since the advent of the videotape era. n81 That
   conduct from the 1980s to the present matches the second scenario.

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   n80. In the later era of television syndication, film proprietors adopted the practice of "bicycling" film prints
   from one television station to another, again to preserve strict control over the physical stock. See National
   Broad. Co. v. Sonneborn, 870 F.2d 40, 51 (2d Cir. 1989).

   n81. See 2 Nimmer On Copyright, supra note 13, 8B.01[B].

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   Software publishers likewise enjoy the same rights. They can engage solely in rental or lease of physical
   media, mandating return of the subject tangible items at the end of the term. Or they can incorporate
   their software onto physical items that they then release from their control, setting them into the stream of
   commerce. In the latter instance, the end user, while admittedly a licensee of the copyright, is not a licensee
   of the diskette or CD-ROM in her possession. Instead, she is the owner of those physical media containing
   licensed works. As such, she is clothed with full rights under the first-sale doctrine. No innovation in software
   distribution so far has forced reevaluation of the traditional paradigm.

   Which circumstance actually obtained in Microsoft v. Harmony, the exemplar of the "licensing" paradigm?
   Sadly, the opinion fails to clarify the matter, and that inability to distinguish between differing paradigms is
   only too typical. n82 Nonetheless, lack of clarity does not create a new "licensing" paradigm. Instead, if there
   were a bona fide lease of the physical goods, then one legal regime pertained; if Microsoft actually sold or
   otherwise permanently disposed of those physical goods, retaining full copyright ownership in itself, then
   another legal regime governed. Current copyright law does not recognize any regime of "licensing" n83 that
   stands intermediate between those two possibilities. n84

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   n82. Other examples are Microsoft Corp. v. Gray Computer, 910 F.Supp. 1077, 1084 (D.Md. 1995) and Triad
   Systems. Corp. v. Southeastern Express Co., 64 F.3d 1330, 1333 (9th Cir. 1995). See generally 2 Nimmer on
   Copyright, supra note 13, 8.12[B][1]. See also Nimmer, Brains, supra note 53, at 21-25 (discussing MAI v.
   Peak, 991 F.2d 511).

   n83. In Quality King Distributors, Inc. v. L'Anza Research International, Inc., 118 S.Ct. 1125 (1998), the
   Supreme Court distinguishes between the ""owner' of a lawfully made copy" and "any nonowner such as a
   bailee, a licensee, a consignee, or one whose possession of the copy was unlawful." 118 S.Ct. at 1131.
   Standing by itself, that dictum cannot illuminate who, in the Court's mind, deserves the status of "licensee,"
   although its juxtaposition with "a bailee [and] a consignee" hints that the Court views "a licensee" in this
   context as one who has not obtained ownership of the physical product, corresponding to the category
   posited above of "license of tangible medium." We thus must revert to the potential constructions of that term
   set forth in the text.

   n84. It is instructive to undertake some archaeological excavation into the myth that a separate "licensing"
   paradigm exists. One student commentator maintains that "if the software is only licensed, then the software
   developer may prevent the user from transferring ownership in a copy to a third party." Ira V. Heffen, Note,
   Copyleft: Licensing Collaborative Works in the Digital Age, 49 Stan. L. Rev. 1487, 1499 (1997). As support, the
   Note cites the current case of Microsoft v. Harmony and traces its genealogy back to a handbook published by
   the Practicing Law Institute. See id. at 1494 n.37 (citing William H. Neukom & Robert W. Gomulkiewicz,
   Licensing Rights to Computer Software, in Technology Licensing and Litigation 1993, at 778 (PLI Patents,
   Copyrights, Trademarks & Literary Property Course Handbook Series No. G4-3897, 1993), available in
   WESTLAW, 354 PLI/Pat 775). The authors of that PLI handbook serve as Senior Vice President for Law and
   Corporate Affairs and Senior Corporate Attorney, respectively, with Microsoft Corporation. They explain "that
   software publishers license rather than sell software in order to negate the doctrine of first sale...." Id. One
   must congratulate their employer on realizing, in Microsoft v. Harmony, its goal - conceded with admirable
   candor - of voiding copyright's first-sale doctrine. Nonetheless, for the reasons set forth in the text, the
   statute itself does not permit that result, to the extent that the underlying essence of the transaction results
   in a user obtaining ownership of the physical product containing the copyrightable expression.

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   Nonetheless, an innovation might be said to be occurring through Internet distribution. Are the old
   barriers breaking down such that U.C.C. Article 2B must come to the rescue of a tottering copyright system?
   We answer that question, too, in the negative. As the foregoing example of Pandion reveals, n85 purchases
   over the Internet do not suffer from a fatal lack of privity between software owner and end user which
   requires legal redress. Instead, copyright law itself governs the usages to which Pandion may put the product
   that he purchased over the Internet.

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   n85. See supra Section II.A.

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   Indeed, it is possible to go further here. Someone like Pandion who purchases SuperSmart321 as embodied in
   CD-ROM form has unambiguously acquired the right to pass the CD-ROM on to a friend. Does a parity of
   reasoning indicate that Pandion himself likewise has the right to sell his computer when he wishes to upgrade
   his whole system, even if the hard drive thereby transferred contains a copy of SuperSmart321 that he
   purchased over the Internet?

   Now the pedal comes down to the metal: Can Pandion keep his computer, deferring upgrades to a later day,
   but nonetheless pass along solely SuperSmart321 (by transferring the files to a friend and deleting them from
   his own hard drive, let us say)? There are two possible answers to this question:

   Yes. Under this rationale, Pandion can take advantage of a "digital first-sale defense." n86 Pandion, by this
   logic, is as much an owner of the "copy" purchased over the Internet as he would be of the CD-ROM. Granted,
   the copy in this instance cannot be as conveniently hefted and hoisted aloft, but the mere fact of its
   dispersion over manifold sectors of the hard drive does not detract from its status as a material object in
   which the subject software is fixed and from which it can be retrieved. n87

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   n86. Nimmer, Brains, supra note 53, at 9, 33.

   n87. See 17 U.S.C. 101 (1994) (defining "copy"); MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511,
   518 (9th Cir. 1993) (stating that "loading of copyrighted software into RAM creates a "copy' of that software"
   under the copyright laws).

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   No. An alternative view is that Internet distribution is different. No tangible copy has been released, because
   there is no discrete "material object" of the type invoked above that contains SuperSmart321. The
   ever-shifting sectors and buffers where the work flits and dances fail to qualify as either "material" or an
   "object" under the statutory language.

   The latter view - that Internet distribution is different because it does not result in a "copy" - must be
   rejected as implausible. For were it correct that the recipient of an Internet instantiation does not obtain a
   "copy," Pandion would be able to distribute that instantiation freely over the Internet to thousands of
   remote recipients without infringing the copyright in SuperSmart 321. n88 Such a construction would be
   disastrous for copyright owners, and should not be viewed as implementing Congress's intent.

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   n88. See 17 U.S.C. 106(1), (3) (1994) (limiting copyright owner's rights to reproduction and distribution of
   "copies").

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   It is not necessary, however, to resolve whether Internet distribution results in a "copy" to test the
   adaptability of extant copyright law to new technologies. Under the "yes" view, Pandion may dispose of his
   volatile "copy" under the first-sale doctrine; under the "no" view, he cannot. Under the former view, Internet
   sales of software are assimilated to current methods of film exploitation via videocassettes, laser discs, DVD,
   and the rest (that is, a first sale arises), whereas under the latter view, such sales are assimilated to
   motion-picture distribution in the pre-videotape era (that is, there was no first sale). In either event, no new
   paradigm is required. n89

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   n89. See Nimmer, Brains, supra note 53, at 11.

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   In sum, the new paradigm of "licensing" instead of sales, on the one hand, and lending, on the other hand,
   collapses. For that reason, no new conceptual breakthrough via U.C.C. Article 2B is required.

   III The Limits on Contract via the Preemptive Force of Copyright

   Our discussion in Part I demonstrates that state contract law acts as a necessary complement to the
   Copyright Act by delineating the basic mechanics of contract formation, performance, and interpretation.
   Those salutary goals can find further expression in Article 2B. The analysis in Part II demonstrates that state
   contract law is not needed to protect the copyright interests of copyright proprietors. Those interests are
   safeguarded by the Copyright Act itself. What remains to be discussed are the ways in which state contract
   law can improperly meddle with the copyright laws by altering the copyright laws in favor of proprietors at the
   expense of users. The phenomenon of attempted contractual displacement of copyright, and the limits of
   contract in that regard, arises in the doctrinal context of preemption.

   A. General Preemption Notions

   Copyright law and contract law not only clash overtly but may clash covertly to the extent that they pursue
   different implicit purposes and objectives. When conflicts occur, preemption principles force state contract law
   to yield. The source of copyright's preemptive power is the United States Constitution. To the extent that any
   state law "stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress," n90 the Supremacy Clause mandates that the law of Congress reign supreme. n91

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   n90. Hines v. Davidowitz, 312 U.S. 52, 67 (1941).

   n91. Constitutional preemption of a competing state law regime was established in the first copyright case to
   go before the Supreme Court. See Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834) (holding federal copyright
   law preempts state common law protection for published works).

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   Some cases describe preemption as the upshot of a clash between state and federal law in which state law is
   vanquished. n92 Other cases have enunciated even stricter principles according to which federal law does not
   tolerate parallel state regimes. n93 As the Supreme Court put it in its most recent pronouncement on the
   subject of parallel regimes of federal and state intellectual property protection, "The offer of federal protection
   from competitive exploitation of intellectual property would be rendered meaningless in a world where
   substantially similar state law protections were readily available." n94

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   n92. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974) ("If the scheme of protection developed
   by [a state] ... "clashes with the objectives of the federal ... laws' then the state law must fall." (citation
   omitted)).

   n93. See, e.g., Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 237 (1964) ("When an article is
   unprotected by a patent or a copyright, state law may not forbid others to copy that article. To forbid
   copying would interfere with the federal policy, found in Art.I, 8, cl.8, of the Constitution and in the
   implementing federal statutes, of allowing free access to copy whatever the federal patent and copyright laws
   leave in the public domain.")

   n94. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 151 (1989).

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   On the other hand, in one case predating the adoption of the current Act, the Supreme Court allowed greater
   tolerance for state schemes covering the same subject matter as copyright. In particular, Goldstein v.
   California n95 held that the states retain concurrent power to afford copyright protection to the works of
   authors as long as such protection does not conflict with federal law. Nonetheless, state laws enacted
   pursuant to such concurrent power can, of course, be subject to preemption by federal statute.

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   n95. 412 U.S. 546, 570 (1973).

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   When enacting section 301 of the current Act, Congress took precisely that action of preempting concurrent
   state law in the copyright domain. Unlike the parallel federal and state tracks that previously applied to the
   copyright realm, section 301 federalizes much of the domain of protection for copyrightable expression. n96 By
   reason of that explicit federal preemption, states' concurrent copyright powers lack almost all practical
   significance. n97

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   n96. For certain residual matters that the states may still regulate, such as unfixed works and phonorecords
   pre-dating February15, 1972, see 1 Nimmer on Copyright, supra note 13, 2.02.

   n97. Goldstein held that state law is not preempted if "Congress has drawn no balance; rather, it has left the
   area unattended...." 412 U.S. at 570. As a practical matter it may often be hard, if not impossible, to
   distinguish benign from conscious neglect, that is, to know if Congress has "left the area unattended," or
   whether Congress affirmatively decided that federal protection is not available.

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   B. A Case Study in the Contract/Copyright Clash: ProCD v. Zeidenberg

   1. A Twist on Feist

   In ProCD, Inc. v. Zeidenberg, n98 plaintiff spent millions of dollars to produce a massive "telephone book" of
   nationwide scope. Because the "book" contained almost one hundred million listings, plaintiff released it on
   CD-ROM with copyrighted search software designed to navigate through the mass of information. The CD-ROM
   was placed in a box that stated that the software came with restrictions listed in an enclosed license. The
   license was encoded on the CD-ROM discs, printed in the manual, and appeared on a user's screen every time
   the software ran. It expressly provided that the end user "will not make the [search] Software or the
   [telephone] Listings in whole or in part available to any other user in any networked or time-shared
   environment, or transfer the Listings in whole or in part to any computer other than the computer used to
   access the Listings." n99

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   n98. 908 F. Supp. 640 (W.D. Wis.), rev'd, 86 F.3d 1447 (7th Cir. 1996).

   n99. ProCD, 908 F. Supp. at645.

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   When the matter under discussion combines listing from the white pages of the telephone book and allegations
   of copyright infringement, the Supreme Court's landmark holding in Feist Publications, Inc. v. Rural Telephone
   Service Co. springs immediately to mind. n100 If that unanimous decision made anything clear, it is that not
   even a massive expenditure of funds to compile phone listings can render them copyrightable. Instead, they
   repose in the public domain - both as a matter of statutory construction and of constitutional necessity.
   Relying on Feist, defendants in ProCD copied all the listings off the plaintiff's CD-ROMs, composed their own
   software to access the names and addresses, and went into business in competition with plaintiff by making all
   the listings available for search on an Internet web page.

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   n100. 499 U.S. 340 (1991).

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   The plaintiff responded by bringing suit. Barred by Feist from bringing a copyright claim against the copying of
   telephone listings, plaintiffs sought redress against defendants' constitutionally privileged copying by alleging
   breach of contract and misappropriation.

