"Like the Supreme Court in Wolens, we think it prudent to refrain from adopting a rule that anything [**25] with the label "contract" is necessarily outside the preemption clause: the variations and possibilities are too numerous to foresee. National Car Rental likewise recognizes the possibility that some applications of the law of contract could interfere with the attainment of national objectives and therefore come within the domain of ß 301(a). . .
But whether a particular license is generous or restrictive, a
simple twoparty contract is not "equivalent to any of the
exclusive rights within the general scope of copyright" and
therefore may be enforced."
ProCD v. Zeidenberg 86 F3d 1447 (7th Cir.
1996)
"The Greens, relying principally on ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996), contend the parties’ agreement provides the extra element necessary to avoid preemption of their claims, effectively converting what would be an infringement claim against a stranger to the contract into a breach of contract claim against Hendrickson in its capacity as a promisor. Prevailing federal authority is against the Greens on this point of federal law. . .
We conclude that federal law does not regard the rights the
Greens seek to vindicate under their agreement with Hendrickson
as qualitatively different from their federal copyright law
rights. Selby v. New Line Cinema Corp., 96 F. Supp. 2d 1053,
1060 (C.D. Cal. 2000. ( A naked promise not to infringe a
copyright does not provide the extra element necessary to avoid
preemption because that promise “is so inextricably
entwined with the copyright that to permit the promisee to sue
upon it would undermine the preemption feature of the Copyright
Act.” ).
Green v. Hendrickson Publrs., 770 N.E. 2d
784, (2002 Ind.)
"Given the Supreme Court's approach in Anderson, we
conclude that it means to extend the complete preemption
doctrine to any federal statute that both preempts state law and
substitutes a federal remedy for that law, thereby creating an
exclusive federal cause of action. See Richard H. Fallon, Jr. et
al., The Federal Courts and the Federal System 22 (5th ed. Supp.
2003) (reaching the same conclusion). The Copyright Act does
just that."
Briarpatch Ltd. v. Phoenix Pictures,
Inc., 373 F.3d 296, (2d Cir. 2004)
"Courts analyze equivalency by applying "a functional
test" to determine whether the state law right at issue is
equivalent to any of the exclusive rights under Section 106 of
the Copyright Act. Data Gen. Corp. v. Grumman Sys. Support
Corp., 36 F.3d 1147, 1164 (1st Cir. 1994). In Wrench, we stated:
Equivalency exists if the right defined by state law may be
abridged by an act which in and of itself would infringe one of
the exclusive rights. Conversely, if an extra element is
required instead of or in addition to the acts of reproduction,
performance, distribution or display in order to constitute a
state-created cause of action, there is no preemption, provided
that the extra element changes the nature of the action so that
it is qualitatively different from a copyright infringement
claim. 256 F.3d at 456 (citation omitted). See also Summit Mach.
Tool Mfg. Corp. v. Victor CNC Sys., Inc., 7 F.3d 1434, 1440 (9th
Cir. 1993). The existence of an extra element precludes
preemption only where the element changes the nature, rather
than the scope, of the action. Data Gen., 36 F.3d at
1164-65."
Stromback v. New Line Cinema, 384 F.3d
283 (6th Cir. 2004)