Massachusetts Supreme Judicial Court Concludes Plaintiffs Can’t Use State Law Claims to Circumvent Copyright Law

The Massachusetts Supreme Judicial Court recently reaffirmed the rule that state law claims based on copyright are preempted by the preemption provisions of the Copyright Act, 17 U.S.C. § 301. In Curtis v. Herb Chambers I-95, Inc., 458 Mass. 674 (2011), Curtis, an individual who had produced advertising materials for car dealerships, filed a complaint against car dealerships and a printing and distribution business to protect his advertisement design. He had never registered a copyright for his design. Curtis based his claims on copying of trade dress under common law, a breach of the implied covenant of good faith and fair dealing, interference with advantageous business relations, and unfair and deceptive trade practices under Massachusetts General Laws chapter 93A.

The court first noted that claims are preempted by the Copyright Act if “the work at issue falls within the type of works protected by the Copyright Act (subject matter requirement)” and “the State law claim asserts a legal or equitable right equivalent to an exclusive right granted” under the Act (equivalency requirement). There was no dispute that the advertisement design satisfied the subject matter requirement, so the court proceeded to analyze whether the claims were qualitatively different from a copyright infringement claim and could survive preemption. “A State law claim is qualitatively different from a copyright infringement claim if the plaintiff can prevail even though the plaintiff holds no copyright or right equivalent to copyright in the advertising materials.”

First, Curtis’s common law trade dress claim could not survive because it alleged “defendants produced materials that imitated his advertisement design and represented it as their own,” i.e., “reserve passing off.” The court concluded Curtis could only succeed on this claim if he held a right equivalent to copyright to prevent the copying. Similarly, the claim based on a breach of the implied covenant of good faith and fair dealing also was preempted. This claim alleged the defendants intentionally interfered with Curtis’s business relationships with other dealerships by copying his design after their contracts with him had terminated. This claim did not survive because the car dealerships had not promised to pay him for the use of his designs and materials following termination of their contracts and, even if such a promise were implied, the claim would be preempted because Curtis “would be claiming under our common law a legal right or entitlement equivalent to copyright.”

Moreover, Curtis’s claim that the defendants tortiously interfered with his business relationships with other dealerships by copying his advertising designs was preempted because the only “improper means” he alleged the defendants engaged in to interfere was the reproduction of his design, “which is improper only if Curtis had a legal right or entitlement equivalent to copyright.” Finally, the Chapter 93A claim was preempted because the defendants’ actions could be unfair only if Curtis had a right or entitlement equivalent to copyright, and the only deception alleged was the “reverse passing off,” which was preempted.

The simple lesson from this case is that if you have a copyrighted work, make sure to register it! State law may not allow you to assert claims against infringers. It is relatively inexpensive to obtain a copyright registration, and ownership of a valid registration is a prerequisite for filing a lawsuit for copyright infringement. Moreover, if you obtain a copyright registration prior to the infringement or within three months of the first publication of your work, you will be entitled to statutory damages in the event of infringement. Statutory damages typically range from $750 to $30,000 per work infringed, and may be increased to $150,000 in the event of willful infringement. The availability of statutory damages is very useful, as actual damages are often difficult to prove.

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