   2. Issues State and Federal

   On the latter cause of action, the district court concluded that "because plaintiff's misappropriation claim is
   not qualitatively different from a copyright infringement claim, the underlying rights plaintiff seeks to vindicate
   are equivalent to federal rights and are preempted by the Copyright Act." n101 In reference to the contract
   issue, the district court noted that most commentators disfavor rights asserted under shrinkwrap
   licenses, given users' inability to bargain over precise terms. More fundamentally, those licenses "pose
   important questions about the extent to which individual contract provisions can supplement or expand federal
   copyright protection." n102 The district court accordingly concluded that section 301 preempted the contract
   claim. As Chief Judge Crabb held, any other ruling would "alter the "delicate balance' of copyright law" and,
   more particularly, constitute an impermissible end-run around Feist. n103

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   n101. ProCD, 908 F.Supp. at661.

   n102. Id. at650.

   n103. Id. at658.

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   This solicitude for "delicate balance" is not an aberration. As the Supreme Court itself has noted,
 
 

   It is Congress that has been assigned the task of defining the scope of the limited monopoly that should be
   granted to authors or to inventors.... This task involves a difficult balance between the interests of authors
   and inventors in the control and exploitation of their writings and discoveries on the one hand, and society's
   competing interest in the free flow of ideas, information, and commerce on the other hand.... n104

   This ventilation of the contract issue in the context of copyright poses two analytically separate issues. n105
   The first question is whether, as a matter of contract law, the shrinkwrap license unilaterally imposed by the
   manufacturer constitutes a binding agreement. That first question implicates construction of state law,
   namely, the Uniform Commercial Code as implemented into Wisconsin law. Assuming an affirmative answer, the
   second question is whether that contract can govern in the copyright context. This second question arises
   under federal law, as a matter of preemption via the statute or the Constitution.

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   n104. Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984); accord Twentieth Century Music
   Corp. v. Aiken, 422 U.S. 151, 156 (1975) ("The limited scope of the copyright holder's statutory monopoly, like
   the limited copyright duration required by the Constitution, reflect a balance of competing claims upon the
   public interest." (citation omitted)).

   n105. For a valuable untangling of the two strands implicated here, see MaureenA. O'Rourke, Copyright
   Preemption After the ProCD Case: A Market-Based Approach, 12 Berkeley Tech. L.J. 53 (1997).

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   The district court resolved both matters adversely to ProCD, Inc. In reversing, the Seventh Circuit reached
   the contrary conclusion on both scores. n106 To isolate the preemption issue posed by this case, n107 we
   assume for current purposes that the subject contract is either enforceable under the U.C.C. as
   currently drafted n108 or that it would be enforceable under Article 2B. The question thereby framed is
   whether ProCD, Inc.'s contract restrictions on copying can stand consistent with federal norms. This
   preemption inquiry itself occupies two levels, statutory and constitutional.

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   n106. There is no need for the two issues to march in lockstep. Theoretically, one could determine that
   plaintiff has the better argument under state contract law as implemented through the U.C.C., but that
   defendant is correct in urging that the Copyright Act preempts the U.C.C. construction. See id.

   n107. See infra Part II.C.

   n108. One commentator's exhaustive analysis reaches this conclusion. See O'Rourke, supra note 105. In any
   event, even if the current U.C.C. inclined in the other direction, the U.C.C., as amended by Article 2B, would
   unambiguously mandate this result, thus necessitating the inquiry into preemption vel non. See infra Section
   IV.B.

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   3. A Step Back into History

   Before proceeding to a full-scale exploration of the issue posed in ProCD of whether copyright law preempts
   application of the U.C.C. in this arena, it is worthwhile to ponder precursor scenarios. ProCD, Inc. was far from
   the first copyright owner to attempt to magnify its rights via contract. Indeed, it is almost commonplace in the
   history of copyright jurisprudence that when new technology establishes products or media considered
   incapable of being protected, copyright owners seek self-help through the unilateral declaration of expanded
   rights via purported contractual limitations.

   Consider the diminution of sheet music sales and the advent of sound recordings played over the radio. n109
   Given the lack of a public performance right in those sound recordings as a matter of law, n110 RCA decided to
   cure the law's lacunae by affixing the following language to its products:

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   n109. "Until the phonographic record made possible the preservation and reproduction of sound, all audible
   renditions were of necessity fugitive.... Of late, however, the power to reproduce the exact quality and
   sequence of sounds has become possible, and the right to do so, exceedingly valuable.... Hence this action."
   RCA Mfg. Co. v. Whiteman, 114 F.2d 86, 88 (2d Cir. 1940).

   n110. Sound recordings enjoyed no federal protection until February15, 1972. Even since that time, federal
   copyright for sound recordings has included no public performance right in one narrow particular. See 2 Nimmer
   on Copyright, supra note 13, 8.21 (discussing Digital Performance Right in Sound Recordings Act of 1995).

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   Only For Non-Commercial Use on Phonographs in Homes. Mfr.& Original Purchaser Have Agreed This Record
   Shall Not Be Resold Or Used For Any Other Purpose. See Detailed Notice on Envelope. n111

   When the purchaser n112 of the records ignored that "shrinkwrap" contract - thus anticipating Zeidenberg's
   conduct by a half-century - by broadcasting them for profit over the air, the manufacturer responded
   by filing suit. No less an authority than Learned Hand summarily rebuffed the claim. n113

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   n111. RCA, 114 F.2d at 87.

   n112. Of course, precedents are rarely pristine. In RCA, it actually was not the direct purchaser from RCA who
   subsequently played the records over the air; instead, there was a middleman. But the facts in this case were
   such that "it may be assumed that [the defendant] is charged with notice of the legends on the records, and
   with the contract of [the middleman], and that it broadcasts them on its radio system in disregard of both."
   Id. at 87. Accordingly, the facts of this case do not correspond to someone who just happened to find the
   subject product on the street. See ProCD, 86 F.3d at1454 (acknowledging that subject contract would have
   no power over that individual in the street who utterly lacked privity).

   n113. See 114 F.2d. at 88 ("The records themselves could not be clogged with a servitude.").

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   One could reach back even further and likewise find the same rejection of copyright proprietors' attempts to
   tilt the "delicate balance" in their favor. In 1908 the Supreme Court enunciated the "first sale" n114 doctrine
   when it refused to enforce a book publisher's proto-shrinkwrap license barring any retail sale of the books
   there at issue for a price less than $ 1.00. n115 Even earlier than that, a lower court had likewise refused to
   enforce use restrictions placed on the inside cover of a book. n116

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   n114. See 17 U.S.C. 109 (1994).

   n115. See Bobbs-Merrill Co v. Straus, 210 U.S. 339, 350 (1908). The continued vitality of the Bobbs-Merrill
   case emerges tacitly from its acknowledgment in the Supreme Court's recent unanimous decisions concerning
   the importation of gray-market goods. See Quality King Distribs. Inc. v. L'Anza Research Int'l, Inc., 118 S. Ct.
   1125 (1998). Note that RCA v. Whiteman likewise cites back to Bobbs-Merrill. See 114 F.2d at 88. It should be
   noted that in Bobbs-Merrill, the Supreme Court stated, "In our view the copyright statutes, while protecting
   the owner of the copyright in his right to multiply and sell his production, do not create the right to impose, by
   notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail by future
   purchasers, with whom there is no privity of contract." 210 U.S. at 350 (emphasis added). To the extent that
   such absence of privity is viewed as necessary to the holding of Bobbs-Merrill, then U.C.C. Article 2B's
   creation of "a direct contractual relationship" between copyright owner and end user serves as a subterfuge to
   undermine the first-sale doctrine, notwithstanding that Congress has labeled it "a basic tenet of our
   intellectual property law." H.R. Rep. No. 98-781 at 23 (1984); see supra note 84.

   n116. Authors& Newspapers Ass'n v. O'Gorman Co., 147 F. 616 (D.R.I. 1906).

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   With that history in mind, ProCD, Inc. v. Zeidenberg is not novel. Earlier actors throughout the twentieth
   century had similarly attempted to magnify their rights through use of contract. The novelty of ProCD thus lies
   not in the use of that device, but instead in the fact that the Seventh Circuit was the first court that did not
   dismiss as ineffectual a copyright owner's purported recalibration of the "delicate balance."

   C. Preemption Analysis of ProCD n117

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   n117. The discussion in this Section derives from the criticism of the Seventh Circuit's ProCD opinion in Release
   44 to Nimmer on Copyright, supra note 13. © 1998 by Matthew Bender& Co., Inc. Reprinted with permission.

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   1. section 301

   As already noted, the district court concluded that a ruling in favor of ProCD, Inc., would subvert Feist;
   indeed, there can be little doubt that plaintiff crafted its shrinkwrap with that precise goal in mind. The court's
   invocation of a subversive assault on a recent on-point Supreme Court precedent should have brought to mind
   general conflict pre-emption under the Supremacy Clause. n118 Yet although its reference to
   copyright's "delicate balance" adverts to general preemption under the Supremacy Clause, the district court
   ultimately failed to contemplate preemption on that non-statutory basis. Instead, Chief Judge Crabb grounded
   her analysis entirely on the narrower statutory grounds for preemption under section 301.

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   n118. See supra Section III.A.

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   section 301 preempts state-created legal or equitable rights, whether based upon common law or statute,
   under the following conditions: (1) the state law creates "legal or equitable rights that are equivalent to any
   of the exclusive rights within the general scope of copyright as specified by section 106" and, (2) such rights
   under such state law may be claimed in "works of authorship that are fixed in a tangible medium of expression
   and come within the subject matter of copyright... whether created before or after [January1, 1978] and
   whether published or unpublished...." n119 Thus, two elements must coalesce in order to effectuate section
   301 preemption, the first relating to the nature of the rights granted under state law, the second to the
   nature of the work in which such rights may be claimed.

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   n119. 17U.S.C. 301 (1994).

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   The first element was the one at issue in this case. n120 It is triggered if the state-created act is infringed
   merely by engaging in one of the exclusive rights of authors under the Copyright Act - such as the right to
   reproduce. If, however, in addition to, or instead of, amounting to one of the exclusive rights of authors under
   the Copyright Act, a qualitatively different element is required, then the right does not lie "within the general
   scope of copyright," and there is no preemption. This is known as the "extra element" test. n121

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   n120. The other requisite ingredient for preemption under section 301, as just noted, is that the regulated
   matter must fall "within the subject matter of copyright." 17U.S.C. 301(a) (1994). On that latter point, the
   Seventh Circuit agreed with the district court that the telephone listings at issue fell within that subject
   matter. See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1453 (7th Cir. 1996).

   n121. See, e.g., Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 659 (4th Cir. 1993).

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   Reported cases confronting alleged copyright preemption under section 301 of contract causes of action have
   almost uniformly rebuffed the preemption claim. That doctrinal result is as it should be: the vast majority of
   copyright contracts easily withstand muster under section 301 because the breach alleged amounts to more
   than reproduction, distribution, etc., of a copyrighted work. In other words, the typical contract case satisfies
   the "extra element" test. The rub arises in ProCD in that plaintiff there drafted a contract that was exceptional
   when contrasted with that vast majority.

   The district court in ProCD concluded that efforts to enforce the contract there at issue were precisely
   congruent with a copyright claim (and therefore, implicitly, failed the "extra element" test). But in an
   inexplicable move that then undermined the basis for its own ruling, the court viewed itself as disagreeing with
   a trinity of appellate decisions that had found particular contract claims not preempted: the Eighth Circuit's
   ruling in National Car Rental System, Inc. v. Computer Associates International, Inc., n122 the Fifth Circuit's
   ruling in Taquino v. Teledyne Monarch Rubber, n123 and the Fourth Circuit's ruling in Acorn Structures, Inc. v.
   Swantz. n124 The district court in ProCD stated, "To the extent that National Car Rental, Taquino,...and Acorn
   support the proposition that a copyright infringement claim is not equivalent to a contract claim merely
   because the contract claim requires a plaintiff to show the additional element of breach, I disagree
   respectfully with their conclusions." n125

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   n122. 991 F.2d 426, 433 (8th Cir. 1993).

   n123. 893 F.2d 1488, 1501 (5th Cir. 1990).

   n124. 846 F.2d 923, 926 (4th Cir. 1988).

   n125. 908 F. Supp. 640, 658 (W.D. Wis.), rev'd, 86 F.3d 1447 (7th Cir. 1996).

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   Couched in those terms, an affirmance would seem to proclaim "circuit conflict," thus inviting certiorari. In
   fact, however, the holding of preemption under these circumstances was not as unprecedented as Chief Judge
   Crabb allowed. To appreciate why, we must broaden our sights from causes of action alleging pure breach of
   contract to those that arise in a contracts-plus situation.

   When the current Act was being deliberated, the House Committee Report stated that the tort of "interference
   with contract relations" is "merely the equivalent of copyright protection, [and therefore] would be
   preempted." n126 On that basis, courts have held that particular contract-based tort preempted under section
   301 of the Copyright Act. n127 This result would appear doctrinally correct. n128 Moreover, it has been
   extended as well to closely allied torts, such as interference with prospective economic advantage for
   foiling consummation of a copyright contract under negotiation. n129

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   n126. H.R. Rep. No. 94-1476 at 132 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5748. Note that this
   language confronted statutory language that was later amended. See 1 Nimmer on Copyright, supra note 13,
   1.01[B][1][a].

   n127. See Harper& Row, Publishers, Inc. v. Nation Enters., 501 F.Supp. 848 (S.D.N.Y. 1980), aff'd, 723 F.2d
   195 (2d Cir. 1983), rev'd on other grounds, 471 U.S. 539 (1985); Kamakazi Music Corp. v. Robbins Music Corp.,
   522 F.Supp. 125 (S.D.N.Y. 1981), aff'd, 684 F.2d 228 (2d Cir. 1982).

   n128. Insofar as unauthorized reproduction, distribution, performance, or display causes the plaintiff to lose
   the benefits that would flow from an actual or prospective contract whereby plaintiff would authorize any such
   acts, the rights created by the tort of contract interference do not appear to differ qualitatively from rights
   under copyright; copyright also contemplates loss of actual or prospective contract benefits by reason of such
   unauthorized acts. Preemption in this context would, then, appear to be justified. The fact that the tort,
   unlike copyright infringement, requires awareness of the conflicting contract and an intentional interference
   with it merely means that the state-created right is narrower than its copyright counterpart, not that it is
   qualitatively different so as to preclude preemption. See 1 Nimmer on Copyright, supra note 13, 1.01[B][1][a].

   n129. See PMC, Inc. v. Saban Entertainment, Inc., 52 Cal. Rptr. 2d 877, 885 (Cal. Ct. App. 1996) (dealing with
   rival bids to enter copyright contract to manufacture "Power Rangers" products), discussed in 1 Nimmer on
   Copyright, supra note 13, 1.01[B][1][a].

