dissenting:
The majority opinion fairly identifies the general approach to the common law tort of misappropriation. In order to determine whether that tort will lie we must balance Dow Jones’ interest in preventing the use of its average by the Board of Trade against society’s interest in the widest use and dissemination of intellectual properly. Obviously, both interests are important and require fair consideration in the balancing process. Unless the creators of intellectual property have some protection against the appropriation of their ideas by others they will be discouraged from producing them; on the other hand, unless society can demand that the owners of intellectual property allow it to be appropriated by people who have developed novel and productive uses for it, the pace of innovation will slow.
I would allow the Board of Trade to use the Dow Jones Averages for its stock market futures contracts. The majority errs, in part, because it has failed to place enough emphasis on the unfettered access to ideas in the public domain, a privilege which is essential to our free market economy. The majority also fails to take heed of the warning of Justice Brandéis:
“Courts are ill-equipped to make the investigations which should precede a determination of the limitations which should be set upon any property right ***. Courts would be powerless to prescribe the detailed regulations essential to full enjoyment of the rights conferred, or to introduce the machinery required for enforcement of such regulations. Considerations such as these should lead us to decline to establish a new rule of law in the effort to redress a newly-disclosed wrong, although the propriety of some remedy appears to be clear.” International News Service v. Associated Press (1918), 248 U.S. 215, 267, 63 L. Ed. 211, 232-33, 39 S. Ct. 68, 82 (Brandeis, J., dissenting).
In deciding this case, the majority has broadly expanded the tort of misappropriation in Illinois. I believe that to the extent that intellectual property rights are to be expanded beyond their common law limits, it would be better to leave the matter to Congress, with which direction over the development of intellectual property rights is lodged under the Constitution (U.S. Const, art. I, sec. 8, cls. 3, 8), and to the State legislature. Both legislative bodies are well equipped to conduct the investigations necessary to determine what conditions and limitations should be put on such rights. I fear that the majority opinion offers little guidance to the courts and bar in Illinois on how to apply this greatly expanded tort in other circumstances.
The common law tort of misappropriation has been limited to cases where intellectual property, lawfully obtained, is used in direct competition with the person who created it. This requirement was implicitly adopted by a majority of the United States Supreme Court in International News Service v. Associated Press (1918), 248 U.S. 215, 63 L. Ed. 211, 39 S. Ct. 68. In that case the Associated Press sought to prevent INS from taking, and retransmitting by wire, information previously transmitted over the AP wire service and published in the early editions of newspapers subscribing to the AP service. In holding that INS was unlawfully misappropriating AP’s intellectual property the Supreme Court carefully stated that the evil of INS’s practice was that it enriched itself by using information acquired from the AP wire services in direct competition with AP:
“The right of the purchaser of a single newspaper to spread knowledge of its contents gratuitously, for any legitimate purpose not unreasonably interfering with [AP’s] right to make merchandise of it, may be admitted; but to transmit that news for commercial use, in competition with [AP] — which is what [the INS] has done and seeks to justify — is a very different matter. In doing this [the INS], by its very act, admits that it is taking material that has been acquired by [AP] as the result of organization and the expenditure of labor, skill, and money, and which is salable by [AP] for money, and that [INS] in appropriating it and selling it as its own is endeavoring to reap where it has not sown, and by disposing of it to newspapers that are competitors of [AP’s] members is appropriating to itself the harvest of those who have sown. Stripped of all disguises, the process amounts to an unauthorized interference with the normal operation of [AP’s] legitimate business precisely at the point where the profit is to be reaped, in order to divert a material portion of the profit from those who have earned it to those who have not; with special advantage to [INS] in the competition because of the fact that it is not burdened with any part of the expense of gathering the news. (Emphasis added.) (248 U.S. 215, 239-40, 63 L. Ed. 211, 221, 39 S. Ct. 68, 72-73.)