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   With this larger perspective in mind, the rectitude of Chief Judge Crabb's conclusion can be appreciated. When
   two parties to a negotiated contract - even one for exploitation of copyrighted goods - dispute its terms and
   application, the allegation of breach is typically not preempted. But just as the tort of interference with
   contractual relations attempts to regulate the same subject matter as does copyright law and is therefore
   preempted, when a breach of contract cause of action - particularly one that does not result from the
   bargained-for agreement of both parties to its putative execution - is used as a subterfuge to control nothing
   other than the reproduction, adaptation, public distribution, etc., of works within the subject matter of
   copyright, then it too should be deemed preempted.

   The facts of the last scenario underlay those in ProCD. The plaintiff was seeking to control the exclusive rights
   granted by copyright law every bit as much as in a preempted cause of action denominated "interference with
   contract relations." It sought, in short, to bar further public distribution of materials, a right that belongs to
   copyright owners under the statute. n130 But it sought to do so with respect to a subject matter - listings in
   the white pages of a telephone book - that a unanimous Supreme Court had ruled to be in the public domain.

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   n130. See 17U.S.C. 106(3) (1994).

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   Because the district court did not cite those considerations, and instead proclaimed itself at odds with
   previous circuit precedent on the subject, it set itself up for reversal. The Seventh Circuit, as it were,
   accepted the invitation: "But are rights created by contract "equivalent to any of the exclusive rights within
   the general scope of copyright'? Three courts of appeals have answered "no.' The district court disagreed with
   these decisions, but we think them sound." n131

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   n131. ProCD, 86 F.3d at1454 (citations omitted).

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   The first comment about the Seventh Circuit's adherence to the district court's supposed disagreement with
   the three previous cases is that each examined contracts in a context apart from shrinkwrap licenses. By
   contrast, the previous pronouncement by a circuit court on that latter subject upheld copyright preemption.
   n132 Accordingly, strict adherence to precedent, without even examining the issues afresh, supports,
   rather than undermines, the district court's preemption ruling.

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   n132. See Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988) (finding contract clause barring
   decompilation or disassembly to be unenforceable). The Fifth Circuit affirmed the lower court opinion on this
   point, as it did again in Taquino v. Teledyne Monarch Rubber, 893 F.2d 1488 (5th Cir. 1990), discussed infra in
   text accompanying note 139.

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   Moreover, examination of each of the three cited circuit court decisions reveals that it is, in fact, unnecessary
   to disagree with them in order to preserve the scope of section 301 and concur in the district court's
   preemption holding. Rather than viewing those cases as being governed by a wholly different rule than the
   district court followed, each of their holdings can best be understood as turning on the specific facts
   presented. None supports the Seventh Circuit's broad conclusion that "whether a particular license is generous
   or restrictive, a simple two-party contract is not "equivalent to any of the exclusive rights within the general
   scope of copyright' and therefore may be enforced." n133

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   n133. ProCD, 86 F.3d at1455 (citation omitted).

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   First, Judge Easterbrook's reversal of the district court's holding in ProCD cites National Car Rental for the
   sweeping proposition that "rights created by contract" are not ""equivalent to any of the exclusive rights
   within the general scope of copyright.'" n134 Although that latter case did hold that the specific contract
   there at issue was not preempted, it did not extend its holding to contracts in general. In fact, explicitly
   relying on the "extra element rule," National Car Rental held that "the contractual restriction" that prohibited
   "processing of data for third parties" was qualitatively different from a contract that could be "breached "by
   the mere act of reproduction, performance, distribution or display."' n135 Because "none of the exclusive
   copyright rights grant [the copyright owner] that right of their own force," and because "absent the parties'
   agreement, this restriction would not exist," the court concluded that the "contractual restriction on use of
   the programs constitutes an extra element that makes this cause of action qualitatively different from one for
   copyright." n136 Invoking the extra element rule, National Car Rental approvingly cited the Ninth Circuit's
   Kalitta ruling, "Copyright preemption is both explicit and broad: [It] prohibits state-law protection for any right
   equivalent to those in the Copyright Act." n137 Turning to the copying of the software at issue in ProCD, it
   was (in the words of Kalitta) ""in and of itself,' [an act which] "would infringe one of the exclusive rights listed
   in 106.'" n138 Under the Kalitta standard approved by National Car Rental, the license at issue in ProCD should
   therefore be held preempted, thus bolstering rather than undermining the district court's conclusion.

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   n134. Id. at 1454.

   n135. 991 F.2d at 433 (citation omitted).

   n136. Id.

   n137. G.S. Rasmussen& Assocs. v. Kalitta Flying Serv., 958 F.2d 896, 904 (9thCir. 1992).

   n138. Id.

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   In Taquino, the contract at issue "forbade [the defendant] from representing a competing company
   prior to termination," a restriction not equivalent to copyright:

   The right to claim this breach of contract is not preempted by the copyright laws. 17 U.S.C. 301 only
   preempts rights equivalent to the exclusive rights within the general scope of copyright law. A right is
   equivalent if the mere act of reproduction, distribution, or display infringes it. This action for breach of
   contract involves an element in addition to mere reproduction, distribution, or display.... n139

   Similarly, the contractual restriction in Acorn did not implicate the rights granted by the Copyright Act:

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   n139. 893 F.2d at1501 (citations omitted) (quoting opinion of district court).

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   Implicit in the contract between Acorn and Swantz was an agreement that while Swantz did not have to use
   Acorn's plans, if he did use Acorn's plans then he was obligated either to purchase the plans from Acorn or to
   purchase his building materials from Acorn....This implicit provision of the contract...does not arise out of the
   subject matter of copyright and is therefore a separate and distinct cause of action. n140

   The fact-specific holdings of these cases - that contracts that did not merely forbid reproduction, distribution,
   or display are not preempted - follow the same rule as National Car Rental. Accordingly, parallel logic dictates
   that Taquino and Acorn in no way undermine the district court's ruling.

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   n140. 846 F.2d at926.

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   Having run through the triad of cases that underlay both the district and circuit courts' analysis in ProCD, it
   appears that the rule safeguarding contract causes of action against copyright preemption is less than
   categorical. Although the vast majority of contract claims will presumably survive scrutiny - as did each of the
   contract claims confronted in that trio - preemption should continue to strike down claims that, though
   denominated "contract," nonetheless complain directly about the reproduction right. It is precisely into that
   paradigm that the facts of ProCD fall.

   2. Giving Supremacy to the Supremes

   We have already seen that rights premised under state law cannot stand as "an obstacle to the full purposes
   and objectives of Congress." n141 As construed by a unanimous Supreme Court in Feist, Congress did not
   (and, indeed, constitutionally could not) extend copyright protection to alphabetical telephone listings. The
   shrinkwrap license at issue in ProCD undid the right of the public that Feist conferred - the ability to
   copy telephone listings without liability. n142 As such, there would seem to be a direct conflict between that
   which federal law permits and that which state law forbids. n143

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   n141. Hines v. Davidowitz, 312 U.S. 52, 67 (1941). See supra notes 90-91 and accompanying text.

   n142. In individual cases, a contract to refrain from doing what copyright law permits may be eminently
   defensible. As developed below, the mischief in the blanket contract in ProCD is that plaintiff wanted to have
   its cake and eat it too - to exploit telephone listings via mass market distribution, and to bar the whole world
   from copying its listing. Had plaintiff been content to maintain its database of listings as a trade secret, for
   example, then its contracts would have likely withstood a preemption challenge. See infra Section III.D.1.

   n143. One can avoid the conflict by postulating that Congress would have protected phone listings, but was
   constrained by its constitutional limits not to do so. On that theory, contractual law merely supplemented
   Congress' designs, using the states' residual power to extend the vector that Congress drew to the limits of its
   own ability. This avenue of escape, however, was foreclosed by the Seventh Circuit, when it held that the
   one aspect of the district court's ruling that was "plainly right" was its conclusion that ProCD's software and
   data "are "within the subject matter of copyright' even if, after Feist, they are not sufficiently original to be
   copyrighted." ProCD, 86 F.3d at1453 (quoting ProCD v. Zeidenberg, 908 F.Supp. 640, 665-67 (W.D. Wis.
   1996)). In this regard, the subject matter at issue in ProCD differs at base from those works not fixed in any
   tangible medium of expression - such as oral sermons and jazz improvisations - over which state law can
   continue to afford protection. See supra note 96; see generally 1 Nimmer on Copyright, supra note 13, 2.02.

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   It is remarkable, then, that the Seventh Circuit reversed. Judge Easterbrook's opinion, after determining
   shrinkwrap licenses to be binding under the Uniform Commercial Code, n144 concluded that the district court
   erred in its construction of section 301. n145 The Seventh Circuit did not consider constitutional preemption
   apart from section 301, notwithstanding that, as discussed above, non-301 preemption occupies its own
   capacious niche in copyright jurisprudence. n146 Combined with its facile reading of precedent under section
   301, n147 its failure even to consider the broader constitutional issues dooms the Seventh Circuit's preemption
   analysis.

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   n144. See supra Section III.B.1.

   n145. See ProCD, 86 F.3d at1454.

   n146. See supra Section III.A. For an analysis of many cases arising in that posture, ranging from the Supreme
   Court's invalidation of an Oklahoma law banning re-transmission of out-of-state commercials for alcoholic
   beverages to a district court's invalidation of an ordinance ruling exclusive licenses of cable programming illegal
   on antitrust grounds (again, a copyright/contract cross-over) to blind bidding of films to public disclosure of
   standardized tests, see 1 Nimmer on Copyright, supra note 13, 1.01[B][3][c].

   n147. See supra Section III.C.1.

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   The court attempted to highlight the error of the district court's approach through a reductio ad absurdum

   A customer visits a video store and rents a copy of Night of the Lepus. The customer's contract with the
   store limits use of the tape to home viewing and requires its return in two days. May the customer keep the
   tape, on the ground that 301(a) makes the promise unenforceable? n148

   The answer to that rhetorical question is as patent as it is incomplete. In this particular instance, the
   contract relating to copyrightable goods should be deemed enforceable, as it passes the "extra element" test
   and contravenes no federal policy. That solitary hypothetical at best demonstrates what is uncontroversial:
   not every contract relating to copyrightable goods is preempted. n149 It does not demonstrate the far greater
   proposition at which it hints: No contract relating to copyright-able goods ever is preempted under section
   301(a). Moreover, even when a contract passes muster under section 301, it is still necessary to evaluate
   whether it runs afoul of the more general preemption prerequisites mandated by the Constitution.

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   n148. ProCD, 86 F.3d at1454.

   n149. See supra Section III.A. (Indeed, as previously noted, the vast majority pass muster).

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   The court's hypothetical video store rental contract, albeit incomplete, still serves as a useful tool to further
   the inquiry. The contract at issue requiring the return of the physical copy at the end of the rental period
   meets the "extra element" test. Further, it contravenes no policy of the Copyright Act. To the contrary, it
   fosters the purposes underlying copyright law by encouraging the dissemination of copyrightable works in an
   orderly fashion. n150 Likewise, the vast majority of contracts that one may posit with respect to
   copyrightable goods should prove easy to reconcile with the purposes underlying copyright. Whether the
   contract consists of imposing time limits on when films can be shown, specifying geographic limitations on
   where magazines can be distributed, or mandating quality controls on how sculptures can be displayed, each
   disserves no readily apparent doctrine of copyright law. Accordingly, these contracts are presumptively
   enforceable.

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   n150. Note that attempts to amend the Copyright Act to forbid video rentals have failed. See 2 Nimmer on
   Copyright, supra note 13, 8B.01[B] n.23.2. Had those amendments succeeded, then the posited video rental
   would contravene the purposes of the fictively amended Act; under those circumstances, the sample contract
   posited by the Seventh Circuit could well be deemed unenforceable based on conflict preemption.

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   The contract at issue in ProCD, Inc. v. Zeidenberg differs from the foregoing examples in the one respect
   relevant to nonstatutory preemption: n151 it contravenes one of the core policies of the Copyright Act by
   extending quasi-copyright protection to works that do not qualify as "original." n152 It further fails the test of
   encouraging the dissemination of copyrightable works in an orderly fashion in that it seeks to bar the
   dissemination of uncopyrightable materials. It is, in short, nothing other than an attempt in effect to
   overrule by contract binding Supreme Court precedent. n153

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   n151. It also differs in that it fails the "extra element" test. See infra Section III.C.1.

   n152. In parallel fashion, one plaintiff attempted to protect her recipe, see Griggs v. South Carolina Elec. &
   Gas Co., 467 S.E.2d 608, 609 (S.C. 1995), a subject matter that falls outside copyright protection, see 1
   Nimmer on Copyright, supra note 13, 2.18[I]. Rather than labeling her cause of action "breach of contract,"
   she responded to unauthorized publication of a recipe by claiming "outrage"; her husband joined in for "loss of
   consortium." Those causes of actions likewise failed the "extra element" test. See Griggs, 467 S.E.2d at 609.

   n153. "Had the state of Kansas adopted an exclusive-rights regime to protect databases after the Supreme
   Court's decision, and had Rural sued Feist for new appropriations from its white-page listings under that law,
   the Supreme Court would probably have struck the state law down for interfering with the federal copyright
   policy of promoting public access to knowledge." J.H. Reichman & Pamela Samuelson, Intellectual Property
   Rights in Data?, 50 Vand. L. Rev. 51, 144 (1997).

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   The Seventh Circuit conceded in ProCD, Inc. v. Zeidenberg that the structure of copyright law "prevents
   states from substituting their own regulatory systems for those of the national government." n154 On that
   basis, the Seventh Circuit refrained from "adopting a rule that anything with the label "contract' is necessarily
   outside the preemption clause: the variations and possibilities are too numerous to foresee." n155 One
   wonders what variation the court had in mind as embodying the substitution of a contractual scheme "for
   those of the national government" if not a factual scenario on all fours with a recent, unanimous Supreme
   Court opinion, but reaching the contrary result. n156 Yet the opinion did not even mention Feist in its
   preemption analysis. n157

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   n154. 86 F.3d at1455. The opinion even nods in the direction of conflict preemption by invoking "the possibility
   that some applications of the law of contract could interfere with the attainment of national objectives...." Id.

   n155. Id.

   n156. Curiously, the opinion earlier conceded that one function of copyright law is to "prevent states from
   giving special protection to works of authorship that Congress has decided should be in the public domain...."
   Id. at1453.

   n157. The court's previous reference to Feist consisted simply of recounting that the subject telephone
   listings are not protected under copyright law. See id. at1449. On the instant subject, the opinion blithely
   concluded that "general enforcement of shrinkwrap licenses of the kind before us does not create such
   interference [with the attainment of national objectives]." Id. at1455.

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   To appreciate what is at issue here, it is useful to conjure up similar examples of contracts designed to evade
   the strictures of copyright law. Those variants shine a brighter light on the preemption inquiry than the
   Seventh Circuit's pedestrian example of a contractual obligation to return a single copy of a rented videotape.
   In each of the following examples, the postulated conduct disturbs the "delicate balance" that the district
   court in ProCD was attempting to maintain. Adverting to the entire spectrum of preemption concerns (rather
   than simply to section 301) illustrates that each of these contracts must bow before the superior force of the
   federal enactment of copyright law.

   Consider n158 first a state law that validates all oral contracts solemnly adjured before a panel of three
   clergymen. n159 To the extent that that law were applied to a contract transferring copyright ownership, the
   unanimous view of the cases is that it would be preempted under the Supremacy Clause, given the
   federal command that transfers of copyright ownership be executed in writing. n160 That single hypothetical
   by itself proves that absolute freedom of contract under state law relating to copyrightable works is
   insupportable. n161

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   n158. In each instance, the hypothetical state law could be conceived as implementing the Uniform
   Commercial Code within that particular jurisdiction. Alternatively, that law could be viewed as the will of the
   legislature separate from model enactment of the Code.

   n159. See supra note 36.

   n160. See supra notes 34-36 and accompanying text.

   n161. The Seventh Circuit premises its ruling on the following language: "A contract for sale of goods may be
   made in any manner sufficient to show agreement, including conduct by both parties which recognizes the
   existence of such a contract." ProCD, 86 F.3d at1452 (quoting U.C.C. 2-204(1)). Judged by the standard of
   2-204(1), oral copyright transfers should be recognized. If the contrary force of17 U.S.C. 204(a) is deemed to
   command the opposite result, then the question arises why the same U.C.C. section should not be overborne
   because of the contrary force of Feist, construing not only the Copyright Act but the requirements of the U.S.
   Constitution as well.

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   Consider next a video store that does not simply limit customers to home viewing (as imagined by the Seventh
   Circuit's hypothetical), but goes further and stamps each videotape in its collection with the legend: MAY BE
   VIEWED BY NO MORE THAN THREE PEOPLE AT ONE SITTING. n162 Even better, a studio that invariably
   stamped its product with that proviso in a shrinkwrap encasing all videotapes that it manufactured would
   closely mirror the actual facts of ProCD, Inc. v. Zeidenberg. For just as the plaintiff in that actual case sought
   to use a shrinkwrap to deny the public the right to use phone listings guaranteed by Feist, so the fictive
   studio in this hypothetical case would use its own shrinkwrap to avoid Congress' limitation of the performance
   rights in videotapes to public performances, defined as occurring only when "a substantial number of persons"
   is gathered. n163 The subject proviso, even if deemed operative as a matter of state contract law, should be
   deemed preempted based on its conflict with the federal scheme. n164

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   n162. The drafters of Article 2B concede that the doctrine of unconscionability should preclude "bizarre and
   oppressive results in standard form contracting." U.C.C. 2B-208 reporter's note 1 (Draft, Mar. 1998). But their
   notion of where oppression lies may differ markedly from ours, much less those applied by various courts.

   n163. 17 U.S.C. 101 (1994).

   n164. It should be noted that the motion-picture studios, at the outset of the videotape era, attempted to
   increase their rights through the legitimate methodology of lobbying Congress for a change to the first-sale
   doctrine. See 2 Nimmer On Copyright, supra note 13, 8B.01[B]. The studios previously concluded among
   themselves that unilateral leveraging of their rights through the shrinkwrap vehicles contemplated in the text
   would not withstand judicial review.

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   Consider next an on-screen announcement prior to the airing of a television program that its broadcast to
   viewers' homes is conditional on their agreement not to engage in private home taping. Assuming the threshold
   determination that the viewers' decision to watch it notwithstanding the initial admonition constitutes a
   contractual bargain just as much as receiving software by wire, n165 then the viewer's activation of her
   VCR constitutes breach of contract. Now, not only has the Supreme Court's Feist decision been
   effectively nullified - so has its ruling in Sony. n166

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   n165. The Seventh Circuit singles out as valid those transactions where a customer purchases software over
   the Internet and receives it by wire. See ProCD, 86 F.3d at1451. We have previously noted our view that the
   instantiation thereby rendered onto the purchaser's hard drive constitutes a "copy" of the subject work. See
   supra Section II.B.

   n166. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (holding private home videotaping
   is fair use).

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   In Sony, the Supreme Court stated that "[copyright] protection has never accorded the copyright owner
   complete control over all possible uses of his work." n167 Yet in a world governed by Judge Easterbrook's
   radical freedom to impose terms by shrinkwrap "contract," there is no reason that such a conclusion should
   pertain. Instead, the imagination of shrinkwrap drafters can come close indeed to achieving the type of
   complete control that Sony expressly denied them.

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   n167. Id. at432.

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   Consider the following example of that complete control. Although the Act limits the copyright owner's rights
   to "public" distribution, n168 publishers who follow the logic of ProCD, Inc. v. Zeidenberg may amplify their
   statutory rights simply by wrapping books n169 in cellophane, subject to the limitation that the buyer is barred
   from passing the purchased copy on to a friend. n170 Nor is there any reason that the publisher should stop
   there. It could likewise require the reader not to skip chapters, not to read any paragraph more than three
   times, n171 not to reveal the surprise plot twists to family or acquaintances, and certainly not to quote in a
   book review the few short excerpts that the fair use doctrine would otherwise permit. n172

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   n168. See 17U.S.C. 106(3) (1994). The parallel point just made in the text relates to public performance, as
   distinguished from public distribution.

   n169. Books fall into the same category of protection under the Act as did the software at issue in ProCD:
   Each qualifies as a "literary work." See 17 U.S.C. 102(a)(1) (1994).

   n170. The fear that copyright owners would be clothed with an expansive right to control "reading" of their
   materials in cyberspace has already been realized under this scenario, and in the mundane world of hard copies
   at that. See Jessica Litman, The Exclusive Right to Read, 13 Cardozo Arts & Ent. L.J. 29 (1994).

   n171. See David Nimmer, Adams and Bits: Of Jewish Kings and Copyrights, 71 S.C. L. Rev. 219, 226 n.37
   (1998) (quoting whimsical copyright notice forbidding various usages - for instance, by reviewers unless they
   "promise to read the book painstakingly all the way through before writing their reviews").

   n172. See 17 U.S.C. 107 (1994). The U.C.C. drafters actually come close to conceding this particular point: "If
   a term in a widely distributed consumer magazine that purports to prevent a reader of the magazine from using
   a factual summary or a brief quotation were structured to create a contract [it would pose] serious questions
   of enforceability under copyright and constitutional free speech considerations." U.C.C. 2B-105 reporter's note
   3 (Draft, Mar. 1998). We agree, and would extend the same considerations to the software arena as well. See
   infra Section IV.B.

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   The foregoing examples represent simply the tip of ProCD's iceberg. For not only could Sony and Feist be
   nullified under its approach, but so could virtually every other court decision ever to rule in a defendant's
   favor.

   The Supreme Court gave wide berth to the parody defense in Campbell v. Acuff-Rose Music, Inc. n173
   That defense essentially disappears once Roy Orbison and his fellow composers wrap their tapes and CDs in
   jewel boxes armed with the appropriate shrinkwrap language forbidding parodic exploitation. In another
   unanimous ruling during the same term, the Court held in Fogerty v. Fantasy, Inc. that attorney's fees need to
   be awarded evenhandedly to plaintiffs and defendants. n174 But plaintiffs savvy to the options that ProCD
   affords can avoid that nettlesome limitation by adopting the expedient of wrapping their goods in packages
   that guarantee by contract treble awards of attorney's fees incurred for copyright infringement. n175

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   n173. 510 U.S. 569 (1994).

   n174. 510 U.S. 517 (1994).

   n175. The Supreme Court noted that copyright's purpose is to protect the public interest; as such, delineating
   the bounds of copyright owners' rights is as socially useful as vindicating an infringement claim. See id. at527.
   Again, that "delicate balance" is swept aside under the Seventh Circuit's exaltation of copyright owners'
   all-powerful contract rights.

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   Circuit courts have validated reverse engineering of software when undertaken for proper purposes. n176
   Merely by prohibiting that conduct under a shrinkwrap license, the nominally "fair use" is constricted out of
   existence. n177

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   n176. See, e.g., Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9thCir. 1992).

   n177. Judge Easterbrook's praise of "a clause forbidding disassembly" as "procompetitive" suggests that this
   result represents the conscious intent of ProCD. See ProCD, 86 F.3d at1455; see generally Robert A. Kreiss,
   Accessibility and Commercialization in Copyright Theory, 43 UCLA L. Rev. 1 (1995).

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   Before ending, one more example of recent vintage springs to mind. A unanimous Supreme Court has just
   rejected copyright proprietors' rights to bar certain parallel importations under the Copyright Act. n178 That
   impediment need not deter those shampoo manufacturers and others who simply include with their products
   shrinkwrap licenses forever barring entry of the subject goods into the United States. Another Supreme Court
   precedent likewise bites the dust under ProCD's view of the law. The list could be multiplied endlessly.

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   n178. See Quality King Distribs. Inc. v. L'Anza Research Int'l, Inc., 118 S.Ct. 1125 (1998).

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   However, each example in the foregoing parade of horribles differs in one critical respect from the facts of
   ProCD in that each involves interposing contract into the realm in which Congress had the ability to legislate.
   For example, Congress could have validated oral transfers of copyright. It could have defined "public
   performance" to mean performance before no more than three unrelated adults. It could have excluded parody
   from "fair use" and instead imposed a mandatory license scheme for all would-be parodists. n179 It could have
   limited the first sale doctrine effectively to bar all parallel imports. In other words, Congress could have
   made these choices, but it did not do so when it set the bounds of the "delicate balance" between that which
   enjoys copyright protection, and that which is free for all to use.

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   n179. For present purposes, we are sidestepping the inquiry as to whether the First Amendment itself affords
   parodic breathing space. See generally Neil W. Netanel, Copyright and a Democratic Civil Society, 106 Yale L.J.
   283 (1996); Melville B. Nimmer, Does Copyright Abridge the First Amendment Guarantees of Free Speech and
   Press?, 17 UCLA L. Rev. 1180 (1970).

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   By contrast, ProCD deals with matters outside the ambit of Congress's legislative power as delimited by the
   Copyright Clause. For example, the text of the Copyright Clause makes it clear that Congress cannot grant
   copyright protection of indefinite duration. n180 Feist makes equally clear that Congress is constitutionally
   barred under the Copyright Clause n181 from giving copyright protection to alphabetical telephone listings,
   which by their nature fall below the constitutional threshold for copyrightability. n182 It may be argued that
   the shrinkwrap license in ProCD therefore falls outside of the realm of preemption altogether because by
   definition it cannot "stand[ ] as an obstacle to the accomplishment of the full purposes and objectives of
   Congress." n183

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   n180. See U.S. Const., art. I, 8, cl. 8 (authorizing Congress to grant copyrights "for limited times").

   n181. An entirely separate question arises as to whether Congress has the power under the Commerce Clause
   to give copyright-like protection to uncopyrightable materials such as alphabetical compilations of telephone
   listings. That is precisely what Congress may do should it pass currently pending database protection
   legislation. See Collections of Information Antipiracy Act, H.R. 2652, 105th Cong. (1998).

   n182. The Court in Feist held open the possibility that purloining of phone listings, under certain instances,
   could give rise to liability under the state law of unfair competition. See 499 U.S. at 354 (citing 1 Nimmer on
   Copyright, supra note 13, 3.04). Misappropriation of listings that constitute "hot news" or trade secrets spring
   immediately to mind in this context. Thus, we have no objection to a data provider such as NASDAQ
   maintaining exclusive control over stock listings for a limited period of time - amounting to days, for example.
   But cf. Joel Rothstein Wolfson, Contract and Copyright Are Not at War: A Reply to "The Metamorphosis of
   Contract into Expand," 87 Calif. L. Rev. 79, 88-98 (1999) (arguing that Article 2B is necessary to provide full
   protection for such data).

   n183. Hines v. Davidowitz, 312 U.S. 52, 67 (1941) (emphasis added). See supra notes 90-91.