In keeping with this requirement of a demonstration of competitive injury, the decree entered in the INS case prohibited INS only from using the information in AP wire service reports “ ‘until its commercial value as news to the [AP] and all of its members has passed away.’ ” See 248 U.S. 215, 245, 63 L. Ed. 211, 223, 39 S. Ct. 68, 75.
The competitive-injury requirement adopted by the Supreme Court in INS has been followed and applied in many of the cases discussing the tort of misappropriation. (See, e.g., Standard & Poor’s Corp. v. Commodity Exchange, Inc. (2d Cir. 1982), 683 F.2d 704, 711; National Football League v. Governor of Delaware (D. Del. 1977), 435 F. Supp. 1372, 1377; Time, Inc. v. Bernard Geis Associates (S.D.N.Y. 1968), 293 F. Supp. 130, 146; Metropolitan Opera Association v. Wagner-Nichols Recorder Corp. (1950), 199 Misc. 786, 101 N.Y.S.2d 483, 498-99, aff’d (1951), 279 A.D. 632, 107 N.Y.S.2d 795; Loeb v. Turner (Tex. Civ. App. 1953), 257 S.W.2d 800.) This requirement was accepted as a part of Illinois law in Capitol Records, Inc. v. Spies (1970), 130 Ill. App. 2d 429, where the appellate court held that Spies could not tape record Capitol’s musical recordings and sell them in direct competition with Capitol’s records and tapes. The competitive-injury requirement has a sound basis in policy, for it allows the tort of misappropriation to protect the creators of intellectual property against actual injury to their business, but at the same time it allows for suitable reward for people who develop novel uses for information and ideas that are freely obtained from the public domain.
In this case the circuit court found that Dow Jones would not suffer any competitive injury if the Board of Trade used the Dow Jones index for its futures contracts. Its finding was set forth in the following language: “The Board of Trade will not compete with Dow Jones and will not interfere with Dow Jones’ ability to make a profit. Dow Jones is essentially in the News Publication business. The Chicago Board of Trade is in the Commodities Futures Trading Business.” Moreover, the circuit court decree ensured that Dow Jones’ good will would not be diminished through the Board of Trade’s use of the index. The circuit court’s decree required that all contracts, advertising, and promotional activity relating to the Board of Trade’s stock market futures index contain express disclaimers of any sponsorship or association with Dow Jones.
Dow Jones claims that it will suffer the loss of future licensing revenues if we hold that the Board of Trade may freely use the Dow Jones’ index in its futures contracts. At trial, however, Dow Jones pleaded and presented testimony claiming that it had no interest or éxpectation in licensing its name or index for use in stock market futures.
Even if Dow Jones changed this position in the future, . nothing in the circuit court decree would prevent it from licensing its name to sponsor a stock market futures index in competition with the one to be offered by the Board of Trade. Moreover, as the majority opinion admits, it is somewhat circular to base a finding of competitive injury on the ability to license the index to prospective markets when those licenses have no value unless we find in this action that Dow Jones has a property right in its index under the tort of misappropriation. See 98 Ill. 2d at 120.
Dow Jones has no more than an inchoate interest in the Board of Trade’s use of its index, but the majority’s opinion converts that interest into a property right. The majority is swayed by what it sees as “unjust” enrichment — the Board of Trade’s plan to earn a profit by the free use of an idea developed by Dow Jones at considerable cost. I do not regard this use as “unjust” in the least. The Board of Trade proposed to use information that Dow Jones had freely allowed the public to acquire in a business that Dow Jones has not shown the slightest interest in pursuing. If “unjust enrichment” has become the only element for the tort of misappropriation in Illinois, I fear that there will be few commercial ideas and little information left in the public domain. I view the proper elements of the tort of misappropriation to be a combination of unjust enrichment and competitive injury. Although the former feature may be present in this case, neither the majority opinion nor Dow Jones reveals where to find the latter feature.
WARD and MORAN, JJ., join in this dissent.