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   This facile argument overlooks the fact that a state law need not fall within Congress's authority under the
   Copyright Clause to interfere with the objectives of Congress. Consider, for example, a state law that provided
   as follows:

   Upon expiration of the limited term of copyright granted by Congress in a particular work, the owner of the
   copyright shall, from the moment of copyright expiration forward into perpetuity, enjoy under the laws of the
   State of California the exclusive right to do and to authorize any of the following: (1)to reproduce the formerly
   copyrighted work; (2) to prepare derivative works based on the formerly copyrighted work; and (3) to
   distribute copies of the formerly copyrighted work to the public by sale or other transfer of ownership, or by
   rental, lease, or lending.

   Strictly speaking, the foregoing law is outside the lawmaking authority of Congress under the Copyright
   Clause for, as noted above, Congress is constitutionally constrained to provide limited terms of copyright
   protection. But the foregoing provision would render meaningless the term limitations imposed by the Copyright
   Act and should therefore be viewed as "standing as an obstacle to the accomplishment of the full purposes
   and objectives of Congress" - copyright protection of limited duration. Similarly, the Feist-defeating provision
   of ProCD should be viewed as "standing as an obstacle to the accomplishment of the full purposes and
   objective of Congress" - extending copyright protection only to original works of authorship. Were that not the
   case, state law could effectively defeat all of the constitutionally generated limitations of the Copyright Act.
   Such a result would offend not only the Congressional scheme, but would run contrary to the design of the
   Copyright Clause itself. n184

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   n184. See Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 980 (2d Cir. 1980) ("Where, as here,
   historical facts, themes, and research have been deliberately exempted from the scope of copyright protection
   to vindicate the overriding goal of encouraging contributions to recorded knowledge, the states are
   pre-empted from removing such materials from the public domain.").

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 * * *

   The Seventh Circuit's analysis of Supreme Court preemption cases further reveals the infirmities of its ruling.
   For instance, ProCD cites Kewanee Oil Co. v. Bicron Corp., n185 a case in which the Supreme Court validated
   trade secret law. n186 The point is well taken that the states are free to protect under that rubric materials
   that are otherwise uncopyrightable - an alphabetical customer list, for example. n187 Trade secret laws
   survive the "extra element" test and contravene no federal policy pertaining to copyright. For that reason,
   legions of cases rule that copyright law does not preempt trade secret causes of action. n188

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   n185. 416 U.S. 470 (1974).

   n186. See ProCD, 86 F.3d at1454.

   n187. See id.

   n188. See 1 Nimmer on Copyright, supra note 13, 1.01[B][1][h].

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   On the other hand, the same line of cases recognizes that it is only because those state laws limit protection
   to works held confidentially that they survive preemption; otherwise, the distinction between trade secret law
   and copyright would collapse, and trade secret law would be preempted under section 301. Thus, to the
   extent that a state, as a matter of its own internal law, labels a published book of alphabetical telephone
   listings a "trade secret," the law would be invalid under the Supremacy Clause.

   That last result exactly parallels ProCD's circumstances. Although labeled "contract under the Uniform
   Commercial Code" instead of "trade secret," the state rights under examination were precisely
   congruent to those litigated (adversely to their claimants) in the copyright sphere. Thus, the Seventh Circuit's
   reference to trade secret law, far from proving its approach correct, in fact reveals the error of its way. n189

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   n189. As to trade secrets, their lack of public accessibility means that there is no imbalance to maintaining by
   contract a higher degree of protection than copyright law would otherwise afford. See Kreiss, supra note 177,
   at 6, 54-56. See also Dennis S. Karjala, Federal Preemption of Shrinkwrap and On-Line Licenses, 22 U. Dayton
   L. Rev. 511 (1997).

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   Besides Kewanee Oil, the only other Supreme Court cases in the intellectual property arena that ProCD cites to
   explicate its preemption analysis are Aronson v. Quick Point Pencil Co. n190 and Bonito Boats, Inc. v. Thunder
   Craft Boats, Inc. n191 The former illustrates the general principle that contracts for non-commercialized goods
   deserve enforcement; it does not illuminate the commercialized goods at issue in ProCD. n192

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   n190. 440 U.S. 257 (1979).

   n191. 489 U.S. 141 (1989).

   n192. The subject contract in that case, far from being a shrinkwrap for a published product, was "freely
   undertaken in arm's-length negotiation" for a wholly confidential product (an ingenious keyholder). Aronson,
   440 U.S. at 266. "In negotiating the agreement, Mrs.Aronson disclosed the design in confidence." Id. at263.
   Quick Point explicitly agreed to pay the negotiated consideration "in return for the use of a novel device which
   enabled it to pre-empt the market." Id. at264. Parallel logic dictates that if ProCD had entered a negotiated
   agreement with Zeidenberg to disclose unexploited confidential phone listings, and Zeidenberg agreed "to pay
   for the opportunity to be first in the market," as did Quick Point ("an experienced novelty manufacturer"), he
   could not invoke preemption to avoid his contractual obligations. Id. at266. The essence of Aronson is that
   protection of information disclosed in a bona fide confidential relationship is not inconsistent with the federal
   patent and copyright laws. It is a far cry to suggest, as ProCD does, that an individual publisher can obtain
   similar rights by using the artifice of a shrinkwrap contract to manufacture a "confidential" relationship with
   thousands or millions of customers who pick its product off a shelf or wire.

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   Moreover, the Aronson Court's efforts to distinguish its ruling from Brulotte v. Thys Co. n193 cast further
   doubt on the Seventh Circuit's reasoning. Brulotte held that parties may not extend by contract the maximum
   federal term for patents. It therefore proves that freedom to contract intellectual property must bow before
   the federal policies implicated in that law - the precise point that the district court in ProCD attempted to
   vindicate.

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   n193. 379 U.S. 29 (1964).

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   Bonito Boats is even more powerful proof of how Judge Easterbrook's approach cannot stand. In Bonito Boats,
   a unanimous Supreme Court ruled that states lack the power to pass laws barring the plug-molding of boat
   hulls. n194 But under the logic of ProCD, relief for the losing plaintiff should be forthcoming under the state law
   of contract, for the boat manufacturer simply needs to outfit its products with a shrinkwrap license
   forbidding plug-molding. n195

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   n194. The House of Representatives recently passed a bill that would give a limited term of protection to boat
   hulls. See The Vessel Hull Design Protection Act, H.R. 2696, 105th Cong. (1998); 144 Cong. Rec. H1247 (daily
   ed. Mar. 18, 1998) (recording passage).

   n195. Indeed, given the vastly larger space available on a boat hull than on the exterior of a box encasing
   software, the manufacturer could write the whole contract in visible form, dispensing with the cellophane
   altogether.

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   A month after Bonito Boats was decided, Judge Easterbrook went on record condemning it as "a step in the
   wrong direction." n196 There is nothing illegitimate about that point of view; it may one day turn the whole
   Court around. But it is quite another matter for the Seventh Circuit to write Bonito Boats - along with Feist,
   Sony, Campbell, Fogerty, and a host of other decisions - out of existence before that day has dawned. n197

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   n196. Frank Easterbrook, Intellectual Property Is Still Property, 1 Harv. J.L.& Pub. Pol'y 108, 114-17 (1989)
   ("The proposition that one state's law concerning injection molding gave anyone a monopoly profit is
   hilarious."). The Court's later ruling in Feist extended the vector of Bonito Boats. See Rochelle Cooper
   Dreyfuss, A Wiseguy's Approach to Information Products: Muscling Copyright and Patent into a Unitary Theory
   of Intellectual Property, 1992 Sup. Ct. Rev. 195. Given Judge Easterbrook's observation that "isolated cases
   are not influential," one imagines that he viewed the trend evidenced by both Supreme Court rulings as "a web
   of decisions," that he presumably would be happy to see unravel. See Easterbrook, supra, at 118.

   n197. In addition, one can add Brulotte as another Supreme Court case, Lasercomb from the Fourth Circuit,
   and Sega v. Accolade from the Ninth Circuit. It would not be a difficult exercise to extend the inconsistent
   thrust of ProCD to previous Seventh Circuit cases as well, such as Gracen v. The Bradford Exchange, 698 F.2d
   300, 304 (7th Cir. 1983).

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   * * *

   The threat from potential elimination of user rights through contract, moreover, is not limited to the world of
   shrinkwrap contracts. Greater freedom of contract should typically attach to negotiated contracts than to
   non-negotiated, or "mass market" contracts. This distinction is reasonable if, in the negotiated context, the
   potential licensee (or more generally, the potential recipient of copyright rights) can walk away and pursue
   other options. The distinction between negotiated and non-negotiated agreements breaks down, however,
   when all or significantly all access to copyrighted works is mediated through contracts purporting to control
   uses of the copyrighted work. n198 A given copyrighted work (for instance, a particular operating system
   software for personal computers) may be de facto necessary to take advantage of hardware and software
   offered by other copyright owners. No matter how vigorously a potential licensee engages in an arms-length
   transaction about how she may use that operating system software, she ultimately lacks any real option of
   seeking better terms from a different source. One can imagine, as in the cautionary tale spun at the start of
   this Article, a market in which copyrighted works as a whole can only be accessed through contract.
   In these take-it-or-leave-it contexts, the lack of true choice means that the copyright owners' contract terms
   operate in effect as "private legislation" that serves to alter en masse the public's rights granted under the
   Copyright Act. n199

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   n198. At present, most transactions for copyrighted works involve a straightforward sale, as opposed to a
   "license." The straightforward sale scenario involves contract law, but does not typically purport to affect the
   copyright rights of the end user.

   n199. See Robert P. Merges, The End of Friction? Property Rights and Contract in the Newtonian World of
   On-Line Commerce, 12 Berkeley Tech. L.J. 115, 126 (1997) (footnote omitted) ("[A] dominant contractual form
   can operate as a form of "private legislation' that restricts federally conferred rights every bit as much as a
   state statute."). In the landmark case of Shelley v. Kraemer, 334 U.S. 1 (1948), the Supreme Court struck
   down racially restrictive zoning restrictions that, as a practical matter, controlled all the real estate of a
   locality and thus obtained the force of private legislation. Perhaps a similar mind frame should inform evaluation
   of those who dominate the "real estate" of the new space. See Alan Murray, It's Time Gates Placed Trust in
   Trustbusters, Wall St. J., Mar. 9, 1998, at A1 ("Mr. Gates has managed to win near-total control of the most
   valuable real estate in business today: His Windows operating system has become almost the sole entry point
   to cyberspace. He objects to such comparisons, but his business position is one that even John D. Rockefeller
   could envy.").

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   One concern about undermining the holding of ProCD is that to do so exposes valuable databases of
   uncopyrightable materials to parasitic copying and undermines efforts to recoup investment costs through
   price discrimination. n200 One must concede that if neither copyright law nor contract protects
   uncopyrightable but valuable databases from copying, the incentive to create such databases and the
   attendant social benefits of having such databases created may diminish. n201 Accordingly, one may argue
   that it is socially desirable to offer protection for uncopyrightable databases n202 and to foster price
   discrimination as an incentive to investment. n203 But a unanimous Supreme Court has recently    accorded no weight whatsoever to price discrimination as a basis on which to resolve dilemmas in copyright  doctrine. n204 Moreover, as the Feist court's abolition of the "sweat of the brow" doctrine should make clear, general considerations of social desiderata plainly cannot justify ignoring preemption problems of constitutional dimension. Result-oriented jurisprudence must be resisted, even if one believes the result correct. The solution to parasitic copying of historical n205 databases, to the extent such protection is needed, n206 is to be found in creating proper federal protection for uncopyrighted materials, not in encouraging a contract regime to perform an end-run around the limits of copyright.

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   n200. Plaintiff in ProCD engaged in price discrimination to recoup its $ 10 million investment incurred by
   charging less to the general public for private use than to the trade. See ProCD, 86 F.3d at 1449. In order to
   make its price discrimination work, it had to prevent the type of arbitrage in which defendants engaged. See
   id. at 1450.

   n201. Nonetheless, the law of misappropriation can protect against purloining of "hot data." See supra note
   182.

   n202. Many commentators agree that because valuable databases have little protection under copyright law,
   it would be socially beneficial to provide greater protection to maintain the proper incentives for database
   creation, although they differ about precisely what form that protection should take. See, e.g., Hearings
   Concerning H.R. 2652, The Collections of Information Antipiracy Act, Before the Subcom. on Courts and
   Intellectual Property of the House Com. on the Judiciary, 105th Cong. (1997) (statement of Laura D'Andrea
   Tyson), available in 1997 WL 664842 ("Because technology has expanded the potential applications of
   databases to myriad research, educational, medical and business uses, the lack of adequate legal protections
   for the efforts of database providers poses a serious public policy challenge with widespread implications.");
   J.H. Reichman and Pamela Samuelson, Intellectual Property Rights in Data?, 50 Vand. L. Rev. 51, 55 (1997)
   ("Traditional intellectual property models, as supplemented by classical trade secret laws, often fail to afford
   those who produce today's most commercially valuable goods enough lead time to recoup their investments.").

   n203. It is true that absent relief under contract law, sellers of CD-ROMs face a dilemma. A producer of movies
   segments the market by time, releasing first to theaters, then to pay-per-view services, next to the videotape
   and laserdisc market, and finally to cable and commercial TV. Vendors of computer software have a harder
   task. [The type of arbitrage in which defendants engaged] would break down the price discrimination and drive
   up the minimum price at which ProCD would sell to anyone.

   ProCD, 86 F.3d at 1450. It must be acknowledged forthrightly that, without the contractual relief that the
   Seventh Circuit enforced, it would have been difficult for ProCD to price its particular product cheaply to the
   general public. That difficulty, however, stems in large measure from the fact that the commercial value of
   ProCD was based almost entirely on quintessential public domain information (alphabetical phone listings). In
   the case of works subject to copyright protection, such as the movies or computer software discussed in the
   passage quoted above, the copyright laws provide rights to proprietors (for instance, exclusive distribution,
   public performance) that are designed specifically to permit the types of price discrimination ProCD favors.
   Moreover, ProCD, Inc. may well have been able to avoid its difficulties simply by providing some original,
   value-added content, which would be subject to copyright protection (for example, embedding the phone
   number information in a proprietary database structure optimized for speed; adding additional original
   information to the listings; organizing the listings in an original way). By denying protection for the mere effort
   of collecting public domain information (the "sweat" of ProCD's "brow"), the copyright laws create a powerful
   incentive to add value to existing information, rather than simply to repackage and distribute it. The present
   authors doubt that the nation would be better served by a system that protects compilations of public domain
   information at the expense of promoting new original expression; we nonetheless concede that this is a
   subject that merits its own extended treatment.

   n204. "Whether or not we think it would be wise policy to provide statutory protection for such price
   discrimination is not a matter that is relevant to our duty to interpret the text of the Copyright Act." Quality
   King Distribs., Inc. v. L'Anza Research Int'l, Inc., 118 S. Ct. 1125, 1134 (1998). The reasoning of Quality King
   applies a fortiori to ProCD. For in the former case each party could simply adduce one statutory provision
   favoring its position (17 U.S.C. 602(a) in favor of plaintiff, 17 U.S.C. 109(a) in favor of defendant). The Court
   rejected plaintiff's policy argument that price discrimination tipped the scales between these two sections of
   the Copyright Act. But the latter dispute, by contrast, pits plaintiff's desire for price discrimination against
   defendant's defense of constitutional magnitude. Thus, the ProCD defendant's arguments are far more
   powerful than those which sufficed to convince the Supreme Court in Quality King.

   n205. We use the term "historical" to differentiate from "hot data." See supra note 182.

   n206. Critics of currently proposed database protection legislation point out that there is a dearth of empirical
   evidence to support the claimed need for database protection. See, e.g., Hearings Concerning H.R. 2652, The
   Collections of Information Antipiracy Act, Before the Subcomm. on Courts and Intellectual Property of the
   House Comm. on the Judiciary, 105th Cong. (1997) (statement of Jerome H. Reichman), available in 1997 WL
   662280 ("the rapid growth in the past few years of electronic databases of all kinds, including hundreds aimed
   at the scientific market, hardly suggests a lack of incentives."); Pamela Samuelson, Letter re: Tyson/Sherry
   Report (last modified Apr. 30, 1998) <http://www.arl.org/info/frn/copy/psamlet.html> ("The general rule of "if
   it ain't broke, don't fix it' would seem to apply here. It is striking how little empirical evidence has been offered
   thus far by proponents of database legislation of actual or threatened market failures that require legislative
   action.").

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   To conclude, if copyright law is to maintain an autonomous existence, instead of becoming an adjunct
   to whatever lawyers can draft into shrinkwrap "contracts," then its delicate balance must be respected. For
   that reason, the Seventh Circuit's holding in ProCD, Inc. v. Zeidenberg, it is submitted, is in error.

   D. Framework of Preemption Principles: To the Limits of Monopoly

   From the foregoing discussion, it should be clear that contracts can not only coexist within the overarching
   copyright framework, but are essential for its proper implementation. Because U.S. copyrights are infinitely
   divisible, contract is the only sensible means for dividing up spheres of exploitation. On the other hand, those
   convinced by the foregoing discussion can harbor no doubt that not every device unilaterally imposed under
   the rubric "contract" can pass constitutional muster. ProCD v. Zeidenberg clearly illustrates that phenomenon.
   The question therefore remains where the dividing line lies between the permissible and the forbidden.

   Abstracting from the above criticism of the Seventh Circuit's decision in ProCD, the appropriate dividing point
   emerges organically from the copyright monopoly that Congress, acting within the framework of the
   Constitution, bestows upon authors. If a copyright owner contracts to exploit a work up to the limits of his
   constitutionally and congressionally conferred monopoly, he is acting legitimately; conversely, if an author
   uses contract law to enlarge that monopoly to apply to exploitations beyond its congressionally sanctioned
   orbit, she is behaving illegitimately. That latter conclusion follows whether the expansion derives directly from
   state law n207 or as a matter of contract law, which ultimately derives its enforceability from the same body
   of state law.

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   n207. As a direct example of that phenomenon, see College Entrance Examination Board. v. Pataki, 889 F.
   Supp. 554 (N.D.N.Y. 1995) (evaluating whether New York state law may legitimately require testing service to
   reveal the expression underlying its copyrighted examinations).

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   * * *

   To illustrate, let us imagine several scenarios, each applicable to the new entity that hypothetically has
   purchased all right, title, and interest in and to the MGM classic, Gone with the Wind.

   Series (i):

   . The owner grants A a license to screen the film theatrically, limited to theaters located on the south side of
   Pico Boulevard in Los Angeles.

   . B receives a license to engage in theatrical distribution anywhere in the United States, but limited to
   alternate Tuesdays during leap years.

   . C bargains for a license to engage in worldwide n208 distribution by videotape, for a period of three weeks
   only, at a 6% royalty.

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   n208. For purposes of the current analysis, nonetheless, the impact of contracts is treated solely within the
   borders of the United States.

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   . D purchases rights of television broadcast in the Cambodian-dubbed version. n209

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   n209. Cf. Gamma Audio& Video, Inc. v. Ean-Chea, 11 F.3d 1106 (1st Cir. 1993) (determining that plaintiff
   owned derivative Cambodian translation of underlying Chinese motion picture).

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   . E sews up all rights to Gone with the Wind in DVD format.

   . F is the lucky winner of the same rights in CD++ format.

   Series (ii):

   . G receives the right, after C's three weeks expire, to engage in distribution of videotapes at the same 6%
   royalty, which G agrees to pay for a term of 100years.

   . H receives the right to engage in theatrical screenings on the north side of Pico Boulevard and throughout
   the rest of Los Angeles. However, as a condition for granting that license, the proprietor insists that G also
   pay a like amount to license Night of the Lepus.

   . MYRRHA stands as guardian to the portals of all copyrightable compositions. n210 In order to see Gone with
   the Wind, viewers must pay the current freight, set at $ 5 for each 37-minute segment. A comparable charge
   is imposed for Night of the Lepus and every other motion picture. Novels and poems are also metered through
   MYRRHA, albeit subject to a different tariff table.

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   n210. See the cautionary tale at the outset of this Article.

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   Series (iii):

   . The proprietor of Gone with the Wind has waited past the expiration of the film's term. Nonetheless, taking
   advantage of MYRRHA access gates, it charges the same rates at present as were previously imposed for
   anyone to make home copies of the work.

   . In addition, the proprietor takes out a license in the menu tree of Lotus 1-2-3, invoking MYRRHA's technology
   to impose on software developers a surcharge for incorporating that time-tested model into their latest
   products.

   Series (iv):

   . I receives a license to display a still frame from the film in connection with news reports surrounding Clark
   Gable's obituary. n211

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   n211. For current purposes, let us imagine that Clark Gable is still alive and that the license applies
   prospectively.

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   . J receives a license to screen ten seconds of the film in conjunction with her UCLA seminar on great
   films from the heyday of

   Hollywood.

   . K buys a shipment of 5000 videotapes of the film, each wrapped in a shrinkwrap license forbidding any and all
   uses in Nevada, even if such qualify as "fair uses" under applicable law.

   In analyzing the permissibility of all of the contracts hypothesized above, our fundamental axiom furnishes the
   answer, at least to the first three series: contracts are legitimate up to the full extent of the copyright
   owner's monopoly as sanctioned by Congress, and are illegitimate to the extent that they exceed the bounds
   of that monopoly.

   1. Permissible Limitations

   Series(i) represents the uncontroversial cases. The Copyright Act grants proprietors the exclusive right to do
   and to authorize each of the affected activities. Accordingly, those six contracts should each find
   enforcement under the copyright regime.

   2. Misuse and Related Notions

   Moving to series(ii), the grant to G binds that licensee to pay royalties for a century into the future, long after
   the film's copyright will have expired. That contractual term is illegitimate, as ruled by the Fourth Circuit in a
   landmark case curtailing the legitimate scope of contracts over copyrightable compositions - even those
   bargained for by both contracting parties. n212

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   n212. Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990). It would seem that the U.C.C. is
   attempting to overrule Lasercomb by presumptively validating perpetual contractual use restrictions. See
   U.C.C. 2B-308(2) (Draft, Mar. 1998). If 308 were in effect today, a contractual restriction on reproducing
   Windows 95 included in the accompanying shrinkwrap would presumptively be enforceable 150 years hence,
   long after the software would have passed into the public domain under current law. Congress has just
   amended the Copyright Act to extend terms, under the Sonny Bono Term Extension law.

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   A point of terminology is in order here. Although the landmark case just cited labeled the contract infirm under
   the doctrine of "copyright misuse," that term is redolent of antitrust law. It is true that instances of antitrust
   violations represent one particularly egregious instance of illegitimate behavior, but the doctrine nonetheless
   should not be limited to that sphere. n213 The fatal flaw against which the Fourth Circuit reacted is that the
   copyright owner there was seeking judicial enforcement of a contract that explicitly contravened the user
   limitations incorporated by Congress into the Copyright Act, not that it was acting in violation of the Clayton
   Act or the Sherman Act. Based on the elaborate edifice constructed above, it is submitted that the rubric of
   "preemption" better describes the contract's infirmity than does "misuse."

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   n213. Lasercomb recognizes as much. See Lasercomb, 911 F.2d at 978.

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   Nonetheless, to the extent that an antitrust violation is present, the same result should inure a fortiori and the
   subject contract must be denied enforcement. We thus reach H, in which the copyright proprietor has
   engaged in what appears to be an illegal tying agreement (assuming, for the sake of discussion, that the
   requisite requirements for market power in the market for the tying good are met and that buyers would not
   otherwise license Night of the Lepus). n214 That improper behavior results in the invalidation of the subject
   license.

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   n214. Cf. Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1169 (1st Cir. 1994) (determining
   that Lasercomb could extend to tying under appropriate facts).

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   Moving now to MYRRHA, one can envision a variety of other potential antitrust violations, from tying to
   monopolization to price fixing. Insofar as the facts support a finding of an antitrust violation, the MYRRHA
   licenses must be denied enforcement by virtue of the illicit goals they attempt to achieve.

   3. Within the Subject Matter of Copyright Even as to Unprotected Works

   Under the Constitution, as we observed earlier, federal copyrights endure for terms of limited duration, after
   which public policy demands that the subject expression repose in the public domain. We have already
   reviewed why state law cannot attempt to accord protection anew on such lapsed works. n215 Could
   proprietors nonetheless unilaterally achieve the same result by wrapping their expired works in self-styled
   proclamations of resurrection or in the other devices hypothesized in series (iii)? Because such devices would
   render the "limited times" provision of the Constitution a nullity, they cannot stand.

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   n215. See supra Section III.C.2.

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   The same consideration governs the other usage hypothesized in series (iii) concerning the Lotus spreadsheet.
   That work likewise lies outside the limits of Congress' ambit to protect. n216 To allow the U.C.C. or other
   devices enforced under guise of state law to achieve the contrary result again vitiates the federal scheme
   and, as such, cannot stand.

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   n216. See Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807 (1st Cir. 1995), aff'd by an equally divided court,
   116 S. Ct. 804 (1996). That ruling arises under the statute. See 17U.S.C. 102(b) (1994). But we submit that
   Congress lacks authority under the Constitution to accord copyright protection to systems, methods, and
   concepts. See Baker v. Selden, 101 U.S. 99, 102 (1879).

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   4. Difficulty of Drawing the Lines of Fair Use

   As always, issues at the boundaries can bedevil application of any straightforward standard. In this particular
   application, copyright's infinitely elastic doctrine of fair use can pose its share of mischief. We thus
   reach series (iv).

   In the abstract, it would seem perfectly straightforward that use of a single frame of Gone with the Wind from
   the hundreds of thousands of frames that comprise the picture - and for the purpose of illustrating the
   newsworthy event of reporting the death of its leading man - qualifies as fair use. By the same token, showing
   a few seconds to a film school class would similarly seem to qualify. Solely from that perspective, the licenses
   to I and J must be stricken as illegitimate.

   To spell out the foregoing perspective, the analysis runs as follows: First, a copyright owner is only entitled to
   exploit her monopoly, not to expand it. Given that the statute itself carves fair use out of the scope of
   monopoly granted the copyright owner, n217 the copyright owner cannot require a user to contract out of fair
   use. Because the licenses to I and J deal with a use that ex hypothesi qualifies for the label of fair, these
   contracts are overreaching.

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   n217. See 17 U.S.C. 107 (1994).

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   The fly in the ointment here is that fair use is notoriously difficult to ascertain in the abstract. Indeed, one
   usually cannot know whether or not a use is fair until litigation is resolved at the level of the U.S. Supreme
   Court. n218 For that reason, it may be wise in almost any circumstance to license a work rather than roll the
   dice in a lengthy judicial process. Particularly when one reflects that cases have held against fair use in the
   selling of coursepacks destined for educational purposes, n219 and even in the context of using short clips for
   seemingly highly newsworthy events, n220 the vector towards settling rather than fighting takes on
   tremendous magnitude. Accordingly, the conclusion follows that the licenses to I and J should not be deemed
   illegitimate. Instead, because a court might in fact confound expectations by ruling the subject utilizations
   outside the fair-use doctrine, it is reasonable for two consenting parties to contract now to pay an
   ounce of royalties in order to avoid many pounds of attorneys' fees later.

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   n218. "The malleability of fair use emerges starkly from the fact that all three [U.S. Supreme Court fair use]
   cases were overturned at each level of review, two of them by split opinions at the Supreme Court level." 4
   Nimmer on Copyright, supra note 13, 13.05 (footnotes omitted).

   n219. See Princeton Univ. Press v. Michigan Document Servs., Inc., 99 F.3d 1381 (6th Cir. 1996) (en banc)
   (vacating previous panel decision over five dissenting judges), cert. denied, 117 S.Ct. 1336 (1997).

   n220. See Roy Export Co. Establishment v. Columbia Broad. Sys., Inc., 503 F.Supp. 1137, 1148 (S.D.N.Y.
   1980) (concluding that the unauthorized broadcast of selections from Charlie Chaplin motion pictures at the
   time of Chaplin's death could not be defended on First Amendment grounds, inasmuch as the only relevance to
   the news story regarding his death was not in the events depicted in the films but in the fact that the films
   had been made). Even more startlingly, Los Angeles News Service v. KCAL-TV Channel 9, 108 F.3d 1119 (9th
   Cir. 1997), held outside the fair use doctrine a news station's broadcast of an extraordinarily timely news
   segment concerning the then-unfolding Los Angeles riots. See also Los Angeles News Serv. v. Reuters
   Television Int'l, Ltd, 942 F. Supp. 1265, 1272-74 (C.D. Cal. 1996).

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   On the other hand, the fair-use doctrine cannot be ignored in the calculus of permissible contracts. The
   license to K makes no bones about explicitly contravening it. In this particular instance, fine judgments as to
   future predictions need not take place, for the contract itself eliminates rights guaranteed to users by statute
   under any view of its appropriate construction. n221 The license, therefore, is impermissible.

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   n221. "Although the traditional approach is to view "fair use' as an affirmative defense, this writer, speaking
   only for himself, is of the opinion that it is better viewed as a right granted by the Copyright Act of 1976."
   Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1542 n.22 (11th Cir. 1996) (Birch,J.).

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   Turning to the more vexing issue of reverse engineering, we would argue that the same considerations apply
   as in license K considered above. In other words, to the extent that a shrinkwrap contract for a
   commercialized good required blanket waiver of any and all reverse engineering rights, it should be deemed
   preempted. Precedent up to the circuit court level has upheld that activity, when appropriately undertaken, as
   falling within the fair-use doctrine. n222 Although the argument remains that the U.S. Supreme Court might
   ultimately reject that construction, until it does so those circuit-court pronouncements should be deemed
   declarative of the law. On that basis, a blanket diminution of user rights as defined by governing construction
   of the statute runs afoul of the primary axiom against illegitimate expansion of the copyright owner's
   monopoly. n223

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   n222. On the contours of the right, see 4 Nimmer on Copyright, supra note 13, 13.05[D][4].

   n223. In our experience, we have seen shrinkwrap licenses - and even negotiated contracts - that purport to
   bar reverse engineering for any purpose whatsoever. If enforced, bizarre results would inure. Imagine that P
   imposes such a license term, to which Q agrees. Imagine further that, some months into the license period, Q
   hears an allegation from a former programmer at P that the subject product has lifted whole chunks from Q's
   source code. In order to perform the requisite Rule11 investigation, Q would need to reverse engineer P's
   software to determine if such copyright infringement (patent infringement is equally conceivable) has in fact
   occurred. Can it honestly be maintained that Q's development of an iron-clad case of copyright infringement
   would leave it liable to contract damages to P?

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   IV Some Lessons for the U.C.C.

   At this juncture, it is legitimate to inquire what standards should inform a sensible drafting of U.C.C. rules. It
   will be recalled that those rules govern state contract formation, that such state law contracts form an
   essential ingredient in the scheme of federal copyright exploitation, but that certain state law contracts go
   too far. The question posed is the extent to which Article 2B successfully mediates the potential clash
   between copyright and contract.

      A. The Neutrality Myth

   The drafters of Article 2B are well aware that transactions in "information" are rife with the potential for clash
   between copyright and contract. Theirs is an awareness born of abundant recent experience. Distribution of
   software, the quintessential "information" product, does not typically transpire as a classic sale of a
   copyrighted article, such as occurs when an end user purchases a copyrighted novel. In that classic sale
   context, the end user is free to make use of the purchased product, to sell it, lend it, annotate it, all subject
   only to the constraints of the Copyright Act.

   Copyright owners of software, by contrast, increasingly do not simply sell a tangible embodiment of their
   copyrighted work - a diskette or CD-ROM - and do not rely on the Copyright Act alone to constrain the end
   user. Rather, by selling "goods" intangibly, such as via "clickwraps" executed over the Internet, they seek to
   interpose a licensing relationship with the end user as an absolute prerequisite to access and use. Even
   without that instrumentality, they still sell tangible goods via a purported contract designed to create a
   licensor/licensee relationship. The familiar name for that device, as we have seen at length, is the "shrinkwrap
   license." n224

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   n224. See generally Mark A. Lemley, Intellectual Property and Shrinkwrap Licenses, 68 S.Cal. L. Rev. 1239,
   1259-63 (1995).

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   The preemption issue arises in an acute form in the shrinkwrap arena - and thus for Article 2B - because of
   the attempted use of shrinkwrap licenses to create an intellectual property regime based on contract law that
   enlarges the copyright holder's rights by denying users their rights under the Copyright Act. In this parallel
   universe of contract-created "copyright plus," the copyright owner enjoys all of the benefits conferred by the
   Copyright Act, while users are required to forfeit some or all of the rights secured to them under the Copyright
   Act, such as the right to make fair use of the work without the copyright owner's permission. n225

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   n225. See supra PartII.

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   The theoretical brake against imperialistic aspirations here is preemption, which (as discussed above) forbids
   state law from undermining the intellectual property scheme created by Congress. But the current draft of
   U.C.C. Article 2B largely avoids any attempt to limit copyright contracts so as to respect the preemptive
   boundaries of copyright. Instead, the drafters have adopted the position that "Article 2B should not deal with
   federal preemption but should be neutral" and that that position should be stated in the comments. n226
   Implementing this principle of "neutrality," Article 2B directly addresses preemption only by providing,
   "[a] provision of this article which is preempted by federal law is unenforceable to the extent of such
   preemption." n227

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   n226. U.C.C. 2B-105 votes and action b. (Draft, Mar. 1998).

   n227. Id.

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   But the professed goal of neutrality is not one that the drafters of Article 2B consistently attempt to achieve.
   For instance, the March Draft for Article 2B consciously departs from the model for sales of goods under U.C.C.
   Article 2, in order to bring the former into harmony with "clear rules of federal law." n228 Implementing that
   approach, the draft attempts to accommodate the Copyright Act's requirement of a writing in order to transfer
   ownership of a copyright. n229 Similarly, Article 2B departs from the good-faith purchaser rules of state law,
   because copyright law offers no such defense to claims of infringement. n230 Furthermore, the draft follows
   the copyright cases that have held that the licensee's interest is not transferable without the licensor's
   consent despite the fact that this rule contradicts some state law assumptions about transferability. n231

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   n228. Id. 2B-105 reporter's note 1 (Draft, Mar. 1998) (emphasis added).

   n229. See id. 2B-201 (statute of frauds); see also id. Preface at 10 ("Copyright law precludes a transfer of
   ownership of copyright in the absence of a writing conveying ownership. In discussing development contracts,
   this Draft reflects that limitation....").

   n230. See id. 2B-508 (determining that there is no bona fide purchase defense for transference of license).

   n231. See id. 2B-502 (stating that the transfer of license rights is ineffective without licensor's consent); see
   also id. 2B-502, reporter's notes (stating that 2B-502 follows "federal case law" and "federal policy").

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   Instead, the U.C.C. drafters purport to reserve their strategy of "neutrality" - that is, doing nothing affirmative
   - only for "controversial or context-determined rules whose application cannot be predicted and must of
   necessity await determinations by individual courts in particular cases or by Congress as a general federal
   policy question." n232 In other words, the draft is "neutral" only where it chooses to be. n233

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   n232. Id. 2B-105 reporter's note 4. Examples of such purportedly controversial issues are "reverse engineering
   of copyrighted, but unpatented technology and...the scope of educational or scientific fair use of digital
   works." Id. One could reasonably question whether fair use reverse engineering, or fair use of digital works are
   truly controversial. Fair use is a fact-specific inquiry, but it cannot be that reverse engineering and use of
   digital works without the permission of the copyright owner is never fair use. What is controversial is whether
   a copyright owner can deny the public its fair use rights through a shrinkwrap license. See supra PartII.

   n233. One commentator has wryly described Article 2B as "afflicted with a severe case of multiple personality
   disorder when it tries to articulate its relationship with federal copyright law." Jessica Litman, The Tales That
   Article 2B Tells About Its Connection with Copyright, 13 Berkeley Tech. L.J. (forthcoming Dec. 1998)
   (manuscript at 1, on file with authors). Elaborating on the draft's lack of true neutrality, she observes:

   Article 2B...selectively incorporates copyright terms and decisions it likes, while encouraging the abandonment
   of those it does not. It accomplishes this trick by insisting that some copyright principles are invariable and
   inviolate, and the provision of Article 2B must therefore be designed to accommodate them. Other copyright
   principles would constrain Article 2B licenses only in cases where the license transgresses "specific, existing
   and recognized limits" imposed by federal law, which the Preface assures us would be rare. Finally, a third
   category of copyright principles seems to reflect ideas that the drafters of Article 2B find attractive, but find
   susceptible of improvement.

   Id. at 9 (citations omitted). See also Mark A. Lemley, Beyond Preemption: The Law and Policy of Intellectual
   Property Licensing, 87 Calif. L. Rev. 111, 118 n.14 (1999) ("Article 2B has claimed a posture of "aggressive
   neutrality' with respect to federal intellectual property law. In fact, however, a change in the terms of
   contract law necessarily will affect the contract-intellectual property interface. Such a change cannot be
   considered "neutral' in application, even if it is neutral in intent..."); J.H. Reichman and Jonathan A. Franklin,
   Privately Legislated Intellectual Property Rights: The Limits of Article 2B of the U.C.C. 19 (1998) (unpublished
   manuscript, on file with authors) ("When the restored power of the two-party deal in the digital universe is
   combined with the power to impose non-negotiated license terms, it produces contracts...that are roughly
   equivalent to private legislation.... This combination of powers makes a mockery of the drafters' pious claims
   that "nothing in Article 2B is intended to alter the balance between federal mandates and contract principles'
   and that Article 2B "takes no position' concerning controversial issues pertaining to the interface between
   state and federal law. Whether intended or not, the opposite is true.").

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   One criticism of this purportedly "neutral approach" is that it is otiose. By simply restating in state law
   the constitutionally mandated effect of preemption as contained in the U.S. Constitution, it accomplishes
   nothing more than the exact same result that would inure even in its absence. n234 In particular, it does
   nothing to elucidate what is preempted or to forestall contracting behavior that is impermissible in light of the
   supremacy of copyright.

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   n234. An alternative approach to addressing preemption in Article 2B, which previously enjoyed significant
   support, was to amend 2B-308 (mass market licenses) to provide that a term inconsistent with federal
   copyright law does not become part of a contract under 2B-308. But this approach too fails to advance the
   ball beyond the unassailable proposition that preempted provisions of a contract are not enforceable.

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   Further, as a practical matter, this selective "neutrality" suffers from precisely the same shortcoming of
   political neutrality in response to real-world conflict: n235 it de facto favors those with concentrated interests
   and large financial resources and thus tacitly invites abuses. By taking no position on preemption other than
   that "it preempts," the draft ratifies the status quo and makes every imaginable shrinkwrap encroachment on
   users' rights presumptively enforceable. It thus forces into the arena of litigation any determination of whether
   a given license or portion thereof overreaches the supreme bounds of copyright.

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   n235. In Dante's Inferno, the souls of the dead who avoided choosing between good and evil while alive
   endlessly circle the gates of hell: "The wretched souls of those who lived without infamy and without praise
   maintain this miserable mode." Dante Alighieri, The Divine Comedy 4 (Charles Eliot Norton trans., Encyclopaedia
   Brittanica 1952).

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   The displacement into litigation of allegedly controversial issues favors vested interests over a diffused public
   whose members lack both the resources and incentives to litigate. In addition, the draft favors the contraction
   of user rights over the public's right to make fair use of copyrighted materials and to use freely what lies in the
   public domain. It is in this sense that the metamorphosis from "contract" to "expand" becomes most apparent.

   The draft's justification for not taking an affirmative stand on allegedly "controversial" issues is that
   they "must be resolved by courts and Congress, rather than through state legislation." n236 That proposition
   itself is suspect, as the two hypothetical bills discussed below demonstrate.

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   n236. U.C.C. art. 2B Preface at 10 (emphasis added).

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   B. How the U.C.C. Might Help Maintain the "Delicate Balance"

   One must concede, of course, that Article 2B cannot anticipate every contract or context in which issues of
   preemption will arise and provide an a priori fix. But limiting the focus for the moment to copyright preemption,
   why could Article 2B not at least address the means by which licenses have been used to alter the "delicate
   equilibrium" - that is, the known evils? Let us assume, for example, that the next draft were to take an
   affirmative stand on copyright preemption by incorporating the following language, which has been proposed
   as an amendment to the Copyright Act:

   Boucher Bill: n237

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   n237. Rep. Rick Boucher of Virginia introduced this language in a bill to the U.S. House of Representatives in
   the current session. See Digital Era Copyright Act, H.R. 3048, 105th Cong. (1998).

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   Respecting copyright's delicate balance - When a work is distributed to the public subject to non-negotiable
   license terms, such terms shall not be enforceable... to the extent that they: (1) limit the reproduction,
   adaptation, distribution, performance, or display, by means of transmission or otherwise, of material that is
   uncopyrightable under section 102(b) [of the Copyright Act] or otherwise; or (2) abrogate or restrict the
   limitations on exclusive rights specified in sections107 through114 and sections117 and118 of [the Copyright
   Act].

   Although the foregoing language is not presented as the "silver bullet" to eliminate preemption problems, it
   would at a minimum specifically address at least one preemption concern identified by the current draft as too
   controversial: reverse engineering. Given that case law upholds certain species of such reverse engineering as
   defensible under the fair use doctrine codified in section 107 of the Copyright Act, the Boucher Bill would
   clarify that a reverse engineering prohibition in a shrinkwrap license is unenforceable to the extent that it
   abrogates or limits the statutory fair use privilege. n238

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   n238. As previously noted, Judge Easterbrook intended the ProCD holding to reach the contrary result. See
   supra note 177.

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   More fundamentally, an Article 2B incorporating the Boucher Bill would generally safeguard users' rights by
   rendering unenforceable provisions of licenses that seek to alter the "delicate equilibrium" that the
   Copyright Act establishes between the rights of copyright owners and the rights of the public. Because it is
   salutary, this hypothetical feature of a newly revised U.C.C. debunks the notion that debates in this sphere
   "must be resolved by courts and Congress, rather than through state legislation." n239

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   n239. One defect in the Boucher Bill, nonetheless, is its reliance on the concept of "non-negotiable license
   forms." As discussed above, the distinction between negotiated and non-negotiated licenses is often
   meaningless in the preemption context. See also Wolfson, supra note 182, at 94-97 (criticizing distinction
   between negotiable and non-negotiable forms).

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   The foregoing thought experiment n240 reveals no reason why Article 2B could not adopt the foregoing
   proposed language, thereby taking a non-neutral stand on how preemption limits freedom of contract. The
   bare fact that the U.C.C. drafters would thereby be "taking sides," by itself, is unobjectionable: choices are
   inevitable and neutrality usually a chimera. Indeed, Article 2B self-consciously makes choices in numerous
   domains to confer differential benefits on different constituencies. n241

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   n240. One critic of an earlier draft of this Article elevates our thought experiment entertaining the Boucher Bill
   into a specific "proposal," which he then proceeds to attack at length. See id. In response, we have
   attempted to clarify in the text and notes above that we do not adopt the Boucher Bill as our own proposal.
   Instead, the purpose of our thought experiment, based on the text of a pending federal bill, is to refute the
   claim that the drafters of Article 2B had their hands tied from affirmatively addressing preemption issues. This
   Article does not pretend to offer a fully developed and concrete proposal of the final language that the
   drafters of Article 2B should adopt.

   n241. The draft's Preface lists the benefits of Article 2B as falling into the following categories: General
   Benefits; Licensor Benefits; Licensee Benefits. It thus tacitly acknowledges that while Article 2B may seek to
   strike a fair balance between licensor and licensee rights, its individual provisions are not neutral in how they
   confer benefits.

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   The fact that the language proposed above overtly addresses preemption concerns is also unobjectionable.
   For as previously noted, Article 2B consciously carves out exceptions to its scope in deference to what it
   deems to be "clear rules of federal law." Moreover, the draft expressly states that if anyone desires to
   challenge its provisions as an impermissible, or indeed preempted, state encroachment on the federal scheme,
   he or she is free to seek redress in the "courts and Congress."

   The legitimacy of the thought experiment contained in the Boucher Bill, which is premised on respect for
   copyright law's delicate balance, emerges further when it is contrasted with a hypothetical addition to Article
   2B designed for the opposite purpose, that is, one that subverts that balance. As we have noted above
   repeatedly, the problem with the current draft of Article 2B is that it presumptively validates provisions which
   impermissibly tilt in favor of proprietors. To appreciate why that one-sidedness is illegitimate, let us entertain
   conversely a hypothetical provision crafted to enlarge users' rights, that is, for the opposite purpose from the
   current draft:

   Charcutier Bill:

   Solicitude for the downtrodden - When a work is distributed to the public subject to non-negotiable license
   terms, such terms shall not be enforceable unless the licensor: (1) grants the licensee the right to reproduce
   an unlimited number of copies for persons falling below the poverty line as defined in the pertinent provision of
   the Code of Federal Regulations; and (2) agrees that he or she will not seek more than $ 300 for any copyright
   infringement committed by an orphan, widow or widower or by an individual adjudged "insane" pursuant to the
   laws of the state in which the alleged infringement occurred.

   It should be patently obvious that the language just proposed is preempted and hence unenforceable, for it
   baldly encroaches on the exclusive rights granted to authors under the Copyright Act. n242 One hopes that
   the drafters of Article 2B would peremptorily dismiss the Charcutier Bill as slop, even were massive lobbying
   brought to bear for its adoption.

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   n242. Cf. Storer Cable Communications v. City of Montgomery, 806 F.Supp. 1518 (M.D. Ala. 1992) (holding
   that Copyright Act preempted Alabama city ordinance ruling exclusive licenses of cable programming illegal on
   antitrust grounds).

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   Parallel considerations dictate that license provisions should also be deemed preempted when they effect a
   blatant encroachment on the rights of users; for example their right to reproduce, adapt, distribute, perform,
   or publicly display material that was once copyrighted and the term for which has lapsed, or the right to make
   fair use of a copyrighted work. It is here that the current draft of Article 2B needs fixing. By failing to protect
   even those obvious user rights and by blessing as presumptively valid provisions that would rob users of their
   rights, Article 2B's "neutrality" in effect tilts towards a regime that could be condemned as no less absurd than
   the Charcutier Bill hypothesized above, when both are viewed from the perspective of rights that Congress has
   denied to copyright owners and thus reserved to users. Better than either the pro-proprietor tilt of the current
   draft or the pro-user tilt of the Charcutier Bill, what is needed is respect for copyright law's delicate balance.
   Though the Boucher Bill itself is concededly not a panacea, it at least points in the right direction for a
   balanced reformulation of Article 2B's stance on preemption.

   Some proponents of the draft's current "neutrality" have suggested that it would be a mistake to build specific
   preemption-driven restrictions into Article 2B, because this will force state courts into the quagmire of
   preemption analysis, a task that they view as properly left to the federal courts as the usual arbiters of
   interpreting the Copyright Act and its interrelationship with other laws. This leave-it-to-the-feds argument is built on the fallacy that copyright preemption issues can be neatly cabined within federal venues.   In reality, as a necessary adjunct of resolving contract disputes, state courts cannot avoid making  determinations regarding whether copyright law preempts particular contract provisions. n243 Under an Article 2B regime, state courts still will not be able to avoid determining whether given contracts (or contract terms) are preempted if the defense is raised. Accordingly, Article 2B can be silent on the issue, and offer no guidance (the faux "neutral" position), or it can offer some guidance by ruling out as unenforceable contract terms whose very purpose is to recalibrate the "delicate balance." The faux-neutral strategy does not eliminate adjudication of preemption issues in state court. Rather, it guarantees that state courts will face
preemption questions more frequently and on a broader range of issues.

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   n243. As cited above, state courts must of necessity apply 17 U.S.C. 301 in evaluating the constitutionality of
   the cause of action before them. See supra notes 129 (citing PMC, Inc. v. Saban Entertainment, Inc., 52 Cal.
   Rptr. 2d 877 (Cal. Ct. App. 1996)) and 152 (citing Griggs v. South Carolina Elec. and Gas Co., 463 S.E.2d 608
   (S.C. 1995)).

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   A second leave-it-to-the-feds argument adduced by the proponents of faux neutrality is that questions of
   what should be preempted, to the extent addressed in legislation, are best left to Congress. As noted above,
   what is really being advocated is selective "neutrality" about the relationship between Article 2B and federal
   law. For in numerous particulars recounted above, Article 2B is consciously crafted to be in harmony with the
   supremacy of federal law. Given that the drafters of Article 2B clearly have the ability to take into account
   issues of federal law and that they do so when they wish to, their antagonism to Article 2B forbidding certain
   overreaching contracting practices on preemption grounds smacks of tendentious selectivity. At a bare
   minimum, they should clarify why they have singled out this particular issue as the federal-law question to be
   ducked, particularly when it is reasonably certain that precisely the evils contemplated herein (for example,
   attempting to contract away fair use) will take place if not curbed. The worst that can be said about
   implementing limits on contracting practices designed to restrict known evils is that if such contracts are really
   not preempted, copyright proprietors will not be able to enjoy fully the freedom to contract - or at least will
   have to fight to do so. n244 Copyright law itself will not suffer. By contrast, a failure in the other direction
   threatens to impinge directly on the federal copyright scheme.

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   n244. The burden under the current draft of challenging overreaching contracting practices is placed upon
   users. By contrast, under the scheme outlined above, proprietors would bear the burden of proving that a
   contracting course upon which they wished to embark, although presumptively disapproved by the newly
   amended Article 2B of the U.C.C., nonetheless in fact disserved no greater purpose of copyright and contract
   law.

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  To sum up, whether Article 2B should choose "neutrality" over proscribing illegitimate contracting
   practices is not an either/or choice between locating a debate in a federal forum as opposed to a state forum.
   The real questions are: (1) How will the preemption analysis unfold in state courts and under what
   presumptive standards (not whether it will take place)? (2) Who will bear the costs of attempting to diminish
   users' rights to increase protections for copyright owners (not whether such costs exist)? and (3) Who should
   be forced to make a federal case out of it before Congress, those who propose to tilt the delicate balance, or
   those who would seek to maintain it?

   In deciding each of these questions, we come down firmly in favor of copyright, and suggest that the
   attempts to rework, alter, or eviscerate aspects of copyright through the vehicle of state contract law are
   illegitimate. Accordingly, in our view, it is those who alter the delicate balance who should bear the cost of
   this enterprise, and should be forced to rework copyright law where it has traditionally been reworked - in
   Congress.

   Conclusion

   It is emphatically not necessary to view copyright law as a "law of users' rights" (as have some n245) to adopt
   the logic that undergirds this Article - that copyright has solicitude for the rights of both authors and of users.
   Instead, it is necessary simply to view copyright law as the carefully constructed compromise between
   society's disparate goals, reflecting the delicate equilibrium invoked so often throughout the discussion above.
   As the Supreme Court has taught, "the economic philosophy behind the clause empowering Congress to grant
   patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best
   way to advance public welfare through the talents of authors and inventors in "Science and useful Arts.'" n246
 

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   n245. See L. Ray Patterson & Stanley W. Lindberg, The Nature of Copyright: A Law of Users' Rights (1991).

   n246. Mazer v. Stein, 347 U.S. 201, 219 (1954).

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   By contrast, n247 some may view copyright not as embodying any balance at all, but instead solely as a
   device to maximize the financial interest of proprietors. To them, unilateral expansion of the copyright
   monopoly beyond its congressionally sanctioned orbit is to be celebrated. Obviously, those adherents will
   remain unconvinced by the viewpoint expressed herein. But we think that Supreme Court pronouncements over
   the years, combined with innumerable statutory drafting choices, debunk the notion that copyright's
   vector points only in the direction of greater and greater magnitudes of protection. n248

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   n247. For a view condemning copyright as a law of user rights but simultaneously acknowledging that
   "copyright loses much of its moral lustre" if confined purely to the goal of maximizing profits, see Jane C.
   Ginsburg, Authors and Users in Copyright, 45 J. Copyright Soc'y 1, 9 (1997).

   n248. Beyond the quotation from Mazer set forth immediately above, see the discussion above of Feist, Sony,
   Bonito Boats, and Campbell. See supra Part III.

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   Nor do we think the following syllogism holds: "some copyright protection is good, quantity increases quality,
   therefore more copyright protection is better." n249 Instead, we believe that tipping the balance too
   precipitously in one direction can be as baleful as tipping it in the other. As passionate devotees of copyright,
   we can do no better than to close with Lord Mansfield's admonition of two centuries ago n250 that the task
   for lawmakers n251 is to pay careful heed to each of the two socially useful, but antithetical, interests
   mediated by copyright

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   n249. In our Maimonidean attempt to achieve the golden mean, we are equally fervent in rejecting the
   converse syllogism that concludes that less copyright protection is better. For precisely that reason we reject
   the Charcutier Bill posited above, which would illegitimately increase user rights.

   n250. Lord Mansfield "is generally considered the single most influential English jurist of the eighteenth
   century." Mark Rose, Authors and Owners 68 (1993). His pedigree for current purposes is even more
   unassailable: as William Murray, before his elevation to the bench, he served as a practitioner in "most of the
   important Chancery cases concerning literary property, including [Alexander] Pope v. Curll." Id.

   n251. His words are wise, we submit, for those who make laws in both the legislative and judicial branches, at
   both the state and federal level.

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   We must take care to guard against two extremes equally prejudicial; the one that men of ability, who have
   employed their time for the service of the community may not be deprived of their just merits and reward for
   their ingenuity and labor; the other that the world may not be deprived of improvements nor the progress of
   the arts be retarded." n252

   "Expand through contract" is a slogan that offends a constitutionally defensible copyright regime. But when
   copyright's delicate equilibrium is respected, authors, publishers, users, and society at large are all winners.

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   n252. Sayre v. Moore (1785), quoted in Cary v. Longman, 102 Eng. Rep. 138, 139 n.(b) (K.B. 1801)

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